Ex parte FEUCHT et al. - Page 2




          Appeal No. 1997-2925                                                        
          Application No. 08/378,838                                                  


          1.   A sensor comprising a piezoelectric crystal with a                     
               polyarylene thioether-containing coating.                              
               The examiner relies upon the following references as                   
          evidence of obviousness:                                                    
          Strutz et al. (Strutz)           5,423,902          Jun. 13, 1995           
          Henrik M. Fog, "Piezoelectric Crystal Detector for the                      
          Monitoring of Ozone in Working Environments," 57 Analytical                 
          Chemistry no. 13, 2634-38 (1985)                                            
               Appealed claim 12 stands rejected under 35 U.S.C.  112,               
          second paragraph.  All the appealed claims stand rejected                   
          under 35 U.S.C.  103 as being unpatentable over Fog in view                
          of Strutz.                                                                  
               We will not sustain the examiner's rejection of claim 12               
          under 35 U.S.C.  112, second paragraph.  According to the                  
          examiner, it is not clear what additional structure is                      
          provided in claim 12 that makes the sensor suitable for                     
          measurements in the recited fields.  However, in making a                   
          rejection under  112, second paragraph, it is incumbent upon               
          the examiner, in the first instance, to demonstrate that one                
          of ordinary skill in the art would not understand the scope of              
          the claim when the claim language is read in light of the                   
          specification and state of the prior art.  In re Speed, 710                 
          F.d. 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re                  
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