Ex Parte Goertz et al

Board of Patent Appeals and Interferences

May 16, 2002

08675938 (B.P.A.I. May. 16, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANZ-JOSEF GOERTZ and DIETMAR SCHMITT
____________
Appeal No. 1999-1926
Application No. 08/675,938
____________
ON BRIEF
____________
Before HAIRSTON, KRASS, and LALL, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the Examiner's final rejection of claims 1, 4, 7-11, 20, 21,
23-27, 30-38 and 42, the only pending claims in this application.
The disclosed invention is directed to a waveguide-resonator
device which has a waveguide, a dielectric insert inside a
waveguide, several clamping bodies for fixing the dielectric
insert inside the waveguide, the clamping bodies being arranged
between the waveguide and an outer periphery of the dielectric
insert and contact with the dielectric inset only tangentially,
Appeal No. 1999-1926
Application No. 08/675,938
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at least one supporting element for the dielectric insert for
fixing it in a direction deviating from the fixing direction of
the dielectric insert by the clamping body. See Figure 1 of the
disclosure. A further understanding of the invention can be
achieved by the following claim.
1. A waveguide-resonator device, comprising a waveguide; a
dielectric insert arranged inside said waveguide and formed as a
disc-shaped cylinder; a plurality of clamping bodies for fixing
said dielectric insert inside said waveguide in a fixing
direction, said clamping bodies being arranged between said
waveguide and an outer periphery of said dielectric insert and
contacting said dielectric insert only tangentially; and a
supporting element for fixing said dielectric insert in a
direction which deviates from said fixing direction of said
dielectric insert by said clamping bodies, at least one of said
clamping bodies being mounted on said waveguide so that a
changeable clamping pressure relative to said dielectric insert
is adjustable, said clamping bodies being formed as bars which
project toward an outer circumference of said cylinder and contact
said insert only tangentially.
The Examiner relies on the following references:
Mizumura et al. (Mizumura) 4,609,883 Sep. 2, 1986
Hendrick et al. (Hendrick) 5,034,711 July 23, 1991
Shen 5,324,713 June 28, 1994
Dorothy et al. (Dorothy) 5,457,087 Oct. 10, 1995
(filed Dec. 3, 1993)
Claims 9-11, 23, 26, 30, 31, 34, 37 and 38 stand rejected
under 35 U.S.C. § 102 as being anticipated by Shen.
Claims 1, 4, 7, 8, 20, 21, 24, 33, 35 and 36 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Shen in view of
Hendrick.
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Application No. 08/675,938
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Claims 27 and 32 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Shen in view of Dorothy.
Claim 25 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Shen in view of Hendrick and Dorothy.
Claim 42 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Mizumura.
Rather than repeat the arguments of Appellants and the
Examiner, we make reference to the brief and the answer for their
respective details thereof.
OPINION
We have considered the rejections advanced by the Examiner
and the supporting arguments. We have, likewise, reviewed the
Appellants’ arguments set forth in the brief.
We affirm.
At the outset, we note that Appellants state (brief at
page 11) that independent claims 1, 9, 37, 38 and 42 are
separately patentable. Of these elected claims, claims 9, 37
and 38 are rejected under 35 U.S.C. § 102 and claims 1 and 42 are
rejected under 35 U.S.C. § 103.
Appeal No. 1999-1926
Application No. 08/675,938
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REJECTIONS UNDER 35 U.S.C. § 102
A prior art reference anticipates the subject of a claim
when the reference discloses every feature of the claimed
invention, either explicitly or inherently, See Hazani v. Int'l
Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed.
Cir. 1997) and RCA Corp. v. Applied Digital Data Sys., Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
Appellants discuss claims 9, 37 and 38 as a single group at
page 12 of the brief. We take broad claim 38 as the exemplary
claim for this group. The Examiner gives a detailed explanation
the of anticipation rejection at pages 4 and 5 of the Examiner’s
answer by Shen. The Examiner relies specifically on Figure 7A
and 7B of Shen. Appellant argues (brief at page 12) that “[t]his
reference [Shen] discloses a device with means for adjusting a
clamping pressure only in an axial direction of the cylinder
using plates and springs. There are no means for adjusting
clamping pressure in a transverse direction with bars projecting
towards the outer circumference of this cylinder.” However, we,
like the Examiner, find that Shen in Figure 7A and 7B shows the
claimed structure elements recited in claim 38, for example, see
dielectric insert at 30, supporting element at 20, a holder at 70
which holds the supporting element 20 and which is mounted on an
