Ex Parte Warehime

Board of Patent Appeals and Interferences

Jun 25, 2003

08931253 (B.P.A.I. Jun. 25, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LESTER L. WAREHIME
__________
Appeal No. 2001-2423
Application 08/931,253
___________
ON BRIEF
___________
Before PAK, OWENS and DELMENDO, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 and 3-
13, which are all of the claims remaining in the application.
THE INVENTION
The appellant claims a millivoltage generator, i.e., a
thermocouple, having as the thermocouple elements a tubular
sheath and a rod extending within and spaced apart from the
Appeal No. 2001-2423
Application 08/931,253

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interior sidewall of the tubular sheath. Claim 1 is
illustrative:
1. A millivoltage generator comprising a rod of a first
metal having side walls extending within and spaced apart from
the interior side walls of a tubular sheath of a second metal,
said rod having an end face thereof fixed against an inner face
of a closed end of said sheath, said rod side walls and said
sheath interior side walls having no abutting contact with each
other said rod extending beyond an open end of said sheath to a
second end thereof, said rod being held in place in said sheath
proximate said second end thereof.
THE REFERENCES
Wolff 2,691,056 Oct. 5, 1954
Westbrook et al. (Westbrook) 2,946,835 Jul. 26, 1960
Hajny 3,038,950 Jun. 12, 1962
Holzl 3,343,589 Sep. 26, 1967
THE REJECTIONS
The claims stand rejected as follows: claims 1 and 3-13
under 35 U.S.C. § 112, first paragraph, written description
requirement; claims 1, 4, 6 and 7 under 35 U.S.C. § 102(b) as
anticipated by Sparrow; claims 1 and 4 under 35 U.S.C. § 102(b)
as anticipated by Hajny; claim 3 under 35 U.S.C. § 103 as obvious
over Sparrow or Hajny, in view of Westbrook; claim 5 under
35 U.S.C. § 103 as obvious over Sparrow or Hajny, in view of
Holzl; claims 8-10 and 12 under 35 U.S.C. § 103 as obvious over
Sparrow in view of Hajny; claim 11 under 35 U.S.C. § 103 as
obvious over Sparrow in view of Hajny and common knowledge; and
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Application 08/931,253

1 The appellant apparently erroneously includes claim 3 in
both groups.
2 The appellant has provided no argument on appeal directed
toward any dependent claim other than claim 3.
3
claim 13 under 35 U.S.C. § 103 as obvious over Sparrow or Hajny,
in view of Wolff.
OPINION
We reverse the rejection under 35 U.S.C. § 112, first
paragraph, reverse the rejections over Sparrow and over Sparrow
combined with additional prior art, and affirm the rejections
over Hajny and over Hajny in combination with additional prior
art.
The appellant states that the claims stand or fall in two
groups, claims 1 and 4-13, and claim 3 (brief, page 4),1 even
though additional references are applied to dependent claims
other than claim 3 and, unlike the sole independent claim (1)
which is rejected under 35 U.S.C. § 102(b), many of the dependent
claims are rejected under 35 U.S.C. § 103. The appellant’s only
argument regarding claim 3 pertains to a rejection over Holzl in
view of Sparrow which is no longer applied by the examiner
(brief, pages 10-11).2 We therefore consider claim 3 to stand or
fall with the claim from which it depends, i.e., claim 1.
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Application 08/931,253

3 The pages of the examiner’s answer have been renumbered
sequentially.
4
Accordingly, we limit our discussion of the affirmed rejections
to claim 1. See In re Burckel, 592 F.2d 1175, 1178-79, 201 USPQ
67, 70 (CCPA 1979); In re Herbert, 461 F.2d 1390, 1391, 174 USPQ
259, 260 (CCPA 1972); 37 CFR § 1.192(c)(7)(1997).
Rejection under 35 U.S.C. § 112, first paragraph
The examiner argues that “an inner face of a closed end of
said sheath” in claim 1 lacks adequate written descriptive
support in the appellant’s originally-filed specification
(answer, page 4).3 The examiner argues that the appellant’s
figure 2 shows what appears to be a cylindrical sheath having two
open ends, one of which is sealed by a cap-shaped weld which, as
stated in the appellant’s specification (page 5, lines 6-7),
fixes the rod to the sheath and forms a conductive junction
(answer, pages 6-7).
The appellant argues that in the appellant’s figure 2 the
upper end of the sheath itself is closed and the rod abuts the
inner surface of that closed end (supplemental brief, page 9;
reply brief, pages 1-2).
The appellant’s specification does not support the
appellant’s interpretation of claim 1. The specification
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(page 5, lines 6-7) and figure 2 indicate that the weld, or other
material which fixes the end of the rod to the end of the sheath,
forms a cap which closes the end of the sheath and electrically
connects the rod and the sheath. As shown in figure 2, the weld
begins at the end of the sheath and extends beyond that end. If
the sheath itself had a closed end as argued by the appellant,
then the rod, which would be on the inside of the closed end,
would be on a side of the closed end opposite the side on which
the weld is formed. The specification does not indicate that a
weld on one side of a closed end could bond the sheath to a rod
on the other side of the closed end.
Hence, we interpret “an inner face of a closed end of said
sheath” in claim 1 as referring to the inner face of the weld or
other material which closes the end of the sheath. Consequently,
we find adequate written descriptive support for that phrase in
the appellant’s originally-filed specification. Accordingly, we
reverse the rejection under 35 U.S.C. § 112, first paragraph.
Rejections over Sparrow,
alone or with additional prior art
“Anticipation requires that every limitation of the claim in
issue be disclosed, either expressly or under principles of
inherency, in a single prior art reference.” Corning Glass Works
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Application 08/931,253

