Micronas GmbHDownload PDFPatent Trials and Appeals BoardMar 29, 20222021003068 (P.T.A.B. Mar. 29, 2022) 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. 15/290,406 10/11/2016 Joerg FRANKE 1001/0314PUS1 7716 60601 7590 03/29/2022 Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 Fairfax, VA 22033 EXAMINER REISNER, NOAM S ART UNIT PAPER NUMBER 2852 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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): MAILROOM@MG-IP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOERG FRANKE ____________ Appeal 2021-003068 Application 15/290,406 Technology Center 2800 ____________ Before MICHAEL P. COLAIANNI, JEFFREY R. SNAY, and BRIAN D. RANGE, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies TDK-Micronas GMBH as the real party in interest. Appeal Br. 2. Appeal 2021-003068 Application 15/290,406 2 CLAIMED SUBJECT MATTER The invention relates to a magnetic field measuring device. Spec. ¶ 3. Claim 1 illustrates the claimed invention and reads as follows: 1. A magnetic field measuring device comprising: a semiconductor body with a first surface running in a first x-y plane, a second surface parallel to the first surface, and an axis of symmetry running perpendicular to the first surface in a z-direction, the semiconductor body having a first magnetic field sensor and a second magnetic field sensor integrally formed on the first surface, the first magnetic field sensor being positioned opposite the second magnetic field sensor along the x-direction with respect to the axis of symmetry, the first and second magnetic field sensors each measuring a z-component of a magnetic field, and the x-direction and the y-direction and the z-direction each being formed orthogonal to one another; a first magnet with a first axis and a first polar surface perpendicular to the first axis and facing the semiconductor body, a magnetic polarity changing along the first axis, and the first axis being parallel to the axis of symmetry; and a second magnet spaced apart from the first magnet along the x-direction, wherein a space between the first magnet and the second magnet is not filled with ferromagnetic material such that the first magnet and the second magnet are spaced apart by an air gap, the second magnet having a second axis and a second polar surface perpendicular to the second axis and facing the semiconductor body, a magnetic polarity changing along the second axis, and the second axis being parallel to the axis of symmetry, wherein the first magnet and the second magnet are spaced apart from the semiconductor body such that magnetic field lines emitted or received at the first polar surface and the second polar surface are substantially parallel to the first x-y plane of the semiconductor body at the first surface of the semiconductor body, wherein the axis of symmetry runs between the axis of the first magnet and the axis of the second magnet, wherein the first polar surface of the first magnet and the Appeal 2021-003068 Application 15/290,406 3 second polar surface of the second magnet are each spaced apart in the z-direction from the first surface of the semiconductor body and the second surface of the semiconductor body, wherein the first magnetic field sensor and second magnetic field sensor are formed as Hall sensors, the first magnetic field sensor and second magnetic field sensor, when synchronized or matched, have less than 3% deviation from each other, wherein the first magnet and the second magnet are spaced apart from the first magnetic field sensor and from the second magnetic field sensor such that no or substantially no z- component of the magnetic field of the two magnets is formed in an area of the two magnetic field sensors for detecting a ferromagnetic encoder spaced apart in the z-direction, wherein the first magnet has a first centroidal axis intersecting the first polar surface and the second polar surface of the first magnet and the second magnet has a second centroidal axis intersecting the first polar surface and the second polar surface of the second magnet, wherein the first magnetic field sensor and second magnetic field sensor are both disposed entirely between the first centroidal axis and the second centroidal axis, and wherein the first magnet and the second magnet are connected solely by the semiconductor body. Appeal Br. 14-15 (Claims Appendix) (emphasis added to highlight a key recitation in dispute). Claims 18 and 19 recite field measuring devices that are similar to that of claim 1. Each remaining claim on appeal depends from claim 1. REJECTIONS I. Claims 1-19 stand rejected under 35 U.S.C. § 112(a) for failing to satisfy the written description requirement. Appeal 2021-003068 Application 15/290,406 4 II. Claims 1-4 and 6-19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Admitted Prior Art (“APA”),2 Vig,3 and Dufour.4 III. Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over Admitted Prior Art (“APA”), Vig, Dufour, and Koeck.5 OPINION Rejection I: Written Description Each claim on appeal includes a recitation that “the first magnet and the second magnet are connected solely by the semiconductor body.” The Examiner concludes this feature is not supported by the original disclosure. Final Act. 3. Appellant argues adequate support is found in Figures 3 and 6 of the Specification. Appeal Br. 10; Reply Br. 2. We reproduce the Specification’s Figure 6 below. Figure 6 is a perspective view of a magnetic field measuring device according to an embodiment of the described invention. Spec. ¶ 34. 2 The Examiner characterizes the disclosure depicted in Figure 7 of the Specification as admitted prior art. Final Act. 4. Appellant does not challenge such characterization. 3 US 5,781,005, issued July 14, 1998. 4 US 2003/0178990 A1, published September 25, 2003. 5 US 2015/0331070 A1, published November 19, 2015. Appeal 2021-003068 Application 15/290,406 5 This figure depicts first and second magnets (50, 60) connected by semiconductor body 20. See Spec. ¶ 36, Fig. 6. No other connecting feature is depicted in the perspective view shown in Figure 6. In rejecting a claim under the first paragraph of 35 U.S.C. § 112 for lack of adequate descriptive support, it is incumbent upon the Examiner to establish that the originally-filed disclosure would not have reasonably conveyed to one having ordinary skill in the art that Appellant had possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Adequate description under the first paragraph of 35 U.S.C. § 112 does not require literal support for the claimed invention. In re Herschler, 591 F.2d 693, 701 (CCPA 1979); In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). Rather, it is sufficient if the originally-filed disclosure would have conveyed to one having ordinary skill in the art that an appellant had possession of the concept of what is claimed. In re Anderson, 471 F.2d 1237, 1242 (CCPA 1973). Given that Figure 6 appears to depict the relevant structural arrangement in which first and second magnets are connected only by a semiconductor body, we are persuaded the Examiner has not met the burden of establishing the originally-filed disclosure would not have reasonably conveyed to one having ordinary skill in the art that Appellant had possession of the now claimed subject matter. The rejection under 35 U.S.C. § 112(a) is not sustained. Appeal 2021-003068 Application 15/290,406 6 Rejection II: Obviousness over APA, Vig, and Dufour With regard to Rejection I, Appellant does not argue any claim apart from the others. See Appeal Br. 10-12. We select claim 1 as representative of the rejected claims. Claims 2-4 and 6-19 stand or fall with claim 1. The Examiner finds APA discloses a magnetic field measuring device which includes all the features recited in claim 1, except APA does not include a second magnet oriented as claimed. Final Act. 4-5. The Examiner finds Vig teaches providing two magnets in a field measurement device improves the signal to noise ratio of the device. Id. at 6. The Examiner further finds Vig exemplifies such a dual magnet device with the magnets separated by an air gap. Id. at 5 (citing Vig Fig. 39). We reproduce the Specification’s Figures 1 and 7 below. Figure 1 depicts a field measuring device within the scope of claim 1. Figure 7 depicts the relied-upon APA. Appellant argues the combined teachings of APA and Vig would not have resulted in all the claimed features because (i) Vig’s magnets are Appeal 2021-003068 Application 15/290,406 7 connected by a steel back plate rather than a semiconductor body, and (ii) Vig provides only a single sensor unit, not two. Appeal Br. 11; Reply Br. 3. Appellant’s arguments are not persuasive of reversible error. Appellant does not dispute that the device depicted in APA includes the argued features-namely, two sensor units mounted on a semiconductor body connected to a magnet. See Spec. ¶ 48 (“The shown magnetic field measuring device has only a first magnet 50, whose axis 54 coincides with the axis of symmetry of the semiconductor body.”). Appellant’s arguments that Vig does not include two sensors mounted on a semiconductor body neither addresses nor refutes the Examiner’s obviousness determination which is based on the combined teachings of APA and Vig. “Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rejection II is sustained. Rejection III: Obviousness over APA, Vig, Dufour, and Koeck Appellant does not present any additional argument concerning Rejection III beyond that which is argued with regard to Rejection II. Accordingly, Rejection III also is sustained. CONCLUSION The Examiner’s decision rejecting claims 1-19 is affirmed. Appeal 2021-003068 Application 15/290,406 8 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-19 112(a) Written Description 1-19 1-4, 6-19 103 APA, Vig, Dufour 1-4, 6-19 5 103 APA, Vig, Dufour, Koeck 5 Overall Outcome 1-19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation