Ex parte Reitz

Board of Patent Appeals and Interferences

Aug 18, 1998

07826207 (B.P.A.I. Aug. 18, 1998)

Application for patent filed January 22, 1992. According to appellant, this Application is a continuation of Application1
07/599,162 filed October 17, 1990, now abandoned, which is a continuation-in-part of Application 07/219,523 filed July
15, 1988, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RONALD P. REITZ
____________
Appeal No. 95-2489
Application 07/826,2071
____________
ON BRIEF
____________
Before KIMLIN, WEIFFENBACH and OWENS, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-2489
Application 07/826,207
We note that the amendment has not been clerically processed. Although the examiner indicated that the amendment2
had been entered, the file wrapper does not reflect a separate entry for the amendment or that the changes as requested
by appellant have been made to the claims. This oversight should be corrected upon return of the application to the
jurisdiction of the examiner.
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This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
1-12, 19, 20, 22 and 23. In amendments (paper nos. 15 and 17) submitted after the final rejection,
appellant amended claims 1 and 19, and canceled claims 6 and 23. The amendments were approved for
entry by the examiner (paper nos. 16 and 18). Subsequent to the filing of the appeal brief, the examiner
withdrew all grounds of rejection, and entered a new ground of rejection rejecting claims 1-5, 7-12, 19,
20 and 22 over prior art of record and newly cited prior art. See footnote 4, infra. In response to the new
ground, appellant filed a reply brief along with an amendment under 37 CFR § 1.193(b) amending claims
1-4, 7-9, 11, 12, 19, 20 and 22, and adding new claim 26. The examiner notified appellant that both the
reply brief and the amendment had been entered and that the new rejection now included 26.2
Accordingly, claims 1-5, 7-12, 19, 20, 22 and 26 are before us for consideration. We reverse.
The Claimed Subject Matter
The claims on appeal are directed to an electroviscous fluid. Claim 1, as amended under 37 37
CFR § 1.193(b), is representative of the claimed subject matter and reads as follows:
1. A dual energy dependent electroviscous fluid, comprising:
a dielectric liquid; and
a multiplicity of aggregate particles dispersed in said dielectric liquid;
Appeal No. 95-2489
Application 07/826,207
Our consideration of this reference is based on an English translation which is of record.3
This rejection is a new ground of rejection because none of the rejections stated in the final rejection relied upon the4
Grant & Hackh’s Chemical Dictionary. See page 7 of the examiner’s answer. The final rejection included four grounds
of rejection: a rejection of claims 5 and 20 under the first paragraph of 35 U.S.C. § 112, a rejection of claims 6 and 23 under
(continued...)
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substantial numbers of said aggregate particles each including a photovoltaic core and a
dielectric shield;
said dielectric shield at least partially encapsulating said photovoltaic core;
said photovoltaic core including bipolar junction diode material which generates an electric
potential in the presence of light;
whereby said electroviscous fluid has an electroviscous response upon exposure of at least
some [sic] said photovoltaic cores to light and to an externally applied electric field.
References
The following references are relied upon by the examiner in support of the rejection of the claims
for obviousness:
Block et al. (Block) 4,687,589 Aug. 18, 1987
Pedersen 4,737,886 Apr. 12, 1988
Inoue 63-97694 Apr. 28, 19883
Japanese Kôkai Patent Publication
Grant et al. (Grant & Hackh’s Chemical Dictionary), Grant & Hackh’s Chemical Dictionary,
5th Edition, McGraw-Hill, Inc., pp. 120 and 524 (1987).

Rejection
Claims 1-5, 7-12, 19, 20, 22 and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Block in view of Inoue and Peterson, taken further with Grant & Hackh’s Chemical Dictionary.4
Appeal No. 95-2489
Application 07/826,207
(...continued)4
the second paragraph of 35 U.S.C. § 112, a rejection of claims 1-12, 19, 20, 22 and 23 under 35 U.S.C. § 103 over Block in
view of Inoue and Pedersen, and a rejection of claims 1-12 over Petrzhick in view of Inoue and Pedersen. With the
cancellation of claims 6 and 23 in an amendment after final (paper no. 15), the rejection under the second paragraph of
35 U.S.C. § 112 was rendered moot. In the answer, the examiner indicated that the rejection of claims 5 and 20 under the
second paragraph of 35 U.S.C. § 112 had been withdrawn as well as the rejection of claims 1-12 and 19 under 35 U.S.C.
§ 103. The examiner did not restate the rejection of claims 1-12, 19, 20, 22 and 23 under 35 U.S.C. § 103 as set forth in the
final rejection in her answer. Therefore, we presume that this rejection has been withdrawn. Where a ground of rejection
does not appear in the examiner's answer, the rejection is assumed to have been withdrawn. Ex parte Emm, 118 USPQ
180 (Bd. App. 1957). Accordingly, the only rejection before us for consideration is the new ground of rejection stated
in the answer.
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Opinion
We have carefully considered the respective positions advanced by appellant and the examiner.
For the reasons set forth below, we will not sustain the examiner's rejection.
Block discloses an electroreheological fluid comprising a liquid phase having dispersed therein
electronic conductor particles such as a semiconductor (col. 1, lines 48-66). Block defines his
semiconductor as being a “material through which electricity is conducted by means of electrons (or holes)
rather than by means of ions” (col. 1, line 66 to col. 2, line 1). While the only examples of semiconductors
disclosed by Block are organic semiconductors, the examiner relies on the definition of “semiconductor”
in Grant & Hackh’s Chemical Dictionary to show that the term “semiconductor” includes silicon and that
the term “solar cell” includes crystalline or amorphous silicon. Inoue discloses an electroviscous fluid
comprising a fluid having dispersed therein fine particles consisting of an organic solid core surrounded by
a thin inner layer of an electroconductive material and a thin outer layer of an electric insulative material (p.
1 of the Inoue translation) while Pedersen discloses an electroviscous fluid comprising an insulative oily
medium wherein fibers of graphite are dispersed therein (col. 2, lines 18-24 and col. 3, lines 21-45).
Appeal No. 95-2489
Application 07/826,207
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Pedersen further discloses that the graphite particles may be coated with Teflon to reduce the tendency of
the graphite fibers to coagulate (col. 3, 56-62)
Claim 1, as amended, requires that the particle have a photovoltaic core including a bipolar junction
diode and a dielectric material at least partially encapsulating the photovoltaic core. We find that none of
the references relied upon by the examiner teaches or suggests a particle having a photovoltaic core having
a bipolar junction diode let alone a photovoltaic core having a bipolar junction diode at least partially
encapsulated with a dielectric material.
The examiner concedes that Block does not specifically teach that the semiconductor disclosed
by the patentee has at least one bipolar junction, but concludes in a summary fashion that “as silicon and
germanium are well known semiconductors as shown by the definition of ‘semiconductor’ in Grant &
Hackh’s Chemical Dictionary, and as appellant’s preferred bipolar junction diode material is either silicon
or germanium ..., it appears that the teachings of Block et al, in view of Inoue and Pedersen, taken further
with Grant & Hackh’s Dictionary are sufficient to make obvious the presently claimed invention” (suppl.
answer: p.2). The bipolar junction must follow from the prior art, and not from appellant’s preferred
materials. There is simply no teaching or suggestion in the prior art relied upon by the examiner, nor any
detailed analysis of the prior art by the examiner, which would have led a person having ordinary skill in
the art to the claimed subject matter, i.e. an electroviscous fluid containing a photovoltaic material having
a bipolar junction diode which is at least partially encapsulated with a dielectric material.
Appeal No. 95-2489
Application 07/826,207
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Accordingly, for the foregoing reasons, the examiner’s decision is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-2489
Application 07/826,207
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OFFICE OF COUNSEL, CODE 0205
DAVID TAYLOR RESEARCH CENTER
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