Ex parte Nortrup

Board of Patent Appeals and Interferences

Jul 28, 1998

08372069 (B.P.A.I. Jul. 28, 1998)

Application for patent filed January 12, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDWARD H. NORTRUP
____________
Appeal No. 96-3038
Application No. 08/372,0691
____________
ON BRIEF
____________
Before URYNOWICZ, HAIRSTON and CARMICHAEL, Administrative
Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5.
The disclosed invention relates to an arc tube.
Appeal No. 96-3038
Application No. 08/372,069
2
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
Appeal No. 96-3038
Application No. 08/372,069
3
1. An arc tube comprising: a light transmissive body
containing an arc generating and sustaining medium; a press
seal formed at one end of said body, said press seal
comprising a planar portion separating opposed edges; a first
foil sealed in said planar portion; a lead-in conductor
attached to said foil and extending outside of said body and
an electrode attached to said foil and extending inside said
body; a first cavity formed on a first of said edges and a
second cavity formed on a second of said edges; a fill in each
of said cavities for supporting emission of ultra-violet
radiation; and a second foil sealed in said planar portion and
being attached to said first foil, said second foil having a
first end terminating in said first cavity and a second end
terminating in said second cavity.
The reference relied on by the examiner is:
Morris 5,323,091 June 21,
1994
Claims 1 through 5 stand rejected under 35 U.S.C. § 103
as being unpatentable over Morris.
Reference is made to the briefs and the answer for the
respective positions of the appellants and the examiner.
OPINION
Morris discloses a single cavity 62 (Figure 4), and one
end of the second foil 60 terminates in this cavity.
According to the examiner (Answer, page 4), the claimed
“second cavity” is a “mere duplication of parts for a multiple
effect,” and “is not patentably distinct where the operation
of the device would not thereby be modified (see St. Regis
Appeal No. 96-3038
Application No. 08/372,069
4
Paper Co. v. Bemis Co., Inc., 193 USPQ 8, 11 (7th Cir.
1977)).”
Appellants argue (Brief, page 3) that:
The Examiner’s reliance on St. Regis Paper Co. V.
Bemis Co. is misplaced. The St. Regis case is
inapposite in that it dealt with duplicating what
had previously existed in the prior art. In the
instant case, the claims define an invention that
has not previously existed and that has increased
benefits, untaught by the prior art, when multiplied
in a particular way.
We agree with appellants that the St. Regis case is
inapposite to the facts before us on appeal. The examiner’s
mere conclusion that it would have been obvious to place a
second cavity on Morris’ pinched seal, and then terminate the
other end of the second foil 60 in this cavity is too much for
us to believe in the absence of evidence in the record or a
convincing line of reasoning by the examiner. Since neither
evidence nor a convincing line of reasoning has been presented
by the examiner, we will reverse the 35 U.S.C. § 103 rejection
of claims 1
through 5.
Appeal No. 96-3038
Application No. 08/372,069
5
DECISION
The decision of the examiner rejecting claims 1 through 5
under 35 U.S.C. § 103 is reversed.
REVERSED
STANLEY M. URYNOWICZ, Jr. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-3038
Application No. 08/372,069
6
William H. McNeill
Osram Sylvania Inc.
100 Endicott Street
Danvers, MA 01923
KWH/jrg
JENINE GILLIS
Appeal No. 96-3038
Serial No. 08/372,069
Judge HAIRSTON

Judge CARMICHAEL

Judge URYNOWICZ
Typed: 20 Jul 98
DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Heard: Yes No
Remanded: Yes No
Index Sheet-2901 Rejection(s): ___________
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