Ex Parte Qi et al

Board of Patent Appeals and Interferences

Jun 30, 2008

10910169 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BAOHUA QI and BENJAMIN R. MATTES
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Appeal 2008-2013
Application 10/910,169
Technology Center 2800
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Decided: June 30, 2008
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Before CHUNG K. PAK, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge SMITH.
Opinion Dissenting filed by Administrative Patent Judge PAK

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 17-19, 23-26, and 31-34. Claims 1-16, 20-22, and 27-30 have been
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Application 10/910,169

withdrawn from consideration. (App. Br. 2). We have jurisdiction under 35
U.S.C. § 6.
Appellants’ invention relates to an apparatus for measuring relative
humidity comprising conductive polymer fibers. An understanding of
Appellants’ invention can be determined from independent claims 17, 23,
and 31 which appear below:
17. Apparatus for measuring relative humidity, comprising in
combination:
(a) at least one first conducting polymer fiber;
(b) means for measuring the electrical resistance of said at least
one first conducting polymer fiber, whereby the relative
humidity is determined;
(c) at least one second conducting polymer fiber, said second
conducting polymer fiber being isolated from changes in
humidity;
(d) means for measuring the resistance of said at least one
second polymer fiber, whereby the temperature of said at least
one second polymer fiber is determined; and
(e) means for correcting said relative humidity for variations in
temperature.

23. Apparatus for providing humidity, comprising in
combination:
(a) at least one conducting polymer fiber;
(b) means for applying electric current to said at least one
conducting polymer fiber effective for controlling the amount
of water absorbed thereon; and
(c) means for measuring the resistance of said at least one
polymer fiber, such that the relative humidity to which said
fiber is exposed can be determined.
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31. A method for providing humidity, comprising the steps of:
(a) applying electric current to at least one conducting polymer
fiber effective for controlling the amount of water absorbed
thereon; and
(b) measuring the resistance of the at least one polymer fiber,
such that the relative humidity to which the fiber is exposed can
be determined.

Claims 17-19, 23-26, and 31-34 stand rejected under 35 U.S.C. § 103
(a) as unpatentable over Suda (U.S. Patent No. 6,229,318, dated May 8,
2001) in view of Kishimoto (U.S. Patent No. 5,433,462, dated June 6, 1995).
The principal issue in this appeal is whether the Examiner has carried
the burden of establishing a prima facie case in the rejection advanced on
appeal which turns on the issues addressed below.
Independent claim 17 describes an apparatus for measuring relative
humidity comprising a means for measuring the electrical resistance of the
first conducting polymer fiber to determine the relative humidity; and a
means for measuring the resistance of a second polymer fiber to determine
the temperature of the second polymer fiber. Independent claim 23
describes an apparatus for providing humidity comprising a means for
applying electric current to a conducting polymer fiber for controlling the
amount of water absorbed thereon; and a means for measuring the resistance
of a polymer fiber, such that the relative humidity to which the fiber is
exposed can be determined.
The resolution of the issues with respect to the rejection of appealed
claims 17 and 23 as well so claims dependent therefrom under § 103(a)
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requires that the “means-plus-function” language in the claims must first be
interpreted by giving the claim terms their broadest reasonable interpretation
consistent with the written description provided in Appellants’ Specification
as it would be interpreted by one of ordinary skill in this art. See In re
Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997)(“[T]he PTO applies to the
verbiage of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.”); In re Donaldson Co., 16 F.3d
1189, 1192-95 (Fed. Cir. 1994)(en banc)(“[T]he ‘broadest reasonable
interpretation’ that an examiner may give means-plus-function language is
that statutorily mandated in [35 U.S.C. § 112,] paragraph six.”); In re Zletz,
893 F.2d 319, 321-22 (Fed. Cir. 1989)(citing In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969)(“During patent examination the pending claims must
be interpreted as broadly as their terms reasonably allow. When the
applicant states the meaning that the claim terms are intended to have, the
claims are examined with that meaning, in order to achieve a complete
exploration of the applicant’s invention and its relation to the prior art.”).
In view of the “means-plus-function” recitations, the claims must be
interpreted with respect to whether any or all of the “means-plus-function”
limitations specify a function without defining structure sufficient to satisfy
that function. We find no indication on the record that the Examiner has
properly considered the “means-plus-function” limitations in claims 17 and
23 as well as the claims dependent thereon with respect to the strictures of
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35 U.S.C. § 112, sixth paragraph, since the “corresponding structure” in the
Specification and “equivalents” thereof with respect to the “means-plus-
function” limitations have not been determined in a manner consistent with
the requirements of this statutory provision before applying the references to
the claims. See Ans., e.g., 3-10.1 See, e.g., Donaldson, 16 F.3d at 1195
(“[T]he PTO was required by statute to look to Schuler’s specification and
construe the ‘means’ language recited in the last segment of claim 1 as
limited to the corresponding structure disclosed in the specification and
equivalents thereof.”). Therefore, the Examiner did not consider all of the
claim limitations in making out the grounds of rejection under § 103(a). See,
e.g., In re Geerdes, 491 F.2d 1260, 1262-63 (CCPA 1974)(in considering
grounds of rejection “every limitation in the claim must be given effect
rather than considering one in isolation from the others”); cf. Donaldson, 16
F.3d at 1195-97; see also, e.g., In re Paulsen, 30 F.3d 1475, 1478-79 (Fed.
Cir. 1994); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).2
Accordingly, in the absence of appropriate consideration of all of the
claim limitations, the Examiner has not established a prima facie case of

