Ex parte Scholz

Board of Patent Appeals and Interferences

Sep 9, 1999

07805703 (B.P.A.I. Sep. 9, 1999)

Application for patent filed December 11, 1991. 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not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN A. SCHOLZ
____________
Appeal No. 1997-4175
Application No. 07/805,7031
____________
ON BRIEF
____________
Before KRASS, JERRY SMITH and LALL, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-4175
Application No. 07/805,703
2
This is a decision on appeal from the final rejection of
claims 20 through 23, all the claims pending in the
application.
The invention is directed to a structure for transferring
an amalgam into an electrode support tube at the end of an arc
tube.
Independent claim 20 is reproduced as follows:
20. An arc tube assembly comprising:
a light-transmissive arc tube having an end cap sealed to
each end thereof;
an electrode assembly sealed in each of said end caps,
each electrode assembly comprising an electrode attached to an
electrode support tube, each electrode support tube having a
generally cylindrical wall, at least one of said electrode
support tubes having an opening adjacent to the respective end
cap, said opening comprising a slot in the wall of said
electrode support tube, said slot having one edge depressed
relative to the other edge so as to define a concave surface
adjacent to said slot, and
a chemical fill in an interior region of the electrode
support tube having said opening.
The examiner relies on the following references:
Delembre et al. (Delembre) 3,716,744 Feb. 13,
1973
Wesselink et al. (Wesselink) 4,157,485 Jun.
5, 1979
Appeal No. 1997-4175
Application No. 07/805,703
3
Claims 20 through 23 stand rejected under 35 U.S.C. 103
as unpatentable over Delembre and Wesselink.
Reference is made to the brief and answer for the
respective positions of appellant and the examiner.
Appeal No. 1997-4175
Application No. 07/805,703
4
OPINION
We have carefully reviewed the evidence before us,
including, inter alia, the arguments of appellant and the
examiner and the applied references and we conclude, based on
such evidence, that the instant claimed subject matter would
not have been obvious, within the meaning of 35 U.S.C. § 103.
The examiner applies Delembre and specifically points to
opening 6, indicating that Delembre does not specify the
opening to be a vertically or horizontally elongated slot.
However, the examiner relies on Wesselink for a vertically
elongated slot for evacuating or filling an arc tube with an
amalgam, concluding that the combination of these references
would have made the instant claimed subject matter obvious and
indicating that the claimed vertically or horizontally
elongated slot is a “design alternative to the circular
opening of Delembre” [answer-page 4].
We find various problems with the examiner’s position.
The circular opening in Delembre is not, in our view, a “slot”
and we fail to find any reason for the skilled artisan to have
made it so. Independent claim 20 requires this slot to have
“one edge depressed relative to the other edge so as to define
Appeal No. 1997-4175
Application No. 07/805,703
5
a concave surface adjacent to said slot.” Notwithstanding the
examiner’s explanation of how the opening in Delembre may be
considered to have the claimed properties [answer-page 5], we
do not find any suggestion in the applied references for
forming a slot, as claimed.
Moreover, and most importantly, the instant claims
require a chemical fill in an interior region of “the
electrode support tube.” Delembre doesn’t teach anything
about an amalgam, or chemical fill. Wesselink, although
concerned with amalgams, is directed to applying the amalgam
in the discharge space of the arc tube and there is no
teaching or suggestion therein for applying the chemical fill
to an interior region of “the electrode support tube.” We do
not find the examiner’s argument [answer-page 5] that, in
Delembre, “the chemical fill is introduced, through the
electrode support tube, through the opening, in to [sic] a
discharge tube” to be persuasive. Since there is no teaching,
in Delembre, of a chemical fill, or amalgam, in an interior
region of the electrode support tube, the examiner’s
conclusion appears to be based on speculation through
hindsight. The total disclosure in Delembre, regarding hole
Appeal No. 1997-4175
Application No. 07/805,703
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6, is at column 2, lines 19-20: “The hole 6 is provided for
evacuating or filling the discharge area 11.”
In our view, the examiner has not established the
requisite prima facie case of obviousness for a proper
rejection under 35 U.S.C. § 103. Accordingly, the examiner’s
decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 1997-4175
Application No. 07/805,703
7
bae
Appeal No. 1997-4175
Application No. 07/805,703
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Joseph S. Romanow
GTE Products Corporation
100 Endicott Street
Danvers, MA 01923