`
`452 Fed.Appx. 998
`This case was not selected for
`publication in West's Federal Reporter.
`See Fed. Rule of Appellate Procedure 32.1
`generally governing citation of judicial
`decisions issued on or after Jan. 1, 2007.
`See also U.S.Ct. of App. Fed. Cir. Rule 32.1.
`United States Court of Appeals,
`Federal Circuit.
`
`In re Aleksandr L. YUFA.
`
`No. 2011–1417.
`|
`Feb. 8, 2012.
`
`Synopsis
`Background: Patentee appealed decision by the Board
`of Patent Appeals and Interferences in a reexamination
`proceeding, 2011 WL 1129892, holding claims in patent
`for a system for detecting particles in an airborne gas or
`a liquid invalid.
`
`[Holding:] The Court of Appeals held that claims were
`invalid as obvious, in light of a prior art Japanese patent
`application disclosing a system for measuring particle
`concentration in the air in a clean room.
`
`Affirmed in part, vacated in part, and remanded.
`
`West Headnotes (3)
`
`[1]
`
`Patents
`Measuring, testing, and indicating
`devices
`Claims in a patent for a system for detecting
`particles in an airborne gas or a liquid
`were invalid as obvious, in light of a prior
`art Japanese patent application disclosing a
`system for measuring particle concentration
`in the air
`in a clean room; Japanese
`application taught every element of the patent
`claims, except that the processing of the raw
`sensor data occurred at the computer in the
`
`application and in a remote detecting system
`in the claims. 35 U.S.C.A. § 103(a).
`
`Cases that cite this headnote
`
`[2]
`
`Patents
`Record; supplementation and additional
`proofs
`Court of Appeals will not consider evidence of
`commercial success offered for the first time
`on appeal and not part of the record before the
`Patent and Trademark Office (PTO).
`
`Cases that cite this headnote
`
`[3]
`
`Patents
`In general; utility
`US Patent 6,346,983. Invalid.
`
`Cases that cite this headnote
`
`*999 Appeal from the United States Patent and
`Trademark Office, Board of Patent Appeals and
`Interferences.
`
`Attorneys and Law Firms
`
`Aleksandr L. Yufa, of Colton, California, pro se.
`
`Raymond T. Chen, Solicitor, United States Patent and
`Trademark Office, of Alexandria, Virginia, for appellee.
`With him on the brief were Farheena Y. Rasheed and
`Sydney O. Johnson, Jr., Associate Solicitors.
`
`Before LOURIE, MOORE, and REYNA, Circuit Judges.
`
`Opinion
`
`PER CURIAM.
`
`**1 Aleksandr Yufa appeals the decision by the
`Board of Patent Appeals and Interferences (Board) in
`reexamination 90/008,387 holding claims 1 and 3–5 invalid
`for obviousness and claims 6–8 invalid for lack of
`written description. Because the Board correctly held that
`claims 1 and 3–5 would have been obvious, we affirm
`those rejections. Regarding claims 6–8, the U.S. Patent
`and Trademark Office (PTO) concedes that the written
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`CATERPILLAR EXHIBIT 1050
`CATERPILLAR v. WIRTGEN
`IPR2018-01091
`
`Page 1 of 4
`
`
`
`In re Yufa, 452 Fed.Appx. 998 (2012)
`
`description rejections should be withdrawn by the Board
`and thus we vacate and remand.
`
`of said particles, from said remote particle detecting
`system to said data processing and control system;
`
`BACKGROUND
`
`This appeal arises from an ex parte reexamination of U.S.
`patent no. 6,346,983. The specification describes a system
`for detecting particles in an airborne gas or a liquid.
`J.A. 66 col.1 ll.5–10. The system includes a computer
`that controls a remote detection system by wirelessly
`sending activation commands. J.A. 70 col.9 ll.3–24. The
`remote detection system includes sensors to determine
`the amount of particles in a sample, means to analyze
`and process the signal from the sensors, and a wireless
`communication mechanism to transmit the results back to
`the computer. J.A. 68 col.6 ll.60–65; J.A. 70 col.10 ll.46–
`55. The computer converts and displays the results. J.A. 70
`col.10 ll.60–65. Claim 1, amended during reexamination,
`is illustrative:
`
`A method for counting and measuring particles
`illuminated by a light beam, providing two-way wireless
`communication between a data processing and control
`system and a remote particle detecting system, said
`method comprising the steps of:
`
`...