1 In this respect, Appellants have not adequately identified the means-plus-
function limitations or the structure(s) described in the Specification
corresponding to each claimed function in summarizing the claimed
invention as required by 37 C.F.R. § 41.37(c)(1)(v).
2 Moreover, 37 C.F.R. § 41.37(v) requires the record for appeal must
include for each independent claim involved in the appeal, every means plus
function and step plus function as permitted by 35 U.S.C. § 112, sixth
paragraph, must be identified and the structure, material, or acts described in
the specification as corresponding to each claimed function must be set
forth. This analysis is important to insure proper analysis of the claimed
subject matter has been considered and presented for review.
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obviousness of claims 17-19 and 23-26 therefore, we reverse the grounds of
rejection of these claims under 35 U.S.C. § 103(a).
We now turn to the subject matter of independent claim 31
specifically addressing the Examiner's stated rejection.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with Appellants that
the claimed subject matter would not have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will reverse the Examiner's rejection.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In
order to establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988)).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)).
The Examiner has not established obviousness in this case. Upon
consideration of the record as a whole in light of Appellants’ contentions, we
agree with Appellants that elements constituting a “teaching away” from the
claimed invention are present in Suda. See, e.g., Kahn, 441 F.3d at 985-86
(“A reference may be said to teach away when a person of ordinary skill,
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upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” (Quoting In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994))).
The Examiner rejected claim 31 (and claims 17-19, 23-26, and 32-34)
under 35 U.S.C. 103(a) as being unpatentable over Suda in view of
Kishimoto. The Examiner contends that Suda discloses an apparatus for
measuring relative humidity (as required by claim 17) and an apparatus and
method for providing humidity (as required by claims 23 and 31). The
Examiner acknowledged that Suda does not disclose that the conducting
element is a polymer fiber, but that Kishimoto discloses a temperature
sensor wherein the conducting element is a polymer fiber. Therefore, the
Examiner concluded that it would have been obvious to one skilled in the art
to incorporate the polymer fibers of Kishimoto into the sensor of Suda for
the purpose of making the sensor flexible making and therefore less
breakable. (Ans. 3).
We do not find the Examiner's arguments persuasive because they
failed to take into account the problem confronting Suda. Suda discloses his
invention “relates to humidity sensor for detecting humidity, and more
specifically, it relates to an electrical resistance type humidity sensor which
uses woodceramics and which is inexpensive, small, excellent in heat
resistance, and with high accuracy.” (Suda, col. 1, ll. 7-10). Suda seeks to
overcome the disadvantages associated with ceramic humidity sensors by
utilizing woodceramics. (Suda, col. 1-2 generally). Thus, we agree with
Appellants that Suda teaches away from use of other than woodceramic
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materials. (App. Br. 7). Consequently, Suda may not properly be used in
framing a 35 U.S.C. §103 rejection of claims to that invention as suggested
by the Examiner. Suda does not discuss nor compare polymeric conductive
materials and the problems associated there with. Furthermore, the
replacement and/or removal of the woodceramics of Suda would eliminate
the described point of novelty of the stated invention.
In addition, with regard to all the claims, we agree with Appellants
that it is the woodceramics material of Suda which is the active part of the
sensor, it varying in electrical resistance in response to both humidity and
temperature. As stated by Suda, “[t]he humidity sensor … is constituted so
as to use woodceramics of the only material with linear characteristics to
humidity and, with the surface sealed the other woodceramics make into a
humidity non-sensitive structure, acting as a temperature sensor” (Suda, col.
3, ll. 38-45). The conductive fibers or yarns of Kishimoto do not respond to
temperature and humidity changes, they are electrodes attached to a
thermosensitive layer 9. It is the thermosensitive layer 9 that responds to
temperature changes (Kishimoto, col. 6, ll. 10-18). The Examiner has not
established that one of ordinary skill in the art would employ the yarn of
Kishimoto as the humidity and temperature responsive material
(woodceramic of Suda), nor that the yarn if used as a another structure of the
Suda apparatus would result in an apparatus with conductive fibers and
means for measuring the electrical resistance of the conducting polymer
fiber required by claims 17 and 23 or a process including measuring the
resistance of the polymer fiber required by claim 31. The Examiner has not
established obviousness in this case.
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For the foregoing reasons and those presented in the Brief, the
rejections of claims 17-19, 23-26, and 31-34 under 35 U.S.C. § 103(a) is
reversed.

