Ex Parte Oppermann et al

Patent Trial and Appeal Board

Sep 24, 2012

10207170 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/207,170 07/30/2002 Hans-Joachim Oppermann OPPE3001/FJD 1097
23364 7590 09/24/2012
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
RAEVIS, ROBERT R
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
09/24/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte HANS-JOACHIM OPPERMANN and
DETLEF EXNER
________________

Appeal 2009-011299
Application 10/207,170
Technology Center 2800
________________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2009-011299
Application 10/207,170

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STATEMENT OF THE CASE
Pursuant to 37 C.F.R § 41.52, Appellants have requested rehearing of
our August 26, 2010, Decision on Appeal (“Decision”), wherein we affirmed
the following rejections:
Claims 11-13 and 19 stand finally rejected under 35 U.S.C. § 102(b)
as anticipated by Grieger (US 5,827,985; Oct. 27, 1998).
Claims 11 and 14-16 stand finally rejected under 35 U.S.C. § 102(b)
as anticipated by Peterson (US 5,079,962; Jan. 14, 1992).
Claims 15 and 16 stand finally rejected under 35 U.S.C. § 103(a) as
obvious over Peterson in view of Swantee (US 4,293,138; Oct. 6, 1981).
Claims 17 and 20 stand finally rejected under 35 U.S.C. § 103(a) as
obvious over Grieger.
Claim 18 stands finally rejected under 35 U.S.C. § 103(a) over
Peterson in view of Takahashi (US 6,286,995 B1; Sep. 11, 2001).
Of these sustained rejections, Appellants request rehearing of only
those rejections that were based upon Grieger (Request 1-2). As such, we do
not further consider any of the rejections that are based upon Peterson.
Regarding the rejections that are based, at least in part, on Grieger,
Appellants contend the Board erred on the following three points.
Appellants contend the Board erred in concluding that Grieger discloses a
shaped seal (Request 1). Appellants contend the Board erred in concluding
that Grieger’s coatings produce a press fit (Request 1-2). Appellants
contend the Board erred in finding Appellants’ arguments regarding the “gap
distinction,” which were raised for the first time in the Reply Brief, to be
untimely (Request 2). We address these contentions separately infra.

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THE CLAIMED SUBJECT MATTER
Independent claim 11 is illustrative, reading as follows:
1. An apparatus for aseptic mounting of a sensor to a
container, the container having a medium located therein, and
the sensor serving to determine and/or monitor at least one
physical and/or chemical process variable relating to the
medium, the apparatus comprising:
a fitting associated with the container and defining an
internal area for holding the sensor such that the sensor extends
in the direction of the container, said internal area opening into
an opening facing the container such that a gap is defined by
said internal area and the sensor; and
a shaped seal positioned in said opening, said shaped seal
serving, when the sensor is received within said internal area
and positioned to determine and/or monitor the at least one
physical and/or chemical process variable relating to the
medium, to produce a press fit such that said shaped seal seals
said internal area of said fitting from the medium and closes
said gap.

ANALYSIS
I.
Appellants have not demonstrated that the Board erred in concluding
Grieger discloses a shaped seal. On Rehearing, Appellants quote the
Board’s original Decision and respond as follows:
On page 4 of the Decision, the Board states:
Appellants’ Specification provides no objective
definition that would indicate what structural
configurations would or would not render a seal to be
deemed ‘shaped.’
Response:
Clearly, the drawings are part of the application and
therefore the disclosure. The figures show that the seal is not
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Application 10/207,170

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an extended cylinder as is the case with the coating 62 and 64
of Grieger.
(Request 1).
This argument is not persuasive. The fact that Grieger’s coatings may
possess a shape that is different from the shape of Appellants’ seal, as
exemplified in Appellants’ Drawings, is not dispositive of whether Grieger’s
coatings may be reasonably interpreted as constituting a shaped seal.
Appellants are attempting to impermissibly incorporate unclaimed subject
matter into the claims (i.e., the specific configuration of Appellants’ shaped
seal). That is, Appellants’ arguments are not commensurate in scope with
the broader language of claim 1.
II.
Appellants have not demonstrated that the Board erred in concluding
that Grieger’s coatings produce a press fit. Appellants contend
[C]laim 11 recites that the seal produces a press fit for sealing.
The coatings 62 and 64 cannot produce a press fit. It is basic
mechanics that in order to produce a press fit compression is
necessary. The coatings 62 and 64 do not have compression to
any degree necessary to produce a press fit. Certainly, the
application does not have to disclose the mechanics involved.
(Request 1-2).
Appellants’ arguments are not persuasive. Grieger states
Referring again to FIGS. 2 and 3, an upper flange 68 is
positioned over probe element 36 to secure the probe element
36 to the lower flange 32. . . .
The tapered surface 82 of upper flange 68 engages the
probe element 36 adjacent the tapered surface 58 of head 54.
Cooperation of these tapered surfaces 82 and 58 prevent
movement of the probe element 36 in the direction of arrow 88
due to high pressure inside the vessel 14 and to provide a seal
between the probe 36 and the upper flange. . . .
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The upper and lower flanges 32 and 68 cooperate to
rigidly fix or secure the probe element 36 to the process
connection such as flange 34 of vessel 14. Probe element 36 is
secured to vessel 14 with sufficient mechanical integrity to
withstand high temperature, high humidity, and high pressure.
Cooperation of tapered surface 48 on lower flange 32 with
tapered surface 60 on probe element 36 and cooperation of
tapered surface 82 of upper flange 68 with tapered surface 58 of
probe element 36 prevent outward movement of the probe
element 36 relative to the upper and lower flanges 68 and 32
which might otherwise be caused by positive process pressures.
The cooperation of the tapered surfaces also prevents inward or
downward movement of the probe element 36 which might
otherwise be caused by negative process pressure, gravity, or
process forces such as viscosity, friction, turbulence,
mechanical contact with agitators, etc.
The configuration of lower flange 32, probe element 36,
and upper flange 68 also provide a process seal to minimize or
prevent leakage of process materials such as gas, liquid, or
particulate matter out of the containment vessel 14. The
improved sealing arrangement of sensor apparatus 30 also
prevents or minimizes the ingress of outside elements when the
vessel is at low pressure. Such sealing is accomplished by
sealing materials which fill spaces or gaps between electrical
and mechanical elements tightly.
(Grieger, col. 6, l. 65 – col. 7, l. 52).
This disclosure indicates that the upper and lower flanges provide
compression against the coatings 62, 64 of the probe element 36 to form a
seal. As such, the coatings, themselves, must be under compression. That
is, Grieger discloses that the Teflon® coatings 62, 64, in combination with
the upper and lower flanges, “produce a press fit such that said shaped seal
seals said internal area of said fitting from the medium and closes said gap”
as required by claim 1. Claim 1 does not more narrowly require that the
shaped seal be formed of a material and configuration that would allow the
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seal alone to produce a press fit against the lower flange without the
assistance of additional external forces provided by the upper flange.1
III.
Appellants have not demonstrated that the Board erred in finding
Appellants’ arguments regarding the “gap distinction,” which were raised
for the first time in the Reply Brief, to be untimely. Appellants contend
On page 5 of the Decision the Board states that the Reply
Brief argues for the first time the “gap” distinction. The gap
distinction was raised in the Reply Brief because the examiner
raised it in the Examiner’s Answer. In the final rejection
referred to by the Board, the reference to the gap was not clear,
and it was not clear until the Examiner’s Answer, because in the
Examiner’s Answer the examiner annotated Fig. 2 of Grieger.
It is for this reason that the discussion of the gap was made in
the Reply Brief.
(Request 2).
Appellants’ arguments are not persuasive. Appellants are correct that
the Examiner supplemented his rationales for the rejection set forth in the
Final Rejection by attaching, inter alia, an annotated copy of Grieger’s
Figures 2 and 3 to the first Examiner’s Answer (Ans. Exhibit “A” (mailed
Jan. 30, 2006)). However, the issue is not whether the Examiner
supplemented the record. The issue is whether the rationales set forth in the

1 Moreover, even if claim 1 were alternatively interpreted more narrowly so
as to require that the shaped seal be composed of a material having a level of
compressibility that would, for whatever reason, exclude Teflon®, it is
worth noting that Grieger further states that the probe element 36 may be
alternatively coated with “inert plastics, elastomers, or other dielectric
materials . . . which are suitable for pressures, temperatures, and chemicals
encountered” (col. 7, ll. 65-57 (emphasis added)). An elastomer, by
definition, is a compressible material. However, for the reasons noted, we
need not rely on this additional teaching of Grieger to reach our decision.
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Final Rejection were sufficiently clear so as to provide Appellants with
reasonable notice of the basis of the rejection so as to provide Appellants a
fair opportunity to raise their arguments in the Appeal Brief.
The Final Rejection (mailed Mar. 15, 2005) states “Grieger et al teach
an apparatus comprising (Figure 2): fitting 32 that contains an opening
38/48, Teflon T/M 64 coating that provides for a seal (col. 7, lines 52-55),
and a sensor” (Final Rej. 2 (emphasis added)). We find the Examiner’s
recitation of the opening 38/48 and the coating to be sufficient to have
placed Appellants on reasonable notice at the time the Appeal Brief was
filed of what the Examiner had interpreted as constituting the claimed
opening that defines a gap.

CONCLUSION
Based on the analysis above, we discern no error in our conclusions
regarding Grieger’s teachings or in our conclusion that Appellants’
additional arguments contained in the Reply Brief were untimely.
Accordingly, we decline to modify our Decision.
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).

REHEARING DENIED

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