Ex Parte Swain

Board of Patent Appeals and Interferences

Jul 18, 2008

10955507 (B.P.A.I. Jul. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM HALL SWAIN
____________

Appeal 2007-3100
Application 10/955,5071
Technology Center 2800
____________

Decided: July 18, 2008
____________

Before ANITA PELLMAN GROSS, JOHN A. JEFFERY, and CARLA M.
KRIVAK, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
On February 5, 2008, we remanded the present application on appeal
to the Examiner under 37 C.F.R. § 41.50 to clarify the evidentiary support
forming the basis for the on-sale bar rejections under 35 U.S.C. § 102(b).
See Remand, at 1. In response, the Examiner requested additional
information from Appellant under 37 C.F.R. § 1.105 regarding the MER and

1 This application is a divisional application of Application Ser. No.
08/579,395, filed December 27, 1995, now U.S. Patent 6,940,267.
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MEC meters as to their structure and operation. See Communication mailed
Feb. 28, 2008.
Based on Appellant’s responses in connection with our remand,2 the
record before us now provides sufficient basis to decide the present appeal
of the Examiner’s rejections of claim 5. Claims 1-4 have been withdrawn
from further consideration (App. Br. 1, 82; Ans. 5). We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant invented a method for improving the accuracy of sensors
for measurement or control. Specifically, the method involves providing an
“implement” associated with the sensor that drives the magnitude of an
“operating parameter”3 and holds it at a constant value. As a result, the
sensor is operated where it is stable yet close to its optimum signal-to-noise
ratio.4 Claim 5 is illustrative:
5. I claim a method for making a more accurate sensor with
implement for at least one of measurement or control, made in steps:

obtain a said sensor having an output V responsive to a physical
quantity input I, the gain g given by

2 On February 27, 2008, Appellant filed a response providing additional
information regarding the MEC and MER meters. On June 13, 2008,
Appellant filed another response that included a copy of the February 27
response.
3 According to the Specification, the “[o]perating parameter Q can be any of
a variety of physical quantities able to change condition. It can be a
chemical mixture proportion, electric current, fluid pressure, etc.” (Spec. 18
(footnote)).
4 See generally Abstract; Spec. 7:1-18.
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g = δV / δI, and

said output V is also responsive to an undesired error producing
interference N, the sensitivity ψ being

ψ = δV / δN, and

in addition, said sensor has an operating parameter of magnitude Q
which modulates said ψ, and to a lesser extent said gain g;

at least one of calibrate, or make by a proven process, or otherwise
assure that said sensor has a strong Essential Characteristic evidenced by
observing that said Sensitivity ψ changes a lot more than said gain g when
said magnitude Q is driven over a practical range of values;

and:

provide an error reducing form of said implement, fitted to support
said sensor, and

also fitted to drive said magnitude Q and hold it at a constant value,
and by at least one of measurement or a proven process, set said magnitude
Q at a value corresponding to a said sensitivity ψ which is a lot less than
heretofore while said gain g is still good, thus making said sensor with
implement substantially more accurate than comparable transducers for said
input I in the presence of said interference N.

The Examiner relies on the following prior art references to show
unpatentability:
Voigt US 3,205,419 Sept. 7, 1965
Swain
(“Swain ‘011”)
US 3,768,011 Oct. 23, 1973

1. Claim 5 stands rejected under 35 U.S.C. § 112, ¶ 1 as failing to
comply with the written description requirement.
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2. Claim 5 stands rejected under 35 U.S.C. § 112, ¶ 2 as being indefinite
for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention.
3. Claim 5 stands rejected under 35 U.S.C. § 102(b) by (1) the offer for
sale of the MER and MEC meters, and (2) the sale of MER meters
prior to March 21, 1997.
4. Claim 5 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Voigt.
5. Claim 5 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Swain ‘011.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs5 and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

