Ex Parte MIZUTANI et al

Patent Trials and Appeals Board

Mar 15, 2019

13644486 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/644,486 10/04/2012
23117 7590 03/19/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Keigo MIZUTANI
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
GPK-2635-1232 8548
EXAMINER
KESSEL, MARIS R
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
03/19/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEIGO MIZUTANI and NORIKAZU KAJIY AMA
Appeal 2019-001197
Application 13/644,486
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
8, 9, 11, 12, and 14--19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as "DENSO CORPORATION, a
corporation of Japan." Appeal Brief of May 29, 2018 ("Br."), 3.
2 Final Office Action of February 16, 2018 ("Final Act."). In this opinion,
we also refer to the Examiner's Answer of September 24, 2018 ("Ans.") and
the Reply Brief of November 20, 2018 ("Reply Br.").
Appeal 2019-001197
Application 13/644,486
CLAIMED SUBJECT MATTER
The claims are directed to a gas sensor. Spec. 1:9--10.3 Claim 8,
reproduced below, is illustrative of the claimed subject matter:
8. A gas sensor element comprising:
an empty inner space into which a measurement gas is
introduced under a predetermined diffusion resistor;
a first oxygen pump cell including a pair of first and
second electrodes formed on surface of a first solid electrolyte
body having oxygen ion conductivity such that the first
electrode faces the inner space, oxygen being introduced into or
discharged from the inner space to adjust oxygen concentration
in the inner space by supplying electricity to the pair of the first
and second electrodes;
a second oxygen pump cell including a pair of third and
fourth electrodes formed on surface of a second solid
electrolyte body having oxygen ion conductivity such that third
electrode faces the inner space, oxygen being introduced into or
discharged from the inner space to adjust the oxygen
concentration in the inner space by supplying electricity to the
pair of the third and fourth electrodes; and
a sensor cell including a pair of fifth and sixth electrodes
formed on surface of the first or second solid electrolyte body
having oxygen ion conductivity such that the fifth electrode
faces the inner space, concentration of a specific gas component
contained in the measurement gas being detected from a value
of a current flowing through the pair of the fifth and sixth
electrodes;
wherein
the first oxygen pump cell and the second oxygen pump
cell are disposed such that the first and third electrodes facing
the inner space are disposed in a same chamber forming the
inner space and are directly opposed to each other within the
chamber, such that the first and third electrodes are face-to-face
with each other in a first direction,
3 Application No. 13/644,486 ("Spec.").
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Application 13/644,486
each of the second, fourth, and sixth electrodes is
exposed to a common reference oxygen concentration gas in a
first or second reference gas space,
the first reference gas space is formed between the first
solid electrolyte body and a first sheet spaced from the first
solid electrolyte body by a first spacer,
the second reference gas space is formed between the
second solid electrolyte body and a second sheet spaced from
the second solid electrolyte body by a first spacer,
the common reference oxygen concentration gas is an
atmosphere,
the sensor cell is disposed downstream from the first
oxygen pump cell and second oxygen pump cell with respect to
flow of the measurement gas, and
the inner space under the diffusion resistor is configured
such that the measurement gas is introduced in a second
direction that is perpendicular to the first direction.
Claims Appendix (Br. 25-26).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Mizutani
Tojo
US 2009/0229978 Al Sept. 17, 2009
US 6,068,747 May 30, 2000
REJECTIONS
The Examiner rejects claims 15-19 "under 35 U.S.C. 112(b) or
35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention." Final Act. 3.
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The Examiner rejects claims 8, 9, 11, 14--1 7, and 19 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Mizutani. Final Act. 4, 13. 4
The Examiner rejects claims 8, 9, 11, 12, and 14--19 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Tojo in view of Mizutani.
Final Act. 13.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellants'
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner's indefiniteness and obviousness rejections for
the reasons expressed in the Final Office Action and the Answer. We add
the following primarily for emphasis.
Indefiniteness
Claim 15 recites, in relevant part, "a first oxygen pump cell including
a pair of first and second electrodes formed on surface of a first solid
4 The Examiner rejects claims 12 and 18 under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Mizutani and an additional reference identified as
Inoue. Final Act. 12. The rejection of claims 12 and 18 is not argued
separately on appeal and we therefore do not address them separately. See
Br. 12 ("Applicant ... focuses on the rejections of independent claims 8 and
15[. ]").
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Application 13/644,486
electrolyte body[,]" "a second oxygen pump cell including a pair of third and
fourth electrodes formed on surface of a second solid electrolyte body[,]"
and "a sensor cell including a pair of electrodes composed of a fifth
electrode and the fourth electrode formed on surface of the first or second
solid electrolyte body .... "
The Examiner rejects claim 15 5 for indefiniteness. Final Act. 3. In
particular, the Examiner finds that the claim language is ambiguous as to
"how the fourth electrode is formed on a surface of the second solid
electrolyte body as required by the limitations referring to the second oxygen
pump cell but can also be formed on the first OR second solid electrolyte
body .... " Ans. 24. Appellants argue that the Examiner reversibly erred in
rejecting claim 15 because "the words 'first or' are superfluous in claim
15 []" but "the indefiniteness rejection does not assert that the claim is
internally inconsistent or contradictory." Reply Br. 2.
During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow .... The
reason is simply that during patent prosecution when claims can
be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed ....
An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this
way can uncertainties of claim scope be removed, as much as
possible, during the administrative process.
In re Zietz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). Given that Applicant
acknowledges that the claim limitation at issue in claim 15 contains
5 Appellants do not present separate arguments for the indefiniteness
rejection of claims 16-19. See, e.g., Br. 12-13. These claims, therefore,
