Ex Parte Sheem

Board of Patent Appeals and Interferences

Feb 11, 2003

08935368 (B.P.A.I. Feb. 11, 2003)

The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.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 SANG K. SHEEM

Appeal No. 2001-0659
Application 08/935,3681

ON BRIEF

Before BARRETT, FLEMING, and GROSS, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 1-3. The rejections of claims 4, 5,
and 7-9 are withdrawn in the examiner's answer. Thus, claims 4,
5, and 7-9 are objected to as depending from a rejected claim,
Appeal No. 2001-0659
Application 08/935,368
We reverse.
BACKGROUND
The invention relates to an optical fiber sensor as may be
understood from claim 1, reproduced below.
1. An optical fiber sensor comprising:
a tubing, an optical fiber residing inside the tubing,
and a membrane attached to the tubing; and
a plugging material located between said optical fiber
and said tubing, wherein an air-tight cavity is formed by
plugging material in combination with said tubing and said
optical fiber and said membrane, whereby the surface of said
membrane becomes resilient due to the air-cushion effect of
said air-tight cavity;
wherein the surface of the membrane is non-planar,
smooth, and taut.
The examiner relies on the following reference:
Mori 3,814,081 June 4, 1974
Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as being
clearly anticipated by Mori.
We refer to the final rejection (Paper No. 6) and the
examiner's answer (Paper No. 14) (pages referred to as "EA__")
Appeal No. 2001-0659
Application 08/935,368
Appeal No. 2001-0659
Application 08/935,368
OPINION
Appellant argues several differences between Mori and the
subject matter of claim 1.
First, it is argued that the examiner erred in finding that
spacer ring 408 in Figs. 23 and 24 is a "tubing" (Br5), because
it is a spacer ring.
We agree that spacer ring 408 is a "tubing" and that the
optical fibers reside at least partly inside the tubing and a
membrane is attached to ring 408. The fact the spacer ring has a
different name is not persuasive. In addition, although it is
inconsistent with the examiner's rejection, we note that the
optical fibers are within a flexible cover 403 which can also be
considered a "tubing" since claim 1 does not preclude the tubing
from being flexible and does not preclude the membrane from being
attached to the tubing indirectly via the spacer ring 408.
Second, it is argued that Mori requires two fibers while
"[t]he present invention claims the use of a single fiber" (Br5).
The examiner correctly points out (EA6-7) that claim 1 is an
open-ended claim which does not preclude the presence of
additional optical fibers. Thus, this argument is not
Appeal No. 2001-0659
Application 08/935,368
becomes resilient due to the air-cushion effect of said air-tight
cavity" (Br5-6). It is argued that Mori does not specifically
disclose the formation of an air-tight cavity.
The examiner responds that the combination of the
diaphragm 409, corresponding to the "membrane," the spacer
ring 408, corresponding to the "tubing," and the periphery of the
forward end of the cover tube 304, corresponding to the "plugging
material," seals the forward end of the optical system against
the exterior. Therefore, the examiner finds that Mori teaches an
air-tight cavity. In addition, the examiner notes that the
diaphragm changes shape due to the blood pressure and states that
"it appears that without air tight cavity, it would be hard to
change the shape of the elastic diaphragm 409 only with the blood
pressure" (EA7).
We disagree with the examiner's findings. Mori does not
disclose that the flexible cover 403 is sealed to the optical
fiber to form an air-tight cavity or that the surface of the
membrane acts against the air-cushion effect of the air-tight
cavity. It is improper to resort to speculation or unfounded
assumptions to supply deficiencies in the factual basis for a
Appeal No. 2001-0659
Application 08/935,368
to the flexible cover 403, not that the flexible cover 403 is
sealed to the optical fiber to provide an air-tight cavity. The
flexible cover 403 tube could be open to the atmosphere at the
other end and the diaphragm end would still be sealed. There is
no reason why an air-tight cavity would necessarily be inherent.
The examiner's reasoning that it would be hard to change the
shape of the elastic diaphragm 409 with only the blood pressure
without an air-tight cavity (apparently an implied argument of
inherency) is not convincing because it takes less force to
deflect a membrane that is open at one side to the atmosphere
than if it had to act against an air-tight cavity where the force
increases with the amount of deflection.
Appeal No. 2001-0659
Application 08/935,368
Because we find that Mori does not disclose the limitations
of a plugging material forming an air-tight cavity and the
membrane acts against the air-cushion effect of the air-tight
cavity, the anticipation rejection of claim 1 is reversed. The
rejection of claims 2 and 3, which depend from claim 1, are also
reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 2001-0659
Application 08/935,368
HENRY P. SARTORIO
DEPUTY LABORATORY COUNSEL FOR PATENTS
LAWRENCE LIVERMORE NATIONAL LABORATORY
P.O. BOX 808 L 703
LIVERMORE, CA 94551