KYOCERA Corporation

Patent Trials and Appeals Board

Apr 23, 2021

2019006286 (P.T.A.B. Apr. 23, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/409,791 01/19/2017 Hirohide YAMASAKI 005000-K00267 7227
78198 7590 04/23/2021
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
EXAMINER
KRCHA, MATTHEW D
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
04/23/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROHIDE YAMASAKI1
____________

Appeal 2019-006286
Application 15/409,791
Technology Center 1700
____________

Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellant filed a Request for Rehearing (“Request” or “Req.”)
under 37 C.F.R. § 41.52 seeking reconsideration of our Decision dated
January 15, 2021 (“Decision” or “Dec.”), in which, citing In re Steele, 305
F.2d 859, 862 (CCPA 1962), we summarily reversed the Examiner’s
rejection under 35 U.S.C. 102(a)(1) and entered new grounds of rejection
under 35 U.S.C. §§ 112(a) and (b).
We DENY the Request.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as KYOCERA
CORPORATION. Appeal Br. 2.
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ANALYSIS
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a). In its Request, the Appellant challenges the
Decision’s new grounds of rejection under 35 U.S.C. §§ 112(a) and (b). See
generally Req. We have considered the Request, and, as set forth below, we
determine that the Appellant has not persuasively identified any points
misapprehended or overlooked in the Decision that would warrant a
different outcome on rehearing.
Rejection under § 112(a). In the Decision, we determined that “the
Specification does not adequately teach those of skill in the art to make and
use a ‘sensor configured . . . to detect an odor,’ as opposed to, for example, a
sensor configured to detect gas molecules that are the source of an odor, i.e.,
odiferous gas molecules.” Dec. 3. We found probative the Specification’s
description of its sensors as “detect[ing] an odor . . . [by] absorb[ing] gas
molecules that are the source of the odor,” and the Appellant’s statement in
the Appeal Brief that “sensor 31, configured to detect odor, is specifically
configured to detect the gas molecules that are the source of the odor.”
Dec. 3 (citing Spec. ¶ 16 and Appeal Br. 5).
On rehearing, the Appellant argues that the “concept of an electronic
nose, which is an electronic sensing device configured to detect an odor is a
well-known knowledge to one of ordinary skill in the art pertinent to the
technical field of the claimed subject matter.” Req. 3 (citing Wikipedia).
The Appellant asserts that “a quartz crystal microbalance (QCM) is a
commonly used sensor for the electronic nose.” Id. The Appellant argues
that the Specification describes “the interaction of the chemical with the
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sensor as detecting odor,” and that the Appellant has acted as its own
lexicographer to define detection of an “odor” as detection of odiferous gas
molecules. Id. at 4–5.
Those arguments fail to persuasively identify any points that we
misapprehended or overlooked that might warrant a different outcome on
rehearing. The Appellant does not appear to directly dispute our finding that
the sensors at issue “do not literally detect odors,” but, rather, that they
detect odiferous chemicals. See Req. 3–4; Dec. 3. In that regard, we
emphasize that the written description describes sensors that detect specific
chemical substances. See Spec. ¶ 16. The exhibit attached to the Request is
consistent with the written description and indicates that so-called
“electronic noses” use a “sensor set” or “sensor array” to detect chemicals,
and a “computing system” or “pattern recognition module” to correlate the
data from the sensors with known odors. See Req. Ex. 1 at 2–3 (describing
collection of data with sensors and the use of pattern recognition modules
“to generate signal pattern[s] that are used for characterizing odors”). Even
accepting that sensors such as that recited by claim 1 may interact with other
components (such as, e.g., a pattern recognition module or a computing
system, as described by the exhibit, or “a controller” as recited by claim 1)
to characterize odors on the basis of information collected by the sensors,
claim 1 expressly recites that it is the sensor itself that is “configured . . . to
detect an odor.” On this record, we maintain our determination that the
written description does not enable a sensor that is configured to detect
odors; the written description enables the use of sensors configured to detect
chemical substances.
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The Appellant’s broader position appears to be that a person of
ordinary skill in the art would have understood the terms “detect odor” and
“detect odiferous chemical” to be essentially synonymous, and/or that the
written description defines odor detection in a way that limits the term
“detect an odor” to detection of odiferous gas molecules. See generally Req.
We understand the Appellant to argue that, because the written description is
enabling of sensors configured to detect odiferous gas molecules, it is
likewise enabling of sensors configured to detect odors. See id.
Those arguments fail to persuasively identify any points that we
misapprehended or overlooked that might warrant a different outcome on
rehearing. To the extent that the Appellant argues that the terms “detect
odor” and “detect odiferous chemical” are synonymous in the art, we do not
discern sufficient evidence of record in support of that assertion. The
disputed term is “sensor configured . . . to detect an odor,” and, as noted
above, both paragraph 16 of the Specification and the exhibit attached to the
Request indicate that sensors detect substances, and that other components
may operate in concert with the sensors to analyze data obtained from the
sensors such that an odor is ultimately identified or “detected.”
We do not agree with the Appellant’s assertion that the Specification
“defines” detection of an odor in a way that limits the term “detect an odor”
in claim 1 to detection of gas molecules that are the source of the odor.
Req. 4–5. We discern no clear definition in the portions of the Specification
cited by the Appellant. Cf. In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (during prosecution, claims must be given their
broadest reasonable construction consistent with the specification). The
Specification does not, for example, limit the claimed sensor to a QCM
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sensor, see Req. 4; on the contrary, the Specification states that “the sensor
31 may, for example, be provided with a [QCM] type odor sensor.” Spec.
¶ 16 (emphasis added). The Specification also describes detection of
“substances” and does not expressly limit those substances to gases. Id. (“In
other words, for the sensor 31 to detect the degree of degradation of cooking
oil, it suffices for example to provide a sensitive membrane that can detect
aldehyde-based or ketone-based substances.”).
For the foregoing reasons, the Request does not persuade us that we
misapprehended or overlooked anything that would warrant modifying our
previous determination that “the Specification does not adequately teach
those of skill in the art to make and use a ‘sensor configured . . . to detect an
odor,’ as opposed to, for example, a sensor configured to detect gas
molecules that are the source of an odor.” Dec. 3. We maintain that
determination on rehearing.
Rejection under § 112(b). In the Decision, we determined, “[g]iven
our understanding . . . that sensors such as those at issue in this case detect
chemical molecules rather than odors, the precise scope of the term ‘sensor
configured . . . to detect an odor’ is unclear, particularly given the
Appellant’s acknowledgement in the Appeal Brief that the claimed sensor
does not literally detect odors.” Dec. 4 (citing Appeal Br. 5).2 As a specific
example of how the term lacks clarity, we observed that “it is unclear
whether the term encompasses only sensors that detect gas molecules that

