Ex Parte Shen et al

Patent Trial and Appeal Board

Mar 25, 2013

10621999 (P.T.A.B. Mar. 25, 2013)

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.
10/621,999 07/17/2003 Yousheng Shen 011361.00064 2626
22910 7590 03/25/2013
BANNER & WITCOFF, LTD.
28 STATE STREET
SUITE 1800
BOSTON, MA 02109-1701
EXAMINER
OLSEN, KAJ K
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
03/25/2013 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 YOUSHENG SHEN,
FRANCO CONSADORI, and D. GEORGE FIELD
____________________

Appeal 2012-008489
Application 10/621,999
Patent 5,573,648 C1
Technology Center 1700
____________________

Before RICHARD TORCZON, SALLY GARDNER LANE, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants Yousheng Shen et al. appeal under 35 U.S.C. § 134(a)
from a final rejection of claims 17, 79-108, 110, 112, and 113 of this reissue
application, which is based upon Appellants’ previously issued and
reexamined U.S. Patent No. 5,573,648 C1 (the “’648 Patent”). Claims 2 and
18-29 are objected to as ultimately depending from a rejected claim. Claims
30-74 and 76-78 are allowed. Claims 1, 3-16, 75, 109, and 111 are canceled.
We have jurisdiction over the appeal of the rejected claims under 35
U.S.C. § 6(b)(2).
We affirm-in-part.

STATEMENT OF THE CASE
The ’648 Patent is entitled “Gas Sensor Based On Protonic
Conductive Membranes,” was issued November 12, 1996 to Yousheng
Shen, Franco Consadori, and D. George Field, and is assigned to Atwood
Mobile Products, Inc. (“Atwood”).
The ’648 Patent, which issued with claims 1-78, was the subject of
Reexamination Control No. 90/006,208. The reexamination proceeding
resulted in the Jan. 1, 2008 issuance of Reexamination Certificate
U.S. 5,573,648 C1, which canceled originally issued claims 1, 3-16, and 75.

CLAIMED INVENTION
The ’648 Patent “relates to electrochemical gas sensors, and
particularly relates to electrochemical gas sensors having a sensing
electrode, a counter reference electrode, and a solid proton conductor for
room temperature detection of the concentration of carbon monoxide (CO)
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in the ambient.” (Col. 1, ll. 5-10.) Claim 79 on appeal reads as follows and
with emphasis added:
79. A two-electrode electrochemical gas sensor for
quantitative measurement of a gas in an ambient atmosphere
comprising:
a porous mixed ionic-electronic conductive sensing
electrode having both an electronic conducting material and an
ionic conducting material;
a porous mixed ionic-electronic conductive counter
electrode having both an electronic conducting material and an
ionic conducting material;
wherein the electronic and ionic conducting materials of
said sensing and counter electrodes are proton-electron mixed
conductive materials having 10-50 wt% of a proton conductor
material and 50-90 wt% of a first and a second electrical
conductor materials;
a first protonic conductive electrolyte membrane in
between and in contact with the sensing and counter electrodes,
and having a thickness in the range of approximately 0.1 mm to
1 mm, the sensing electrode and the counter electrode being the
only two electrodes in contact with the first protonic conductive
electrolyte membrane;
the sensing electrode reacting with the gas to produce a
change in an electrical characteristic between the sensing
electrode and the counter electrode;
means for electrical measurement;
said sensing and counter electrodes each having a
diameter in the range of approximately 1 mm to 15 mm, and
being electrically connected to said electrical measurement
means;
whereby, in a positive ambient concentration of said gas,
said electrical measurement means detects changes in said
electrical characteristic.

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EVIDENCE
The Examiner relies upon the following prior art references:
Dempsey
Vanderborgh
LaConti
Tomantschger ’166
Tomantschger ’274
Razaq
Grot
Uchida
US 4,227,984
US 4,804,592
US 4,820,386
US 5,173,166
US 5,302,274
US 5,322,602
US 5,330,860
US 5,474,857
Oct. 14, 1980
Feb. 14, 1989
Apr. 11, 1989
Dec. 22, 1992
Apr. 12, 1994
Jun. 21, 1994
Jul. 19, 1994
Dec. 12, 1995

REJECTIONS
The Examiner makes the following rejections:
1. Claims 95 and 96 on the grounds of res judicata.
2. Claims 79, 81, 86, 88, and 97 under 35 U.S.C. § 103(a) as
unpatentable over Dempsey, Nagata, and any of Vanderborgh,
Uchida, and/or Grot.
3. Claims 17, 79-101, 103-106, 108, 110, 112, and 113 under 35 U.S.C.
§ 103(a) as unpatentable over Tomantschger ’166, Dempsey, and any
of Vanderborgh, Uchida, and/or Grot.
4. Claims 17, 80, 82, 84, 87, 89, 91, 92, 95, 96, 98-101, 103, 104, 108,
110, 112, and 113 under 35 U.S.C. § 103(a) as unpatentable over
Dempsey and any of Vanderborgh, Uchida, and/or Grot.
5. Claims 83, 85, 90, 93, and 94 under 35 U.S.C. § 103(a) as
unpatentable over Dempsey, any of Vanderborgh, Uchida, and/or
Grot, and further in view of Nagata.
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6. Claim 102 under 35 U.S.C. § 103(a) as unpatentable over Dempsey,
any of Vanderborgh, Uchida, and/or Grot, and further in view of
Tomantschger ’274.
7. Claim 102 under 35 U.S.C. § 103(a) as unpatentable over
Tomantschger ’166, in view of Dempsey, any of Vanderborgh,
Uchida, and/or Grot, and further in view of Tomantschger ’274.
8. Claims 105 and 106 as unpatentable over Dempsey, any of
Vanderborgh, Uchida, and/or Grot, and further in view of LaConti.
9. Claim 107 as unpatentable over Dempsey, any of Vanderborgh,
Uchida, and/or Grot, and further in view of Razaq.
10. Claim 107 as unpatentable over Tomantschger ’166, Dempsey, any of
Vanderborgh, Uchida, and/or Grot, and further in view of Razaq.

PRINCIPLES OF LAW
Claim Construction
During examination of a reissue application, claims are to be given
their broadest reasonable interpretation consistent with the specification. In
re Reuter, 670 F.2d 1015, 1019 (CCPA 1981). “Construing claims broadly
during prosecution is not unfair to the applicant (or, in this case, the
patentee), because the applicant has the opportunity to amend the claims to
obtain more precise claim coverage.” In re American Academy Of Science
Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (appeal from
reexamination proceeding).
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Obviousness
“Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103(a)). “What matters is the objective reach of
the claim. If the claim extends to what is obvious, it is invalid under § 103.”
KSR, 550 U.S. at 419. To be nonobvious, an improvement must be “more
than the predictable use of prior art elements according to their established
functions.” Id. at 417. Further, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court [or the Office] can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.

ANALYSIS
Only those arguments actually made by Atwood have been considered
in this decision. Arguments that Atwood could have made but did not are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008); In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011).
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Rejection Of Claims 95 and 96
On Res Judicata Grounds (Rejection 1)
A predecessor court to the Court of Appeals for the Federal Circuit
previously cautioned the following:
[T]he policy and purpose of the patent laws preclude the
applicability of any doctrine akin to the judicially-developed
doctrine of “res judicata” to bar the granting of patents on
inventions that comply with the statute. . . . The Patent Office
must have the flexibility to reconsider and correct prior
decisions that it may find to have been in error.

In re Borkowski, 505 F.2d 713, 718 (CCPA 1974) (citing In re Craig, 411
F.2d 1333 (CCPA 1969)).
Res judicata does not ordinarily arise during examination,
1
Craig, 411
F.2d at 1335-36, although other doctrines
2
or rules may have a similar effect.
The examiner expressly bases the res judicata rejection on the identity
of these claims to claims rejected on the same ground in co-pending appeal
2012-008746. In that appeal, we reverse the res judicata rejection. Thus, we
do not sustain the rejection of claims 95 and 96 on the grounds of res
judicata in this appeal.

