INFINEON TECHNOLOGIES AG

Patent Trials and Appeals Board

Nov 23, 2020

2020000355 (P.T.A.B. Nov. 23, 2020)

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.
14/290,780 05/29/2014 Udo Ausserlechner INF 2006 P 54810 US01 3911
48154 7590 11/23/2020
SLATER MATSIL, LLP/INFINEON
17950 PRESTON ROAD
SUITE 1000
DALLAS, TX 75252
EXAMINER
PATIDAR, JAY M
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte UDO AUSSERLECHNER
__________

Appeal 2020-000355
Application 14/290,780
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1, 4–6, 9–11, 15–19, 21, 23, 28, 29, 31, and 34–37.
Claims 12–14 and 32 are also pending but have been withdrawn from consideration.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 Infineon
Technologies AG. Appeal Brief dated June 17, 2019 (“App. Br.”), at 2.
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The claims on appeal are directed to a magnetic-field sensor and a method of
producing the sensor.
The Appellant’s Figure 1a, reproduced below, illustrates a magnetic-field
sensor according to the disclosed invention.

Appellant’s Fig. 1a is a cross-sectional view of
an embodiment of a magnetic-field sensor
according to the Appellant’s invention.
The Appellant discloses that magnetic-field sensor 100 comprises a
magnetic body or back-bias magnet 110 and a magnetic-field sensor arrangement
120. Spec. ¶ 27. The Appellant discloses that the magnetic body or back-bias
magnet 110 has an inhomogeneous magnetization as indicated by arrows 170 in
Figure 1a. Spec. ¶ 37. According to the Appellant, “a magnetization of a magnetic
body is inhomogeneous when it is largely not homogeneous.” Spec. ¶ 38. In other
words, magnetic body 110 in Figure 1a is said to have
an inhomogeneous magnetization, as is shown by the arrows 170,
since its magnetization does not have a constant direction and/or a
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constant magnitude of the magnetization M, in the vectorial sense,
across the entire magnetic body or across a substantial part of the
entire magnetic body.[2] In the context of the present application, a
substantial portion of the entire magnetic body 110, or of the magnetic
body 110, is understood to mean a volume fraction of the magnetic
body 110 which ranges from 50 % to 100 % . . . .
Spec. ¶ 38.
The Appellant discloses that “the presence of an inhomogeneous magnetic
field on the outside and/or inside of a magnet need not be an indication that the
magnetization, too, is inhomogeneous.” Spec. ¶ 39 (emphasis added); see also
App. Br. 11 (stating that “[i]t is well known in the art that a uniformly magnetized
object can produce an inhomogeneous magnetic field by virtue of its geometry
alone” (emphasis added)).
Independent claim 1 is reproduced below from the Claims Appendix to the
Appeal Brief. The limitation at issue is italicized.
1. A magnetic-field sensor comprising:
a magnetic-field sensor arrangement; and
a magnetic body comprising an inhomogeneous magnetization,
wherein the inhomogeneous magnetization comprises a first
magnetization vector M at a first point within the magnetic body
pointing in a different direction from a second magnetization vector M
at a second point within the magnetic body, the magnetic body is a
single piece, and the first and second magnetization vectors M are
neither parallel nor antiparallel,
wherein the magnetic body comprises a recess facing the
magnetic-field sensor arrangement and resulting in a non-convex
cross-sectional area, and

2 A homogeneous magnetization, on the other hand, is said to mean, in the context
of the Appellant’s invention, “a magnetization which is constant and unidirectional
with regard to its direction and intensity.” Spec. ¶ 38.
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wherein the magnetic body is fixedly arranged with respect to
the magnetic-field sensor arrangement and forms a back-bias magnet
for the magnetic-field sensor arrangement.
App. Br. 20.
Claims 21 and 28 are the other independent claims on appeal. Claim 28
recites a magnetic-field sensor comprising a magnetic-field sensor arrangement
and a magnetic body wherein the magnetic body comprises an inhomogeneous
magnetization as recited in claim 1. App. Br. 23. Claim 21 recites a method of
producing a magnetic-field sensor wherein the method comprises, inter alia, the
step of providing a magnetic body comprising an inhomogeneous magnetization as
recited in claim 1. App. Br. 22–23.
The claims on appeal stand rejected as follows:3
(1) claims 1, 4–6, 9, 15–19, 21, 23, and 34–36 under 35 U.S.C. § 102(b)4
as anticipated by Butzmann;5 and
(2) claims 10, 11, 28, 29, 31, and 37 under 35 U.S.C. § 103(a) as
unpatentable over Butzmann in view of Yokotani et al.6

3 The rejection of claims 23 and 37 under 35 U.S.C. § 112, second paragraph, was
withdrawn in the Examiner’s Answer dated August 30, 2019 (“Ans.”), at 4, 15.
4 The Examiner indicates that claims 1, 4–6, 9, 15–19, 21, 23, and 34–36 are
rejected under “pre-AIA 35 U.S.C. 102(a) (1).” Final Office Action dated
December 3, 2018 (“Final Act.”), at 4. The corresponding pre-AIA statute is
35 U.S.C. § 102(b), not 35 U.S.C. § 102(a)(1). The statement of the rejection has
been corrected accordingly.
5 US 2005/0007102 A1, published January 13, 2005 (“Butzmann”).
6 US 6,107,793, issued August 22, 2000 (“Yokotani”).
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B. DISCUSSION
1. Rejection (1)
“To anticipate a claim, a prior art reference must disclose every limitation of
the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).
The Examiner finds Butzmann discloses a magnetic-field sensor comprising
a magnetic-field sensor arrangement and a magnetic body 8.7 Final Act. 4. The
Examiner finds that the magnetic body 8 comprises an inhomogeneous
magnetization as recited in claim 1, wherein “a first magnetization vector M at a
first point within the magnetic body pointing in a different direction from a second
magnetization vector M at a second point within the magnetic body . . . and the
first and second magnetization vectors M are neither parallel nor antiparallel.”
Final Act. 4–5. To support that finding, the Examiner directs our attention to
Butzmann paragraph 16, which discloses that the “magnet produces an
inhomogeneous magnetic field,” and Butzmann Figure 1, reproduced below, which
shows “arrows H coming out of magnet [8].” Final Act. 4; see also Final Act. 6
(providing an annotated copy of Butzmann Fig. 1).

7 The Examiner refers to “magnet 18 in fig. 1.” Final Act. 4. However, the magnet
in Butzmann Figure 1 is represented by reference numeral 8, not reference numeral
18. See Butzmann ¶ 8 (describing magnet 8 in Butzmann Figure 1).
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Butzmann’s Figure 1 shows an example
of an arrangement for measuring the rotational
speed of a rotating motion sensor element.
The Appellant argues that Butzmann does not disclose an inhomogeneous
magnetization M within a magnetic body as claimed, but rather discloses that the
“resulting magnetic field H produced by the rectangular permanent magnet is
inhomogeneous.” App. Br. 9 (original emphasis omitted). The Appellant argues
that Butzmann Figure 1, for example, shows H-arrows (representing the magnetic
field)8 starting to the right of magnet 8 and extending to the left of the magnet but
does not show what is going on inside the magnet. App. Br. 9.
In response, the Examiner equates “magnetization” with “magnetic field.”
See, e.g., Ans. 7 (finding that “the magnetic field or magnetization” in Butzmann’s
magnet is not homogeneous (emphasis added)). Therefore, the Examiner contends
that the magnet disclosed in Butzmann comprises an “inhomogeneous
magnetization” within the scope of claim 1, based on the broadest reasonable
interpretation of the term “magnetization.” Ans. 9.

8 See Butzmann ¶ 9 (referring to “magnetic field H” of magnet 8).
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The Appellant argues that the Examiner’s interpretation of the term
“magnetization” is not consistent with the Appellant’s Specification.9 App. Br. 14.
In particular, the Appellant argues that the “Specification does not refer to the
property of ‘magnetization’ as a ‘magnetic field’ and clearly distinguishes
‘magnetization’ and a ‘magnetic field’ as being different properties.” App. Br. 14
(emphasis omitted). The Appellant argues that magnetization is the source for the
magnetic field, such that the magnetic field originates from the magnetization.
App. Br. 11.
Consistent with the Appellant’s arguments, the terms “magnetic field” and
“magnetization” are not used interchangeably in the Specification. For example,
the Appellant discloses:
[F]or many magnets which comprise, in the entire volume, a
magnetization which is constant in terms of magnitude and direction,
i.e., which are magnetized in a homogeneous manner, the magnetic
field resulting therefrom may be inhomogeneous both on the outside
and inside of the magnet. In other words, the presence of an
inhomogeneous magnetic field on the outside and/or inside of a
magnet need not be an indication that the magnetization, too, is
inhomogeneous.
Spec. ¶ 39 (emphasis added); see also App. Br. 14 (citing Spec. ¶ 39).
The Examiner recognizes that an inhomogeneous magnetic field, such as the
magnetic field depicted in Butzmann Figure 1, can be produced by a
homogeneously magnetized structure. Ans. 10. Nonetheless, the Examiner
contends that “the Appellant has not shown that the inhomogeneous magnetic field

9 See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(during examination, “the PTO must give claims their broadest reasonable
construction consistent with the specification”).
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generated by Butzmann’s structure is not generated by an inhomogeneous
magnetized structure.” Ans. 10.
The Examiner bears the initial burden of presenting a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In this case,
the Examiner does not direct us to any portion of Butzmann expressly disclosing a
magnetic body comprising an inhomogeneous magnetization as claimed. See
Reply Br. 210 (contending that “[t]here is no dispute that Butzmann does not
explicitly disclose a structure of the back-bias magnet comprising an
inhomogeneous magnetization” (emphasis omitted)).
The Examiner finds that Butzmann discloses a magnetic body “similar to the
one illustrated in [Appellant’s] FIG. 1.” Ans. 10. However, that finding alone is
not sufficient to support a finding of inherency. See Hansgirg v. Kemmer, 102
F.2d 212, 214 (CCPA 1939) (“Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result from a
given set of circumstances is not sufficient.”). Therefore, on this record, the
Examiner has not satisfied the initial burden of presenting a prima facie case of
anticipation and has improperly shifted the burden to the Appellant.
Finally, the Examiner notes that claim 1 “does not define any particular
arrangement, design, composition or manufacturing process of the structure
leading to an inhomogeneous magnetization.” Ans. 6. However, where, as here,
the Examiner has not satisfied the initial burden of establishing a prima facie case
of unpatentability, the Appellant is not required to further limit the claimed
invention to a particular method of making the magnet, the material(s) used to
make the magnet, and/or a particular magnet shape. See Ethicon Endo-Surgery,

10 Reply Brief dated October 18, 2019.
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Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996), citing In re
Vickers, 141 F.2d 522, 525 (CCPA 1944) (“an applicant . . . is generally allowed
claims, when the art permits, which cover more than the specific embodiment
shown” (emphasis omitted)).
For the reasons discussed above, a preponderance of the evidence does not
support the Examiner’s finding of anticipation. Therefore, the anticipation
rejection of claims 1, 4–6, 9, 15–19, 21, 23, and 34–36 is not sustained.
The Examiner’s reliance on Butzmann and/or Yokotani in the obviousness
rejection on appeal does not cure the deficiencies identified above in the
anticipation rejection. Therefore, the obviousness rejection of claims 10, 11, 28,
29, 31, and 37 also is not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–6, 9, 15–
19, 21, 23,
34–36
102(b) Butzmann 1, 4–6, 9, 15–
19, 21, 23,
34–36
10, 11, 28,
29, 31, 37
103(a) Butzmann,
Yokotani
10, 11, 28,
29, 31, 37
Overall
Outcome
1, 4–6, 9–11,
15–19, 21,
23, 28, 29,
31, 34–37

REVERSED