Ex Parte Knudsen

Board of Patent Appeals and Interferences

Sep 17, 2003

09117603 (B.P.A.I. Sep. 17, 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written for publication and is not binding precedent of the Board.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 OLE FRIIS KNUDSEN
____________
Appeal No. 2002-0552
Application No. 09/117,603
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and MCQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claim 3, the only claim remaining in this
application. Claims 1, 2 and 4 have been canceled.
As noted on page 1 of the specification, appellant's
invention relates to a housing for an electrical device, such as
a measuring transducer, wherein at least one electrical lead is
introduced into the housing through the wall of the housing and
is sealed against the wall by a sealant. More particularly,
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Application No. 09/117,603
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appellant's invention is directed to the use of a specific
sealant material, i.e., tar, which appellant has found to be
simpler and more reliable than prior art sealants and which does
not impair the suitability of the electrical leads for soldering.
In the paragraph bridging pages 3-4 of the specification,
appellant notes that the tar used can be "roofing tar" and that
such tar is fluid at normal ambient temperatures, spreads out
easily and forms a circular ring which seals the terminals (4)
and lead (3) completely against the wall of the housing,
penetrates by capillary action into any small voids between the
conductors and the feedthrough openings of the housing and into
crevices and cracks, and when dry, forms a solid sealed
connection between the terminal/conductor and the wall of the
housing, without impairing the suitability of the electrical
leads for soldering. A copy of claim 3 can be found in the
Appendix to appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting claim 3 are:
Suzuki et al. (Suzuki) 5,637,007 Jun. 10, 1997
Arnett et al. (Arnett) 5,942,333 Aug. 24, 1999
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki in view of Arnett.
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Application No. 09/117,603
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Rather than attempt to reiterate the examiner's commentary
with regard to the above-noted rejection and the conflicting
viewpoints advanced by appellant and the examiner regarding the
rejection, we make reference to the examiner's answer (Paper No.
20, mailed October 19, 2001) for the reasoning in support of the
rejection, and to appellant's brief (Paper No. 19, filed August
20, 2001) and reply brief (Paper No. 21, filed January 18, 2002)
for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claim 3,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determination that
the examiner's rejection of claim 3 under 35 U.S.C. § 103(a) will
not be sustained. Our reasons follow.
The examiner's position (answer, pages 3-5) is that Suzuki
discloses all of the subject matter of claim 3, except that it
does not identify the resin sealant (10) disposed between the
leads (3), terminals (4, 4A) and housing (2) therein as being
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Application No. 09/117,603
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tar. To account for this difference, the examiner has made the
following observations on page 4 of the answer,
[t]he definition of "tar" is (a) "a dark brown or black
bituminous usually odorous viscous liquid obtained by
destructive distillation of organic material . . ." or
(b) "a substance in some respects resembling tar . . .
." Merriam-Webster's Collegiate Dictionary, 10th ed.,
1993 (emphasis added). Bitumen is defined as "any of
various mixtures of hydrocarbons (as tar) often
together with their nonmetallic derivatives that occur
naturally . . . ." Id. Arnett discloses a tar sealant
for sealing an electrical connector (col. 11, Lines 21-
30) which is a liquid when applied and which is cured
after application. Note that Arnett uses the term
"coating" as meaning a "sealant." Col. 6, lines 33-47,
col. 1, line 40. At the time of the invention, it
would have been obvious to a person of ordinary skill
in the art to use the Arnett tar sealant in the Suzuki
device. The suggestion or motivation for doing so
would have been to take advantage of the Arnett
sealant's good dielectric properties, resistance to
water, and other desirable properties as taught in
Arnett (col. 11, lines 25-30).
Appellant points out that claim 3 on appeal defines the
sealant therein as being "pure tar which is liquid when applied
and which then cures after application." Appellant then contends
that the coal-tar and epoxy mix for corrosion inhibition of metal
surfaces referred to by the examiner in Arnett (col. 11, lines
21-30) is not "pure tar," and further urges that there is nothing
in Arnett which would suggest the use of "pure tar" as a sealant
against electrical leads in a housing of the type defined in
claim 3 on appeal.
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Additional insight into the examiner's position regarding
the obviousness rejection of claim 3 is found in the examiner's
answer (pages 4-5), wherein the examiner has urged that a
substance "in some respects resembling" a dark brown or black
bituminous viscous liquid obtained by destructive distillation of
organic material is "tar" and that even with the inclusion of an
epoxy component as in the composition described in Arnett (col.
11), the resultant sealant therein is still "tar."
In describing the coal-tar epoxy coating relied upon by the
examiner, Arnett (col. 11, lines 10-31) notes that the coating
composition is epoxy-based and makes use of Shell Epon 828 and
diethylenetriamine (DETA) as the base resin and curing agent,
wherein the curing agent ratio is 12 percent DETA by weight in
the Shell 828. Coal-tar in an amount of 10% by weight is then
added to the basic epoxy resin and curing agent mixture and the
resulting viscous fluid is applied by dip coating or by brush to
a metal surface to be protected and then allowed to cure. Like
appellant, we are of the opinion that one of ordinary skill in
the art would not have viewed the coal-tar epoxy coating
composition of Arnett containing only 10% by weight of coal-tar
to be "pure tar" as required in appellant's claim 3 on appeal.
Thus, even if one of ordinary skill in the art were to attempt to
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substitute the epoxy/coal-tar corrosion inhibiting coating
material of Arnett for the sealant (10) in the electrical housing
or connector of Suzuki, the result would not be a housing
arrangement like that claimed by appellant.
In our opinion, appellant's use of "pure tar" in claim 3 on
appeal limits that claim to a tar material, e.g., roofing tar,
that is essentially pure and, at most, includes some small
proportion of impurities that would not materially affect the
basic characteristics of the tar distillate itself. The
examiner's attempt to read "pure tar" as broadly being "a
substance in some respects resembling tar," like the epoxy-based
coating material of Arnett, is far too reaching and clearly
beyond the bounds of what appellant's claim 3 is limited to.
Moreover, we share appellant's view that the examiner's
attempt to substitute the epoxy-based, corrosion resistant
coating material of Arnett, used to combat cathodic delamination
of underwater rubber-to-metal adhesive bonds, for the sealer (10)
located within the housing (2) of the electrical connector in
Suzuki constitutes an improper hindsight reconstruction founded
on information the examiner has derived only from appellant's own
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teachings and not from any fair teaching or suggestion in the
references themselves.
In light of the foregoing, it is our determination that the
examiner has not made out a prima facie case of obviousness, and
that the decision of the examiner rejecting claim 3 under
35 U.S.C. § 103(a) must be reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
CEF/lbg
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Application No. 09/117,603
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LEE, MANN, SMITH, MCWILLIAMS
SWEENEY & OHLSON
P.O. BOX 2786
CHICAGO, IL 60690-2786