Ex parte Asjes

Board of Patent Appeals and Interferences

Apr 20, 2000

08078791 (B.P.A.I. Apr. 20, 2000)

1
Paper No. 20
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte RONALD J. ASJES
______________
Appeal No. 1997-1266
Application 08/078,791
_______________
ON BRIEF
_______________
Before HAIRSTON, KRASS and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 3, 5 through 9, 11, 12 and 15 through 24, all
claims pending in this application.
The invention relates to an apparatus and method for
determining the type of a battery according to its chemical
contents. In particular, and with regard to Figure 1, battery
10 is placed in an excitation coil 20 which generates an
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alternating magnetic field. This field is inductively
coupled, substantially by the battery, to sense coil 30, which
reflects the composition of the battery. Since many batteries
have a protective jacket made of steel, the large iron content
thereof dominates the electro-magnetic properties. The
invention saturates the steel jacket with a quasi-static
magnetic field which allows the magnetic induction for the
alternating magnetic field to be largely determined by the
interior of the battery.
The independent claim 1 is reproduced as follows:
1. Apparatus for determining the type of battery or
accumulator (10), the apparatus comprising at least one
excitation coil (20) coupled to energising [sic] means (21,
22, 23) for generating an alternating magnetic field and
thereby inducing an alternating current in said battery or
accumulator (10), means for placing the battery or accumulator
(10) in said alternating magnetic field and detection means
(30, 31, 32) for measuring induced current during the presence
of the battery or accumulator (10) in the alternating magnetic
filed, characterised [sic] in that the apparatus further
comprising means (41, 42; 24, 34) for establishing a quasi-
static magnetic field in the battery or accumulator (10)
during the measurement of the induced current, said quasi-
static magnetic field being applied for causing a substantial
saturation in at least a portion of ferromagnetic parts of the
battery or accumulator (10).
The Examiner relies on the following references:
DeLanty 2,346,830 Apr. 18, 1944
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Application 08/078,791
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TuXuan (PCT/EP) WO 91/15036 Oct. 3, 1991