5 Throughout this opinion, we refer to the following documents submitted by
Appellant in connection with this appeal:
(1) the Appeal Brief filed January 13, 2006 (as amended by the
amendments filed April 5, 2006, June 23, 2006, and November 13,
2006) (“App. Br.”);
(2) the Reply Brief filed October 2, 2006 (“Reply Br.”); and
(3) the document styled “Traverse to New Points of Argument” filed
December 27, 2006 (“Supp. Reply Br.”).
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OPINION
The Rejection Under 35 U.S.C. § 112, First Paragraph
We first consider the Examiner’s rejection of claim 5 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Specifically, the Examiner indicates that the subject matter of
claim 5 contains subject matter that was not described in the Specification in
such a way as to reasonably convey to ordinarily skilled artisans that
Appellant had possession of the claimed invention at the time the application
was filed. According to the Examiner, the present application is replete with
new matter (including the subject matter of claim 5) and therefore is not a
proper divisional application of parent application Serial Number
08/579,395 (“the ‘395 application”) (Ans. 5-6).
Appellant contends that claim 5 is essentially a verbatim reproduction
of an alternative section of claim 66 in the ‘395 application that was directed
to a non-elected species of the invention.6 Appellant notes that this non-
elected species was ultimately divided out of that application as a result of a
restriction requirement. Appellant emphasizes that during prosecution of the
‘395 application, claim 66 was indicated as allowable so long as this
alternative language drawn to the non-elected species was deleted (i.e., the
language that now allegedly corresponds to claim 5 in the present
application). After deleting this alternative language, claim 66 was

6 Specifically, Appellant indicates that claim 66 of the ‘395 application
contained two patentably distinct species: (1) the so-called “Combiner”
species that was elected for prosecution on the merits, and (2) the so-called
“Better SNR” species that was non-elected. According to Appellant, the
language pertaining to the non-elected “Better SNR” species was ultimately
deleted from claim 66 to render the claim allowable. See App. Br., at 14-17.
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ultimately deemed allowable. As such, Appellant argues, the present
application is a proper divisional application, and claim 5 merely recites the
previously non-elected species disclosed in the ‘395 application and is
therefore entitled to the filing date of that application (App. Br. 13-22; Reply
Br. 1-3).
Appellant further contends that, among other things, original claims
12 and 13 in the ‘395 application provide a “detailed basis” for claim 5 of
the present application, particularly considered together with the showing of
the preferred operating point (B) in Figures 4 through 6 (App. Br. 23-45).
According to Appellant, the effect of claim 13 in the ‘395 application is to
set all the switches in Figure 9 of that application to the “4” position—a
position that is shown in Figure 7 of the present application. Appellant
acknowledges that no switches appear in Figure 7 of the present application,
and that this figure does not actually appear in the ‘395 application.7
Nevertheless, Appellant maintains that such a depiction is not new matter
since original claim 13 in the ‘395 application required no switches or
various “switch related parts.” In short, Appellant alleges that Figure 7 has
adequate basis in view of original claims 12 and 13 of the ‘395 application

7 See App. Br., at 76 (“While present figure 7 was not itself shown in my
original 1995 application, its basis was fully shown, especially in original
claims 12 and 13, plus the last sentence on page 1.”) (emphasis added); see
also Fig. 7 of the application on p. 38 of the originally-filed disclosure
(noting in textual caption that Figure 7 “is figure 9 of my 1995 description
with unneeded state switching parts removed. This is preferred over my
1995 figure 11 because it is simpler when adapted to SNR improvement
use.”) (emphasis added); Spec., at 22 (“[F]igure 7 had no need of switch
related parts 18, 23, 24, 25, 19, 20, and 22. These are discussed on 1995
pages 32-34 [sic].”) (emphasis added).
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considered with various aspects of that application including Figure 9 and
the last sentence of Page 1 (App. Br. 72-81).
The Examiner notes that merely subjecting a claim to a restriction
requirement does not entitle that claim to a particular filing date. The
Examiner emphasizes that claims are normally restricted before they are
examined on the merits (Ans. 10). In addition, the Examiner contends that
claim 5 does not relate specifically to any of the parameters in original
claims 12 and 13 (Ans. 10-11). The Examiner further notes that Figure 9 of
the ‘395 application was transformed to Figure 7 of the present application
“by removing a few parts and halting the operation of a few switches” (Ans.
11).
Based on these respective positions taken by the Examiner and
Appellant, we note at the outset several key differences between the present
application and the ‘395 application that are undisputed. First, it is
undisputed that Figure 7 of the present application does not appear in the
‘395 application. Second, it is undisputed that Figure 7 of the present
application differs from Figure 9 of the ‘395 application in several functional
respects, namely with respect to switching elements and associated
components. For clarity, we reproduce these respective figures and
summarize their differences below:

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Figure 9 of the ‘395 application

Figure 7 of the present application

Table 1: Comparison of Figure 9 of ‘395 application with Figure 7 of
present application

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Summary of Differences Between Figure 9 of ‘395 Application and
Figure 7 of Present Application

Figure 9 of the ‘395 application Figure 7 of the present application
Dual input to inverter 15

Single input to inverter 15
Electronic switch 18 switches
between two different positions (i.e.,
positions “2” and “4”) (‘395 Spec.
32:22-33:3)
Switch 18 connected to only one
position “4”

According to the Specification, a
wire “continuously joins the Ism 4
terminal to the connection for switch
18 to cause operation at .4 Amp
continually” (Spec. 23:1-3)
Phase shifter 23 connected to (1)
inverter 15, (2) capacitor 16, (3)
resistor 17, and (4) low pass filter 21
(‘395 Spec. 33:3-14)

No phase shifter
Counter 24 connected to (1) phase
shifter 23, and (2) gate or switch
driver 25 (Id.)
No counter

Gate or switch driver 25 connected
to gain switch 20 (Id.)
No (1) gate or switch driver, or (2)
gain switch
Gain switch 20 connected to gain
control 208 (Id.)
No gain control
Gain control 20 connected to polarity
switch 19 and integrator 22 (‘395
Spec. 33:1-3, 19-23).
No (1) polarity switch, or (2)
integrator

Table 2: Summary of Differences Between Figure 9 of ‘395 Application
and Figure 7 of Present Application

8 Although there are two different instances of numeral 20 in Figure 9 that
refer to distinct components, we refer to the “gain control” 20 as the box
between the switch 19 and the integrator 22.
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As the tables above illustrate, significant differences exist in these
embodiments of the present application and the ‘395 application—
differences that are undisputed. Figure 7 of the present application not only
omits several elements shown in Figure 9 of the ‘395 application, it operates
differently than Figure 9 by virtue of this omission at least with respect to
switching functionality provided by the omitted components.
Therefore, notwithstanding these differences, the issue before us is
whether the invention recited in claim 5 of the present application on appeal
is reasonably supported by the disclosure of the ‘395 application as
originally filed. For the reasons that follow, we answer this question “no.”
As an initial matter, the fact that a claim is subject to a restriction
requirement hardly guarantees the claim’s compliance with the statutory
requirements for patentability (i.e., 35 U.S.C. §§ 101-103 and 112) during
prosecution. In most cases, restriction is a preliminary matter that is usually
imposed before substantive examination on the merits. But even if
substantive examination had occurred prior to the restriction in this case,
nothing precludes raising patentability issues (including rejections based on
§ 112) after restriction.
Likewise, issues pertaining to an application’s compliance with other
statutory requirements related to the patentability determination could also
be raised after restriction, particularly those that are dependent upon
substantive evaluations under § 112. For example, Examiners must ensure
that claims filed in continuing applications under 35 U.S.C. § 120 are
actually entitled to the benefit of the filing date of an earlier filed U.S.
application by ensuring that the subject matter of the claims is disclosed in
the manner provided by 35 U.S.C. 112, first paragraph, in the earlier filed
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application. See Manual of Patent Examining Procedure § 201.11(I)(B),
Rev. 6, Aug. 2006 (“MPEP”); see also Tronzo v. Biomet, Inc., 156 F.3d
1154 (Fed. Cir. 1998). Where, as here, if an Examiner determines that this is
not the case (e.g., when an application purports to be a divisional
application, but in fact contains new matter that does not comply with 35
U.S.C. 112, first paragraph), the MPEP instructs Examiners to notify
applicants to change the application’s relationship to a continuation-in-part
from the original designation. See MPEP 201.11(I)(B) (instructing
Examiners to use Form Paragraph 2.10.01 in this circumstance).
Therefore, in the present appeal, the fact that claim 66 was subject to a
restriction requirement in the ‘395 application hardly guarantees that all of
that claim’s subject matter is entitled to the filing date of the ‘395
application. Significantly, claim 66 was added to the ‘395 application via an
amendment filed March 24, 2000.9 According to Appellant, both species
were recited in that claim which formed the basis for the restriction.10
It is true that claim 66 in the ‘395 application was ultimately allowed
following deletion of the subject matter pertaining to the non-elected
species—a species that formed the basis for claim 5 of the present

9 See Petition Decision in the ‘395 application, mailed June 28, 2001 (noting
that Appellant’s response dated March 24, 2000, to the Office Action of
January 24, 2000, was timely filed and canceled all claims except claims 32
through 66 which were included with the response).
10 See App. Br., at 19-22 (annotated copy of claim 66 identifying species);
see also App. Br., at 13 (“Present claim 5 is word for word the same as the
alternative section of claim 66 that was lost in the process of restrictions, and
more.”).
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application.11 As such, the subject matter of the allowed version of claim 66
is entitled to the filing date of the ‘395 application (December 27, 1995).
But we do not find that the subject matter pertaining to the non-
elected species first presented when claim 66 was added to the ‘395
application is entitled to the filing date of the ‘395 application. Rather, we
find that the originally-filed disclosure of the ‘395 application did not
support the subject matter of the non-elected species (i.e., the species
corresponding to the subject matter of claim 5 of the present application).
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellant was in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Under this standard, the ‘395 application falls well short of conveying
with reasonable clarity to skilled artisans that Appellant was in possession of
the claimed invention as of its filing date. First, we find unavailing
Appellant’s contention (App. Br. 23-45, 71-81) that claims 12 and 13 as
originally filed in the ‘395 application support the subject of matter of claim
5 on appeal. Appellant argues that the limitation in claim 5 calling for
holding the magnitude Q at a constant value (i.e., in the manner shown in
Figure 7) is supported in both claims 12 and 13 since these claims recite that
the operating parameter Ism is (1) set to reduce noise sensitivity (claim 12),
and (2) set to a substantially greater magnitude than the magnitude
corresponding to the minimum signal to noise ratio (claim 13) (App. Br. 43,
50, 51, 72-76; emphasis added).

11 Allowed claim 66 was ultimately issued as claim 16 of U.S. Patent
6,940,267.
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But merely reciting that this operating parameter is “set” in claims 12
and 13 hardly requires that its magnitude be held at a constant value (e.g.,
using a circuit with no switching elements such as that shown in Figure 7).
In our view, the operating parameter could just as well be “set” by a
switching arrangement such as that shown in Figure 9 of the ‘395
application. Nothing in claim 12 or 13 precludes such a “set” value from
changing from that value or cycling between one “set” value and another.
Nor are we persuaded that the last two sentences on Page 1 of the ‘395
application12 support the subject matter of claim 5 on appeal. We find
nothing in these sentences that expressly or implicitly suggests holding the
magnitude Q of the operating parameter at a constant value. In fact, since
the disclosure of the ‘395 application as a whole pertains to switching the
operating parameter,13 ordinarily skilled artisans would understand from the
‘395 application that “operating at a more favorable operating parameter
magnitude” would be associated with the disclosed switching functionality.
Even assuming, without deciding, that Appellant had intended for this
statement (along with the subject matter of claims 12 and 13) to describe
holding the operating parameter magnitude at a constant value, such scant
indications fall well short of providing sufficient disclosure for ordinarily

12 These sentences state “[i]n a simpler form, SNR is substantially improved
by operating at a more favorable operating parameter magnitude. Noise is
not cancelled, but this form can be faster and cost less.” (‘395 application
1:17-18.)
13 See, e.g., ‘395 application, at 16:2-3 (“The signal to noise ratio (SNR)
changes a lot when an operating parameter (Q) changes its condition.”); see
also id. at 18:6-7 (“What is needed is that the change in Q be sufficient to
cause a substantial change in the signal to noise ratio SNR of the sensor.); id.
at 24, Table I (comparing gain and noise sensitivity values at different
states); id. at 33-35 (describing switching functionality of Figure 9).
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skilled artisans to associate such disclosure with this distinct embodiment,
let alone making and/or using such a distinct embodiment under § 112. That
the ‘395 application contains no drawings or detailed description in its
Specification pertaining to holding the operating parameter magnitude at a
constant value only reinforces our conclusion.
Furthermore, it is well settled that claims that omit essential elements
of an originally-disclosed invention do not comport with the written
description requirement under § 112. See Gentry Gallery, Inc. v. Berkline
Corp., 134 F.3d 1473, 1479-80 (Fed. Cir. 1998) (claims directed to location
of recliner controls not on a console failed to comply with written
description requirement under § 112 since locating recliner controls on a
console was an essential element of the invention according to the
originally-filed disclosure).
Here, claim 5 effectively recites the functionality of the circuit shown
in Figure 7—a figure that Appellant admits was not provided in the ‘395
application. Significantly, this circuit effectively omits the switching
functionality of Figure 9 of the ‘395 application such that the operating
parameter is held at a constant value. See Tables 1 and 2, supra, of this
opinion. But since the switching functionality of Figure 9 is essential to the
invention of the ‘395 application, omitting this essential functionality to
arrive at the invention recited in claim 5 of the present application is
strikingly similar to the omission found to violate § 112 in Gentry Gallery.
For the foregoing reasons, we find that the subject matter of claim 5
pertaining to holding the magnitude of the operating parameter at a constant
value is not reasonably supported in the ‘395 application and is therefore not
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entitled to the benefit of the filing date of that application.14 Because the
subject matter of claim 5 was introduced via amendment well after the filing
date of the ‘395 application, it is therefore new matter with respect to that
application.
As such, Appellant has not shown that the Examiner erred in
concluding that, under § 112, claim 5 was not sufficiently described in the
Specification in such a way as to reasonably convey to ordinarily skilled
artisans that Appellant had possession of the claimed invention as of the
filing date of the parent application (December 27, 1995). Therefore, we
will sustain the Examiner’s rejection of claim 5 under § 112, first
paragraph.15

The Rejection Under 35 U.S.C. § 112, Second Paragraph
We will not, however, sustain the Examiner’s indefiniteness rejection
of claim 5 under 35 U.S.C. § 112, second paragraph. The Examiner
contends that “[i]t is not clear what all the claimed elements or steps are” or
how they are interconnected or interrelated (Ans. 6). While claim 5 is not a

14 See In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) (“It is elementary patent
law that a patent application is entitled to the benefit of the filing date of an
earlier filed application only if the disclosure of the earlier application
provides support for the claims of the later application, as required by 35
U.S.C. § 112.”).
15 Due to the presence of new matter, the subject matter of claim 5 of the
present application would, at best, form the basis for a continuation-in-part
application of the ‘395 application. See MPEP 201.11(I)(B). Neither the
Examiner nor Appellant, however, has indicated such a possibility, nor will
we engage in such an inquiry here in the first instance on appeal. Rather, we
emphasize that our decision is based on the record before us—a record based
on the present application being considered as a divisional application of the
‘395 application.
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model of clarity, we nonetheless find that ordinarily skilled artisans would
be able to reasonably interpret claim 5 in light of the Specification.
The claim calls for, in pertinent part, two distinct components: (1) a
sensor, and (2) an “implement” which is “fitted to support said sensor” and
drive the magnitude of the operating parameter to a constant value. When
read in light of the Specification, particularly the detailed description in
connection with the functionality shown in Figure 7 noted above, we find
that ordinarily skilled artisans would be able to reasonably interpret the
claim and ascertain the relationship of the recited elements, namely the
sensor and its associated “implement.”
We add that the Examiner’s rationale for the indefiniteness rejection is
belied by the Examiner’s allowance of the claims in the ‘395 application
reciting a sensor and implement which issued as U.S. Patent 6,940,267. See,
e.g., claim 16 of the ‘267 patent (reciting a method for making a more
accurate sensor with implement with state means driving the magnitude Q of
the operating parameter).
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s indefiniteness rejection of claim 5 under § 112, second
paragraph. Therefore, we will not sustain the Examiner’s indefiniteness
rejection of that claim.

The On-Sale Bar Rejection under § 102
We now consider the Examiner’s on-sale bar rejection of claim 5
under § 102(b) based on the commercial activity in connection with the
MER and MEC meters shown in the sales flyers in the ‘395 application
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(Ans. 7). Regarding this commercial activity, Appellant admits the
following facts:
• The MEC and MER products were offered for sale on May 22, 1996,
in Detroit, Michigan.
• No MEC product has been sold.
• The MER product was first sold in commerce on July 12, 1996, and
shipped to a customer in Australia.
• No offer or sale was made for either product before December 27,
1995.
(App. Br. 22-23.)
In response to our remand regarding the MEC and MER products
shown in the sales flyers, Appellant’s responses admit the following
additional facts:
• “The two flyers relate to offers for sale in May and July of 1996….”
• Working models of the MEC and MER products were built “well
after” December 27, 1995.
• “The MEC incorporated the basic teaching of [the ‘395 application]
with switched magnitude of Operating Parameter Q.”
• “The MER incorporated a simpler teaching…Basically, Q was held at
a constant magnitude….”
(Appellant’s Responses to Board Remand, filed Feb. 27, 2008, and June 13,
2008, at 2-3.)
Based on these admitted facts, we find that since the MEC product
switches the magnitude of the operating parameter, it therefore corresponds
to the subject matter of the ‘395 application. Also, since the MER product
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holds the operating parameter at a constant magnitude, it corresponds to the
subject matter of claim 5 of the present application.
As such, we find the offer for sale for the MEC product that occurred
in this country on May 22, 1996, is not a bar under § 102 as it occurred after
the filing date of the ‘395 application. However, we reach the opposite
conclusion with respect to the offer for sale for the MER product.
Section 102(b) bars patentability for inventions “on sale in this
country” more than one year before the application’s filing date. 35 U.S.C.
§ 102(b) (2002). While the statute bars sales activity in the United States,
even sales that occur in foreign countries can fall within § 102 so long as
“substantial activity prefatory to a sale occurs in the United States.” Robbins
Co. v. Lawrence Mfg. Co., 482 F.2d 426, 434 (9th Cir. 1973). Offers for
sale in the United States constitute such prefatory activity. Id. According to
the U.S. Supreme Court, the on-sale bar is triggered if the invention is (1)
the subject of a commercial offer for sale, and (2) ready for patenting. Pfaff
v. Wells Elec., Inc., 525 U.S. 55, 67 (1998).
As noted above, the MER product was first sold in commerce on July
12, 1996, and shipped to a customer in Australia. Although the product was
delivered to Australia, it is unclear from the record whether the sale of the
MER prior to delivery occurred in the United States. In any event, this
ambiguity is not dispositive because even if we assume, without deciding,
that this actual sale of the MER occurred in Australia, Appellant nonetheless
admits that the MER product was offered for sale on May 22, 1996, in
Detroit, Michigan.
Furthermore, we find that the MER product was ready for patenting as
it incorporated the essential features of claim 5 of the present application
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(i.e., holding the magnitude of the operating parameter at a constant
value)—a feature not supported by the parent ‘395 application.16 And, as
we noted above, the MER product was the subject of a commercial offer for
sale in this country (Detroit, Michigan). Since claim 5 is not adequately
supported by the ‘395 application, at least the offer for sale of the MER
product on May 22, 1996—an offer that occurred more than eight years
before the filing date of the present application (October 1, 2004)—
constitutes an on-sale bar of the invention recited in claim 5 on appeal.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s on-sale bar rejection of claim 5 under § 102. Therefore, we
will sustain the Examiner’s rejection of that claim.

The Anticipation Rejections Based on Prior Art
We will not, however, sustain the Examiner’s anticipation rejections
of claim 5 under § 102 based on Voigt and Swain ‘011 (Ans. 8-9).
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a
claimed invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v. App. Dig. Data
Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore & Assoc., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).
Regarding Voigt, the Examiner takes the position that when rotating a
TV antenna to improve reception, its “operating parameter Q related to

16 Our previous discussion with respect to the ‘395 application not
supporting the subject matter of claim 5 in connection with the § 112, first
paragraph, rejection applies equally here and we therefore incorporate that
discussion by reference.
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direction modulates the relationship” of voltage V to interference N and the
relationship of voltage to current in the antenna (Ans. 8).
We disagree. While it is true that rotating an antenna in the direction
of a received signal maximizes the signal-to-noise ratio for that signal, we
disagree with the Examiner that the sensitivity in such an antenna will
change in this situation. The signal-to-noise ratio is increased not by
changing the antenna’s sensitivity, but rather by merely increasing the level
of the received signal with respect to the noise level. In this situation, even
assuming that the noise remains constant, the sensitivity of the antenna
would not change: it is only the received signal that would change resulting
in a higher signal-to-noise ratio.
Therefore, even if we assume, without deciding, that the direction of
the antenna somehow corresponds to the recited operating parameter, we
still fail to see how such an operating parameter modulates the noise
sensitivity, let alone how such an operating parameter can be “driven” to
achieve the results recited in claim 5, namely setting the magnitude of the
parameter corresponding to a reduced sensitivity at a particular gain value,
as claimed. We therefore find the Examiner erred in rejecting claim 5 under
§ 102 based on Voigt.
We will also not sustain the Examiner’s anticipation rejection based
on Swain ‘011. The Examiner refers to Figure 2 of Swain ‘011 and takes the
position that making the apparatus in Swain ‘011 would inherently entail
obtaining a sensor with an output V. According to the Examiner, if someone
were to place a magnet next to the core SQ of the device, the magnet would
induce an error with the sensitivity defined by the standard sensitivity
equation (Ans. 13-14). The Examiner equates the magnitude of current is as
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the operating parameter that, according to the Examiner, modulates the
sensitivity (Ans. 14).
Appellant argues that the system adjusts the operating parameter Ism to
hold a large input current to a level sufficient for measurement—an entirely
different purpose than controlling noise sensitivity as is claimed in claim 5
(App. Br. 62-67).
In this regard, we agree with Appellant that while Swain ‘011 is
directed to cancelling magnetic noise (Swain ‘011, Abstract), the reference
does not control noise sensitivity via the magnitude of the operating
parameter in the manner claimed. Although the Examiner is correct that
magnitude of current is can be considered an operating parameter, we still
fail to see how holding such an operating parameter at a constant value
achieves the results recited in claim 5, namely with respect to reducing noise
sensitivity.
Swain ‘011 discloses a system for measuring the magnitude and
direction of a direct current or magnetic intensity (Swain ‘011, Abstract; col.
1, ll. 5-12). While this system is nonresponsive to nearby magnetic noise
fields (Swain ‘011, col. 1, ll. 41-45), we find nothing in Swain ‘011 that the
magnitude of the operating parameter affects the noise sensitivity in the
manner claimed despite the Examiner’s contentions to the contrary. The
Examiner’s analysis in this respect (Ans. 13-15) is speculative, and simply
cannot support a prima facie case of anticipation of claim 5.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s anticipation rejections of claim 5 based on Voigt and Swain
‘011. Therefore, we will not sustain these anticipation rejections.

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DECISION
We have sustained the Examiner's rejections of claim 5 with respect to
(1) the written description requirement under § 112, first paragraph, and (2)
the on-sale bar under § 102. We have not, however, sustained the
Examiner’s rejections of claim 5 with respect to (1) indefiniteness under
§ 112, second paragraph, and (2) the anticipation rejections based on the
cited prior art. Therefore, the Examiner’s decision rejecting claim 5 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

eld

WILLIAM H. SWAIN
4662 GLEASON AVE.
SARASOTA, FL 34242
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