`
`sensing by a light detecting means of a particle detecting
`means of said remote particle detecting system a light
`created by an intersection of said light beam and *1000
`said particles within a particle monitoring region and
`providing an output, which is effectively indicative of a
`size of said particles;
`
`processing said output by a signal processing system
`of said remote particle detecting system providing said
`measuring and said counting of said particles;
`
`forming in said signal processing system of said
`remote particle detecting system a data, containing an
`information about a quantity and said size of said
`particles;
`
`converting said data, containing said information about
`said quantity and said size of said particles to the form
`for wireless transmission;
`
`wireless transmitting of the converted data, containing
`said information about said quantity and said size
`
`....
`
`The Board rejected claims 1, 3, and 4 under 35
`U.S.C. § 103(a) based on a single reference, Japanese
`Unexamined Patent Application Publication No. H4–
`12248 (Mikami). Mikami discloses a system for measuring
`particle concentration in the air in a clean room. S.A. 612.
`The system includes a computer, measurement means, and
`FM radios for transmitting signals wirelessly. S.A. 615
`Fig 1. The computer issues commands wirelessly to the
`measurement means instructing it to take measurements.
`S.A. 613. The measurement means detects particles and
`sends a raw signal back to the computer. Id. The computer
`then determines the “cumulative number of dust particles”
`using the data from the measurement means. Id. In its
`background section, Mikami describes prior art robot-
`operated systems in which a single device included both
`sensor and signal processing systems to determine the
`amount of particles in a sample. S.A. 612.
`
`**2 The Board held that Mikami disclosed all of the
`limitations of claims 1, 3, and 4 except for “processing
`said output by a signal processing system of said remote
`particle detecting system” because Mikami performs
`this processing at the computer instead of the remote
`measurement means, S.A. 8. The Board found that the
`background disclosure in Mikami teaches this limitation
`because the robot-operated sensors included a detection
`system and processing means for determining the amount
`of particles. Id. The Board held that these disclosures
`rendered the claims obvious because the patent simply
`rearranged known elements. S.A. 9. Regarding claim 4,
`the Board held that Mikami discloses the claimed “tubular
`means,” “environmental assaying control means,” and
`“detection means” pointing to specific structures and
`functions in Mikami. S.A. 15–16. Regarding claim 5,
`which requires that each remote detection system have an
`identification code, the Board held that it would have been
`obvious over Mikami in view of U.S. patent no. 5,864,781
`(White). White discloses sensors with unique ID codes.
`White Abstract; col.2 ll.27–33. Finally, the Board rejected
`claims 6–8 for lack of written description support under
`35 U.S.C. § 112, ¶ 1.
`
`The applicant appeals. We have jurisdiction pursuant to
`28 U.S.C. § 1295(a)(1).
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`Page 2 of 4
`
`
`
`In re Yufa, 452 Fed.Appx. 998 (2012)
`
`DISCUSSION
`
`[1]
` Obviousness is a question of law that we review de
`novo. In re Gartside, 203 F.3d 1305, 1316 (Fed.Cir.2000).
`What a reference teaches and the motivation to combine
`are questions of fact. Id. at 1315–16; Para–Ordnance
`Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d 1085,
`1088 (Fed.Cir.1995). We uphold fact findings that are
`supported by substantial evidence. 5 U.S.C. § 706(2)(E)
`
`*1001 We agree with the Board that claims 1 and 3 would
`have been obvious based on the disclosure of Mikami. 1
`Mikami teaches every element of the claims except that
`the processing of the raw sensor data occurs at the
`computer in Mikami, but at the remote detecting system in
`the claims. For example, Mikami discloses measurement
`means positioned inside a clean room collecting data and
`sending this data wirelessly to a computer. S.A. 613. The
`computer processes this data to “[calculate] the cumulative
`number of dust particles.” Id. This is nothing more than
`a reconfiguration of a known system. We agree with
`the Board that this “ ‘simply arranges old elements with
`each performing the same function it had been known to
`perform’ and yields no more than one would expect from
`such an arrangement.” KSR Int'l Co. v. Teleflex, Inc., 550
`U.S. 398, 417, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007).
