Ex Parte Jax

Board of Patent Appeals and Interferences

Jun 29, 2006

10461817 (B.P.A.I. Jun. 29, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PETER JAX
__________

Appeal No. 2006-1436
Application No. 10/461,817
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HEARD ON JUNE 7, 2006
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Before HAIRSTON, JERRY SMITH, and SAADAT, Administrative Patent
Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1
through 3.

Appeal No. 2006-1436
Application No. 10/461,817

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The disclosed invention relates to a sensor tube for
determining a concentration of a substance. The sensor tube
comprises a hard, pressure-resistant outer tube and a diffusion
layer covering the inside of the outer tube. The outer tube has
holes formed therein that extend from the outside of the outer
tube to the diffusion layer. The diffusion layer is permeable to
the noted substance that enters the holes in the outer tube.
Claim 1 is the only independent claim on appeal, and it
reads as follows:
1. A sensor tube for determining a concentration profile of
a substance along a path, comprising:

a hard, outer, pressure-resistant tube having an outside and
an inside;

a diffusion layer covering the inside of said outer tube,
said diffusion layer being permeable to the substance; and

said outer tube having holes formed therein extending from
the outside to said diffusion layer.

The reference relied on by the examiner is:
Recla 5,301,538 Apr. 12, 1994
Claims 1 through 3 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Recla.
Reference is made to the final rejection, the brief and the
answer for the respective positions of the appellant and the
examiner.
OPINION

We have carefully considered the entire record before us,
Appeal No. 2006-1436
Application No. 10/461,817

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and we will reverse the anticipation rejection of claims 1
through 3.
Anticipation is established when a single prior art
reference discloses expressly or under the principles of
inherency each and every limitation of the claims invention.
Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d
1943, 1946 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
Recla discloses a sensor tube 16 with an inner perforated
PVC conduit 12, a semipermeable membrane 14 wrapped around the
inner conduit 12, and an outer woven mesh sheath 15. Recla
states that the outer mesh sheath is used to “inhibit physical
damage to the tube” (column 3, lines 33 and 34), and that the
outer mesh sheath functions as “a protective woven mesh sheath
whose sole purpose is to protect the thin outer membrane” (column
4, lines 5 through 7).
According to the examiner (final rejection, page 3), the
outer woven mesh sheath 15 “while generally flexible, may be
considered at least locally hard and pressure resistant as in the
instant invention outer tube.”
The appellant’s response (brief, pages 9 and 10) is as
follows:
Appellant disagrees with the Examiner and in
addition to the declaration submitted on
August 18, 2004, enclosed herewith, is a
signed declaration under 37 C.F.R. § 1.132
Appeal No. 2006-1436
Application No. 10/461,817

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executed by Dr. Wolfgang Issel, which was
also submitted with the response dated
December 3, 2004, specifically traversing the
Examiner’s position that the mesh sheath (15)
of Recla is substantively hard and the
Examiner’s position that “the outer layer,
while generally flexible, may be considered
at least locally hard and pressure resistant
as in the instant invention outer tube” (page
3 of the Office action dated September 3,
2004).

The tube of Recla is definitely based upon
Issel (U.S. Patent No. 4,735,095) (“patented
design construction” column 3, line 30 of
Recla).

Accordingly, Dr. Issel is a competent expert
in providing conclusions about the tube. Dr.
Issel clearly stated that the mesh sheath of
Recla is neither pressure-resistant nor is it
hard as recited in the claims of the instant
application (see both declarations signed by
Dr. Issel).

In conclusion, appellant argues (brief, page 10), “the
declarations are of more relevance than the Examiner’s
conclusions and are more than sufficient to overcome the
rejections over Recla.”
Appeal No. 2006-1436
Application No. 10/461,817

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In response, the examiner maintains the position that the
outer woven mesh sheath 15 in Recla is “hard” because it inhibits
physical damage to the underground tube, and “must inherently
resist pressure and penetration at least to some degree over some
area” (answer, page 6).
In view of the evidence presented by appellant that the
outer woven mesh sheath 15 in Recla is not “hard,” and the lack
of evidence in the record to support the examiner’s position1
that the “generally flexible” sheath is also “hard” because it
“inhibits physical damage to the tube,” we find that appellant
has successfully traversed the use of Recla as an anticipating
teaching of the claimed invention. Thus, the anticipation
rejection of claims 1 through 3 is reversed.

1 Nothing in the record supports the examiner’s position that only a “hard”
outer tube will inhibit physical damage to the tube.
Appeal No. 2006-1436
Application No. 10/461,817

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DECISION

The decision of the examiner rejecting claims 1 through 3
under 35 U.S.C. § 102(b) is reversed.

REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MAHSHID D. SAADAT )
Administrative Patent Judge )

KWH/ce

Appeal No. 2006-1436
Application No. 10/461,817

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