Ex parte Stiegman

Board of Patent Appeals and Interferences

Jun 30, 2000

08226819 (B.P.A.I. Jun. 30, 2000)

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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALBERT E. STIEGMAN
__________
Appeal No. 1997-1667
Application 08/226,819
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS, and DELMENDO, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 6 through 12, 16 through 20 and 22 through 38. The
only other claims remaining in the application, which are
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Application No. 08/226,819
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claims 13 through 15 and 21, stand withdrawn from further
consideration by the examiner.
The subject matter on appeal relates to a sensor
material, a polymerization catalyst, an organopolymer metal-
silica sol-gel composite and a single phase metal-silica sol-
gel derived optically transparent glass, all of which comprise
metal and silicon atoms wherein the metal atoms are uniformly
distributed within a sol-gel derived glass as individual metal
centers. This appealed subject matter is adequately
illustrated by independent claim 6 which reads as follows:
6. A sensor material wherein the material comprises a
single phase metal-silica sol-gel derived glass, the glass
exhibiting chromatic changes that detect the presence of
chemical species and comprising transition metal and silicon
atoms wherein the metal atoms are uniformly distributed within
the sol-gel derived glass as individual metal centers.
The references relied upon by the examiner as evidence of
obviousness are:
Dougherty 5,286,890 Feb. 15, 1994
Baiker, “Mixed Gels of Vanadia and Silica: Structural
Properties and Catalytic Behavior in Selective Reduction of
Nitric Oxide with Ammonia,” Journal of Catalysis, pp. 273-285
(1988).
Ghosh, “Semiconducting properties of sol-gel derived vanadium
silicate glasses,” Appl. Phys. Lett., Vol. 59, No. 7, pp. 855-
856 (1991).
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Application No. 08/226,819
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Claims 6 through 12, 25, 27 through 33 and 36 through 38
stand rejected under the second paragraph of 35 U.S.C. § 112
as failing to particularly point out and distinctly claim the
subject matter which the appellant regards as his invention.
Claims 6 through 10, 16 through 20 and 25 through 38
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Baiker; claim 12 stands correspondingly rejected as being
unpatentable over Baiker in view of Ghosh; and claims 22
through 24 stand correspondingly rejected as being
unpatentable over Baiker in view of Dougherty.
OPINION
For the reasons set forth below, we will sustain the
examiner’s section 112, second paragraph, rejection of claim
28 but will not sustain any of the other section 112 or
section 103 rejections before us on this appeal.
The section 112, second paragraph, rejection
As correctly indicated by the appellant in the brief, the
examiner’s indefiniteness position is not well founded with
respect to the claim 11 term “thin” (in addition to the
appellant’s comments, see page 9 of the subject specification
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Application No. 08/226,819
In any further prosecution that may occur, the appellant1
and the examiner should address and resolve whether the
examiner’s aforenoted criticism of claim 28 is also applicable
to claims 7 and 17.
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regarding the meaning of this term), the expression
“exhibiting
. . . species” in claims 6 and 25 (in addition to the
appellant’s comments, see pages 6 and 7 of the subject
specification regarding the meaning of this expression), or
the term “oxometal” in claims 27, 33, 36 and 38. It follows
that we cannot sustain the examiner’s section 112, second
paragraph, rejection of claims 6 through 12, 25, 27, 29
through 33 and 36 through 38.
However, we will sustain the examiner’s section 112,
second paragraph, rejection of claim 28 since the appellant
has not contested and in fact appears to agree with the
examiner’s criticism of this claim (see the paragraph bridging
pages 7 and 8 of the brief).1
The section 103 rejections
Concerning the section 103 rejection based upon Baiker
alone, the examiner points to nothing and we find nothing
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independently in this reference which would have suggested
somehow modifying the teachings thereof in such a manner as to
yield products of the type defined by the appealed claims.
Alternatively, we are cognizant of the examiner’s
statement on page 7 of the answer that, “[c]oncerning Baiker
alone, the failure of the reference to explicitly discuss
certain [here claimed] features is not persuasive [of
patentability] since it does not mean that the materials of
Baiker lack these properties.” This statement reflects that
the examiner regards the products/materials of Baiker as
corresponding to the appellant’s claimed products/materials
and concomitantly that Baiker’s products/materials inherently
possess the properties recited in the appealed claims.
However, the record before us contains utterly no evidence or
rationale in support of such a position. See, for example, In
re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-1951
(Fed. Cir. 1999); Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd.
App. Pat. & Int. 1986). On the other hand, the appellant’s
declaration filed June 27, 1996 under 37 CFR § 1.132 evinces
that the products/materials of Baiker do not correspond to and
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do not inherently possess the properties of the here claimed
products/materials.
Under the circumstances recounted above, we consider the
examiner’s nonobviousness conclusion based upon Baiker alone
to be without support. As a result, we cannot sustain the
examiner’s section 103 rejection of claims 6 through 10, 16
through 20 and 25 through 38 as being unpatentable over
Baiker.
Furthermore, the above discussed deficiencies of Baiker
plainly are not supplied by the secondary references to Ghosh
and Dougherty. Thus, even assuming it would have been obvious
to combine Baiker with these secondary references, the result
of this combination would not correspond to the subject matter
defined by the rejected claims. It follows that we also
cannot sustain the examiner’s section 103 rejection of claim
12 as being unpatentable over Baiker in view of Ghosh or his
corresponding rejection of claims 22 through 24 as being
unpatentable over Baiker in view of Dougherty.
Summary
Appeal No. 1997-1667
Application No. 08/226,819
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We have sustained the examiner’s section 112, second
paragraph, rejection of claim 28. However, we have not
sustained any of the other rejections advanced by the examiner
on this appeal.
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Application No. 08/226,819
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The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
John D. Smith )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )
tdl
Appeal No. 1997-1667
Application No. 08/226,819
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Patrick W. Bengtsson
LIMBACH & LIMBACH
2001 Ferry Bldg.
San Francisco, CA 94111