Ex parte Uemura

Board of Patent Appeals and Interferences

Jul 31, 1997

08012401 (B.P.A.I. Jul. 31, 1997)

Application for patent filed February 2, 1993.1
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FUMITO UEMURA

_____________
Appeal No. 95-0181
Application 08/012,4011
______________
HEARD: July 15, 1997
_______________
Before THOMAS, HAIRSTON, and FLEMING, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of
claims 1 through 3.
The disclosed invention relates to a pressure sensor
for sensing a pressure within a cylinder of an internal
combustion engine. According to the appellant, cracks and breaks
Appeal No. 95-0181
Application 08/012,401
2
in the flexible diaphragm portion of the sensor are avoided by
use of a diaphragm that has a resonance frequency above the
oscillation frequency range of the pressure to be detected in the
cylinder of the engine.
Claim 1 is the only independent claim on appeal, and it
reads as follows:
1. A pressure sensor for sensing a pressure within a
cylinder of an internal combustion engine, comprising:
a hollow main body defining a bore extending
therethrough and adapted to be mounted to an engine cylinder;
a pressure sensing assembly disposed within said bore
of said main body and dividing said bore into a detection cavity
for transmitting therethrough the pressure to be detected at a
pressure receiving end thereof disposed in communication with an
interior of the cylinder and an output cavity through which an
output signal from said pressure sensing assembly is to be
supplied;
a flexible metal diaphragm attached to said main body
at said pressure receiving end of said detection cavity for
sealing said detection cavity;
a pressure transmitting medium filled within said
detection cavity; and
means for preventing resonant vibrations of the
flexible metal diaphragm due to oscillations of the pressure
being detected, said preventing means comprising
said flexible metal diaphragm being configured and
dimensioned to have a resonance frequency above an oscillation
frequency range of the pressure to be detected.
The reference relied on by the examiner is:
Kodama et al. (Kodama) 5,161,415 Nov. 10, 1992
Appeal No. 95-0181
Application 08/012,401
In the grounds of the rejection (Answer, page 3), the2
examiner indicated that the "rejection is set forth in the prior
Office action paper number 8." A review of paper number 8 (final
rejection, page 3), reveals that two additional Kodama patents as
well as pages 1 through 3 of the BACKGROUND OF THE INVENTION, and
Figure 2 are listed as "suitable references." In view of the
vagueness of this latter phrase, and the failure of the examiner
to discuss the additional Kodama references in the Answer, we do
not consider the two additional references to Kodama as prior art
properly applied against the claims on appeal. A reference
should be positively included in the listed prior art of record
and the grounds of rejection to put the appellant on notice as to
what references are being applied against the claims. See
footnote 3 in In re Hoch, 428 F.2d 1341, 1342, 166 USPQ 406, 407
(CCPA 1970). With respect to the disclosure in the BACKGROUND OF
THE INVENTION, it is well settled that during the examination of
a patent application, admissions by an applicant may be
considered as prior art for any purpose, including use as
evidence of obviousness under 35 U.S.C. § 103. See In re Nomiya,
509 F.2d 566, 570-71, 184 USPQ 607, 611 (CCPA 1975). Unlike the
additional references to Kodama, appellant is on notice as to the
contents of the specification. A declaration (paper number 9)
under 37 CFR § 1.132 was submitted by appellant to retract the
admission in the specification. The declaration indicated that
the pressure sensor of Figure 2 was "'in-house' knowledge," and
that "[t]he description of Fig. 2 as being 'known' or
'conventional' was not intended to mean that it was known by or
conventional to the general public, or to represent its
availability or qualification as citeable prior art against this
application under any of the sub-paragraphs of 35 U.S.C. § 102."
The examiner correctly decided (final rejection, page 2) that the
declaration "cannot repeal the statement" because a mere
statement in a declaration that Figure 2 should not have been
described as known or conventional in the art will not support a
retraction of that which has been acknowledged in the
specification as known in the art. The factual basis underlying
the erroneous description of Figure 2 as known or conventional is
completely absent from the declaration. Thus, the acknowledged
prior art is available as prior art under 35 U.S.C. § 102(a).
3
Claims 1 through 3 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kodama.2
Appeal No. 95-0181
Application 08/012,401
4
Reference is made to the brief and the answer for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before
us, and we will reverse the obviousness rejection of claims 1
through 3.
According to the examiner (final rejection, page 3),
"[i]t is common engineering practice to change a dimension of a
component to change its resonance frequency," and "[i]t would
have been obvious to one of ordinary skill in the art at the time
the invention was made to size the diaphragm to raise its
resonance frequency to safe levels."
We agree with appellant's argument (Brief, page 4)
that:
[T]here is no mention or recognition
whatsoever in Kodama of the problem of
preventing resonant sympathetic
vibrations due to oscillations of a
pressure being detected, or of solving
the problem by configuring and
dimensioning a flexible metal diaphragm
to have a resonance frequency above the
oscillation frequency range of the
pressure to be detected. This is the
problem which is addressed and solved by
the present invention and the problem
which Kodama fails to even mention
(emphasis in original).
Appellant is correct when he argues (Brief, pages 4 and 5) that
Appeal No. 95-0181
Application 08/012,401
5
[t]he Examiner has failed to cite any
reference which would suggest preventing
resonant sympathetic vibrations and has
failed to cite any reference which would
suggest dimensioning the diaphragm to
have a resonance frequency above the
oscillation frequency range of the
pressure to be detected . . .
and that
. . . the Kodama reference cited by the
Examiner does not even mention the
source of trouble resolved by the
claimed invention let alone provide the
remedy of the claimed invention.

The examiner's line of reasoning does not contain any
discussion of whether the skilled artisan would have appreciated
the diaphragm problem caused by the oscillation frequency of the
pressure to be detected, and would have solved that problem in
the manner disclosed and claimed by appellant. The obviousness
rejection is, therefore, reversed because "a patentable invention
may lie in the discovery of the source of a problem even though
the remedy may be obvious once the source of the problem is
identified." See In re Sponnoble, 405 F.2d 578, 585, 160 USPQ
237, 243 (CCPA 1969).
Appeal No. 95-0181
Application 08/012,401
6
DECISION
The decision of the examiner rejecting claims 1 through
3 under 35 U.S.C. § 103 is reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-0181
Application 08/012,401
7
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2100 Pennsylvania Avenue, N.W.
Washington, D.C. 20037-3202