AICHI STEEL CORPORATIONDownload PDFPatent Trials and Appeals BoardOct 30, 202014433555 - (D) (P.T.A.B. Oct. 30, 2020) Copy Citation 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. 14/433,555 04/03/2015 Katsuhiko Nishihata Q230569 8245 23373 7590 10/30/2020 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 900 WASHINGTON, DC 20006 EXAMINER LIAN, MANG TIN BIK ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 10/30/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KATSUHIKO NISHIHATA, HIDENOBU ITO, NORIKAZU NAITOH, and HISATSUNE MATSUKAWA Appeal 2019-006893 Application 14/433,555 Technology Center 2800 ____________ Before MICHAEL P. COLAIANNI, MONTÉ T. SQUIRE, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the Examiner’s decision to reject claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as AICHI STEEL CORPORATION. Appeal Brief dated March 7, 2018 (“Appeal Br.”) 4. Appeal 2019-006893 Application 14/433,555 2 CLAIMED SUBJECT MATTER The present application generally relates to a magneto-impedance element (“MI element”) which is taught to attain an increase in output power and size reduction. Specification filed April 3, 2015 (“Spec.”) ¶¶ 1, 8. According to the Specification, such advantages are achieved by “having a structure which allows stable formation of a fine-pitch detection coil.” Id. ¶ 8. MI elements may be used in portable devices as geomagnetic sensors. Id. ¶ 2. The Specification teaches that the inventive element “comprises a substrate, a magneto-sensitive wire provided above the substrate, a detection coil winding around the magneto-sensitive wire, and an electrically insulating part fixing the magneto-sensitive wire and the detection coil.” Id. ¶ 10. This is shown in Figures 1 and 2 of the Application, reproduced below. Figure 1, above, is a plan view of a magneto-impedance element; Figure 2, above, is a cross-sectional view taken along line A-A of Figure 1. Id. ¶ 14. Appeal 2019-006893 Application 14/433,555 3 The MI element 1 comprises substrate 11, amorphous wire 12, detection coil 13 (including posts2 133, 134), and insulating resin 14. Id. ¶¶ 31, 32. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A magneto-impedance element, comprising: a substrate; an amorphous wire provided above the substrate; a detection coil that winds around the amorphous wire; and an electrically insulating part fixing the amorphous wire and the detection coil, wherein the amorphous wire has a circular cross section and is electrically connected to a terminal, the terminal is on a flat surface of the substrate, wherein the detection coil comprises: a first wiring part comprising film-shaped electrically conductive bodies on the flat surface of the substrate and crossing the amorphous wire; a second wiring part comprising film-shaped electrically conductive bodies on an opposite side of the amorphous wire to the first wiring part and crossing the amorphous wire; and a connecting part comprising columnar or tubular electrically conductive bodies surrounded by the electrically insulating part at both lateral sides of the amorphous wire and extending in a normal direction of the substrate so as to connect predetermined positions of the first wiring part and those of the second wiring part. Appeal Br. 12 (Claims App’x.) (reformatted for clarity, emphasis added) 2 Posts 133, 134 are also referred to as “connecting part[s].” Abstract. Appeal 2019-006893 Application 14/433,555 4 REFERENCES The Examiner relies upon the following prior art: Name Reference Date Hatano US 2005/0088269 A1 Apr. 28, 2005 Honkura et al. (“Honkura”) US 2011/0080164 A1 Apr. 7, 2011 Dalmia et al. (“Dalmia”) US 2014/0043130 Al Feb. 13, 2014 REJECTIONS The Examiner maintains the following rejections: 1. Claims 1, 2, and 4–6 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Honkura in view of Dalmia. Final Office Action dated Sept. 26, 2017 (“Final Act.”) 3–8. 