Ex parte Inoue

Board of Patent Appeals and Interferences

Aug 31, 2000

08220286 (B.P.A.I. Aug. 31, 2000)

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written for publication and is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIDEHIRO INOUE
____________
Appeal No. 1997-3857
Application No. 08/220,286
____________
ON BRIEF
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Before KRASS, BARRETT, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 8, which are all of the claims
pending in this application.
Appellant's invention relates to a thermistor with a gap
portion between the peripheral edge of the ohmic electrodes
and the peripheral edge of the thermistor body, an insulating
coating where the peripheral edge of the ohmic electrodes
contacts the thermistor body at the gap portion but not at the
peripheral edge of the thermistor body. Claim 1 is
Appeal No. 1997-3857
Application No. 08/220,286
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illustrative of the claimed invention, and it reads as
follows:
1. A thermistor device comprising:
a thermistor element body;
an ohmic electrode provided on a major surface of said
thermistor element body with its outer peripheral edge
positioned within an outer peripheral edge of said thermistor
element body, thereby defining a gap portion; and
an insulating coating formed at said gap portion at least
where said outer peripheral edge of said ohmic electrode is in
contact with said thermistor element body, said outer
peripheral edge of said thermistor body being free of said
insulating coating.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Shikama et al. (Shikama) 5,210,516 May
11, 1993
Claims 1 through 8 stand rejected under 35 U.S.C. § 103
as being unpatentable over Shikama.
Reference is made to the Examiner's Answer (Paper No. 19,
mailed April 16, 1997) for the examiner's complete reasoning
in support of the rejection, and to appellant's Brief (Paper
No. 18, filed March 5, 1997) for appellant's arguments
thereagainst.
OPINION
Appeal No. 1997-3857
Application No. 08/220,286
3
We have carefully considered the claims, the applied
prior art reference, and the respective positions articulated
by appellant and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of claims 1
through 8.
The examiner admits (Answer, pages 3-4) that Shikama has
no portion free from the insulative coating other than where
the electrodes are located. The examiner therefore asserts
(Answer, page 4) that "to cover or not cover additional
surfaces with the insulating material is a modification which
only requires routine skill in the art," and that "it would
have been obvious ... to provide the coating of Shikama et al.
on all portions of the body except for the outer peripheral
edge for the purpose of lowering the manufacturing cost of the
device." Further, the examiner states (Answer, page 5) that
the proposed modification is not contrary to the express
teachings of the reference because "one of ordinary skill in
the art would realize that in order to reduce cost, a
compromise to one advantage may be necessary in order to
achieve a desired result while other advantages are
maintained."
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Application No. 08/220,286
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The examiner is required to provide a reason from some
teaching, suggestion or implication in the prior art as a
whole, why one having ordinary skill in the pertinent art
would have been led to modify Shikama to arrive at the claimed
invention. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d
1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988), cert.
denied, 488 U.S. 825 (1988). These showings by the examiner
are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). The examiner's motivation for modifying Shikama in the
particular manner necessary to arrive at appellant's claimed
invention comes directly from appellant's specification (page
3, lines 3-6) and not from any teaching or suggestion in the
prior art. "Obviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor." Para-Ordnance Mfg., Inc. v. SGS Importers Int’l,
Inc., 73 F.3d 1085, 37 USPQ2d 1237, 1241 (Fed. Cir. 1995),
citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983).
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Application No. 08/220,286
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In addition, "a proposed modification [is] inappropriate
for an obviousness inquiry when the modification render[s] the
prior art reference inoperable for its intended purpose. In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)." In re Fritch, 972 F.2d 1260, 1265-1266 n.12, 23
USPQ2d 1780, 1783 n.12 (Fed. Cir. 1992). Shikama states
(column 2, lines 9-19) that the objects of the invention
include providing a thermistor which is protected from both
external force which cause cracks and chips of the substrates
(column 1, lines 41-46) and also gases which penetrate into
the substrate (column 1, lines 50-54) and which has little
heat leakage. Shikama repeatedly emphasizes that coating the
entire thermistor with glass, except where the electrodes are
located, in addition to preventing migration of silver ions,
prevents heat leakage from the thermistor, gas introduction
into the thermistor, cracking or chipping of the substrate, or
peeling off of the underelectrode. Thus, eliminating a
portion of the glass coating does not merely substitute one
benefit for another, as suggested by the examiner, but rather
is completely contrary to the express purpose of the
reference, as argued by appellant (Brief, page 3). Therefore,
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we cannot sustain the obviousness rejection of the claims over
Shikama.
CONCLUSION
The decision of the examiner rejecting claims 1 through 8
under 35 U.S.C. § 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1997-3857
Application No. 08/220,286
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