Ex Parte Shuk et al

Board of Patent Appeals and Interferences

Feb 24, 2010

10335970 (B.P.A.I. Feb. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAVEL SHUK and TOM BLANAR
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Appeal 2009-009406
Application 10/335,970
Technology Center 1700
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Decided: February 24, 2010
____________________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 4-7, and 22-25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
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Application 10/335,970

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Appellants’ invention relates to an oxygen sensor with improved
electrode efficiencies because the electrolytic cell has a lower internal
impedance from treating the cell with alternating current at a relatively high
temperature for a period of time (Spec. 1:4-7; 5:13-16). Claim 1 is
illustrative:
1. A method of treating and using an oxygen sensor
having an electrolytic cell disposed to sense oxygen in a
process gas, the method to reduce impedance comprising:
providing an electrolytic cell having non-metallic
electrodes;
heating the electrolytic cell to a first selected
temperature;
providing alternating current across the electrolytic cell
to treat the cell, wherein heating the electrolytic cell and
providing alternating current occur during a warm-up cycle
prior to using the electrolytic cell;
using the electrolytic cell to sense oxygen by measuring a
voltage across a process electrode and a reference electrode
wherein the oxygen in the process gas is sensed substantially
immediately after treatment wherein the electrolytic cell is
heated to a second temperature that is higher than the first
selected temperature during use; and
wherein the alternating current is applied in the range of
about 1 to about 6 volts.
The Examiner relies upon the following evidence:
First Named Inventor Document No. Issue or Pub. Date
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Application 10/335,970

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Romine
Kawai
Munakata1
Toci2
US 4,186,071
US 5,433,830
JP 08-130018
DE 32 29 931 A1
Jan. 29, 1980
Jul. 18, 1995
May 21, 1996
Feb. 17, 1983

The Examiner maintains, and Appellants seek review of, the
following rejections:
1. the rejection of claims 1, 4-7, 22, and 23 under 35 U.S.C. § 103 as
obvious over Kawai in view of Romine and Munakata; and
2. the rejection of claims 1, 4-7, 24, and 25 under 35 U.S.C. § 103 as
obvious over Kawai in view of Romine and Toci.
Appellants have not presented separate, substantive arguments for any
particular claim or for any particular rejection on appeal. Accordingly, the
appealed claims for each rejection stand or fall with representative claim 1.

II. ISSUE ON APPEAL
Generally, Appellants contend that: (1) the cumulative nature of the
rejections suggests that the combination is not obvious; (2) the Examiner has
not provided a sufficient rationale, in accordance with legal precedent, as to
why one of ordinary skill in the art would have combined the teachings of
the prior art in the manner claimed; and (3) that the Examiner has used
impermissible hindsight and has insufficiently explained “the selection and
combination of certain teachings from each applied reference” (Br. 8-12).

1 An English language machine translation of Munakata was made of record
on June 16, 2008.

2 An English Language translation of Toci by FLS, Inc. (PTO 09-1568,
December 2008) was made of record on December 26, 2008.

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Application 10/335,970

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The Examiner contends that: (1) the separate rejections are present in
this case only to address the particularly claimed non-metallic electrodes of
claims 22-25 and are not evidence of non-obviousness; (2) the rejection
provides express rationales for combining the teaching of the references,
which are rooted in the teachings of the references, as a means for finding
obviousness and as is appropriate by law; and (3) Appellants’ hindsight
argument is conclusory and lacks necessary elaboration (Ans. 7-10).
Thus, the issue on appeal arising from the contentions of Appellants
and the Examiner is: have Appellants identified reversible error in the
Examiner’s findings of fact or application of the law such that the evidence
does not support the Examiner’s conclusion that the claimed subject matter
would have been obvious to one of ordinary skill in the art within the
meaning of § 103 in view of the applied prior art?
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in full agreement with the Examiner that
claim 1 would have been obvious to one of ordinary skill in the art within
the meaning of § 103 in view of the teachings of Kawai, Romine, and either
Munakata or Toci. Accordingly, we will sustain the Examiner’s rejection
for essentially those reasons expressed in the Answer, and we add the
following primarily for emphasis.

III. FACTUAL FINDINGS
In the rejection, the Examiner states that:
Romine teaches that a lower resistance is also
desired for solid electrolyte gas sensors that
operate on the principle of a voltage measurement.
See col. 1, ll. 15-44 and 52-56. Because a lower
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resistance will allow a voltage-measurement based
gas sensor to sink or source current better, it would
have been obvious to one of ordinary skill in the
art at the time the invention was being made to
utilize the method of Kawai for a gas sensor based
on voltage measurements, such as those shown by
Romine, in order to improve the performance of
those gas sensors as well. Furthermore, Romine
teaches an activation technique substantially
analogous to that of Kawai (i.e. applying potential
across the electrodes at elevated temperatures) and
teaches said technique not only lowers the
impedance of the sensor, but also improves the
switching response of the gas sensor. See Table II,
particularly the “After Current Activation”. This
suggests that the substantially analogous technique
of Kawai would also improve the switching
response of voltage-based gas sensors and one
possessing ordinary skill in the art would have
been motivated to utilize it for voltage based
sensors as well in order to improve the switching
performance of those sensors.
(Ans. 6).
The Examiner also states that “the method of Kawai appears to be
sensing means neutral and would presumably be applicable regardless of
whether the solid electrolyte gas sensor were voltage or current
measurement based” (Ans. 5-6).
The Background section of Kawai evidences that it was well known in
the art that the application of alternating current lowers internal resistance
(Kawai, col. 1, ll. 22-27). The teachings of Kawai avoid the physical
structural changes, such as blackening of zirconia electrodes, which occurs
during this known activation treatment (Kawai, col. 2, ll. 15-21).
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The background of Appellants’ Specification, in describing the
voltage that typically develops when the partial pressure of oxygen in the
process gas side differs from the partial pressure of oxygen in the reference
air, states that the “cell output signal is the voltage measured across the
electrolyte also known as the electromotive force (EMF) generated by the
cell” and that the measured voltage follows a Nernst-type equation (Spec.
2:7 to 3:15). In other words, Appellants’ Specification evinces that it was
well known in the art to use an oxygen sensor of the type taught by Kawai
by measuring voltage across the process and reference electrodes.

IV. PRINCIPLES OF LAW
In KSR Int'l Co. v. Teleflex Inc., the Supreme Court set aside any
“rigid” application of the teaching, suggestion, motivation (“TSM”) test,
advising that: “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 550 U.S. 398, 421 (2007). However, KSR
states that “[t]here is no necessary inconsistency between the idea
underlying the TSM test and the Graham analysis.” Id. at 419. In other
words, though obviousness can be found without a reason expressly stated in
the reference, if there is evidence in the record of a reason to combine the
references, that evidence may be used to show obviousness.
The Supreme Court clarified that “it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does,”
but that “the analysis need not seek out precise teachings [in the prior art]
directed to the specific subject matter of the challenged claim.” Id. at 418.
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416. The question to be asked is “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 417.
V. ANALYSIS
We find the Examiner has provided a clear and reasonable rationale as
to why one of ordinary skill in the art would have combined the teachings of
Kawai, Romine, and either Munakata or Toci. Further, we find that the
Examiner’s rationale is well supported by the teachings of the references
themselves. Accordingly, we find Appellants’ arguments that such a
rationale is lacking to be unpersuasive. Further, Appellants’ arguments do
not persuade us of any error with respect to the findings presented by the
Examiner or the reasoning provided by the Examiner.
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We disagree with Appellants’ assertion that multiple combinations of
references against the same claim demonstrate only “what might be within
the capabilities of one of ordinary skill in the art” (Br. 9). The Examiner’s
multiple combinations address the different non-metallic electrodes of
claims 22-25 by the addition of either Munakata or Toci. We find no
inconsistency in the Examiner’s application of Kawai and Romine over the
separate rejections. We also find no error with the Examiner’s reasoned
application of three references in concluding that the claimed invention
would have been obvious. See In re Gorman, 933 F.2d 982, 987 (Fed. Cir.
1991) (“The criterion [for a conclusion of obviousness], however, is not the
number of references, but what they would have meant to a person of
ordinary skill in the field of the invention.”).
Appellants argue that “one skilled in the art understand that there are a
range of different ways other than the teachings of Kawai in which to go
about lowering resistance” (Br. 10). We agree with the Examiner that
obviousness based on the teachings of Kawai and Romine is not avoided
merely because other ways to lower resistance may be known in the art
(Ans. 9).
Appellants attempt to create rules by parsing quotes from KSR and
Ortho-McNeil Pharma. v. Mylan Labs, 520 F.3d 1358 (Fed. Cir. 2008) (Br.
10). We do not agree with Appellants’ constrained reading of those cases.
We agree with the Examiner that there is nothing in the holding of KSR to
indicate that a rationale of obviousness cannot be supported by evidence in
the prior art such as that relied upon by the Examiner (Ans. 10).
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Since the Examiner’s reasoning is rooted in the teachings of the
references, Appellants’ argument that the Examiner’s conclusion relies on
hindsight is unpersuasive.
Further, the Examiner relies upon Romine only as evidence that one
of ordinary skill in the art would have used an electrolytic cell by measuring
voltage. Since Appellants’ Specification indicates that oxygen sensors
typically use voltage measurements, Appellants cannot now argue
successfully that it would not have been obvious to one of ordinary skill in
the art to have an oxygen sensor use voltage measurements. Appellants
cannot defeat an obviousness rejection with an argument directed to a claim
feature which is acknowledged to be known in the prior art. See Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A
statement . . . that something is in the prior art is binding on an applicant
and patentee for determinations of anticipation and obviousness.”); In re
Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (“[A] statement by an
applicant, whether in the application or in other papers submitted during
prosecution, that certain matter is ‘prior art’ to him, is an admission that that
matter is prior art for all purposes.”).

VI. CONCLUSION
On the record before us3 and for the reasons discussed above, we
sustain the rejections maintained by the Examiner.

3Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).
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Application 10/335,970

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VII. DECISION
We affirm the Examiner’s decision.

VIII. TIME PERIOD FOR RESPONSE
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) (2009).
AFFIRMED

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