2. Claim 3 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Honkura in view of Dalmia, and further in view of Hatano. Id. at 8–9. DISCUSSION Rejection 1. The Examiner rejects claims 1, 2, and 4–6 as obvious over Honkura in view of Dalmia. Id. at 3–8. In support of the rejection, the Examiner relies on Honkura as teaching all elements of the claims other than the claimed “connecting part.” Id. at 4. Figure 2 of Honkura is reproduced below. Appeal 2019-006893 Application 14/433,555 5 Figure 2 of Honkura, above, “is a front conceptual diagram showing an MI element.” Honkura ¶ 42. Honkura teaches that “a detection coil 3 disposed around a magnetosensitive wire 1 through an insulator 4 (not shown) is installed on a substrate 10.” Id. ¶ 68. Honkura does not teach posts arranged normal to the substrate connected to the first and second wiring parts. Final Act. 4. The Examiner finds that Dalmia teaches a connecting part 124 comprising columnar or tubular electrically conductive bodies surrounded by the electrically insulating part 140, 150, and 152 at both lateral sides of the magnetic wire 106 and extending in a normal direction of the substrate 156 so as to connect predetermined positions of the first wiring part 122 and those of the second wiring part 120. Final Act. 4. Dalmia is titled “Planar Electronic Device.” Dalmia, code (54). It teaches a planar electronic device that includes conductors on a top side of a substrate connected by vias to bottom conductors on the opposite side of the substrate. Dalmia, Abstract. The conductors and vias may surround a ferrite core. Id. ¶ 3. Figures 1 and 7 of Dalmia are reproduced below. Appeal 2019-006893 Application 14/433,555 6 Figure 1, above, is a perspective view of a planar electronic device of Dalmia. Id. ¶ 9. Figure 7, above, illustrates primary and secondary conductive loops 500, 502 of planar electronic device 504 as well as top conductors 506 and bottom conductors 508. Id. ¶ 44. Dalmia teaches that the device includes a magnetic component 102 disposed in a nonconductive substrate 104. Id. ¶ 17. Dalmia further teaches that “vias 124, top conductors 120, and bottom conductors 122 form looping or winding conductive pathways that wrap around the ferrite material.” Id. ¶ 19. The Examiner finds that a person of ordinary skill in the art would have had reason to add “the connecting part as taught by Dalmia to the magneto-impedance element of Honkura to provide equal space between the amorphous wire and each of the first and second wire part to provide the Appeal 2019-006893 Application 14/433,555 7 required [impedance].” 3 Final Act. 5. Accordingly, the Examiner determines claims 1, 2, and 4–6 to be obvious over Honkura in view of Dalmia. Id. at 3–8. Appellant argues that the rejection should be reversed. Appeal Br. 6– 11. Appellant argues that Dalmia is not analogous art and that, even if it were analogous art, there is insufficient reason to combine the teachings of Honkura and Dalmia. Analogous Art Appellant argues that Dalmia is not analogous art as it is neither from the same field of endeavor as the Application nor reasonably pertinent to the problem faced by the inventors. Id. at 7–9. With respect to the field of endeavor, Appellant argues that Dalmia relates to an inductor while the present application relates to MI sensors. Id. With regard to whether Dalmia is reasonably pertinent to the problem faced by the inventors, Appellant argues that the inventors were concerned with attaining both a high level of output power and a high level of size reduction of an Ml sensor while Dalmia concerns “arranging conductors provided on the top and bottom sides in a particular manner.” Id. at 9. We consider the latter argument, regarding whether Dalmia is reasonably pertinent to the problem faced by the inventors, first. In order for 3 In the Final Office Action the Examiner refers to “the required inductance” where context suggests that the Examiner intends to refer to “the required impedance.” Final Act. 5. Similarly, in the Examiner’s Answer, the Examiner refers to “the total inductance” where context suggests that the Examiner intends to refer to “the total impedance.” Ans. 10. Appeal 2019-006893 Application 14/433,555 8 a reference to be reasonably pertinent to the problem, it must “logically[] have commended itself to an inventor’s attention in considering his problem.” See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,658 (Fed. Cir. 1992)). In the Answer, the Examiner determines that the Specification teaches “to provide a fine pitch detection coil that is difficult to obtain by conventional detection coil formation method such as photolithography.” Examiner’s Answer dated July 11, 2019 (“Ans.”) 8 (citing Spec. ¶¶ 7, 9); see also Spec. ¶ 8 (“MI elements having the detection coils require the detection coils to be wound tightly, that is to say, have a fine pitch.”). Similarly, the Examiner finds that, in Dalmia, “the displacement of the via location and the difference in size and length of the conductors allow the increase in the number of turns or the density of the inductor coil.” Ans. 8 (citing Dalmia ¶ 33). This is generally consistent with Appellant’s statement that “Dalmia discloses that the size and shape of the ferrite cores has an effect on density of the conductive windings as well as the layout of the conductive windings, and solves the problem by arranging conductors provided on the top and bottom sides in a particular manner.” Appeal Br. 9. In view of the foregoing, the Examiner finds that both Dalmia and the inventors faced the problem of increasing the density of the coil.4 Appellant did not file a Reply Brief. 