Ex Parte Dimig et al

Patent Trial and Appeal Board

Oct 31, 2018

13776827 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/776,827 02/26/2013
23409 7590 11/02/2018
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Steven J. Dimig
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
087801-9359-USOl 5143
EXAMINER
BARRERA, RAMON M
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN J. DIMIG, GREGORY J. ORGANEK, and
MICHAEL G. FEUCHT
Appeal2017-010396
Application 13/776,827
Technology Center 2800
Before TERRY J. OWENS, RAEL YNN P. GUEST, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 seeks our review of the
Examiner's rejections of claims 1-16, 53, 56, and 57.
We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 Appellant is the Applicant, Strattec Security Corporation, which is also
identified as the real party in interest. App. Br. 2.
Appeal2017-010396
Application 13/776,827
SUBJECT MATTER
The subject matter on appeal relates generally to residual magnetism
which "occurs in materials that acquire magnetic properties when placed in a
magnetic field and retain magnetic properties even when removed from the
magnetic field." Spec. ,r 1. Using residual magnetic force, an armature may
engage and disengage with a core housing without requiring current or
power. Id. at ,r 2.
Figure 36 of the application is illustrative:
194
~ 197
• )
199
198
196
195
FIG. 36
Figure 36 depicts a residual magnetic clutch system 194 in a
disengaged state containing a first element 195, a core housing 196, a second
element 197, and an armature 198. Spec. ,r,r 37, 185-187.
Independent claim 1 is also illustrative of the claimed subject matter
and is copied below with key limitations at issue in this appeal italicized:
1. A method of coupling and uncoupling a first element [ 195] with
respect to a second element [197], the method comprising:
applying a magnetization current to form a substantially closed
magnetic path between an armature [198] and a core housing [196]
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defining a magnetic air gap in order to create an irreversible residual
magnetic force with a magnetic air gap energy of at least 6652 (line-
amp-tum )/ cm 3;
coupling the first element [ 195] to the second element [ 197] due to the
irreversible residual magnetic force;
applying a demagnetization current to null at least a portion of the
irreversible residual magnetic force, wherein the demagnetization
current is sufficient to uncouple the first element [195] from the
second element [ 197]; and
uncoupling the first element [ 195] from the second element [ 197] in
response to the nulling of at least a portion of the irreversible
residual magnetic force through application of the demagnetization
current.
App. Br. 22 ( emphasis added).
REJECTI0NS 2
I. Claims 1--4, 6, 8-16, 53, 56, and 57 under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Maley; 3 and
II. Claims 1-5, 7, 8, 10, and 13-16 under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over Babich '989, 4 Babich' 136, 5 and Maley.
2 Claims 20, 54, and 55 are indicated as allowable and are, thus, not before
us. Final 6.
3 Maley et al., US 5,488,340, issued Jan. 30, 1996.
4 US 2004/0169989 Al, published Sept. 2, 2004.
5 US 2005/0030136 Al, published Feb. 10, 2005.
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Application 13/776,827
OPINION
We address the independent claims separately, beginning with claim
construction of the term "coupling", which appears in each independent
claim. The Specification indicates that the term "'coupled' [is] not restricted
to physical or mechanical ... couplings, and can include electrical ...
couplings, whether direct or indirect." Spec. ,r 64. Appellant indicates the
embodiment described in Figure 36 (illustrated supra) is exemplary of the
subject matter of claim 1. App Br. 4. The Specification indicates that, in the
absence of a residual magnetic force between first element 195 and second
element 197, the elements move independently from one another.
Spec. ,r 187. Once a residual magnetic force is generated, however, these
elements "can be brought into contact" with one another. Id.
Thus, consistent with the Specification and Appellant's arguments, we
construe the term "coupling" broadly to include indirect or direct physical
coupling (e.g., physical contact). See In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (explaining that, during examination,
"the PTO must give claims their broadest reasonable construction consistent
with the specification."). We note that the Examiner has not provided a
reason in light of the Specification for us to interpret the term "coupled"
contrary to the meaning argued by Appellant, but rather appears to agree
with the construction of "uncouple" argued by Appellant by reasoning that
"the claim does not preclude a spring aiding in uncoupling [i.e., pulling
apart] the elements." Ans. 6. See also Non-Final Act. 6 6 (noting how the
6 Non-Final Office Action dated October 6, 2016.
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Application 13/776,827
prior art Maley "armature 118 is pulled away from the pole member 112 by
the bias spring 130.")
Claim 1
The Examiner rejects claim 1 under 35 U.S.C. § 103(a) on two bases:
1) over Maley alone, and 2) over Babich '989, Babich' 136, and Maley. We
reverse each of these rejections.
