Ex Parte Slaughter

Board of Patent Appeals and Interferences

Apr 21, 2010

10825388 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte VICTOR BLAKEMORE SLAUGHTER
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Appeal 2009-006645
Application 10/825,388
Technology Center 1700
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Decided: April 21, 2010
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, 4-11, and 13-17. We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.
Appeal 2009-006645
Application 10/825,388

Appellant claims a method which includes removing excess resin
from an object by submersing the object in solvent-containing liquid such
that the excess resin becomes dissolved, thereby increasing the ratio of
dissolved resin to the solvent of the liquid and concomitantly altering an
electrical characteristic of the liquid, utilizing changes in the electrical
characteristic as an indicator of the previously mentioned ratio, and “using
said changes in the electrical characteristic of the liquid to drive a visual
display that is able to provide a plurality of different indications as to said
ratio” (claim 1).
Representative claim 1 reads as follows:
1. A method comprising:

forming at least a portion of an object by curing resin;

providing a storage device containing a liquid, the liquid comprising
solvent and dissolved resin, the liquid having a ratio of the dissolved resin to
the solvent;

removing an amount of resin from the object by submersing the object
in the liquid in the storage device in a manner such that the amount of resin
becomes dissolved in the liquid and thereby increases the ratio of the
dissolved resin to the solvent of the liquid, the increase of the ratio altering
an electrical characteristic of the liquid;

utilizing changes in the electrical characteristic of the liquid as an
indicator of the ratio of the dissolved resin to the solvent of the liquid; and

using said changes in the electrical characteristic of the liquid to drive
a visual display that is able to provide a plurality of different indications as
to said ratio.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
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Appeal 2009-006645
Application 10/825,388

Paal 4,015,986 Apr. 05, 1977
Obeng 5,670,376 Sep. 23, 1997
Oberlander 6,368,421 B1 Apr. 09, 2002
Nakagawa 2002/0197869 A1 Dec. 26, 2002
Kung 2004/0160225 A1 Aug. 19, 2004
Under 35 U.S.C. § 103(a), the Examine rejects the appealed claims as
follows:
(a) claims 1, 4, 6, 7, 10, 13, and 16 over Nakagawa, Paal, and
Obeng;
(b) claims 2, 5, and 11 over Nakagawa, Paal, Obeng, and
Oberlander;
(c) claims 8, 9, 14, and 15 over Nakagawa, Paal, Obeng, and
Kung; and
(d) claim 17 over Nakagawa, Paal, Oberlander, and Obeng.
The Examiner acknowledges that Nakagawa fails to disclose the
visual display feature required by the independent claims on appeal but finds
that Obeng “discloses that the changes in the conductivity (i.e., electrical
conductivity) are measured, monitored and visually displayed” via display
elements such as analyzer electronics and a computer (Ans. 5, 10). The
Examiner concludes that it would have been obvious for an artisan to
provide Nakagawa with such a display feature in view of Obeng (id. at 5,
11).
Appellant argues that neither Nakagawa nor Obeng contains any
teaching or suggestion of the visual display feature required by the
independent claims (Br. 7-9, 11-13). We agree.
The Examiner finds that Obeng discloses “the use of an analyzer
electronics that monitors and analyzes the conductivity of the solution and
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Appeal 2009-006645
Application 10/825,388

creates an output based on the different measured values, and shows the
conductivity vs. time graph (see figure 5) of the fluid in the tank” (Ans. para.
bridging 15-16, para. bridging 19-20). This finding is erroneous. Obeng’s
Figure 5 “is a graph showing the conductivity of the fluid in tank 100 as a
function of time” (Obeng, col. 2, ll. 55-57). Moreover, Obeng describes
Figure 5 merely as a graph “useful in understanding illustrative
embodiments of the present invention” (col. 1, ll. 59-60). The Examiner
identifies no support for the belief that the Figure 5 graph is visually
displayed by Obeng’s analyzer electronics. Based on the record before us
including the disclosure of Obeng, the graph in Figure 5 is not displayed by
the analyzer electronics or computer of Obeng.
In the Response to Argument section of the Answer, the Examiner
points out that Nakagawa discloses an electrical conductivity meter and
states that “a conductivity meter measures and inherently displays the
conductivity values” (Ans. para. bridging 11-12). By this statement, the
Examiner implies that Nakagawa inherently discloses the display feature
required by the independent claims. However, the Examiner has provided
no basis in fact or technical reasoning in support of the statement “a
conductivity meter . . . inherently displays the conductivity values” (id.).
See Ex Parte Levy, 17 USPQ2d 1461, 1463-64 (BPAI 1990) (Examiner, if
relying upon theory of inherency, must provide basis in fact and/or technical
reasoning to reasonably support determination that allegedly inherent
characteristic necessarily flows from teachings of applied prior art). For this
reason, we regard the Examiner’s inherency statement as being erroneous
based on the record before us.
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Appeal 2009-006645
Application 10/825,388

In light of the foregoing, we cannot sustain the Examiner’s § 103
rejections of the appealed claims.
The decision of the Examiner is reversed.

REVERSED

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HARNESS DICKEY & PIERCE, PLC
P.O. BOX 828
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