Ex Parte Beer et al

Patent Trial and Appeal Board

Aug 2, 2018

13809413 (P.T.A.B. Aug. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/809,413 04/16/2013
95683 7590 08/06/2018
Ley dig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Sebastian Beer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
813104 1001
EXAMINER
DEVITO, ALEX T
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
08/06/2018 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIAN BEER, THOMAS ZIEMANN, and
ALOIS FRIEDBERGER
Appeal2018-000908
Application 13/809,413
Technology Center 2800
Before BRADLEY R. GARRIS, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-000908
Application 13/809,413
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
11-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
"The invention relates to a method and a device for detecting
explosive-substance particles in a gas flow[.]" Spec. ,r 2. Specifically, the
specification describes a method in which "the gas flow is conducted
through an adsorption net ... in such a way that explosive-substance
particles are adsorbed thereon, the adsorption net is subsequently heated to a
heating temperature ... [to] desorb, and a gas flow containing the
accumulated explosive-substance particles is supplied to a detector for
detection thereof." Id.
Claimll, reproduced below, is illustrative of the claimed subject
matter:
11. A method for detecting explosive substance particles in a
gas flow, the method comprising:
passing the gas flow through a flow duct for a specified
time period so as to adsorb explosive-substance particles of a
type which is to be detected in the gas flow on a microfilter
disposed in the flow duct, the microfilter having a pore size that
is smaller than a particle size of the explosive-substance
particles, the microfilter being disposed across a cross-section of
the flow duct such that the explosive-substance particles having
1 The real party in interest is identified as EADS Deutschland GmbH.
Appeal Brief of May 5, 2017 ("Br."), 1.
2 Non-Final Office Action of July 14, 2016 ("Act."). The record shows a
Non-Final Rejection of October 7, 2014 and a Final Rejection of May 5,
2015. In this opinion, we also refer to the Examiner's Answer of September
5, 2017 ("Ans.") and the Reply Brief of November 3, 2017 ("Reply Br.").
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Application 13/809,413
the particle size that is larger than the pore size of the micro filter
are adhered to the microfilter and cannot flow downstream from
the microfilter in the flow duct;
heating the microfilter to a heating temperature so as to
desorb the explosive-substance particles from the microfilter;
supplying a gas flow comprising the desorbed explosive-
substance particles to a detector so as to detect the explosive-
substance particles.
Br. 17 (Claims Appendix).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Trujillo
Bradshaw
Rauber
Griffith
Kashima
Combes
Zaalberg
us 3,933,431
us 4,317,995
us 5,492,577
US 6,197,575 Bl
US 2004/0124352 Al
US 2010/0130796 Al
US 2012/0175304 Al
REJECTIONS
Jan.20, 1976
Mar. 2, 1982
Feb.20, 1996
Mar. 6, 2001
Jul. 1, 2004
May 27, 2010
Jul. 12, 2012
Claims 11-15 and 17 are rejected under 35 U.S.C. § I02(b) (pre-AIA)
as being anticipated by Trujillo, with evidence provided by Rauber. Act. 2.
Claims 16 and 20 are rejected under 35 U.S.C. § I03(a) (pre-AIA) as
being unpatentable over Trujillo in view of Bradshaw. Act. 5.
Claims 18, 19 and 21 are rejected under 35 U.S.C. § I03(a) (pre-AIA)
as being unpatentable over Trujillo in view of Kashima. Act. 7.
Claim 22 is rejected under 35 U.S.C. § I03(a) (pre-AIA) as being
unpatentable over Trujillo and Bradshaw in further view of Kashima. Act.
8.
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Application 13/809,413
Claim 23 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as being
unpatentable over Combes in view of Griffith. Act. 9.
Claim 24 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as being
unpatentable over Combes and Griffith in further view of Zaalberg. Act. 10.
Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as
being unpatentable over Trujillo in view of Zaalberg. Act. 10.
Claim 27 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as being
unpatentable over Trujillo and Bradshaw in further view of Zaalberg. Act.
11.
OPINION
Claim J l3
Appellants argue that the Examiner reversibly erred in finding claim
11 anticipated because "the type of mercury filtered in Trujillo would not be
considered an explosive substance." Br. 6. With regard to the teaching in
Rauber that "initiating explosives known in the prior art" may include "such
heavy metals ... as ... mercury," (Rauber 1:17-19 (cited in Act. 3))
Appellants argue that "the mercurial vapors of Trujillo have a different size
and chemical structure than the explosive substance which contains mercury
with other components in a solid compound in Rauber." Id.
The Examiner responds that the broadest reasonable interpretation of
the claim term "explosive substance particle" does not exclude the various
3 Appellants do not argue claims 12-15 and 17 separately for the
anticipation rejection and they stand or fall with claim 11 for the anticipation
rejection. See Br. 6-8; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Application 13/809,413
forms of mercury taught in Trujillo and Rauber. Ans. 2. Appellants do not
propose their own claim construction. Reply Br. 2-3; see also Br. 6. We
accordingly sustain the Examiner's rejection.
Claims 16 & 20
The disputed claim limitation for claims 16 and 20 is "the gas flow is
circulated in a closed circuit so as to flow through the microfilter and pass
the detector" and "a circulation duct that is configured to be blocked off
from the flow duct during a collection mode and connected to the flow duct
during a detection mode so as to form a closed annular duct," respectively,
which the Examiner finds to be taught by Bradshaw. Br. 8 ( citing to Act. 5-
6); see Ans. 3 ( citing to Bradshaw for the rejection).
Appellants argue that the cited teaching of Bradshaw "is not
combinable with the device of Trujillo" because "the collected mercury in
Trujillo cannot be tested using a detector disposed in a duct" and "the
reversing of flow through the device of Trujillo" would result in the mercury
components being combined again. Reply Br. 3. All of the features of the
secondary reference, however, need not be bodily incorporated into the
primary reference and the skilled artisan is not compelled to blindly follow
the teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F .2d
881, 889 (Fed. Cir. 1984).
Appellants also argue that "there would be no apparent reason" to
combine the references because the proposed combination would result in
certain disadvantages including "increasing the already long breakthrough
times." Br. 8-9; Reply Br. 3. Neither claim 16 nor claim 20 recites a
particular breakthrough time. Unclaimed features cannot impart
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Application 13/809,413
patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998). "[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellants do not
argue that the addition of a circulation duct to the prior art filter yields more
than a predictable result, and the Examiner's rejection of claims 16 and 20 is
sustained.
Claim 25 & 26
The claim limitation at issue of claims 25 and 26 is a "microfilter
[that] is a membrane with a thickness in a range of approximately 1 µm"
which the Examiner finds to be taught by Zaalberg. Act. 10 ( citing Zaalberg
,r,r 9, 11 ).
Appellants do not dispute the teaching in Zaalberg but argue that the
proposed combination would be inoperable because "Trujillo teaches that
the thicker the filter is, the more metallic mercury vapor it will collect and
the shorter the breakthrough time will be." Br. 12 ( citing Trujillo 6:34--60);
Reply Br. 4 ( citing the same). Appellants, however, do not sufficiently
explain why claims 25 and 26, neither of which recites a breakthrough time,
is patentability distinguished from the prior art based on the argument
related to the breakthrough time. Appellants also do not sufficiently explain
why Trujillo's statement that "[b ]reakthrough times are dependent on the
configuration of the sampling tube, i.e., length of sorbent section, packing,
etc., the concentration and type of vapor passing through the adsorber
material, and the flow rate of the vapor through the sampling tubes" (Trujillo
6:40-44) teaches away from decreasing the recited thickness. See Br. 12;
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Application 13/809,413
see also Reply Br. 4. That is, Appellants do not sufficiently explain why a
person of ordinary skill, upon reading Trujillo - which discusses various
parameters but not the thickness at issue - would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) (holding that "in general, a reference will
teach away if it suggests that the line of development flowing from the
reference's disclosure is unlikely to be productive of the result sought by the
applicant"). No reversible error has been identified in the Examiner's
findings here.
Claim 23
Claim 23 recites: A method for producing a microfilter for use in a
device for detecting explosive-substance particles in a gas flow, the method
comprising forming pores in the microfilter by a photolithography etching
process. Br. 19 (Claims Appendix).
Appellants argue that while Combes describes "forming the pattern of
[a micromachined] heater configuration by deep reactive ion etching"
(Combes ,r 82 (cited in Act. 9)), the pores formed in Combes "are actually
multiple orders of magnitude too large to be capable of adhering explosive-
substance particles in a gas flow." Br. 14.
As the Examiner points out, claim 23 does not recite such a capability
(Ans. 4)- a point not disputed by Appellants (see Reply Br. 5). Such an
unclaimed feature cannot impart patentability. See Hiniker Co., 150 F.3d at
1369.
As to Appellants' argument that Griffith is non-analogous art, the
unelaborated statement that "Griffith is neither in the field of the invention,
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Application 13/809,413
nor relevant to any problem solved by the invention" (Br. 14) does not
provide evidence to support reversible error in the Examiner's findings.
Appellants do not adequately explain, with evidentiary support, "( 1) whether
the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." In re Clay, 966 F.2d 656,
658-59 (Fed. Cir. 1992).
Remaining Claims
With regard to claims 18, 19,21 4, 22, 24, 27, Appellants do not
present arguments separate from those addressed supra. See Br. 10, 11, 13,
15. The Examiner's rejections of these claims are sustained for the reasons
provided for claims 11-17, 20, 23, 25, and 26.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
4 The Examiner and Appellants agree that claim 21 should be included with
the rejection of claim 22. Compare Br. 10, with Ans. 3.
8