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inner surface of the waveguide 27. Note the clamping means at 35
which are capable of applying the clamping pressure on the
dielectric insert 30 for its flat rigid fixing relative to the
supporting element. Therefore, we sustain the anticipation
rejection of claims 9, 37 and 38 by Shen.
REJECTIONS UNDER 35 U.S.C. § 103
While there must be some teaching, reason, suggestion, or
motivation to combine existing elements to produce the claimed
device, it is not necessary that the cited references or prior
art specifically suggest making the combination (see B.F.
Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577,
1583, 37 USPQ2d 1314, 1319 (Fed. Cir. 1996) and In re Nilssen,
851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)) as the
appellant would apparently have us believe. Rather, the test for
obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art. See
In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Moreover, in evaluating such references it is
proper to take into account not only the specific teachings of
the references but also the inferences which one skilled in the
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art would reasonably be expected to draw therefrom. In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Two different pieces of evidence are used to reject the
other two independent claims, 1 and 42.
Shen and Hendrick
The Examiner rejects claim 1 under this combination at pages
5 and 6 of the Examiner’s answer. The Examiner asserts that Shen
discloses all the limitations of claim 1 except for the clamping
bodies in Shen do not have a changeable clamping pressure on the
dielectric insert. However, the Examiner asserts that Hendrick
in Figure 2 discloses clamping bodies 11 for dielectric insert 12
in waveguide 10, with the clamping pressure of the clamping
bodies 11 being adjustable with screw threads 11A as shown in
Figure 3. The Examiner uses this teaching of Hendrick in
modifying the assembly shown by Shen in Figures 7A and 7B.
Appellants argue (brief at page 13) that “Hendrick does not use
clamping bodies for adjusting the clamping pressure onto the
dielectric insert. Instead, he uses a special guiding holes to
fix the dielectric insert in a defined position. The present
invention does not use holes in the dielectric insert.” The
Examiner responds (answer at page 9) that “[t]hat argument is
unpersuasive because the Examiner has used the Hendrick
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reference, ... to provide an exemplary teaching of the
obviousness of clamping bodies having an adjustable clamping
pressure in a transverse direction. Therefore, the Shen/Hendrick
combination has no ‘holes in the dielectric insert.’” We agree
with the Examiner’s position. While modifying the Shen reference
an artisan is not supposed to bodily incorporate the structure of
the secondary reference into the main reference, rather an
artisan would use the teaching of adjustable pressure in
modifying the clamping pressure applied by 35 on the insert 30
in Shen. Hendrick provides the motivation for a variable
pressure on the insert to account for changes caused by
temperature, see col. 1, lines 25-34. Therefore, we sustain the
obviousness rejection of claim 1 over Shen and Hendrick.
Mizumura
The Examiner gives a lucid explanation of the rejection of
claim 42 over Mizumura at page 8 of the Examiner’s answer.
Appellants argue (brief at page 13) that “[c]laim 42 ... defines
that the waveguide has a projection formed in direction of its
diameter, so that the plate abuts against the projection. This
feature is not disclosed in the reference ....” We disagree with
Appellants. Clearly, the waveguide 42 has a projection 42A which
extends along the diameter of the waveguide, and that projection
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abuts against plate 14 which is supporting the dielectric insert
18 (see Figure 4 of Mizumura). Furthermore, to use glue to
attach the insert to the plate would have been obvious.
Therefore, we sustain the obviousness rejection of claim 42 over
Mizumura.
In conclusion, since Appellants have not presented any
arguments relating to any other claims individually and we have
sustained the rejection of the independent claims taking into
consideration the arguments presented by the Appellants
respectively, we sustain the anticipation rejection of claims
9-11, 23, 26, 30, 31, 34, 37 and 38 by Shen; the obviousness
rejection of claims 1, 4, 7, 8, 20, 21, 24, 33, 35, and 36 over
Shen and Hendrick; claims 27 and 32 over Shen and Dorothy; claim
25 over Shen, Hendrick and Dorothy; and claim 42 over Mizumura.
The decision of the Examiner rejecting claims 1, 4, 7-11,
20, 21, 23-27, 30-38 and 42 is affirmed.
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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
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
PSL/jrg
Appeal No. 1999-1926
Application No. 08/675,938
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