Ex parte Sinha

Board of Patent Appeals and Interferences

Aug 3, 1998

08218102 (B.P.A.I. Aug. 3, 1998)

Application for patent filed March 25, 1994. 1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCE
_____________
Ex parte DIPEN N. SINHA
____________
Appeal No. 97-0503
Application 08/218,1021
____________
ON BRIEF
____________
Before KRASS, BARRETT and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
2 and 5-7, which constitute all the claims remaining in the
application.
Claim 1 reads as follows:
Appeal No. 97-0503
Application 08/218,102
-2-
1. Apparatus for comparing corresponding acoustical
resonances in liquids, which comprises in combination:
a. first transducer means for applying a continuous
periodic acoustical signal to the outside of a receptacle
containing the liquid;
b. means for sweeping said first transducer means
through a chosen frequency range;
c. second transducer means located on the same side of
the receptacle as said first transducer means and in the vicinity
thereof, for receiving the acoustical signal generated in the
sample; and
d. means for measuring the resonant frequencies
received by said second transducer means.

The Examiner’s Answer cites the following prior art:
Pope et al. (Pope) 5,359,541 Oct. 25, 1994
Johnston et al. (Johnston) 5,426,977 Jun. 27, 1995
OPINION
The claims stand rejected under 35 U.S.C. § 103 as
unpatentable over Johnston or Pope. The claims recite apparatus
for comparing acoustical resonances in liquids, employing two
transducers in the vicinity of one another on the same side of a
container. Johnston and Pope each disclose similar apparatus
whose two transducers are on opposite sides of the container.
According to the examiner, placing the transducers on the same
Appeal No. 97-0503
Application 08/218,102
-3-
side as recited, instead of on opposite sides as in the prior
art, would have been mere design choice.
Reliance on “obvious design choice” is precluded where
the claimed structure and the function it performs are different
from the prior art. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d
1089, 1094-95 (Fed. Cir. 1995).
In the present case, the claimed structure and the
function it performs are different from the prior art. Clearly,
the structure is different; the transducers are in different
locations. We find that the function is different as well. For
example, appellant’s specification indicates that a sharper
resonance pattern is obtained if the transducers are placed in
the vicinity of one another. Specification at 5, lines 29-34.
We recognize that the specification says that
transducers may be located on opposing walls as well for some
applications. We do not consider this an admission that the
function is the same. It may be that some applications do not
require the sharp resonance pattern that can be obtained if the
transducers are placed in the vicinity of one another. The
claims on appeal, however, are limited to placing the transducers
in the vicinity of one another on the same side of a container.
Appeal No. 97-0503
Application 08/218,102
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Moreover, the mere fact that the prior art may be
modified in the manner suggested by the examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992). The
examiner points to nothing in the prior art suggesting the
desirability of the modification.
CONCLUSION
The rejections are not sustained.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 97-0503
Application 08/218,102
-5-
Samuel M. Freund
The Regents of the Univ. Of California
Los Alamos National Laboratory
LC/BPL, MS D412, P.O. Box 1663
Los Alamos, NM 87545