1
The case law does not involve reexaminations, so its applicability to
reexaminations is unclear. The logic of the case law would ordinarily apply
to reissue applications because they, like regular applications, can have
continued prosecution through continuation applications.
2
For example, prosecution laches. In re Bogese, 303 F.3d 1362, 1369 (Fed.
Cir. 2002).
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Rejections Relying On Dempsey
As The Primary Reference (Rejection 2)
I. Claims 79, 81, 86, 88, and 97 as Unpatentable Over Dempsey,
Nagata, and any of Vanderborgh, Uchida, and/or Grot
A. Claims 79 and 86
The Examiner relies on Dempsey as teaching all of the subject matter
of independent claim 79 except for (1) sensor and counter electrodes that are
of “mixed ionic-electronic conductive” materials and (2) wherein the sensor
and counter electrodes are “the only two electrodes in contact with the first
protonic conductive electrolyte membrane[.]” Ans. 6-7.
1. “mixed ionic-electronic conductive” electrodes
The Examiner relies on any of Vanderborgh, Uchida, and Grot as
teaching sensor and counter electrodes that are of mixed ionic-electronic
conducting materials. Ans. 6-7. The Examiner concluded that it would have
been obvious to one of ordinary skill in the art at the time the invention was
being made to utilize the teachings of Vanderborgh, Uchida, or Grot for the
gas sensor of Dempsey because the mixed ionic-electronic conductive
electrodes in Vanderborgh, Uchida, and Grot have shown previous favorable
utility in the fuel cell art, and the substitution of one known fuel cell
electrode composition for another, when the results are not unexpected,
requires only routine skill in the art. Ans. 6-7.
Atwood argues that the electrodes of Vanderborgh, Uchida, and Grot
are hydrophilic and that their use in the Dempsey gas sensor would render it
inoperable. Atwood also argues that Dempsey teaches away from using
hydrophilic electrodes. We are not persuaded by Atwood’s arguments for at
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least the following reasons, as set forth at lines 14-22 on page 25 of the
Examiner’s Answer:
Uchida . . . teaches the use of a water repelling treatment for the
electrodes (col. 4, ll. 1-11). See also Vanderborgh, col. 10, l. 58
– col. 11, l. 1 where the electrode containing the solid polymer
electrolyte is hydrophobically treated to control the wetting of
the electrode. Finally, Grot teaches that the binder for the
electrode can contain materials such as hydrophobic
polytetrafluoroethylene (i.e. Teflon) and also suggests the use
of surfactants (col. 5, ll. 63-68) presumably also to control the
wetting ability of the electrode. Hence, two of the three
secondary teachings already suggest that the hydrophobic
character of the electrodes can still be controlled even though
the electrodes contain Nafion, and all three of the actually relied
on secondary teachings suggest the use of further hydrophobic
treatment.

