Ex Parte JACH

Board of Patent Appeals and Interferences

Sep 22, 2003

09085300 (B.P.A.I. Sep. 22, 2003)

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written for publication and is not binding precedent of the Board.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 OLAF JACH
_____________
Appeal No. 2001-2188
Application No. 09/085,300
______________
ON BRIEF
_______________
Before JERRY SMITH, RUGGIERO, and SAADAT, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 7-10, 12, and 14-19. Claims 11 and 13 have been canceled.
Claims 1-6 stand withdrawn from consideration as being directed
to a non-elected invention.
The claimed invention relates to a method of calibrating
sensor elements for a limit current probe in which a value of
pump current for a selected sensor element is measured at a
preselected pump voltage. An optimum diameter of a gas intake
Appeal No. 2001-2188
Application No. 09/085,300
2
orifice for an entire lot of sensor elements is determined by
correlating an optimum pump current value with the measured pump
current and the diameter of the intake orifice of the selected
sensor element. The diffusion resistance of a diffusion barrier
of the sensor elements is adjusted by modifying the diameter of
the gas intake orifice in accordance with the determined optimum
gas intake orifice diameter.
Claim 7 is illustrative of the invention and reads as
follows:
7. A method of calibrating sensor elements for limit
current probes, comprising the steps of:
(a) measuring a value of a pump current of one of the
sensor elements at a selected pump voltage, a gas intake
orifice of the one of the sensor elements having a
predetermined diameter;
(b) correlating the measured value of the pump current
with the predetermined diameter of the gas intake orifice
and an optimum pump current; and
(c) calibrating the sensor elements as a function of
the correlating step, the calibrating step being performed
during a manufacturing process of the sensor.
No prior art references have been relied upon by the
Examiner.
As the sole rejection by the Examiner before us, claims 7-
10, 12, and 14-19 stand finally rejected under 35 U.S.C. § 112,
first paragraph, as being based on an inadequate disclosure.
Appeal No. 2001-2188
Application No. 09/085,300
1 The Appeal Brief was filed September 18, 2000 (Paper No. 19). In
response to the Examiner’s Answer dated November 17, 2000 (Paper No. 20), a
Reply Brief was filed January 23, 2001 (Paper No. 21), which was acknowledged
and entered by the Examiner as indicated in the communication dated January
30, 2001 (Paper No. 22).
3
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for their
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, and the evidence and
arguments relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that Appellant’s specification in this application describes the
claimed invention in a manner which complies with the
requirements of 35 U.S.C. § 112. Accordingly, we reverse.
At the outset, we note that, from the arguments presented in
the Answer, the Examiner is relying on both the “written
description” and “enabling” clauses of the first paragraph of 35
Appeal No. 2001-2188
Application No. 09/085,300
4
U.S.C. § 112 in establishing a basis for the rejection. The
Examiner’s assertion of lack of compliance with the “written
description” requirement was a result of amendments to the
original disclosure and claims as detailed at pages 2-4 of the
Answer. The function of the description requirement of the
first paragraph of 35 U.S.C. § 112 is to ensure that the inventor
has possession, as of the filing date of the application relied
on, of the specific subject matter later claimed by him. In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
Initially, the Examiner contends that the amendment to pages
3 and 6 of the specification relating to the mathematical symbol
used to signify the relationship between the diameter dB of the
gas intake orifice and the pump current IP resulted in an
improper attempt to add new matter to the specification. In
making this amendment, in which the symbol “
,” i.e., a single
wavy line over two horizontal lines, used in the original
disclosure was changed to two wavy lines over a single horizontal
line, Appellant attempted to conform the present disclosure to
the symbol used in the corresponding German priority
applications.
We agree with Appellant that the symbol change in question
is merely an attempt to clarify any possible ambiguity between
Appeal No. 2001-2188
Application No. 09/085,300
5
the symbology used in the U.S. and German applications. An
amendment to correct an obvious error does not constitute new
matter where one skilled in the art would not only recognize the
existence of error in the specification, but also the appropriate
correction. In re Oda, 443 F.2d 1200, 1203, 170 USPQ 268, 270-71
(CCPA 1971). In our view, whatever the mathematical symbol used,
the relationship between the gas intake diameter and the pump
current is clear when considering the entirety of Appellant’s
disclosure. From the detailed disclosure at pages 5 and 6 of
Appellant’s specification, the described ratio relationship
establishes that the measured value of pump current IM at a
predetermined gas intake orifice diameter DP is related in the
same way that an optimum or target pump current IOPT is related to
an optimum gas intake orifice diameter DOPT.
We further agree with Appellant that, contrary to the
Examiner’s contention, the term “optimum pump current” is
described with sufficient particularity in the specification so
as to satisfy the written description requirement of the statute.
It is apparent from our reading of the specification that the
“optimum pump current” is a target value that is determined
dependent on various factors including, for example, the desired
exhaust gas ratio for a particular application. It is also clear
Appeal No. 2001-2188
Application No. 09/085,300
6
from Appellant’s disclosure that in the disclosed ratio
relationship, the optimum gas intake orifice diameter can be
determined since it has the same relationship to the “optimum” or
target pump current as does the known value of measured pump
current to the known value of the selected gas intake orifice
diameter. “It is not necessary that the application describe the
claim limitations exactly, . . . but only so clearly that persons
of ordinary skill in the art will recognize from the disclosure
that appellants invented processes including those limitations.”
In re Wertheim, 541 F.2d at 262, 191 USPQ at 96 citing In re
Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284 (CCPA 1973).
Furthermore, the Federal Circuit points out that "[i]t is not
necessary that the claimed subject matter be described identical-
ly, but the disclosure originally filed must convey to those
skilled in the art that applicant had invented the subject matter
later claimed.” In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985), citing
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). In our opinion, under the factual situation presented in
the present case, Appellant has satisfied the statutory written
description requirement because he was clearly in possession of
the invention at the time of filing of the application.
Appeal No. 2001-2188
Application No. 09/085,300
7
As to the Examiner’s assertion of lack of enablement of
Appellant’s disclosure, we note that, in order to comply with the
enablement provision of 35 U.S.C. § 112, first paragraph, the
disclosure must adequately describe the claimed invention so that
the artisan could practice it without undue experimentation. In
re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974);
In re Brandstadter, 484 F.2d 1395, 1404, 179 USPQ 286, 293 (CCPA
1973); and In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA
1962). If the Examiner has a reasonable basis for questioning
the sufficiency of the disclosure, the burden shifts to Appellant
to come forward with evidence to rebut this challenge. In re
Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973), cert.
denied, 416 U.S. 935 (1974); In re Brown, 477 F.2d 946, 950, 177
USPQ 691, 694 (CCPA 1973); and In re Ghiron, 442 F.2d 985, 992,
169 USPQ 723, 728 (CCPA 1971). However, the burden is initially
upon the Examiner to establish a reasonable basis for questioning
the adequacy of the disclosure. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re Angstadt, 537
F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976); and In re
Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA 1975).
The Examiner has questioned (Answer, page 5) the sufficiency
of Appellant’s disclosure in that “ . . . the originally filed
Appeal No. 2001-2188
Application No. 09/085,300
2 While Appellant’s describes a ratio relationship of target diameter to
preselected diameter of gas intake orifice at page 3 of the specification, the
ratio relationship described at page 6 of the specification utilizes a surface
area parameter of the gas intake orifice which takes into consideration the
thickness h of the diffusion barrier.
8
disclosure does not provide sufficient teachings to allow for the
practice of the claimed subject matter without undue
experimentation.” In particular, the Examiner questions (id., at
4) how the optimum surface area value of 0.0819 mm2 is determined
from the relationships set forth at page 6 of Appellant’s
specification. It is apparent to us, however, that, following
Appellant’s description of the ratio relationship between
measured pump current at a preselected surface area and an
optimum surface area at an optimum or target pump current, the
calculation is straight forward. In other words, since the
preselected surface area 0.0625 mm2 is related to measured pump
current 3.65 mA in the same way that the target pump current of
4.8 mA is related to optimum surface area, then solving for the
unknown optimum surface area would yield a result of 0.0819 mm2.2
Appeal No. 2001-2188
Application No. 09/085,300
9
In view of the above, we find that the Examiner has not
established a reasonable basis for challenging the sufficiency of
the instant disclosure. While some experimentation by artisans
may be necessary in order to practice the invention, we find that
such experimentation would not be undue.
In conclusion, in view of the above discussion, we will not
sustain the rejection of claims 7-10, 12, and 14-19 under the
first paragraph of 35 U.S.C. § 112. Accordingly, the Examiner’s
decision rejecting claims 7-10, 12, and 14-19 is reversed.

REVERSED

JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JFR/hh
Appeal No. 2001-2188
Application No. 09/085,300
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