Maley discloses the actuation of solenoid 100 depicted in Figure 2 by
energizing wire coil 116 using an electric current "to attract armature 118
towards pole member 112," which forces armature 118 to "move[] upward
and make[] contact with the lower surface 120 of pole member 112." Maley
6:31-36. Relevant to this appeal, in rejecting claim 1 over Maley alone, the
Examiner finds Maley discloses application of a demagnetization current
that is "sufficient to uncouple" (i.e., pull away) a first element 122 from a
second element 112, and that such uncoupling is "in response to ...
application of the demagnetization current." Non-Final Act. 2.
As noted by Appellant (App. Br. 7), however, Maley teaches that
armature 118 of rod 122 (i.e., the "first element") is pulled away from the
pole member 112 (i.e., the "second element") by the bias spring 130 after a
demagnetization current is applied. Maley, 6:42-51.
Despite acknowledging Maley's use of spring 1307 to uncouple
elements 112 and 118, the Examiner alleges that Maley's disclosure is
nevertheless sufficient to render claim 1 unpatentable under § 103.
7 On several occasions, the Examiner erroneously refers to "spring 134."
Non-Final Act. 4, 7. Maley's element 134, however, is an "upper face."
Maley, 5:50-51. We assume for purposes of this opinion that the Examiner
meant to refer to Maley's "spring 130."
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Application 13/776,827
First, the Examiner notes that, under Ex parte Wu, it would have been
obvious to omit the spring "and its function ... if the function of the element
is not desired." Non-Final Act. 4, 7. We disagree with Examiner's
application of Ex parte Wu to the instant facts, however, because, here, the
function of Maley's spring is to uncouple armature 118 and the pole member
112. The Examiner has not explained how omitting the spring would lead to
the desired (i.e., claimed) result of uncoupling the first and second elements.
Furthermore, the Examiner states that "the claim does not preclude a
spring aiding in uncoupling the elements." Ans. 6. Even if this is
technically correct, it does not address the dispositive issue - whether
Maley's "demagnetization current is sufficient to uncouple the first element
from the second element" without bias spring 130. On this record, the
Examiner neither points to express disclosure in Maley, nor provides any
explicative rationale, that reasonably establishes that Maley' s
demagnetization current without the bias spring is sufficient to uncouple the
first and second elements from each other as required by claim 1. To us, it is
unclear from Maley's disclosure whether merely overcoming the residual
magnetism between element 112 and armature 118 would necessarily result
in the uncoupling of these elements from each other. For example, if
Maley's solenoid 100 of Figure 2 was configured upside down in control
valve 26 of Maley's fuel injection system, element 112 and armature 118
may stay coupled to one another due to gravitational force alone. It follows
that we do not sustain the rejection of claim 1 over Maley.
The Examiner's obviousness rejection based on Babich '989, Babich
'13 6, and Maley is also deficient. The Examiner relies on the disclosure of
Babich '989 to establish the creation of "an irreversible residual magnetic
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force" that couples the first and second elements. Non-Final Act. 5. To
support this finding, the Examiner states that "[t]he irreversible residual
magnetic force is described on pages 3 and 4, and [Figure] 7 which discloses
zeroing values of induction and flux in the magnetic guide after reverse
energization of the coil." Id. The Examiner also cites to Babich '989's
Figures 12 and 16 to establish the irreversible residual magnetic force. Id.
Appellant challenges the Examiner's finding by contending that the
"magnetically hard" materials disclosed in the cited Babich references are
incapable of coupling the first and second elements due to an "irreversible
residual magnetic force" as recited in claim 1. App. Br. 13. Appellant
specifically points to the disclosure in Babich '13 6 which distinguishes
between "magnetically hard" and "magnetically soft" materials, noting that
"magnetically hard" materials - which, according to Appellant, are
"permanent magnets" that "fail to generate an irreversible residual magnetic
force" - "are used to couple or hold components together." Id. Appellant
therefore argues that the Babich references "make it clear that irreversible
magnetic forces alone ... could not provide sufficient coupling force" as
required by claim 1.
Significantly, the Examiner provides the appeal record with no direct
response to Appellant's argument regarding the magnetic forces associated
with "soft" and "hard" materials, which generally appears to be supported in
the Specification and the art cited by the Examiner. Ans., generally; Spec.
,r 1 ( distinguishing between various magnetic materials and explaining how
"[r]esidual magnets are often created by placing ... soft magnetic materials
in a magnetic field" where the degree of "magnetization retained in the
material after the magnetic field is removed is called the residual" and
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"depends [in part] on ... the properties of the material being magnetized.")