2 We also provided an additional, independent basis for rejecting claims 7
and 8 under § 112(b). See Dec. 5–6. In the Rehearing Request, the
Appellant does not challenge that basis for the rejection of claims 7 and 8.
See generally Req.
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are a direct source of odors (e.g., aldehydes and ketones), such as the sensors
described in the Specification, e.g., Spec. ¶ 16, or if the term is broad enough
to encompass detection of non-gaseous substances that may be an indirect
source of odor, e.g., smoke particles.” Id. at 4–5.
In the Request, the Appellant argues that a person of ordinary skill in
the art would understand that “the feature of ‘sensor configured . . . to detect
an odor’ encompasses a sensor that detects gas molecules that are a source of
an odor . . . as described in the specification, e.g., paragraph [0016].” Req. 5
(emphasis added).
That argument fails to persuasively identify any points that we
misapprehended or overlooked that might warrant a different outcome on
rehearing. In particular, the argument fails to address the substance of the
rejection. Even accepting as accurate the Appellant’s assertion that the
disputed term “encompasses a sensor that detects gas molecules,” Req. 5
(emphasis added), the rejection was based on ambiguity as to what else the
term might encompass, Dec. 4–5 (questioning whether the term is limited to
sensors that detect gas molecules or whether it also encompasses detection
of non-gaseous substances such as smoke particles). The Appellant’s
argument concerning the § 112(b) rejection fails to address that issue or to
otherwise provide clarity as to claim scope.
To the extent that the § 112(b) issue was indirectly addressed in the
Appellant’s arguments concerning § 112(a), we determined above that the
written description does not adequately define a sensor configured to detect
odors as being limited to sensors that detect gas molecules. The Appellant’s
assertion in the Request that the disputed term “encompasses” sensors that
detects gas molecules undermines the Appellant’s position because it
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highlights a lack of clarity as to what else the disputed term might
encompass.
For the foregoing reasons, the Request does not persuade us that we
misapprehended or overlooked anything that would warrant a different result
on rehearing. We note that, to the extent the Appellant’s intention is for the
disputed term to cover only sensors configured to detect gas molecules, it
appears that both § 112 rejections may be addressed by amending the claim
to more precisely recite what the sensor is configured to detect. See In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.”); see also In re
Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (affirming rejection, among
other reasons, because the appellant did not “show why, on close scrutiny,
the existing claim language really was as reasonably precise as the
circumstances permitted”).
CONCLUSION
The Decision has been reconsidered, but, for the reasons set forth
above, the Request is DENIED with regard to modifying the result of the
Decision.
Outcome of Decision on Rehearing:
Claims
Rejected
35
U.S.C. § Basis Denied Granted
1–8 112(a) Enablement 1–8
1–8 112(b) Indefiniteness 1–8
Overall
Outcome 1–8

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Final Outcome of Appeal after Rehearing:
Claims
Rejected
35
U.S.C. § Reference/Basis Affirmed Reversed
New
Ground
1–8 102(a)(1) Yuuji 1–8
1–8 112(a) Enablement 1–8
1–8 112(b) Indefiniteness 1–8
Overall
Outcome 1–8 1–8
DENIED