Ex Parte Tabata

Board of Patent Appeals and Interferences

Oct 28, 2005

10150497 (B.P.A.I. Oct. 28, 2005)

1 Application for patent filed on May 20, 2002.
1
The opinion in support of the decision being entered today was not
written for publication in a law journal and is not binding
precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MAKOTO TABATE

_____________
Appeal No. 2005-2488
Application 10/150,4971
_____________
ON BRIEF
_______________
Before PAK, KRATZ, and TIMM, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 1 through 6, which are all
of the claims pending in the above-identified application.
Appeal No. 2005-2488
Application No. 10/150,497
2
APPEALED SUBJECT MATTER
Claim 1 is representative of the subject matter on appeal
and reads as follows:
1. A probe for an infrared clinical thermometer which
detects infrared rays radiated from an ear drum to measure a body
temperature comprising:
a cylindrical trunk section comprising a rigid member for
insertion into an external ear canal; and
a thin film section which has infrared permeability for
sealing the distal end of the cylindrical trunk section,
wherein the cylindrical trunk section and the thin film
section are integrally molded by the same resin material such
that the outer peripheral surfaces of the cylindrical trunk
section and the thin film section are smoothly connected to each
other.
PRIOR ART REFERENCES
The prior art references relied upon by the examiner in
support of the Section 103 rejections before us are:
Meyst et al. (Meyst) 4,911,559 Mar. 27, 1990
O’Hara et al.(O’Hara) 5,179,936 Jan. 19, 1993
Beerwerth et al.(Beerwerth) 6,195,581 Feb. 27, 2001
REJECTION
The appealed claims stand rejected as follows:
1. Claims 1, 2, 5 and 6 under 35 U.S.C. § 103(a) as
Appeal No. 2005-2488
Application No. 10/150,497
3
unpatentable over the combined disclosures of Beerwerth and
O’Hara; and
2. Claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Beerwerth, O’Hara and Meyst.
OPINION
We have carefully reviewed the claims, specification and
prior art references, including all of the arguments advanced by
both the examiner and the appellant in support of their
respective positions. This review has led us to conclude that
the examiner’s Section 103 rejections are not well-founded.
Accordingly, we reverse the examiner’s Sections 103 rejections.
Our reasons for these determinations follow.
As is apparent from the examiner’s finding at page 3 of the
Answer, Beerwerth teaches a probe for an infrared clinical
thermometer having a plastic outer wall 102 corresponding to the
claimed cylindrical trunk section and a thin film window 103
corresponding to the claimed thin film section. See also
Beerwerth, columns 6 and 7, together Beerwerth, Figure 1.
According to column 6, lines 49-55, of Beerwerth, the window
103 can be made with various materials, including polyethylene,
polypropylene or copolymers thereof. Consistent with the
teachings of Beerwerth, O’Hara teaches using both the outer wall
Appeal No. 2005-2488
Application No. 10/150,497
2 The examiner relies on the disclosure of Meyst to show
only the features recited in claims 3 and 4.
4
(the claimed cylindrical trunk) and the window (the claimed thin
film section) of an infrared clinical thermometer probe, which
can be made from the same plastic or resin materials, such as
polyethylene and polypropylene. See O’Hara, column 4, lines
48-53 and column 5, lines 12-15 and 35-40.
The dispositive question is, therefore, whether the examiner
has correctly determined that Beerworth teaches “the cylindrical
trunk section and the thin film section [which] are integrally
molded by the same resin material such that the outer peripheral
surfaces of the cylindrical trunk section and the thin film
section are smoothly connected to each other (emphasis ours)” as
recited in claim 1.2 On this record, we answer this question in
the negative.
According to page 5 of the specification, the phrase “‘outer
peripheral surfaces are smoothly connected to each other’ means
that a step or a seam is not formed in the connection portion
between the outer peripheral surface of the trunk section and the
outer peripheral surface of the thin film section.” Moreover, in
reference to Figure 4 which shows a single piece structure
defining cylindrical trunk and thin film sections (without any
Appeal No. 2005-2488
Application No. 10/150,497
3 The examiner has not asserted that Beerwerth and O’Hara
would have suggested a single piece structure defining
cylindrical trunk and thin film sections. See the Answer in its
entirety.
5
seam), the specification states that such sections are
“integrally molded by the same resin material.” See page 12.
Thus, notwithstanding the examiner’s suggested interpretation at
pages 6 and 7 of the Answer to the contrary, we concur with the
appellant that the claimed probe is required to have a single
piece structure defining the claimed cylindrical trunk and thin
film sections as shown by Figure 4. See the Reply Brief in its
entirety for the appellant’s remark. This single piece
(seamless) structure, of course, is not taught by Beerwerth or
O’Hara. As correctly pointed out by the appellant (e.g., the
Brief, page 4), both Beerwerth, as shown by its Figure 1, and
O’Hara, as shown by Figure 2, teach at least a seam between the
window and the outer wall of the probe (see also Beerwerth,
column 6, lines 40-42 and column 7, lines 1-6 in reference to
Figure 1 and O’Hara, column 4, line 48 to column 5, line 6 in
reference to Figure 2).3 Thus, we concur with the appellant that
the examiner has not established a prima facie case of
obviousness regarding the claimed subject matter within the
meaning of Section 103.
Appeal No. 2005-2488
Application No. 10/150,497
6
CONCLUSION
In view of the foregoing, we reverse the examiner’s decision
rejecting claims 1 through 6 under 35 U.S.C. § 103(a).
REVERSED
Chung K. Pak )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Peter F. Kratz ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Catherine Timm )
Administrative Patent Judge )
CKP/cam
Appeal No. 2005-2488
Application No. 10/150,497
7
Barry E. Bretschneider
Morrison & Foerster, LLP
1650 Tysons Blvd. Suite 300
McLean, VA 22102