Ex Parte Ripper et al

Board of Patent Appeals and Interferences

Apr 16, 2009

10466505 (B.P.A.I. Apr. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WOLFGANG RIPPER, JOACHIM BERGER,
BERND MAHR, and THOMAS BRINZ
____________________

Appeal 2009-1856
Application 10/466,505
Technology Center 3700
____________________

Decided: April 16, 2009
____________________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Wolfgang Ripper et al. (Appellants) seek our review under 35 U.S.C.
§ 134 from the final rejection of claims 32-43. We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2009-1856
Application 10/466,505

SUMMARY OF THE DECISION
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

THE INVENTION
Appellants’ claimed invention pertains to a sensor unit for measuring
certain properties of a urea solution. (Substitute Specification, filed July 17,
2003 (Subst. Spec.) 2, ll. 11-16.) According to Appellants, a urea solution is
introduced into the exhaust gas of motor vehicles to reduce the emissions of
nitrogen oxides. (Id. at 1, ll. 5-12.) During catalytic reduction, urea is
broken down into ammonia and carbon dioxide, and then the ammonia
reacts with nitrogen oxides to form nitrogen and water. (Id.) Claim 32,
reproduced below, is representative of the subject matter on appeal.
32. A device for metering an enzyme-free urea solution to be
sprayed into an exhaust gas stream of an internal combustion
engine, comprising:
a sensor unit including a first sensor for measuring an
electric state variable of the urea solution and a second sensor
for measuring a physicomechanical state variable, wherein:
the first sensor detects at least one of a pH, a
dielectric constant and a conductance of the urea
solution, and
the second sensor detects at least one of a viscosity
and a density of the urea solution.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
2
Appeal 2009-1856
Application 10/466,505

Lewenstam US 5,498,323 Mar. 12, 1996
Tarabulski US 6,063,350 May 16, 2000
Kriz US 6,214,206 B1 Apr. 10, 2001
Wissler US 6,408,619 B1 Jun. 25, 2002
The following rejections are before us for review:
1. Claims 32-36 and 39 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wissler and Lewenstam;
2. Claims 37 and 38 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wissler, Lewenstam, and Kriz; and
3. Claims 40-43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wissler, Lewenstam, and Tarabulski.

ISSUES
The issues before us include whether Appellants have shown that the
Examiner erred in rejecting claims 32-36 and 39 as obvious over Wissler
and Lewenstam; in rejecting claims 37 and 38 as obvious over Wissler,
Lewenstam, and Kriz; and in rejecting claims 40-43 as obvious over Wissler,
Lewenstam, and Tarabulski. These issues turn on whether the cited
references teach a sensor for detecting the viscosity or density of a urea
solution, and whether a rational reason exists as to why one of ordinary skill
in the art would have combined the references to arrive at the claimed
subject matter.
An additional issue, which we address in a new ground of rejection, is
whether Appellants’ Specification adequately enables the full scope of
claimed “second sensor for measuring a physicomechanical state variable,
wherein … the second sensor detects at least one of a viscosity and a density
of the urea solution.”
3
Appeal 2009-1856
Application 10/466,505

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Appellants’ Specification describes the “sensor for measuring a
physicomechanical state variable” as follows:
In an exemplary embodiment of the present invention, a
measuring sensor is provided for detecting one or more
physicomechanical state variables of the urea solution. Such
a physicomechanical state variable may be the viscosity or
density, for example.
Such physicomechanical state variables may be determined in a
traditional manner, e.g., by weighing the solution and/or a part
of the solution or by measuring the buoyancy of a displacement
body, etc. However, in an exemplary embodiment the
physicomechanical state variable is detected by a dynamic
sensor. Thus, a physicomechanical state variable may be
measured with the help of a vibration generator, for example.
The behavior of the urea solution when agitated with the help
of mechanical vibration depends to a significant extent on the
physico-mechanical state variables to be detected, e.g., the
density or viscosity. In an exemplary embodiment, this
property may be detected directly on the vibration generator
itself by measurement technology, e.g., by measuring the
electric current, the frequency, etc.
A quartz oscillator may be used as the vibration generator.
However, any other known or future means for inducing
mechanical vibration is also conceivable. For example, a
piezoelectric crystal could also be used as well as a high-speed
out-of-balance motor or an electromagnetic coil in conjunction
with a diaphragm based on the loudspeaker principle.
(Subst. Spec. 3, l. 32 – 4, l. 27.)
2. Appellants’ Specification describes “an exemplary embodiment
of a measuring sensor according to the present invention” as having three
4
Appeal 2009-1856
Application 10/466,505

electrodes (comb-shaped electrode 3, another electrode 6, and a third
electrode 7) and an oscillation generator (quartz oscillator 9). (Subst. Spec.
6, l. 17 – 7, l. 16; Fig 1.) In this embodiment, the lower area 4 of electrode 3
along with electrode 7 forms the sensor for an electric state variable, e.g.,
conductivity. (Id. at 7, ll. 1-5.) The oscillation generator is “for detecting a
physicomechanical state variable, e.g., viscosity or density.” (Id. at 7,
ll. 12-16.)
3. Wissler discloses a method and a device for reducing nitrogen
oxides in the exhaust gas stream of an internal combustion engine by the
introduction of a reducing agent solution, such as an aqueous urea solution.
(Wissler, col. 1, ll. 32-46; col. 2, ll. 34-41; Fig. 1.) Wissler’s system utilizes
a conductivity sensor for determining the concentration of the reducing
agent solution. (Id., col. 5, ll. 6-8.) Wissler further discloses that this sensor
preferably comprises two electrodes. (Id., col. 5, ll. 8-11.) Wissler explains
that, when a known voltage is applied across the electrodes, the electrical
resistance of the reducing agent solution, and consequently the concentration
of the reducing agent, may be determined. (Id., col. 5, ll. 11-15.) The
reliability of this sensor “permits consistently good detection of the
concentration over the entire time during which the combustion system is in
operation.” (Id., col. 5, ll. 16-19.)
4. Wissler also teaches that ammonia, a reducing agent, is released
from the aqueous urea solution when the solution is introduced into the
engine’s hot exhaust stream. (Wissler, col. 5, ll. 62-65.)
5. Wissler further teaches that factors influencing the reducing
agent solution concentration, such as density fluctuations due to temperature
5
Appeal 2009-1856
Application 10/466,505

changes, can be taken into consideration and allowed for during metering of
the solution to increase metering accuracy. (Wissler, col. 4, ll. 3-11.)
6. Lewenstam discloses an ammonia detector that utilizes a
“typical three-electrode system.” (Lewenstam, col. 3, ll. 19-21.)
Lewenstam’s measuring unit 6 contains a voltage source 24 and ammeter 25
connected to the three electrodes. (Id., col. 3, ll. 33-44; Figs. 1, 2.) A
constant voltage is applied between a coated electrode and a reference
electrode. (Id., col. 2, ll. 46-49.) The magnitude of the current flowing
between the coated electrode and an auxiliary electrode indicates the
concentration of ammonia in solution. (Id., col. 2, ll. 49-54.)
7. Kriz discloses a chemical sensor, which, in one embodiment, is
a urea biosensor. (Kriz, col. 2, ll. 7-12, 20-25.) Kriz’s chemical sensor 1
includes a transducer means 4. (Id., col. 2, ll. 20-25.) Kriz further discloses:
“As transducer means, use can be made of an electrochemical, optical,
magnetic, acoustic/piezoelectric or thermometric transducer, or a
combination thereof.” (Id., col. 3, ll. 7-9.)
8. The prior art of record indicates that persons of ordinary skill in
the art of nitrogen oxides emissions reduction and in the chemical sensors art
have a high level of skill. (See, e.g., Wissler, col. 1, l. 13 – col. 2, l. 32;
Lewenstam, col. 1, ll. 21-45.) One of ordinary skill would understand how
to utilize several different sensors to monitor desired parameters. (See, e.g.,
Tarabulski, col. 7, ll. 17-30.)

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
6
Appeal 2009-1856
Application 10/466,505

re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is Appellants’ burden to
precisely define the invention, not the United States Patent and Trademark
Office’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citing 35
U.S.C. § 112, ¶ 2). Appellants have the opportunity to amend the claims
during prosecution, and broad interpretation by the Examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified. Prater, 415 F.2d at 1404-05.
When a claim limitation does not include the word “means,” it is
presumed that Appellants did not intend to invoke § 112, sixth paragraph.
See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358
(Fed. Cir. 2004). In a post-issuance claim construction, this presumption
“can be overcome if it is demonstrated that the claim term fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function.” Id. (citations and internal
quotes omitted). During prosecution, however, Appellants have the
opportunity to amend the claims to clearly indicate Appellants’ intent to
invoke 35 U.S.C. § 112, sixth paragraph, by inserting “means” language into
the claims. Ex parte Miyazaki, 89 U.S.P.Q.2d 1207, 1215-16 (BPAI 2008).
Therefore, the presumption is not necessarily overcome where the pending
claim lacks sufficient structure. Id.
“[W]hen [a claim] limitation encompasses any and all structures or
acts for performing a recited function, including those which were not what
the applicant[s] had invented, the disclosure fails to provide a scope of
enablement commensurate with the scope of the claim[.] Miyazaki, 89
7
Appeal 2009-1856
Application 10/466,505

U.S.P.Q.2d at 1217 (citing Halliburton Oil Well Cementing Co. v. Walker,
329 U.S. 1 (1946)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007) (quoting 35 U.S.C. § 103). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill
in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); see also KSR Int’l
Co., 550 U.S. at ___, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”). The scope and content of the
prior art includes the explicit and inherent teachings of the prior art. In re
Zurko, 258 F.3d 1379, 1383-84 (Fed. Cir. 2001) (citing In re Napier, 55 F.3d
610, 613 (Fed. Cir. 1995)).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. In
particular, the Court pointed out that “the principles laid down in Graham
reaffirmed the ‘functional approach’ of Hotchkiss [v. Greenwood], 11 How.
248 [(1851)].” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739 (citing
8
Appeal 2009-1856
Application 10/466,505

Graham, 383 U.S. at 12). The Court reiterated that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at ___, 127 S. Ct. at
1739. The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. at ___, 127 S. Ct. at 1740.

ANALYSIS
The Rejection of Claims 32-36 and 39 Under 35 U.S.C. § 103(a) as Being
Unpatentable Over Wissler and Lewenstam
Claim 32 recites a sensor unit including two sensors – a first sensor
for measuring an electric state variable of the urea solution (such as
conductance), and a second sensor for measuring a physicomechanical state
variable. Regarding the physicomechanical state sensor, claim 32 further
recites: “the second sensor detects at least one of a viscosity and a density of
the urea solution.” Appellants appear to assert that the cited references do
not teach this second sensor. (See App. Br. 8.) Claims 33-36 and 39 depend
directly or indirectly from claim 32, and therefore also require the second
sensor.
Wissler discloses a sensor that measures conductivity. (Fact 3.) The
Examiner found that Lewenstam also discloses a sensor that measures
conductivity. (See Ans. 4.) The Examiner notes that reducing agent solution
concentration can be determined from the measured resistance (i.e., the
conductivity). (See Ans. 7; see also Fact 3.) The Examiner then concludes
that the references teach a density sensor because “a density of ammonia in
the solution is easily derived or converted” from the concentration value
(Ans. 4; see also id. at 10), or, alternatively, that the recited density sensor is
9
Appeal 2009-1856
Application 10/466,505

broadly construed as encompassing a sensor that detects concentration (Ans.
9). Rather than relying on evidence in the record, the Examiner bases these
conclusions on definitions in unidentified dictionaries (Ans. 9) and “well
known data taken from any handbook of chemistry” (Ans. 10).
Appellants’ Specification explains that two sensors are utilized
because the measured values of the “two independent state variables” results
in “the possibility of a more accurate and more selective determination of
the urea concentration.” (Subst. Spec. 4, l. 30 – 5, l. 3 (emphasis added).)
Therefore, when read in the context of the Specification, both of Appellants’
recited sensors must be capable of measuring a designated variable, and a
concentration determination does not equate to a density measurement. The
Examiner’s implicit claim interpretation – that the claimed invention
encompasses a device capable of measuring only an electric state variable
(e.g., conductivity) because the physicomechanical state variable (e.g.,
density) can be derived therefrom – is an unreasonable construction.
Additionally, the Examiner identifies Lewenstam’s measuring unit 6
as a second sensor. (Ans. 4.) We disagree because the measuring unit 6 of
Lewenstam does not serve as a second sensor. Rather measuring unit 6
contains a voltage source 24 and ammeter 25 connected to the structure
identified by the Examiner as the first sensor (the three electrodes 1, 2, and
5) (Ans. 4). (Fact 6.)
The Examiner has not adequately explained how Wissler, Lewenstam
or the combination thereof discloses the recited second sensor that detects
viscosity or density. Thus, based on the record before us, we are constrained
to reverse the rejection of claims 32-36 and 39.

