Ex Parte Derr

Board of Patent Appeals and Interferences

Jan 12, 2009

10182857 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS DERR
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Appeal 2008-5189
Application 10/182,857
Technology Center 2800
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Decided: January 12, 2009
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Before CHUNG K. PAK, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1, 3, 4, and 6-42. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a measuring device. Claim 1 is illustrative:
1. A measuring device, comprising:
a first electrode for insertion into a material to be measured;
a sheath which at least partially surrounds the first electrode,
and
Appeal 2008-5189
Application 10/182,857

a holding fixture in which an axial end of said first
electrode is disposed, and which pivotably mounts the first
electrode, wherein the first electrode pivots about an imaginary
hinge point in response to the material to be measured applying
a transverse load to the first electrode and wherein said sheath
has an increased diameter in a region of said imaginary hinge
point.

The Examiner relies upon the following prior art references in
the rejections of the appealed claims:
Ciniglio US 4,056,238 Nov. 1, 1977
Zaragoza US 5,013,161 May 7, 1991
Miller US 6,086,584 Jul. 11, 2000
Nakamura US 6,379,910 B1 Apr. 30, 2002

The Examiner rejected:
a) claims 1, 3, 4, 7-12, 14-18, and 20-42 under 35 U.S.C.
§ 102(b) as being anticipated by Zaragoza;
b) dependent claim 6 under 35 U.S.C. § 103(a) as being unpatentable
over Zaragoza in view of Miller;
c) dependent claim 13 under 35 U.S.C. § 103(a) as being unpatentable
over Zaragoza in view of Ciniglio; and
d) dependent claim 19 under 35 U.S.C. § 103(a) as being unpatentable
over Zaragoza in view of Nakamura.
Appellant has not separately argued any of the claims in the first
ground of rejection with any reasonable degree of specificity. Indeed,
Appellant states “Claims 1, 3, 4, and 6-42 are grouped together for purposes
of traversing the rejections.” (App. Br. 11). Therefore, Appellant has
waived any arguments directed to the separate patentability of these claims.
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See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991); see also 37 C.F.R. §
41.37(c)(1)(vii).
Accordingly, we select independent claim 1 to decide the issue in the
first ground of rejection on appeal. Since Appellant does not present
additional substantive arguments for any of the depending claims separately
rejected under 35 U.S.C. § 103 by the Examiner, we will limit our
consideration to the Examiner's rejection of claim 1.
ISSUE ON APPEAL
Has the Appellant shown that the Examiner reversibly erred in
rejecting the claims because:
(a) Zaragoza does not disclose a “holding fixture . . . which pivotally
mounts the first electrode, wherein the first electrode pivots about an
imaginary hinge point” as claimed in claim 1; and
(b) Zaragoza does not disclose a “sheath ha[ving] an increased
diameter in a region of said imaginary hinge point” as claimed in claim 1?
This issue turns on the broadest reasonable interpretation of the above
noted claim language.
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Although claims are to be interpreted in light of the specification,
limitations from the specification are not to be read into the claims. See In
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Application 10/182,857

re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also, e.g., In re
Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
An applicant seeking a narrower construction must either show why
the broader construction is unreasonable or amend the claim to expressly
state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir.
1997).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
However, the law of anticipation does not require that the reference
‘teach’ what the subject patent (or application) teaches. Assuming that a
reference is properly ‘prior art,’ it is only necessary that the claims, as
construed, ‘read on’ something disclosed in the reference, i.e., all limitations
of the claim are found in the reference, or ‘fully met’ by it. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
FINDINGS OF FACTS
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in the Analysis
portion of the opinion.
As found by the Examiner, Zaragoza describes all the elements set
forth in independent claim 1 (Ans. 3, 4, 8-10; e.g., Zaragoza Figs. 6, 13).
Appellant only disputes this finding by contending that the Examiner has
taken an unreasonable interpretation regarding two of the elements recited in
claim 1: a) “holding fixture . . . which pivotably mounts the first electrode . .
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. about an imaginary hinge point” , and b) “sheath hav[ing] an increased
diameter in a region of said imaginary hinge point” (emphasis provided).
The plain meaning of the word “pivot” encompasses “that on which
something turns, hinges, or depends” and “pivotal” means “of, pertaining to,
or serving as a pivot”.1
The plain meaning of the word “region” encompasses “an extensive,
continuous part of a surface, space, or body”.2
ANALYSIS
Appellant’s disagreement with the Examiner’s rejection focuses solely
on the alleged deficiencies of Zaragoza as set out in the issue above.
Implicit in our review of the Examiner’s anticipation analysis is that
the claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457 (Fed. Cir. 1997).
Appellant argues that since the housing 41 of Zaragoza is “rigid”, it
does not pivotably mount the electrode (App. Br. 12-13; Reply Br. 3, 4).
Appellant further argues that Zaragoza teaches that flexure occurs in the
relatively narrow probe thereof, and that it does not have a sheath that has an
increased diameter in a region of the imaginary hinge point as claimed (App.
Br. 13-15). The Examiner argues for a broader reading such that 1) the
housing 41 which mounts the flexible probe containing electrode 34 relied
upon does “read on” the claimed language which does not require the fixture
(i.e., the housing of Zaragoza) to be flexible (Ans. 3, 4, 8-10), and 2) the

