10621637 (P.T.A.B. Mar. 25, 2013)

Ex Parte Shen et al

Patent Trial and Appeal BoardMar 25, 2013

10621637 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/621,637 07/17/2003 Yonsheng Shen 011361.00065 2587 22910 7590 03/25/2013 BANNER & WITCOFF, LTD. 28 STATE STREET SUITE 1800 BOSTON, MA 02109-1701 EXAMINER OLSEN, KAJ K ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 03/25/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex Parte YOUSHENG SHEN, FRANCO CONSADORI, and D. GEORGE FIELD ____________________ Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,650,054 Technology Center 1700 ____________________ Before RICHARD TORCZON, SALLY GARDNER LANE, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,560,054 2 This decision is on an appeal under 35 U.S.C. §§ 134(a) and 306 from the examiner’s final rejection of claims 1-67, 70-74, and 76-133 in the above-identified reissue application and reexamination proceeding, which previously were merged together. Claims 68, 69, and 75 were cancelled. We have jurisdiction over the appeal of the rejected claims under 35 U.S.C. § 6(b)(2). We reverse. STATEMENT OF THE CASE U.S. Patent No. 5,650,054 (the “’054 Patent”) is entitled “Low Cost Room Temperature Electrochemical Carbon Monoxide And Toxic Gas Sensor With Humidly Compensation Based On Protonic Conductive Membranes,” was issued July 22, 1997 to Yousheng Shen, Franco Consadori, and D. George Field, and is assigned to Atwood Mobile Products, Inc. (“Atwood”). This is the second time this reexamination proceeding has reached the Board. Atwood appealed a prior final rejection in the reexamination proceeding, and we entered a decision (mailed March 28, 2007) affirming- in-part and entering new grounds of rejection. A decision to merge the reexamination proceeding and reissue application was mailed March 14, 2008. CLAIMED INVENTION The ’054 patent “relates to electrochemical gas sensors, and particularly relates to electrochemical gas sensors having a sensing Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,560,054 3 electrode, a counter reference electrode, and a solid proton conductor for room temperature detection of the concentration of carbon monoxide (CO) in the ambient.” (Col. 1, ll. 5-10.) Claim 1 on appeal reads as follows and with emphasis added: 1. An electrochemical gas sensor for quantitative measurement of a gas in a ambient atmosphere comprising: a sensing electrode permeable to water vapor and comprised of an electrical conducting material and having a surface exposed to the ambient atmosphere; a counter electrode permeable to water vapor and comprised of an electrical conducting material; a first protonic conductive electrolyte membrane permeable to water vapor and situated between and in contact with the sensing and counter electrodes, the sensing electrode reacting with the gas to produce a change in electrical characteristic between the sensing electrode and the counter electrode; means for electrical measurement electrically connected to said sensing and counter electrodes; means, containing a volume of water vapor, for exposing a surface of said counter electrode to said water vapor, wherein the electrical conducting material of at least one of said sensing and counter electrodes is a proton-electron mixed conductive material having 10-50 wt % of a proton conductor material and 50-90 wt % of a first and a second electrical conductor material; whereby, in a positive ambient atmosphere concentration of said gas, said electrical measurement means detects changes in said electrical characteristic. EVIDENCE The Examiner relies upon the following prior art references: Dempsey Vanderborgh US 4,227,984 US 4,804,592 Oct. 14, 1980 Feb. 14, 1989 Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,560,054 4 LaConti Nagata Tomantschger Grot Uchida Hielscher Cisar US 4,820,386 US 4,913,792 US 5,302,274 US 5,330,860 US 5,474,857 US 5,403,452 US 5,635,039 Apr. 11, 1989 Apr. 3, 1990 Apr. 12, 1994 Jul. 19, 1994 Dec. 12, 1995 Apr. 4, 1995 Jun. 3, 1997 REJECTIONS The Examiner makes the following rejections: 1. Claims 1-67, 70-74, and 76-133 are rejected as being based upon a defective reissue declaration under 35 U.S.C. § 251. 1 2. Claims 1, 2, 9-12, 29-34, 52, 54, and 61-64 on the grounds of res judicata. 3. Claims 1, 5, 9, 11-13, 29-34, 52, 53, 57, 61, 63-65, 67, 71, 73, 77, 78, 82, 86, 88-90, 106-113, 117, 121, and 123-127 under 35 U.S.C. § 103(a) as unpatentable over Dempsey and any of Uchida, Grot, and/or Vanderborgh. 4. Claims 2, 54, 79, and 114 under U.S.C. § 103(a) as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; and LaConti. 5. Claims 3, 55, 80, and 115 under 35 U.S.C. § 103(a) as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; and Hielscher. 6. Claims 4, 56, 81, and 116 under 35 U.S.C. § 103(a) as unpatentable over Dempsey; Hielscher; any of Grot, Uchida, and/or Vanderborgh; and LaConti. 1 Appellant does not appeal the rejection under 35 U.S.C. § 251. Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,560,054 5 7. Claims 10, 62, 66, 70, 72, 74, 76, 87, 122, and 128-132 (and claims 67 and 73 in the alternative) under 35 U.S.C. § 103(a) as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; and Tomantschger. 8. Claims 66, 70, 72, 74, 76, and 128-132 under 35 U.S.C. § 103(a) as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; and Nagata. 9. Claim 133 as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; either of Nagata and Tomantschger; and Hielscher. ANALYSIS Rejection on Prior Art Grounds Each of the independent claims requires, in relevant part, a “means . . . for exposing a surface of said counter electrode to said water vapor[.]” The Examiner asserts that Dempsey teaches this limitation while Atwood argues Dempsey does not. A claim limitation that employs the language “means . . . for” invokes a rebuttable presumption that it is a means plus function limitation governed by 35 U.S.C. § 112(f). CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (referring to a prior and similar version of the statute: 35 U.S.C. 112, ¶ 6 (1975)). In construing a means plus function claim limitation, the recited function must first be identified. Then, the written description must be examined to determine the structure that corresponds to and performs that function. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1087 (Fed. Cir. 2003). Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,560,054 6 Here, the recited function is “exposing a surface of said counter electrode to said water vapor[.]” Atwood’s specification describes structure corresponding to this function as follows: A sensor 10 in FIG. 2 is shown with an electrically conductive can 30 having a reservoir 200 filled with de-ionized water. Can 30 is an example and illustration of a means, containing a volume of water vapor, for exposing a surface of a counter electrode to the water vapor. (Spec. col. 7, ll. 3-7). The Examiner asserts that equivalent structure is taught by Dempsey’s reservoir of distilled water, which the Examiner asserts exposes a surface of the Dempsey counter electrode to water vapor. Ans. 7 (citing Dempsey col. 4, ll. 39-49). We disagree with this finding, as Dempsey teaches exposing the counter electrode only to liquid water. See Dempsey col. 4, ll. 47-49 (“the surface of the counter electrode and the membrane area around the electrode is flooded”). All of the prior art-based rejections are premised on Dempsey teaching a “means . . . for exposing a surface of said counter electrode to said water vapor[.]” As Dempsey does not teach that limitation, we cannot sustain the rejection of any of the prior art-based rejections of any of the claims. Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,560,054 7 Rejection on Res Judicata Grounds Several of the claims (i.e., claims 1, 2, 9-12, 29-34, 52, 54, and 61-64) are rejected on the grounds of res judicata. A predecessor court to the Court of Appeals for the Federal Circuit previously cautioned the following: [T]he policy and purpose of the patent laws preclude the applicability of any doctrine akin to the judicially-developed doctrine of “res judicata” to bar the granting of patents on inventions that comply with the statute. . . . The Patent Office must have the flexibility to reconsider and correct prior decisions that it may find to have been in error. In re Borkowski, 505 F.2d 713, 718 (CCPA 1974) (citing In re Craig, 411 F.2d 1333 (CCPA 1969)). Res judicata does not ordinarily arise during examination, 2 Craig, 411 F.2d at 1335-36, although other doctrines 3 or rules may have a similar effect. In the present case, the Examiner’s theory for preclusion rests on a rule, 37 C.F.R. § 41.50(b) (2006). Ordinarily, when the Board affirms the rejection of a claim, the appellant may promptly seek reconsideration from the Board. 37 C.F.R. § 41.52. Section 41.50(b), however, provides for a new ground of rejection against a claim, in which case the Appellant has two options: either request 2 The case law does not involve reexaminations, so its applicability to reexaminations is unclear. The Examiner, however, expressly bases the rejection on the fact that the previously affirmed reexamination claims are also reissue application claims. The logic of the case law would ordinarily apply to reissue applications because they, like regular applications, can have continued prosecution through continuation applications. 3 For example, prosecution laches. In re Bogese, 303 F.3d 1362, 1369 (Fed. Cir. 2002). Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,560,054 8 reconsideration from the Board or pursue further examination before the Examiner. The rule does not provide guidance on how to proceed when some claims have been affirmed outright, while others are subject to a new ground of rejection. The rule also does not address the situation of a reissue application merged with a reexamination during the limited examination occurring under the rule. Under the rule, when examination is reopened, a new ground of rejection entered in a Board opinion is binding on the examiner unless the newly rejected claim is amended or new evidence is presented. 37 C.F.R. § 41.50(b)(1). The rule provides no authority for reopening examination of other claims where a rejection was simply affirmed. The Examiner has very little discretion under the rule. The rule provides that, if the Examiner rejects the claims, the Appellant may appeal again. As a formal matter, in this case, the Examiner has rejected the previously affirmed reexamination claims, which are also merged reissue claims, under a res judicata theory. In the present case, the Appellant could reasonably have read the rule, along with the guidance in the earlier decision, to mean that reconsideration of the affirmance against some claims was deferred until prosecution of the newly rejected claims was completed. In view of the peculiar procedural posture of this case, we treat the Appellant’s appeal of the previously affirmed claims as its request for reconsideration of the affirmance. In any case, we note that the Board’s prior decision did not expressly find that Dempsey taught a means for exposing a surface of a counter electrode to water vapor. Rather, the prior decision interpreted the “claimed means for exposing a surface of a counter electrode to water [sic, water Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,560,054 9 vapor] as encompassing, at least, a can having a reservoir filled with water” was and found it met by Dempsey’s “hydration port connecting a counter electrode and a water reservoir chamber to ensure that the surface of the counter electrode is flooded.” Ex parte Atwood Mobile Prods., Inc., Appeal No. 2007-0007 at 20 (Jan. 9, 2007). Since the claim interpretation in the earlier decision appears to rest on a misapprehension of the claim language, we conclude that the claim interpretation is not supported. Accordingly, we do not sustain the rejection of claims 1, 2, 9-12, 29- 34, 52, 54, and 61-64 on the grounds of res judicata. DECISION The rejection of claims 1, 5, 9, 11-13, 29-34, 52, 53, 57, 61, 63-65, 67, 71, 73, 77, 78, 82, 86, 88-90, 106-113, 117, 121, and 123-127 under 35 U.S.C. § 103(a) as unpatentable over Dempsey and any of Uchida, Grot, and/or Vanderborgh is reversed. The rejection of claims 2, 54, 79, and 114 under U.S.C. § 103(a) as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; and LaConti is reversed. The rejection of claims 3, 55, 80, and 115 under 35 U.S.C. § 103(a) as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; and Hielscher is reversed. The rejection of claims 4, 56, 81, and 116 under 35 U.S.C. § 103(a) as unpatentable over Dempsey; Hielscher; any of Grot, Uchida, and/or Vanderborgh; and LaConti is reversed. Appeal 2012-008746 Application 10/621,637 Reexamination Control No. 90/006,209 Patent 5,560,054 10 The rejection of claims 10, 62, 66, 70, 72, 74, 76, 87, 122, and 128- 132 (and claims 67 and 73 in the alternative) under 35 U.S.C. § 103(a) as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; and Tomantschger is reversed. The rejection of claims 66, 70, 72, 74, 76, and 128-132 under 35 U.S.C. § 103(a) as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; and Nagata is reversed. The rejection of claim 133 as unpatentable over Dempsey; any of Grot, Uchida, and/or Vanderborgh; either of Nagata and Tomantschger; and Hielscher is reversed. The rejection of claims 1, 2, 9-12, 29-34, 52, 54, and 61-64 on the grounds of res judicata is reversed. REVERSED 4 cu 4 We do not reverse (or affirm) the Examiner’s decision to reject claims 1- 67, 70-74, and 76-133 as being based upon a defective reissue declaration under 35 U.S.C. § 251. That rejection is not before us, as it was not appealed.