ORDER
The rejection of claims 17-19, 23-26, and 31-34 under 35 U.S.C. §
103(a) is reversed.
REVERSED

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PAK, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority’s view for the following
reasons.
As is apparent from the Answer, Brief and Reply Brief, Appellants
have not questioned the Examiner’s implicit interpretation of all the claimed
limitations, including the claimed means-plus-function limitations.
(Compare Ans. 3-5, with App. Br. 6-13 and Reply Br. 2-3). Nor have
Appellants challenged the Examiner’s explicit finding that Suda teaches a
humidity sensor having, inter alia, a woodceramic substrate, the claimed
means-plus-function elements, and electrodes as first and second conducting
elements. (Compare Ans. 3-5, with App. Br. 6-13 and Reply Br. 2-3).
Appellants’ only contention is that one of ordinary skill in the art would not
have been led to employ the claimed first and second conducting polymer
fibers in Suda’s humidity sensor (App. Br. 6-13 and Reply Br. 2-3). See 37
U.S.C. § 41.37(c)(1)(viii) (2005) (“Any arguments or authorities not
included in the brief or a reply brief filed pursuant to § 41.41 will be refused
consideration by the Board…”); Cross Med. Prods., Inc. v. Medtronic
Sofamor Danek, Inc., 424F.3d 1293, 1320-21 n. 3 (fed. Cir. 2005) (Any
arguments not raised in the Brief are considered waived.); In re Klopfestein,
380 F.3d 1345, 1347-48 (Fed. Cir. 2004) (The undisputed factual findings
were not disturbed; only the issue raised by Appellants was considered);
Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997) (requiring the
interpretation of the disputed limitations (not undisputed limitations) only
prior to determining the applicability of § 103).
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The dispositive question is, therefore, would one of ordinary skill in
the art have been led to use conducting polymer fibers as the electrodes (not
the woodceramic substrate) of Suda’s humidity sensor within the meaning of
35 U.S.C. § 103(a)? On this record, I answer this question in the
affirmative.
As correctly found by the Examiner (Ans. 3), Kishimoto teaches using
conductive yarns (conducting polymer fibers) as electrodes in a temperature
sensor (See col. 6, ll. 10-17 and col. 5, ll. 10-33). The Examiner has also
correctly found that Kishimoto teaches that the conducting polymer fibers
include, inter alia, polyaniline which is said to assist in making its sensor
flexible (col. 2, ll. 15-20 and col. 5, ll. 10-33).
Given the above teachings, I agree with the Examiner that one of
ordinary skill in the art would have been led to employ the conducting
polymer fibers taught by Kishimoto as the electrodes of Suda’s humidity
sensor, with a reasonable expectation of successfully obtaining the advantage
of forming flexible electrodes useful for Suda’s humidity sensor. KSR Int'l Co.
v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007) (quoting Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976)) (“[W]hen a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”).
Accordingly, I would affirm the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. § 103(a).
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