1 “pivot”and “pivotal”, The Random House College Dictionary 1013 (1973).
2 "region", The Random House College Dictionary 1111 (1973).

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increased diameter of the sheath 43 as depicted in the figures of Zaragoza
relied upon does “read on” the claimed language of “an increased diameter
in a region of said imaginary hinge point”.
Appellants have the burden of showing that the Examiner's
interpretation of the disputed terms is unreasonable.
We find no basis in the claim language or in the disclosure in the
Specification on which to read the disputed language in the narrow sense
urged by Appellant as limitations into claim 1. The Specification contains
no explicit definition of “a region of said imaginary hinge point”, or of the
term “pivotably mounts”. While Appellants’ Specification does provide
numerous examples of holding fixtures which pivotably mounts an electrode
(e.g., Figs. 1-7), we find no basis in the claim language or in the disclosure
in the Specification on which to read these illustrative embodiments as
limitations into claim 1.
Indeed, the plain meaning and reading of a sheath having an increased
diameter in “a region of said imaginary hinge point” encompasses the
geometry of the cover sheath 43 depicted in Zaragoza as aptly explained by
the Examiner (see, e.g., Ans. 9, 10).
Turning to the disputed language of the “holding fixture” which
“pivotably mounts the first electrode” about “an imaginary hinge point”
(emphasis provided), we find that Appellant describes this relationship as
including embodiments wherein “the pivotable mounting of the first
electrode is provided almost exclusively by sheath 4” (Spec. 11, first full
paragraph). Further, “the pivoting range of the first electrode is determined
solely or at least substantially by the design of the sheath” (Spec. 9, first full
paragraph; emphasis provided).
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Thus, the phrase “a holding fixture . . . which pivotably mounts the
first electrode” about “an imaginary hinge point” must be read broadly.
There is nothing in the claim that requires the electrode to be “inflexible”
(Reply Br. 5). There is nothing in the claim that defines over a fixture which
“fixedly mounts a flexible electrode” (id.). Indeed, the mounting of the
flexible probe to the housing 41 of Zaragoza is an arrangement which
permits pivotable movement of the probe to occur when a transverse force is
applied thereto. The claim does not define over the mounting of Zaragoza’s
probe and electrode relative to the housing 41 (i.e., holding fixture) which
permits the electrode to pivot about an “imaginary hinge point” as explained
by the Examiner (e.g., Ans. 4, 9).
While the Examiner's claim construction is broad, the literal language
of claim 1 is also broad. We cannot say that the Examiner's construction is
unreasonable. While the Specification contains various details on how the
invention could be implemented, it also contains a high-level discussion of
the invention without that detail. Further, the Specification and claim only
require an imaginary hinge point. Thus, the literal language of the claim, as
well as the broadest descriptions of the invention, permits a flexible probe
containing an electrode that pivots about an imaginary hinge point as
mounted on a holding fixture as described in Zaragoza.
Therefore, we agree with the Examiner’s findings in support of
anticipation for claim 1 based on Zaragoza.
The Obviousness Rejections of Dependent Claims 6, 13, and 19
Appellant does not present any additional arguments to dispute the
Examiner’s findings of facts and conclusion of obviousness of any of these
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dependent claims. We therefore sustain the § 103 rejections advanced by the
Examiner in this appeal.
CONCLUSION
Appellant has not shown that Zaragoza does not include “sheath ha
[ving] an increased diameter in a region of an imaginary hinge point” and
a “holding fixture . . . which pivotally mounts the first electrode . . . about an
imaginary hinge point” as claimed. The Examiner’s § 102 rejection is based
on a reasonable interpretation of the disputed claim language.
It follows that we sustain the § 102 rejection of claims 1, 3, 4, 7-12,
14-18, and 20-42 as being anticipated by Zaragoza. We also sustain the
§ 103 rejections advanced by the Examiner in this appeal.
ORDER
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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