4 In the Answer, the Examiner summarizes Appellant’s argument that Dalmia is not reasonably pertinent to the problem with which the inventors were concerned, then states that such argument is not persuasive. Answer 7–8. Subsequently, the Examiner states that “the coil formation of Dalmia is not reasonably pertinent to the problem with which the appellant is concerned.” Id. at 8 (emphasis added). We regard this as a typographical Appeal 2019-006893 Application 14/433,555 9 Appellant does not squarely contest the Examiner’s determination that both Dalmia and the inventors faced the problem of increasing the density of the coil. Accordingly, we determine that Appellant has not shown error in the foregoing and has not shown that Dalmia is not analogous art. As a result, we need not consider Appellant’s arguments regarding the field of the endeavor. Reason to Combine Appellant further argues that, even if Dalmia is considered analogous art, a person of ordinary skill in the art would not have had reason to modify Honkura based on Dalmia. Appeal Br. 10–11. Appellant argues that there are significant technical differences between the MI sensor of Honkura and the inductor of Dalmia. Id. at 10. Appellant further argues that the Examiner errs in determining that one of skill in the art would have relied on Dalmia to teach one to provide equal space between the amorphous wire and each of the first and second wire part in order to provide the required inductance. Id. Appellant asserts that there is no such teaching in Dalmia. Id. In the Answer, the Examiner determines that, “[s]ince a MI sensor and an inductor [both] use a coil to provide their respective purpose and function, a person with ordinary skill in the art in a detection coil structure for a MI sensor would look into the fields of inductor coil structure.” Answer 9. The Examiner further determines that “a person with ordinary error and construe the Answer to maintain that Dalmia is reasonably pertinent to the problem with which the inventors were concerned. Appeal 2019-006893 Application 14/433,555 10 skill in the art would know that equal spacing between the amorphous wire and the first and second wire part would have effect on the total [impedance].” Ans. 10; see also Dalmia ¶ 4. As persons of scientific competence in the fields in which they work, examiners are responsible for making findings, informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art. Absent legal error or contrary factual evidence, those findings can establish a prima facie case of obviousness. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003); see also, In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (Findings of an examiner not shown to be clearly erroneous may be accepted as fact.). Here, the Examiner finds that equal spacing would have an effect on the total impedance. Appellant does not specifically rebut this finding. Accordingly, Appellant has not shown error in the Examiner’s determination that one of ordinary skill in the art would have combined Dalmia’s teachings of a connecting part (conductive vias) with Honkura’s teaching of a magneto-impedance element in order to achieve an MI element having equal space between the amorphous wire and each of the first and second wire parts to provide the required impedance. Rejection 2. The Examiner rejects claim 3 as obvious over Honkura in view of Dalmia and further in view of Hatano. Final Act. 8–9. Appellant argues that this rejection is in error for the same reasons argued with respect to claims 1, 2, and 4–6, discussed above. Appeal Br. 11. As we have not found such arguments to be persuasive, we determine that Appellant has not shown error with respect to the rejection of claim 3. Appeal 2019-006893 Application 14/433,555 11 CONCLUSION In view of the reasoning set forth in the Final Office Action, the Examiner’s Answer, and above, the Examiner’s rejections are affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–6 103(a) Honkura, Dalmia 1, 2, 4–6 3 103(a) Honkura, Dalmia, Hatano 3 Overall Outcome 1–6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation