Ex parte Feucht et al.

Board of Patent Appeals and Interferences

May 24, 2000

08378838 (B.P.A.I. May. 24, 2000)

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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journal and (2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GERNOT FEUCHT, ANDREAS SCHLEICHER
and GEORG FRANK
________________
Appeal No. 1997-2925
Application No. 08/378,838
________________
HEARD: May 1, 2000
________________
Before KIMLIN, OWENS and LIEBERMAN, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
20, all the claims in the present application. Claim 1 is
illustrative:
Appeal No. 1997-2925
Application No. 08/378,838
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1. A sensor comprising a piezoelectric crystal with a
polyarylene thioether-containing coating.
The examiner relies upon the following references as
evidence of obviousness:
Strutz et al. (Strutz) 5,423,902 Jun. 13, 1995
Henrik M. Fog, "Piezoelectric Crystal Detector for the
Monitoring of Ozone in Working Environments," 57 Analytical
Chemistry no. 13, 2634-38 (1985)
Appealed claim 12 stands rejected under 35 U.S.C. § 112,
second paragraph. All the appealed claims stand rejected
under 35 U.S.C. § 103 as being unpatentable over Fog in view
of Strutz.
We will not sustain the examiner's rejection of claim 12
under 35 U.S.C. § 112, second paragraph. According to the
examiner, it is not clear what additional structure is
provided in claim 12 that makes the sensor suitable for
measurements in the recited fields. However, in making a
rejection under § 112, second paragraph, it is incumbent upon
the examiner, in the first instance, to demonstrate that one
of ordinary skill in the art would not understand the scope of
the claim when the claim language is read in light of the
specification and state of the prior art. In re Speed, 710
F.d. 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re
Appeal No. 1997-2925
Application No. 08/378,838
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Moore, 439 F.d. 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). In
the present case, the examiner has not satisfied this burden.
All that has been set forth is that the examiner, not one of
ordinary skill in the art, does not understand the particular
structures for sensors that are suitable for use in the fields
of occupational safety and health, emission measurements and
filter monitors.
We will also not sustain the examiner's rejection of the
appealed claims under 35 U.S.C. § 103. In order for the
collective teachings of Fog and Strutz to have made the
presently claimed subject matter obvious to one of ordinary
skill in the art within the meaning of § 103, Fog, the primary
reference, must provide a general teaching that a
piezoelectric crystal detector for monitoring ozone can be
made by coating a piezoelectric crystal with any polymer
coating that reacts with ozone in a nonreversible manner.
Then, and only then, would it have been obvious to utilize the
polyarylene thioether of Strutz, which is employed as a filter
for ozone, as a substitute for the polybutadiene exemplified
by Fog. However, we find that Fog falls considerably short of
providing such a general teaching regarding the coating
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Application No. 08/378,838
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material. Fog discloses that "[t]wo types of reactions may be
responsible for the monitoring of air pollutants using
piezoelectric detectors," namely, reversible and nonreversible
reactions (page 2635, column 1). In our view, Fog discloses
advantages and disadvantages of both types of reactions, and
limits the disclosure of an operable coating material to a
particular unsaturated hydrocarbon polymer, 1,4-polybutadiene.
While Fog may provide an invitation for one of ordinary skill
in the art to explore other polymeric coatings which enter
into nonreversible reactions with ozone, we do not find that
such an invitation is sufficient evidence of obviousness for
utilizing the polyarylene thioether disclosed by Strutz as a
filter.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Appeal No. 1997-2925
Application No. 08/378,838
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Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
ECK:clm
Appeal No. 1997-2925
Application No. 08/378,838
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William F. Lawrence, Esq.
Frommer, Lawrence & Haug, LLP
745 Fifth Ave.
New York, NY 10151