Further, even if an electrode from Vanderborgh, Uchida, or Grot
proved too hydrophilic when swapped into the Dempsey gas sensor (a
proposition Atwood has not established), its hydrophilic properties could be
reduced and/or its hydrophobic properties increased as taught by the prior
art. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”)
Claim 79 also specifies that the composition of “the electronic and
ionic conducting materials of said sensing and counter electrodes” is
“proton-electron mixed conductive materials having 10-50 wt% of a proton
conductor material and 50-90 wt% of a first and a second electrical
conductor materials[.]”
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Atwood argues that Vanderborgh and Uchida fail to teach this claimed
composition. But Atwood does not challenge the finding that Grot teaches
the specified composition. Thus, Atwood’s arguments regarding
Vanderborgh and Uchida are not critical to the rejection since the rejection
relies on any of Vanderborgh, Uchida, or Grot. However, we do address the
arguments regarding Vanderborgh and Grot.
Atwood argues that Vanderborgh does not teach 10-50 wt% of a
proton conductor material because the electrodes therein are composed of
three individual layers each of which has either less than 10% or greater than
50% proton conducting material. App. Br. 50-51. This argument is not
persuasive as it is not commensurate with the scope of the claim, which
recites “proton-electron mixed conductive materials[.]” The broadest
reasonable construction of this term would encompass mixtures consisting of
separate layers.
Atwood argues that Uchida does not teach 10-50 wt% of a proton
conductor material because it discloses too little proton conducting material.
App. Br. 48-50. We agree with Atwood that the Examiner did not establish
that Uchida teaches this. See Ans. 7, 26-27. In each rejection invoking
Uchida, however, the rejection relies on any of Vanderborgh, Uchida, and/or
Grot. Accordingly, Uchida’s failure to teach this limitation may not affect
any of the rejections, and, in fact, it does not.
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2. “the sensing electrode and the counter electrode being the only
two electrodes in contact with the first protonic conductive
electrolyte membrane”
Dempsey employs three electrodes: a sensing electrode, counter
electrode, and a reference electrode. See Dempsey fig. 1, ref. 10, 11, and 13.
The Examiner relies on Nagata as teaching the use of only two electrodes: a
sensing electrode and a counter electrode. Ans. 7-8. The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
at the time the invention was being made to utilize only two-electrodes for
the gas sensor of Dempsey because the substitution of one known sensor
structure (two-electrode) for another known structure (three-electrode)
requires only routine skill in the art. Ans. 7-8.
Atwood argues that Dempsey’s principle of operation would be
changed should it be converted from a three-electrode sensor to a two-
electrode sensor and that Nagata’s teaching that two-electrode sensors may
be utilized in place of three-electrode sensors is not applicable to Dempsey.
App. Br. 59-60.
As pointed out by the Examiner, however, the prior art of record
demonstrates that using or not using a reference (i.e., third) electrode is well
established in the art. See Ans. 28. This is sufficient for obviousness. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . the test is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art.”); KSR, 550 U.S. at 417 (to be nonobvious, an
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improvement must be “more than the predictable use of prior art elements
according to their established functions”).
For the foregoing reasons we sustain the rejection of claim 79 as
unpatentable over Dempsey, Nagata, and any of Vanderborgh, Uchida,
and/or Grot.
Claim 86 is similar to claim 79 except that it requires “the sensing
electrode reacting with the gas at room temperature to produce a change in
an electrical characteristic between the sensing electrode and the counter
electrode” (emphasis added). Atwood has not argued that this distinction is
a basis for patentability of claim 86. Thus, we also sustain the rejection of
claim 86 over Dempsey, Nagata, and any of Vanderborgh, Uchida, and/or
Grot.
B. Claims 81 and 88
Independent claims 81 and 88 are similar to claim 79 but they require
“the sensing electrode reacting with the gas to produce a change in an
electrical characteristic between the sensing electrode and the counter
electrode in the absence of an applied voltage to the sensing electrode”
(emphasis added).
Atwood argues that the rejection should be reversed because the
references do not disclose this limitation. App. Br. 61. The Examiner states
that “whether or not a voltage is applied is how the sensor is to be utilized
and does not further define the structure of the device” and asserts that the
sensing electrode of the rejection “would inherently be capable of reacting
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with a gas in the absence of an applied voltage to the sensing electrode.”
Ans. 8.
“In relying upon the theory of inherency, the examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). Only after the examiner establishes a prima facie
case of inherency, does the burden shift to appellant to prove that the prior
art does not possess the characteristic relied on. In re King, 801 F.2d 1324,
1327 (Fed. Cir. 1986).
The record before us lacks a prima facie case of inherency because the
examiner has not provided the requisite basis in fact and/or technical
reasoning to reasonably support a determination that the sensing electrode of
the prior art would react with the gas to produce a change in an electrical
characteristic between the sensing electrode and the counter electrode in the
absence of voltage applied to the sensing electrode. Thus, we cannot sustain
the rejection of claims 81 and 88 as unpatentable over Dempsey, Nagata,
and any of Vanderborgh, Uchida, and/or Grot.
C. Claim 97
Independent claim 97 is similar to 79 but it additionally requires “the
sensing electrode being 15 mm in diameter and the counter electrode being
approximately 15 mm in diameter[.]” Thus, they are of approximately the
same size.
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Atwood argues that Nagata teaches away from the claimed invention
because it teaches that the counter electrode should be much larger than the
sensing electrode when only two electrodes are employed. Ans. 29. Indeed,
the Nagata disclosure (col. 3, l. 66 - col. 4, l. 6) on which Atwood relies
states:
Where the counter electrode is larger in area than the working
electrode by a factor of a two-figure number or more while said
electrodes are positioned relative to each other at the surface of
said insulating substrate according to predetermined
arrangement, the potential at the surface of the working
electrode can, by virtue of the enlarged ratio in area between
said two electrodes, be rendered as stable as where a reference
electrode is provided.

