Appeal No. 1998-2337
Application 08/651,442
The examiner, in the supplemental answer (page 2), finds that
[w]hile it is true that an electrode used to measure pH can be other than a pH sensitive
electrode, the overwhelming incidence of measuring pH involves the use of pH sensitive
electrodes (e.g., antimony electrode and glass electrode, with the glass electrode being the
most common) such that “pH electrode” is virtually synonymous with “pH sensitive
electrode”. Note that . . . [appellants set] forth the term “pH electrode” . . . and “pH
sensitive electrode” . . . [in] the specification to mean the same thing. Thus, . . . [appellants’]
contention that Biles’ “pH electrode” is not a “pH sensitive electrode” is contrary to the
common usage and meaning of the term “pH electrode.”
Appellants, in the supplemental reply brief, “assert that the pH electrode of Biles is not pH
sensitive, and even if it is pH sensitive, will not automatically adjust for pH variations in a desilvering
process” (pages 1-2). Appellants further contend that the position of the examiner as stated in the
supplemental answer should be restated to
more properly read “While it is true that a pH electrode is used for purposes other than
measuring pH, it may under certain conditions be used to measure pH sensitivity.” pH and
pH sensitivity is measured other than with a pH electrode. Moreover, it is also not correct
that a “pH electrode” is virtually synonymous with “pH sensitivity electrode.” Certainly, this is
not the case in Biles. [Id., page 2.]
With respect to the requirement in claim 1 that the claimed apparatus include “a potentiostatic
unit for maintaining said cathode at a constant potential versus said reference electrode whereby
adjustments for pH variations are automatically performed controlling said desilvering,” appellants argue
that “[t]here is no disclosure [in Biles] that . . . [the] probe electrode is to be used with a potentiostatic
unit” and thus “[t]here can, therefore, be no disclosure” of a potentiostatic unit as specified in claim 1
(brief, page 7). The examiner, in response, explains that the disclosure at col. 5, line 65, to col. 6, line
54, particularly, col. 6, line 15, of Biles establishes that “[t]he circuit in Biles is clearly capable of
operating as a potentiostatic unit to maintain the cathode at a constant potential” (answer, pages 8-9).
We have considered the two limitations in claim 1 in light of the written description in appellants’
specification as it would be interpreted by one of ordinary skill in this art, as taken in light of the
arguments advanced by appellants and the examiner, and interpret claim 1 to require an apparatus
having a reference electrode that is pH dependent in that it is sensitive to variations in pH, and is capable
of functioning in this respect with the potentiostatic unit of the apparatus so that the cathode is
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007