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v. Sumitomo Electric, 868 F.2d 1251, 1255-56, 9 USPQ2d 1962, 1965
(Fed. Cir. 1989).
Sparrow discloses a thermocouple having a rod (17) secured
at an end (18) thereof to a closed end (16) of a tube (14) by
welding or a similar technique (page 1, right column, lines 3-
16). The rod and the tube have dissimilar thermoelectric
characteristics such that they form a thermocouple (e.g., the
tube is copper and the rod is constantan) (page 1, right column,
lines 10-16). The outer end of the rod is welded to a copper
rod (20) at a junction (21) so as to form a second thermocouple
(page 1, right column, lines 16-19). The copper rod extends
beyond an open end of the tube (figure).
The appellant’s claim 1, which is the only independent
claim, requires that an end face of a rod of a first metal is
fixed against an inner face of a closed end of a tubular sheath,
and that the other end of this rod is beyond an open end of the
tubular sheath. To meet this requirement the examiner relies
upon what the examiner calls Sparrow’s “rod 17/20" (answer, page
8). Sparrow’s rods 17 and 20, however, are separate rods made of
different materials such that they form a thermocouple (page 1,
right column, lines 14-19). Rod 17 does not extend beyond an
open end of the sheath, and rod 20 is not fixed against an inner
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face of a closed end of the sheath. Consequently, neither of
these rods meets the above-mentioned requirements of the
appellant’s claim 1. Accordingly, we reverse the rejection of
claims 1, 4, 6 and 7 under 35 U.S.C. § 102(b) over Sparrow.
As for the rejections of dependent claims under 35 U.S.C.
§ 103, the examiner has not established that Sparrow would have
fairly suggested, to one of ordinary skill in the art, the above-
discussed requirement of the appellant’s independent claim 1
pertaining to the rod, or established that the secondary
references remedy this deficiency in Sparrow. Therefore, we
reverse the rejection under 35 U.S.C. § 103 over Sparrow in view
of the secondary references.
Rejections over Hajny,
alone or with additional prior art
Hajny discloses a thermocouple (27) comprised of a tubular
outer thermoelement (9) having extending therewithin, in spaced
coaxial relation, a rod-like inner thermoelement (10) (col. 2,
lines 10-21; figure 1). “The elements 9 and 10 are electrically
joined at their outer ends by a welded bead 11 which also seals
the outer end of the tubular outer element 9 and forms the hot
junction for the thermocouple 27" (col. 2, lines 21-25). The end
of the rod-like inner thermoelement which is not welded to the
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tubular outer thermoelement is held in place in the tubular outer
thermoelement by electrical insulation (12) which fills the
annular space between the inner and outer thermoelements (col. 2,
lines 25-27). The rod-like inner thermoelement extends beyond an
open end of the tubular outer thermoelement (figure 1).
Thus, Hajny’s thermocouple meets all of the requirements of
the appellant’s claim 1 and, therefore, anticipates the
millivoltage generator claimed in that claim.
The appellant argues that Hajny’s weld electrically connects
the end of the rod-like inner thermoelement to the end of the
tubular outer thermoelement and physically seals the end of the
tubular outer thermoelement, whereas the appellant’s rod is fixed
directly to the tubular sheath without any intervening weld
material (supplemental brief, pages 6-7 and 9). We are not
persuaded by this argument because, as discussed above regarding
the rejection under 35 U.S.C. § 112, first paragraph, we
interpret “said rod having an end face thereof fixed against an
inner face of a closed end of said sheath” in the appellant’s
claim 1 as meaning that the end face of the rod is fixed against
a weld or other material which closes the end of the sheath.
Accordingly, we affirm the rejection under 35 U.S.C.
§ 102(b) of claims 1 and 4 over Hajny and the rejections under
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35 U.S.C. § 103 of claims 3, 5 and 13 over Hajny in view of
additional prior art.
DECISION
The rejections of claims 1 and 3-13 under 35 U.S.C. § 112,
first paragraph, written description requirement, claims 1, 4, 6
and 7 under 35 U.S.C. § 102(b) over Sparrow, claim 3 under
35 U.S.C. § 103 over Sparrow in view of Westbrook, claim 5 under
35 U.S.C. § 103 over Sparrow in view of Holzl, claims 8-10 and 12
under 35 U.S.C. § 103 over Sparrow in view of Hajny, claim 11
under 35 U.S.C. § 103 over Sparrow in view of Hajny and common
knowledge, and claim 13 under 35 U.S.C. § 103 over Sparrow in
view of Wolff, are reversed. The rejections of claims 1 and 4
under 35 U.S.C. § 102(b) over Hajny, claim 3 under 35 U.S.C.
§ 103 over Hajny in view of Westbrook, claim 5 under 35 U.S.C.
§ 103 over Hajny in view of Holzl, and claim 13 under 35 U.S.C.
§ 103 over Hajny in view of Wolff, are affirmed.
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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
)
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
TJO/ki
Appeal No. 2001-2423
Application 08/931,253

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Frank J. Catalano
Catalano, Zingerman & Associates
810 South Cincinnati
STE 405
Tulsa, OK 74119