Claims 1 through 3, 5 through 9, 11, 12 and 15 through 24
stand rejected under 35 U.S.C. § 103 as being unpatentable
over TuXuan in view of DeLanty.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 1 through 3, 7, 8, 9, 12,
16, 17 and 22 are properly rejected under 35 U.S.C. § 103.
Thus, we will sustain the rejection of these claims, but we
will reverse the rejection of claims 5, 6, 11, 15, 18 through
21, 23 and 24 for the reasons set forth infra.
At the outset, we note that Appellant has indicated on
page 7 of the brief that claims 1 through 3, 8, 9, 12, 16, 17
and 22 stand together, which we will indicate as group I and
select claim 1 as the representative claim. Also, Appellant
has indicated that claims 5, 6, 11, 15, 18 through 21 and 23
stand together, which we will indicate as group II and select
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Application 08/078,791
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claim 21 as the representative claim. The Examiner has
concurred with this grouping as indicated on page 2 of the
Answer. We further note that Appellant has not designated
claims 7 and 24 for either group, nor indicated that they
stand separately. Based on the content of claims 7 and 24,
and that they were not argued separately, we find that claim 7
should be placed in group I, being similar to claims 16 and
17. We further find that claim 24 should be placed in group
II, being similar to claim 21.
ANALOGOUS ART
Appellant argues that DeLanty is not analogous art.
Appellant maintains:
The DeLanty patent is concerned with the art of
determining whether there are flaws in metal tubes
and not sorting metal tubes according to their
composition. DeLanty is not concerned with even
sorting metal tubes, which are non-analogous to
batteries according to their compositions. Instead,
DeLanty is concerned with the non-analogous
procedure of determining whether there are any
defects present in metal tubes all of which have a
substantially identical composition. (Brief-page
9.)
The Examiner responds “DeLanty can be considered
analogous since the claimed invention, the device of TuXuan
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and the device of DeLanty all use an alternating magnetic
field to test an object.” (Answer-page 3.)
In determining whether a claim would have been obvious at
the time of the invention, the Examiner must first determine
the scope and content of the prior art. Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). "Although §
103 does not, by its terms, define the 'art to which [the]
subject matter [sought to be patented] pertains,' this
determination is frequently couched in terms of whether the
art is analogous or not, i.e., whether the art is 'too remote
to be treated as prior art.'" In re Clay, 966 F.2d 656, 658,
23 USPQ2d 1058, 1060 (Fed. Cir. 1992) citing In re Sovish, 769
F.2d 738, 741, 226 USPQ 771, 773 (Fed. Cir. 1985).
In making this determination, we must consider two
criteria. First, it must be determined if the prior art is
from the same field of endeavor, regardless of the problem
addressed. Secondly, even if the prior art is not in the same
field of endeavor, it must be determined whether the reference
still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Clay, supra, 966 F.2d
at 658-659,
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23 USPQ2d at 1060. With respect to the field of endeavor, we
agree with Appellant. Appellant’s sorting of batteries, or
even “testing” of batteries, for chemical content, is not
within the same field of endeavor as DeLanty’s testing of
tubes, or other metallic articles, for flaws. However,
DeLanty may still be analogous if it is "reasonably pertinent
to the particular problem with which the inventor is
involved." Id. See also
In re Paulsen, 30 F.3d 1475, 1481, 31 USPQ 2d 1671, 1675-76
(Fed. Cir. 1994).
The Examiner has not commented on whether DeLanty is
“reasonably pertinent to the particular problem with which the
inventor is involved”. Appellant’s problem is that metal
jackets (or tubes) interfere with the measurement of other
battery elements, i.e., internal chemical content. DeLanty
had a similar problem, the metal of the metal tubes
interfered with the measurement of other elements, i.e.,
internal defects. Thus, Appellant’s problem was the same as
DeLanty’s problem, and therefore, reasonably pertinent and
analogous.
Combinability
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Appellant argues that TuXuan does not teach establishing
a quasi-static magnetic field in the battery as claimed while
subjecting the battery to an alternating magnetic field.
Also, Appellant argues that it would not be obvious to combine
TuXuan with DeLanty since DeLanty is non-analogous art. We
have found, supra, that DeLanty is analogous art. As noted
supra, DeLanty solves the same problem, and we might add, in
the same way claimed by Appellant, by causing static magnetic
sturation of the interferring metal. Thus, we agree with the
Examiner that it would have been obvious to one of ordinary
skill in the art to have used DeLanty’s solution to the
problem in TuXuan, a combination that meets the requirements
of Appellant’s claim 1.
It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983).
Therefore, we find that the Examiner has shown that the
prior art suggested the desirability of the modification as
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Application 08/078,791
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suggested by the Examiner. Thus, we will sustain the 35
U.S.C.
§ 103 rejection of claim 1, and likewise the rejection of
claims 2, 3, 7, 8, 9, 12, 16, 17 and 22 which stand or fall
therewith in group I.
Turning to the group II claims with claim 21 as the
representative claim, Appellant argues:
In addition, there is no teaching or suggestion
of energizing the excitation coil with an
alternating magnetic field in which the minimum
frequency is about 1kHz. The maximum frequency
employed in Tu Xuan 600 Hz, shown in Fig. 4, is a
little more than 10% of the minimum frequency
employed in the apparatus and method defined by
these claims. (Brief-page 9.)
The Examiner’s position is:
The specific frequency used and sorting by weight
and size are considered obvious design
considerations since these limitations are old and
known in the art.
(Emphasis added.)(Answer-page 3.)
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference, common knowledge or unquestionable
demonstration. Our reviewing court requires this evidence in
order to establish a prima facie case. In re Knapp-Monarch
Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re
Appeal No. 1997-1266
Application 08/078,791
We note that several of the claims, including claims for1
which the rejection has been reversed, contain the language
“about” and “preferably about” which could be considered
ambiguous. Also, in claim 22, last paragraph, “The battery”
should be --the battery--, and claims should use the U.S.
spelling of such words as “energizing.”
9
Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
Since the Examiner has supplied no such evidence or
demonstration of common knowledge as to the specific
frequencies claimed, we will not sustain the
35 U.S.C. § 103 rejection of claim 21, and likewise claims 5,
6, 11, 15, 18 through 20, 23 and 24, which stand or fall
together in group II.
In view of the foregoing, the decision of the Examiner
rejecting claims 1 through 3, 7, 8, 9, 12, 16, 17 and 22 under
35 U.S.C. § 103 is affirmed; however, the decision of the
Examiner rejecting claims 5, 6, 11, 15, 18 through 21, 23 and
24 under 35 U.S.C. § 103 is reversed. 1
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART

Kenneth W. Hairston )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Stuart N. Hecker )
Administrative Patent Judge )

SNH/cam
Appeal No. 1997-1266
Application 08/078,791
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Corporate Patent Counsel
U. S. Philips Corp.
580 White Plains Road
Tarrytown, NY 10591