INFINEON TECHNOLOGIES AGDownload PDFPatent Trials and Appeals BoardNov 23, 20202020000355 (P.T.A.B. Nov. 23, 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. 14/290,780 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 Claims 12–14 and 32 are also pending but have been withdrawn from consideration.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. Appeal 2020-000355 Application 14/290,780 2 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 Appeal 2020-000355 Application 14/290,780 3 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. Appeal 2020-000355 Application 14/290,780 4 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”). Appeal 2020-000355 Application 14/290,780 5 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). Appeal 2020-000355 Application 14/290,780 6 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). Appeal 2020-000355 Application 14/290,780 7 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”). Appeal 2020-000355 Application 14/290,780 8 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. Appeal 2020-000355 Application 14/290,780 9 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 Copy with citationCopy as parenthetical citation