The Examiner, citing another passage of Nagata, argues that Nagata
teaches that the counter electrode should be much larger than the sensing
electrode irrespective of whether the embodiment is a three- or two-
electrode embodiment. Ans. 29 (citing Nagata (col. 3, ll. 6-12)). But, the
Nagata passage on which the Examiner relies does not state that it applies
irrespective of whether the embodiment is a three- or two-electrode
embodiment. It is merely silent on the issue. Further, even under the
Examiner’s interpretation of Nagata, it would still not suggest the claimed
invention because it does not teach sensing and counting electrodes being
the same or approximately the same size.
For the foregoing reasons, we cannot sustain the rejection of claim 97
as unpatentable over Dempsey, Nagata, and any of Vanderborgh, Uchida,
and/or Grot.
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II. Claims 17, 80, 82, 84, 87, 89, 91, 92, 95, 96, 98-101, 103, 104, 108,
110, 112, and 113 as Unpatentable Over Dempsey and any of
Vanderborgh, Uchida, and/or Grot (Rejection 4)
A. Claims 17, 82, 89, 95, 96, 98-101, 103, 104, 108, 110, 112, and
113
Atwood argues patentability of these claims on the basis that the
electrodes of Vanderborgh, Uchida, and Grot are hydrophilic and that their
use in the Dempsey gas sensor would render it inoperable. Ans. 65-66.
As discussed above, we are not persuaded by this argument.
Accordingly, we sustain the rejection of claims 17, 82, 89, 95, 96, 98-101,
103, 104, 108, 110, 112, and 113 over Dempsey and any of Vanderborgh,
Uchida, and/or Grot.
B. Claims 80, 84, 87, 91, and 92
Independent claim 80 requires “the sensing electrode reacting with the
gas to produce a change in an electrical characteristic between the sensing
electrode and the counter electrode in the absence of an applied voltage to
the sensing electrode” (emphasis added). Claims 84, 87, 91, and 92 include
similar limitations.
The Examiner asserts that that these limitations are inherently present
in the prior art. Ans. 16. As with claims 81 and 88 discussed above,
however, the record lacks the requisite basis in fact and/or technical
reasoning to establish a prima facie case of inherency. See Levy, 17
USPQ2d at 1464. Thus, we cannot sustain the rejection of claims 80, 84, 87,
91, and 92 as unpatentable over Dempsey and any of Vanderborgh, Uchida,
and Grot.
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III. Claims 83, 85, 90, 93, and 94 as Unpatentable Over Dempsey, any of
Vanderborgh, Uchida, and/or Grot, and Further in View of Nagata
(Rejection 5)
Atwood argues for reversal of this rejection for the same unpersuasive
reasons that it argues claims 79 and 86 are patentable over Dempsey,
Nagata, and any of Vanderborgh, Uchida, and/or Grot. App. Br. 67.
Thus, we also sustain the rejection of claims 83, 85, 90, 93, and 94
over Dempsey, any of Vanderborgh, Uchida, and/or Grot, and further in
view of Nagata.
IV. Claim 102 as Unpatentable Over Dempsey, any of Vanderborgh,
Uchida, and/or Grot, and Further in View of Tomantschger ’274
(Rejection 6)
Atwood argues for reversal of this rejection for the same unpersuasive
reasons that it argues claim 82 (among other claims) is patentable over
Dempsey, Nagata, and any of Vanderborgh, Uchida, and/or Grot. App. Br.
67-68.
Thus, we also sustain the rejection of claim 102 as unpatentable over
Dempsey, any of Vanderborgh, Uchida, and/or Grot, and further in view of
Tomantschger ’274.
V. Claims 105 And 106 as Unpatentable Over Dempsey, any of
Vanderborgh, Uchida, and/or Grot, and Further in View of LaConti
(Rejection 8)
Atwood argues for reversal of this rejection for the same unpersuasive
reasons that it argues claim 82 (among other claims) is patentable over
Dempsey, Nagata, and any of Vanderborgh, Uchida, and/or Grot. App. Br.
68.
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Thus, we also sustain the rejection of claims 105 and 106 over
Dempsey, any of Vanderborgh, Uchida, and/or Grot, and further in view of
LaConti.
VI. Claim 107 as Unpatentable Over Dempsey, any of Vanderborgh,
Uchida, and/or Grot, and Further in View of Razaq (Rejection 9)
Atwood argues for reversal of this rejection for the same unpersuasive
reasons that it argues claim 82 (among other claims) is patentable over
Dempsey, Nagata, and any of Vanderborgh, Uchida, and/or Grot. App. Br.
68-69.
Thus, we also sustain the rejection of claim 107 over Dempsey, any of
Vanderborgh, Uchida, and/or Grot, and further in view of Razaq.