stand or fall with the indefiniteness rejection of claim 15. See id.; see also
37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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"superfluous" words (Reply Br. 2.), we sustain the Examiner's
indefiniteness rejection.
Obviousness
Appellants argue that the Examiner reversibly erred in rejecting claim
8 6 based on Mizutani alone because the "oxygen monitor cell 4" of Mizutani
does not teach or suggest an "oxygen pump cell." Br. 15. More specifically,
Appellants describe the operation of the prior art oxygen monitor cell and
assert that it is patentably distinguished from the recited "oxygen pump cell .
. . having oxygen ion conductivity ... , oxygen being introduced into or
discharged from the inner space to adjust oxygen concentration in the inner
space by supplying electricity to the pair of the first and second electrodes."
From the outset, claim 8 is an apparatus claim which "cover[ s] what a
device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). "It is well settled that
patentability of apparatus claims must depend upon structural limitations and
not upon statements of function." In re Michlin, 256 F.2d 317,320 (CCPA
1958). Appellants' argument, directed to the operation of the prior art
oxygen monitor cell 4, therefore does not structurally distinguish the prior
art cell from that recited. See Br. 15-16, Reply Br. 5 (stating that the prior
art cell and the recited cell "are structurally different things" without
6 Appellants do not present separate arguments for the obviousness rejection
of claims 9, 11, 14--1 7, and 19 based on Mizutani alone or the obviousness
rejection of claims 9, 11, 12, and 14--19 based on Tojo and Mizutani. See,
e.g., Br. 14--23. The obviousness rejections of these claims, therefore, stand
or fall with those of claim 8. See id.; see also 37 C.F.R. § 4I.37(c)(l)(iv)
(2013).
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specifying the structural differences); see also Final Act. 5 (finding that
"[t]he apparatus of Mizutani is identical to the presently claimed structure").
Moreover, the Specification provides that "the first and second
oxygen pump cells 2 and 4 ... [are] made of electrolyte having oxygen-ion
conductivity such as zirconia and ceria." Spec. 10:17-19. Mizutani
similarly describes a gas sensor having electrolyte bodies made from
zirconia and ceria. Mizutani ,r 94. The record before us, therefore, shows
that Mizutani teaches or suggests an "oxygen pump cell ... having oxygen
ion conductivity" as recited in claim 8.
Appellants next argue that the Examiner reversibly erred in finding
that Mizutani teaches or suggests "an empty inner space into which a
measurement gas is introduced under a predetermined diffusion resistor"
because Mizutani "emphasizes the presence of gas resistance portion 21 C in
the cited paragraph describing Figures 11-13." Br. 13. Appellants,
however, acknowledge that the Examiner cites Figures 23-25 instead of
Figures 11-13 of Mizutani for this particular limitation. Id. at 17-18; see
Final Act. 4 (citing the diffusion resistance portions 12G in Figures 23-25
and ,r 174 of Mizutani). Without disputing the teachings in Figures 23-25
and ,r 174 of Mizutani cited by the Examiner in support of the rejection, the
sole argument by Appellants is that Mizutani "does not teach or suggest that
the eight embodiments of Figures 23-25 would have been combined with
the fourth embodiment of Figures 11-13 .... " Br. 18.
As the Examiner finds, Mizutani teaches that in the embodiments of
Figures 23-25, "the measuring gases are still passed through the diffusion
resistance portions 12G" and a skilled artisan would have arrived at claim 8
based on Mizutani's teachings as a whole because "a simple substitution of
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one known element for another is likely to be obvious when a predictable
result is achieved." Final Act. 4--5. Appellants do not address, much less
identify error in the Examiner's rationale in support of the obviousness
rejection. See Br. 17-18. We, therefore, are not persuaded by Appellants'
argument for this aspect of the obviousness analysis.
With regard to the obviousness rejection of claim 8 based on Tojo and
Mizutani, the dispositive issue on appeal is whether the combined prior art
teaching would have led the skilled artisan to an "inner space under the
diffusion resistor [that] is configured such that the measurement gas is
introduced in a second direction that is perpendicular to the first direction"
as recited in the claim.
The Examiner acknowledges that Tojo does not teach this limitation
and cites Mizutani in support of the rejection. Final Act. 16. The Examiner
finds Tojo "teaches that the longer the diffusion length L becomes, the
smaller amount of the gas to be measured will reach the sensor cell" whereas
"Mizutani teaches the diffusion resistance portion is formed in the
measuring gas chamber on the plane perpendicular to the stack direction of
the first and second solid electrolyte bodies." Id. (citing Tojo 7:55---61 and
Mizutani ,r,r 20, 150, Fig. 11). The Examiner reasons that given Mizutani's
teaching which "enables a reduction in distance between an external end
wall of the diffusion resistance portion," a skilled artisan would have
combined Tojo and Mizutani "so that the measurement gas is introduced in a
second direction that is perpendicular to the first direction because doing so
would allow the gas sensing element to have an increased response in
operation." Id. (citing Mizutani ,r 20).
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Appellants argue that the references are not combinable because
combining the configuration in Tojo which allows the gas to travel in a
parallel direction with that of Mizutani would change the principle of
operation in Tojo. Br. 22. Appellants, however, do not address the
Examiner's finding and rationale in support of the rejection. See Br. 22
(solely arguing that the configuration of Tojo would change when combined
with that of Mizutani). We further note that Appellants do not specify any
principles of operation - rather than the arrangement of the components -
that may be altered based on the combined teaching.
Appellants' do not challenge the Examiner's fact findings nor the
"articulated reasoning with some rational underpinning" based on these
findings. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appellants'
argument, solely directed to how Tojo's configuration may change when
combined with Mizutani is not persuasive as all of the features of the
secondary reference need not be bodily incorporated into the primary
reference and the skilled artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F .2d
881, 889 (Fed. Cir. 1984).
DECISION
The Examiner's rejections are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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