See also id. ("[t]he residual field of a permanent magnet cannot be easily
demagnetized by applying a magnetic field."). See also Babich '136, ,r 12
(explaining how a permanent magnet's "magnetically hard material ... is
not demagnetized"). Rather, the Examiner points to paragraphs 83 and 84
and Figures 14--16 of Babich '989, noting that these embodiments "disclose
no uncoupling forces other than a demagnetization current, i.e., no springs,"
and then concludes that "[t]he demagnetization current therefore is sufficient
to perform uncoupling." Ans. 7. However, the embodiments upon which
the Examiner relies disclose both "magnetically hard" and "magnetically
soft" materials. Babich '989 ,r,r 83-84. Because Babich '136 discloses
(i-f 12) that magnetically hard materials do not demagnetize, the Examiner
has not sufficiently explained how a current applied to electromagnetic
devices having such magnetically hard materials as a component part "is
sufficient to perform uncoupling," as the term "uncouple" is construed
above. Ans. 7. Instead, it seems to us that Appellant is correct (Reply Br. 3)
that the holding force would "need to be overcome through application of
another force to actually uncouple the elements included in the lock"
because the prior art recognizes that magnetically hard materials do not
demagnetize.
We furthermore note that the underlying rejection is notably short on
detail regarding how, precisely, the Babich references disclose an
"irreversible" magnetic force as recited in claim 1. Non-Final Act. 5. We
note in particular the generic reference to "pages 3 and 4" of Babich '989
without specifically identified paragraph numbers. Furthermore, it is unclear
how Figures 7, 12 and 16 of Babich '989 support the Examiner's finding
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Application 13/776,827
that the magnetism is "irreversible" as claimed. Id. Such findings, without
more, are speculative and insufficient to establish a prima facie case. In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not ...
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies" in the cited references).
Therefore, each rejection of claim 1 is reversed. By extension, the
rejection of dependent claims 2-16 is likewise reversed.
Claim 53
Independent claim 53 is similar in scope to independent claim 1 and is
rejected under 35 U.S.C. § 103(a) as unpatentable over Maley. Non-Final
Act. 4--5. Relevant to the rejection on appeal, independent claim 53 requires
the application of "a demagnetization current to the coil sufficient to null the
irreversible residual magnetic force" which serves to "uncouple the first and
second element." App. Br. 24--25.
As we determined, supra, the Examiner does not identify any
disclosure in Maley, or offer any technical rationale, to support a finding that
Maley's demagnetization is "sufficient" to uncouple the first and second
elements without additional assistance from bias spring 130.
Therefore, we do not sustain the Examiner's obviousness rejection of
claim 53, nor its dependent claim 56.
Claim 57
Independent claim 57, similar in scope to independent claims 1 and
53, is rejected under 35 U.S.C. § 103(a) as unpatentable over Maley. Non-
Final Act 3--4. Instead of requiring the demagnetization current to be
"sufficient to [] uncouple the first element from the second element" as
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recited in independent claims 1 and 53, claim 57 requires: "uncoupling the
first element from the second element in response to applying the
demagenetization current to null at least a portion of the irreversible
magnetic force and without an external force." App. Br. 25.
The Examiner finds that Maley discloses this limitation requiring no
"external force" (Non-Final Act. 4 (citing Maley 7:46-53)), but then states
"Maley failed to disclose uncoupling the first element from the second
element without an external force," and determines it would have been
obvious to omit the external force (i.e., Maley's spring) per Ex parte Wu, IO
USPQ 2031 (BPAI 1989). Non-Final Act. 4; Ans. 8.
Appellant contends Maley "discloses a solenoid actuator 150 that is
de-actuated by passing electric current through a second wire coil 17 6
(separate from a coil used to actuate[] the solenoid actuator 150) to attract
the armature 158 toward the lower pole member 172." App. Br. 19. Thus,
Appellant argues that the portion of Maley cited by the Examiner in the
rejection of claim 57 discloses an external attractive force ( caused by
energizing wire coil 17 6) in addition to the optional demagnetization current
generated in wire coil 156. Id. at 19-20.
We agree with Appellant. We first observe the Examiner's seemingly
inconsistent positions regarding whether Maley teaches the limitation
requiring uncoupling the first and second elements "without an external
force." Non-Final Act. 4; Ans. 8. Moreover, the disclosure upon which the
Examiner relies for this limitation (i.e., Maley 7:46-53 regarding the
embodiment in Figure 3) does not refer to a bias spring. Thus, the
Examiner's discussion of such a spring is not particularly relevant to the
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underlying finding relied on in support of the rejection. Non-Final Act. 4;
Ans. 8.
Furthermore, the Examiner does not address Appellant's argument
regarding the additional magnetic forces at play in the Figure 3 embodiment.
App. Br. 19-20. Significantly, the Examiner does not explain how the
attractive forces induced by the electrical current through wire coil 176 is
not "an external force" as required by claim 57. Moreover, the
demagnetization current generated in Maley' s coil 15 6 is optional. Maley
7:46-50. Thus, it is unclear how armature 158 can uncouple from surface
160 "in response to applying the demagnetization current" as claimed if such
demagnetization current is not always applied. Under these circumstances,
we cannot sustain the rejection of this claim.
DECISION
The Examiner's rejections of claims 1-16, 53, 56, and 57 are
reversed.
REVERSED
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