10
Appeal 2009-1856
Application 10/466,505

The Rejection of Claims 37-38 Under 35 U.S.C. § 103(a) as Being
Unpatentable Over Wissler, Lewenstam, and Kriz
Appellants contend that dependent claims 37 and 38 are “allowable
for essentially the same reasons as [independent] claim 32” because Kriz
does not cure the deficiencies of the Wissler and Lewenstam combination.
(App. Br. 9, Reply Br. 3-4.) We disagree for the following reasons.
Claims 37 and 38 (which depend directly and indirectly, respectively,
from claim 32) additionally recite a vibration generator. Appellants explain
that a vibration generator is used in measuring a physicomechanical variable,
and identify a piezoelectric crystal as an exemplary vibration generator.
(Fact 1; see also claim 38 (reciting a vibration generator including a
piezoelectric crystal).) Kriz discloses a chemical sensor utilizing an
acoustic/piezoelectric transducer. (Fact 7.) Although Appellants assert that
Kriz does not cure the deficiencies of Wissler and Lewenstam, Appellants
do not dispute the Examiner’s finding that Kriz’s transducer means is made
of piezoelectric crystal and that persons of ordinary skill in the art would
have routinely used the transducer means taught by Kriz (Ans. 5, 6). (See
App. Br. 9; Reply Br. 4.)
Wissler discloses a two-electrode conductivity sensor used in the
metering of a urea solution to be sprayed into an exhaust stream of an
internal combustion engine. (Fact 3.) Lewenstam teaches a typical
three-electrode sensor for measuring the concentration of ammonia (which
is the reducing agent in urea). (Facts 4, 6). Thus, the combination of those
two references along with Kriz’s acoustic/piezoelectric transducer teaches a
urea solution sensor device having three electrodes and a vibration
generator. Appellants’ exemplary embodiment of their invention is similarly
configured and is described as having both a sensor measuring an electric
11
Appeal 2009-1856
Application 10/466,505

state variable and a sensor measuring a physicomechanical state variable.
(See Fact 2.) Appellants have not shown that the combination of Wissler,
Lewenstam, and Kriz produces unpredictable results. Additionally, one of
ordinary skill would understand how to utilize several different sensors to
monitor desired parameters. (Fact 8.) Therefore, the subject matter of
Appellants’ claims 37 and 38 is merely the combination of prior art elements
according to known methods to yield predictable results. See KSR Int’l Co.,
550 U.S. at ___, 127 S. Ct. at 1739. Wissler’s teaching of using a density
sensor in conjunction with the conductivity sensor to increase metering
accuracy (Fact 5) further suggests the combination. Accordingly, claims 37
and 38 are prima facie obvious.
Appellants argue that claimed subject matter cannot be obvious
because the cited references are not concerned with the problem addressed
by Appellants and because the references do not disclose the benefits of the
claimed subject matter. (App. Br. 9; Reply Br. 3, 5-6.) Appellants
characterize this problem as “providing a device for metering urea solutions
which may be used reliably for reducing nitrogen oxides within broad
temperature intervals.” (Reply Br. 3 (emphasis omitted).) Appellants’
argument is not commensurate with the scope of the disputed claims, which
do not require reliability over a range of temperatures. Additionally,
Appellants’ argument is unavailing as “neither the particular motivation nor
the avowed purpose of the [Appellants] controls” in an obviousness analysis.
KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1741-42. Further, Wissler
addresses the same problem and provides the same benefit in that Wissler
discloses a device for reducing nitrogen oxides by the introduction of an
aqueous urea solution, and that the device’s sensor allows good reducing
12
Appeal 2009-1856
Application 10/466,505

agent solution concentration detection over the entire time of engine
operation (i.e. over a range of temperatures), and that temperature
fluctuations can be taken into account to increase metering accuracy.
(Facts 3, 5.)
Appellants also contend that the cited references do not address “the
problem of ‘shifting the working point using auxiliary magnetic fields in the
layer array that are generated in different ways’ using the presently claimed
subject matter, as explained herein and in the specification.” (App. Br. 10
(emphasis omitted); see also Reply Br. 4-5.) This “problem” does not
appear to pertain to the claimed urea metering device, and neither the
Specification nor Appellants’ briefs explain how the claimed device
addresses that “problem.”
Appellants appear to argue that there is no suggestion or motivation to
combine the cited references. (See App. Br. 9-11; Reply Br. 4-5.) This
argument is foreclosed by KSR, in which the Court rejected the rigid
requirement of a teaching, suggestion or motivation to combine known
elements in order to show obviousness. KSR Int’l Co., 550 U.S. at ___, 127
S. Ct. at 1741. The Court noted that an obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at ___, 127 S. Ct. at
1741.
Lastly, Appellants assert that the Examiner has not made “any of the
required factual findings” and, therefore, has failed to set forth a prima facie
case of obviousness. (App. Br. 11-12; Reply Br. 6-7.) Appellants
specifically refer to a finding regarding the level of ordinary skill in the art.
13
Appeal 2009-1856
Application 10/466,505

(App. Br. 11; Reply Br. 6.) Contrary to Appellants’ assertions, we need not
“resort to unwarranted speculation” concerning the facts underlying the
rejection of claims 37 and 38 as obvious over Wissler, Lewenstam, and Kriz
(App. Br. 11-12; Reply Br. 7). The Examiner set forth findings upon which
the rejection is based. (Final Rej. 2-5; Ans. 3-6, 7-10.) As to the person of
ordinary skill in the art, the Examiner at least implicitly indicated the level
of ordinary skill. (See, e.g., Ans. 6 (finding that the use of the transducer
means taught by Kriz “would have been routinely practiced by those with
ordinary skill in the art.”).) Further, the level of skill in the art is reflected in
the cited prior art references (Fact 8), therefore a lack of a specific finding in
this case is not reversible error. See Litton Indus. Prods., Inc. v. Solid State
Sys. Corp., 755 F.2d 158, 163-64 (Fed. Cir. 1985) (“A specific finding on
the level of skill in the art is not, however, required where the prior art itself
reflects an appropriate level and a need for testimony is not shown.”).
Appellants have not persuaded us of error in the Examiner’s
conclusion of obviousness of claims 37 and 38.

The Rejection of Claims 40-43 Under 35 U.S.C. § 103(a) as Being
Unpatentable Over Wissler, Lewenstam, and Tarabulski
The Examiner relied upon Tarabulski for the teaching of a
temperature sensor and a filling level sensor. (Ans. 6-7.) Claims 40-43
depend from independent claim 32. As discussed above, the Examiner has
failed to present a prima facie case of obviousness of independent claim 32
over Wissler and Lewenstam. Tarabulski does not cure the deficiencies of
that rejection. As such, we do not sustain the Examiner’s rejection of
claim 40-43.

14
Appeal 2009-1856
Application 10/466,505

NEW GROUNDS OF REJECTION
We enter a new ground of rejection of claims 32-37 and 39-43 under
35 U.S.C. § 112, first paragraph (scope of enablement).
Independent claim 32 recites “a second sensor for measuring a
physicomechanical state variable, wherein … the second sensor detects at
least one of a viscosity and a density of the urea solution.” Appellants do
not use the term “means” to recite the second sensor. Therefore, we
presume that Appellants did not intend to invoke interpretation of the
“second sensor” under § 112, sixth paragraph. See Lighting World, Inc., 382
F.3d at 1358. We conclude that the recitation of a “second sensor” does not
recite sufficiently definite structure. Nonetheless, we also conclude that this
lack of sufficient structure does not justify the application of § 112, sixth
paragraph, where Appellants still have the opportunity to amend the claims
to use “means for” language if that it their intent. See Miyazaki, 89
U.S.P.Q.2d at 1215-16.
Claim 32 does not recite the specific structure of the second sensor,
but defines the sensor solely in terms of its function – measuring a
physicomechanical state variable wherein the sensor detects viscosity or
density. On the record before us, there is no evidence that one of ordinary
skill in the art would understand such a sensor to have a well-known,
definite structural meaning. Therefore, given the broadest reasonable
construction, the second sensor encompasses any and all structures for
detecting viscosity and/or density.
Appellants’ Specification, rather than adequately enabling the full
scope of the claimed second sensor, confirms the broad reach of that claim
term. The Specification offers a few examples of the diverse ways to
15
Appeal 2009-1856
Application 10/466,505

measure physicomechanical variables, but suggests that there exists others
and suggests that the recited sensor also covers those ways that may be
developed in the future. (See Fact 1.) Appellants’ Specification states that a
physicomechanical state variable – the parameter detected by the second
sensor – “may be determined in a traditional manner.” (Id.) The
Specification also describes an “exemplary embodiment” utilizing a
dynamic sensor, an example of which is one having a vibration generator.
(Id.) We note that dependent claim 37 recites a vibration generator, but
claim 32 is not limited to a sensor having a vibration generator or even to
one utilizing a dynamic sensor. As to the vibration generator, the
Specification states that, in addition to a quartz oscillator, “any other known
or future means for inducing mechanical vibration is also conceivable.” (Id.)
Thus, the Specification indicates that the narrower “vibration generator”
claim encompasses sensors that were not known to Appellants. The broader
independent claim, then, must also cover subject matter not known to
Appellants.
Where, as here, “the limitation encompasses any and all structures or
acts for performing a recited function, including those which were not what
the applicant[s] had invented, the disclosure fails to provide a scope of
enablement commensurate with the scope of the claim[.]” Miyazaki, 89
U.S.P.Q.2d at 1217 (citing Halliburton Oil Well Cementing Co. v. Walker,
329 U.S. 1 (1946)). As such, claim 32, reciting a “second sensor,” is
unpatentable under 35 U.S.C. § 112, first paragraph, for lack of an enabling
disclosure. Claims 33-36 and 39-43 depend directly or indirectly from claim
32 and further define either the first sensor or the overall claimed metering
device, but fail to add structure to the second sensor. Thus, claims 33-36
16
Appeal 2009-1856
Application 10/466,505

and 39-43 are likewise unpatentable. Claim 37 also depends from claim 32
and recites that “the sensor unit includes a vibration generator.” Although
the recitation of claim 37 appears to further define the second sensor, the
“vibration generator” term encompasses any known and any future means
for inducing vibration (see Fact 1). Thus, claim 37 is also unpatentable
because the Specification does not enable that scope of coverage.

CONCLUSIONS
We conclude that the scope of coverage sought by the claimed
“second sensor” in claims 32-37 and 39-43 is broader than that enabled by
the Specification, and, therefore, those claims fail to satisfy the requirements
of § 112, first paragraph.
We also conclude that the Appellants have shown that the Examiner
erred in rejecting claims 32-36 and 39 as obvious over Wissler and
Lewenstam, and in rejecting claims 40-43 as obvious over Wissler,
Lewenstam, and Tarabulski. We further conclude that the Appellants have
failed to show that the Examiner erred in rejecting claims 37 and 38 as
obvious over Wissler, Lewenstam, and Kriz.

DECISION
The decision of the Examiner to reject claims 32-36 and 39-43 is
reversed. The decision of the Examiner to reject claims 37 and 38 is
affirmed. We enter a new ground of rejection of claims 32-37 and 39-43
under 35 U.S.C. § 112, first paragraph.

17
Appeal 2009-1856
Application 10/466,505

FINALITY OF THE DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.” In addition to affirming the
Examiner’s rejections of one or more claims, this decision contains a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2008). 37 C.F.R.
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION,1 must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. …

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. ….
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the

1 The date of the decision is the date shown on the first page of the decision
and is not the Mail Date (paper delivery) or Notification Date (electronic
delivery).
18
Appeal 2009-1856
Application 10/466,505

prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

LV

KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
19