`
`The appellant argues that Mikami teaches away from the
`claimed invention citing a statement by an examiner that
`“Mikami taught that processing measurement data at the
`remote sensing location was possible, but preferred not
`to include the extra equipment at the remote location
`because it was quicker and more accurate to have most
`of the equipment outside of the location being measured.”
`Appellant's Br. 9–10 (quoting S.A. 1728). Substantial
`evidence supports the Board's factual finding that Mikami
`does not teach away from the claimed invention. Mikami
`is not concerned with the location of signal processing,
`rather, it addresses the issues associated with having a
`large apparatus in the clean room. S.A. 612 (“the space
`required for the robot to move placed restraints on
`the actual operations”). Mikami simply criticizes larger
`systems, and does not specifically address whether the
`signal processing function could be moved from the
`computer to the remote measurement means. Thus, there
`is substantial evidence that Mikami does not teach away
`from the claimed invention.
`
`**3 [2]
` The appellant's arguments regarding secondary
`considerations of nonobviousness do not rebut this strong
`prima facie case. For example, the appellant presents, as
`evidence of unexpected results, many technical reasons
`that the claimed invention is more efficient than prior art
`systems. Appellant's Br. 23–27; 60–61. But the appellant's
`unsupported arguments do not amount to evidence of
`unexpected results that would rebut the prima facie
`case for obviousness. Appellant similarly argues that
`the invention enjoyed commercial success. The appellant
`made no substantive arguments regarding commercial
`success before the PTO except for the statement: “The
`Product ... has a commercial success.” S.A. 1626. This
`conclusory statement was not supported by any evidence
`or even any additional argument. This is not sufficient
`to preserve the issue for appeal. We will not consider
`evidence of commercial success offered for the first time
`on appeal and not part of the record before the PTO.
`Therefore, we deem the argument regarding commercial
`success waived.
`
`Regarding claim 4, substantial evidence supports the
`Board's finding that Mikami discloses the claimed
`elements. The specification of the patent in reexamination
`provides very little description for the elements in
`question: “environmental assaying control means” and
`“tubular means.” The Board held that the function of the
`“environmental assaying control means” is to send an air
`sample to the detection *1002 means and the structure
`is box 41 of figure 6. S.A. 15–16. We agree that Mikami
`discloses this as the box structure surrounding laser beam
`8 that moves an air sample from the air entry point
`near reference number 7 toward the photomultiplier 11
`(which undisputedly corresponds to the detection means).
`Regarding the “tubular means,” the Board held that the
`function is to allow passage of the assayed air sample from
`the environmental assaying control means to the detection
`means and pointed to box 37 in figure 6 as corresponding
`structure. S.A. 15. The Board correctly held that chamber
`9 in Mikami corresponds to this limitation because it
`moves air from the environmental assaying control means
`to the photomultiplier 11.
`
`Regarding claim 5, substantial evidence supports the
`Board's finding that White discloses the additional
`element of an identification code for the remote detecting
`system. See White Abstract; col.2 ll.27–33. We agree with
`the Board that the claim would have been obvious because
`a person of ordinary skill in the art would recognize the
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`Page 3 of 4
`
`
`
`In re Yufa, 452 Fed.Appx. 998 (2012)
`
`advantages of using identification codes to differentiate
`between multiple remote detection systems.
`
`6–8, we vacate and remand for the Board to withdraw
`those rejections and take appropriate action.
`
`The Board also rejected claims 6–8 for lack of written
`description under 35 U.S.C. § 112 ¶ 1. The PTO concedes
`that these rejections are in error and “seeks remand to the
`Board for it to withdraw the written description rejection
`and take appropriate action.” Appellee's Br. 26. The
`Appellant agrees. Reply Br. 37.
`
`**4 Because substantial evidence supports the Board's
`fact findings and it correctly held that claims 1, 3, 4, and
`5 would have been obvious under 35 U.S.C. § 103(a), we
`affirm those rejections. Because the PTO concedes the
`impropriety of the written description rejections of claims
`
`AFFIRMED–IN–PART, VACATED–IN–PART, and
`REMANDED
`
`COSTS
`
`No costs.
`
`All Citations
`
`452 Fed.Appx. 998, 2012 WL 572957
`
`Footnotes
`1
`Claim 3 is an apparatus claim that is analogous to claim 1 and the analysis for each is identical.
`
`End of Document
`
`© 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`4
`
`Page 4 of 4
`
`
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