Rejections Relying On Tomantschger ’166
As The Primary Reference
I. Claims 17, 79-101, 103-106, 108, 110, 112, and 113 as Unpatentable
Over Tomantschger ’166, Dempsey, and any of Vanderborgh, Uchida,
and/or Grot (Rejection 3)
The Examiner relies on Tomantschger ’166 as teaching all of the
subject matter of independent claim 79 except for (1) sensor and counter
electrodes that are of “mixed ionic-electronic conductive” materials; and (2)
the dimensional aspects of certain components of the gas sensor (i.e., the
diameters of the electrodes and the thickness of the membrane). Ans. 10-11.
The Examiner relies on Vanderborgh, Uchida, and/or Grot as teaching
mixed ionic and electronic conducting electrodes and on Dempsey as
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teaching electrodes having a diameter of 16 mm
3
and a membrane having a
thickness overlapping the claimed range. Ans. 11-12.
Atwood raises two general arguments, as follows: (1) combining
electrodes from Vanderborgh, Uchida, and/or Grot with Tomantschger ’166
would render the modified Tomantschger ’166 reference inoperable; and (2)
it is improper to assume that Dempsey’s electrode and membrane
dimensions are applicable to Tomantschger ’166. App. Br. 63.
Atwood’s first argument is essentially the same unpersuasive
argument as it raised with respect to the combinability of Dempsey with the
electrodes from Vanderborgh, Uchida, and/or Grot.
Atwood’s second argument is also not persuasive. The argument is
merely that “the absence of any disclosure in Tomantschger ’166 as to
electrode diameters does not lead one to conclude that any dimensions could
be utilized.” App. Br. 64. This argument is conclusory and does not apprise
us of any error in the rejection.
Atwood raises additional arguments with respect to certain subsets of
the claims set forth in this rejection. They are discussed next.

3
Claim 79 recites “said sensing and counter electrodes each having a
diameter in the range of approximately 1 mm to 15 mm.” Under the
broadest reasonable construction consistent with the specification, this term
is inclusive of 16 mm because “approximately” modifies both of the range
end points.
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A. Claims 79, 81, 86, 88, and 97
With respect to these claims, Atwood points out that they require that
the sensing and counter electrodes be the only two electrodes in contact with
the membrane. Atwood then argues that “Nagata teaches that Dempsey’s
disclosure as to dimensions of components of a three-electrode sensor does
not provide any teachings, and is thus irrelevant, as to any dimensions of
components of a two-electrode sensor, such as disclosed by Tomantschger
’166.” App. Br. 64.
We disagree that Nagata allegedly teaches this, and we note that
Atwood has not identified where any such alleged teaching can be found in
Nagata. See App. Br. 64. Further, we note that the rejection is not based on
Nagata.
Accordingly, we sustain the rejection of claims 79, 86, and 97
4
as
unpatentable over Tomantschger ’166, Dempsey, and any of Vanderborgh,
Uchida, and/or Grot.
B. Claims 80, 81, 87, 88, and 92
Independent claim 80 requires in relevant part “the sensing electrode
reacting with the gas to produce a change in an electrical characteristic
between the sensing electrode and the counter electrode in the absence of an
applied voltage to the sensing electrode[.]” Claims 81, 87, 88, and 92
include similar limitations.

4
Atwood argues claims 81 and 88 in a second grouping of claims, which we
address next.
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20
Tomantschger ’166 teaches these limitations (see col. 7, ll. 26-33),
and Atwood does not argue to the contrary. App. Br. 64-65. Instead,
Atwood summarily argues that it is improper to rely on the combination of
Tomantschger ’166 and Dempsey with respect to these claims because
neither reference discloses “that Dempsey’s teachings as to the electrode or
membrane dimensions for a potentiostated gas sensor would be applicable to
a non-biased gas sensor of Tomantschger ’166.” App. Br. 65.
Atwood is attacking the references individually by pointing out that
neither reference alone discloses the required dimensional aspects together
with the absence of an applied voltage. But, “[n]on-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). A reference “must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” Id.
Accordingly, we sustain the rejection of claims 80, 81, 87, 88, and 92
as unpatentable over Tomantschger ’166, Dempsey, and any of
Vanderborgh, Uchida, and/or Grot.
C. Claims 17, 82, 83-86, 89-101, 103-106, 110, 112, and 113
Claims 17, 82, 83-86, 89-101, 103-106, 110, 112, and 113 are not
separately argued from either subset of claims addressed above (i.e., claims
79, 81, 86, and 88 or claims 80, 81, 87, 88 and 92). Thus, in accordance
with 37 C.F.R. § 41.37(c)(1)(vii)(2008), we select claim 79 as representative
of the group and treat those claims as falling with representative claim 79.
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21
Hence, we sustain the rejection of claims 17, 82, 83-86, 89-101, 103-106,
110, 112, and 113 as unpatentable over Tomantschger ’166, Dempsey, and
any of Vanderborgh, Uchida, and/or Grot.
II. Claim 102 as Unpatentable Over Tomantschger ’166, in view of
Dempsey, any of Vanderborgh, Uchida, and/or Grot, and Further in
View of Tomantschger ’274 (Rejection 7)
Atwood argues reversal of this rejection because “Tomantschger ’166
. . . teaches away from using a non-hydrophobic electrode as taught by
Grot.” App. Br. 68. We find this argument unpersuasive for the reasons set
forth at lines 14-22 on page 25 of the Examiner’s Answer.
Accordingly, we sustain the rejection of claim 102 over Tomantschger
’166, Dempsey, any of Vanderborgh, Uchida, and/or Grot, and further in
view of Tomantschger ’274.
III. Claim 107 as Unpatentable Over Tomantschger ’166, Dempsey, any
of Vanderborgh, Uchida, and/or Grot, and Further in View of Razaq
(Rejection 10)
Atwood argues reversal of this rejection for the same unpersuasive
reason as it argued with respect to claim 102 – i.e. that “Tomantschger ’166
. . . teaches away from using a non-hydrophobic electrode as taught by
Grot.” App. Br. 67-68.
Thus, for the same reason, we also sustain the rejection of claim 107
over Tomantschger ’166, Dempsey, any of Vanderborgh, Uchida, and/or
Grot, and further in view of Razaq.

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22
DECISION
The rejection of claims 95 and 96 on the grounds of res judicata is
reversed.
The rejection of claims 79 and 86 as unpatentable over Dempsey,
Nagata, and any of Vanderborgh, Uchida, and/or Grot is affirmed. The
rejection of claims 81, 88, and 97 as unpatentable over Dempsey, Nagata,
and any of Vanderborgh, Uchida, and/or Grot is reversed.
The rejection of claims 17, 79-101, 103-106, 108, 110, 112, and 113
as unpatentable over Tomantschger ’166, Dempsey, and any of
Vanderborgh, Uchida, and/or Grot is affirmed.
The rejection of claims 17, 82, 89, 95, 96, 98-101, 103, 104, 108, 110,
112, and 113 as unpatentable over Dempsey and any of Vanderborgh,
Uchida, and/or Grot is affirmed. The rejection of claims 80, 84, 87, 91, and
92 as unpatentable over Dempsey and any of Vanderborgh, Uchida, and/or
Grot is reversed.
The rejection of claims 83, 85, 90, 93, and 94 as unpatentable over
Dempsey, any of Vanderborgh, Uchida, and/or Grot, and further in view of
Nagata is affirmed.
The rejection of claim 102 as unpatentable over Dempsey, any of
Vanderborgh, Uchida, and/or Grot, and further in view of Tomantschger
’274 is affirmed.
The rejection of claim 102 as unpatentable over Tomantschger ’166,
in view of Dempsey, any of Vanderborgh, Uchida, and/or Grot, and further
in view of Tomantschger ’274 is affirmed.
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The rejection of claims 105 and 106 as unpatentable over Dempsey,
any of Vanderborgh, Uchida, and/or Grot, and further in view of LaConti is
affirmed.
The rejection of claim 107 as unpatentable over Dempsey, any of
Vanderborgh, Uchida, and/or Grot, and further in view of Razaq is affirmed.
The rejection of claim 107 as unpatentable over Tomantschger ’166,
Dempsey, any of Vanderborgh, Uchida, and/or Grot, and further in view of
Razaq is affirmed.

No time period for taking action in connection with this appeal may
be extended under 37 C.F.R. § 1.135(a)(1)(iv)(2010).

AFFIRMED-IN-PART
alw