EPCOS AG

Patent Trials and Appeals Board

May 14, 2020

14740429 - (D) (P.T.A.B. May. 14, 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.
14/740,429 06/16/2015 Benjamin Bohl EHF-11-1303DIV(369254-366 8218
35811 7590 05/14/2020
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
SOTO, JANICE M
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
05/14/2020 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):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN BOHL and OLIVER BARD
Appeal 2019-004440
Application 14/740,429
Technology Center 2800
Before CHRISTOPHER C. KENNEDY, JULIA HEANEY, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–5, 8, and 9. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).

1 This Decision refers to the Specification filed June 16, 2016 (“Spec.”),
Final Office Action dated June 15, 2018 (“Final Act.”), Appeal Brief dated
Sept. 25, 2018 (“Appeal Br.”), and Examiner’s Answer dated Jan. 11, 2019
(“Ans.”).
2 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 EPCOS AG. Appeal
Br. 1.
Appeal 2019-004440
Application 14/740,429

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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a sensor element embedded within a liquid
polymer insulation to improve response time. Spec. ¶¶ 30, 39. Claim 1,
reproduced below, is the sole independent claim on appeal:
1. A sensor arrangement comprising:
at least one sensor element with electrical connections and
arranged in a solid plastic–material body, and
at least a first electrically insulating layer which embeds
the sensor element arranged between the sensor element and the
plastic–material body,
wherein the first electrically insulating layer comprises a
flowable liquid polymer, and the plastic–material body is closed
in an end region at least to such extent that the liquid polymer is
sealed inside the plastic-material body in an airtight manner.
Appeal Br. 8 (Claims Appendix)(emphasis added).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Noma US 5,660,473 Aug. 26, 1997
Damaschke US 2002/0125417 A1 Sept. 12, 2002
Nelson US 2006/0167139 A1 July 27, 2006
Sasaki JP 11-144913 May 28, 1999

REJECTIONS
1. Claims 1, 4, 5, and 9 are rejected under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of
Damaschke and Noma. Final Act. 9.
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Application 14/740,429

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2. Claim 8 is rejected under pre–AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Damaschke, Noma, and
Nelson. Final Act. 10.
3. Claims 1–3 are rejected under pre–AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sasaki and Noma.
Final Act. 11.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited
with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections.”). After considering the evidence
presented and each of Appellant’s arguments in this appeal, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Action and the
Answer. Final Act. 8–12; Ans. 3–6. We add the following primarily for
emphasis.
Rejections 1 & 2
In arguing against these rejections of claims 1, 4, 5, 8, and 9,
Appellant argues claims 1, 4, 5, and 9 as a group, and does not present a
separate substantive argument as to claim 8. Appeal Br. 2–5. Accordingly,
our decision focuses on claim 1.
The Examiner finds that Damaschke teaches a sensor arrangement
comprising sensor element 2 embedded in first electrically insulating layer 1
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Application 14/740,429

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with plastic material body 5 sealing the first electrically insulating layer in
an air tight manner. Final Act. 9 (citing Damaschke Figs. 1b, 3, ¶¶ 11, 13,
21, and 22). The Examiner acknowledges that Damaschke does not teach
that the first electrically insulating layer comprises a flowable liquid
polymer, but finds that Noma teaches a first electrically insulating layer
comprising flowable liquid polymer silicon oil 16. Id. (citing Noma Figs. 2,
4, 4:20–22). The Examiner determines that replacing Damaschke’s first
electrically insulating layer with a flowable liquid polymer would have been
obvious to a person of ordinary skill in the art, in order to provide an
excellent insulator that also acts as a heat conductor. Id.
Appellant argues Damaschke cannot be modified to provide a first
electrically insulating layer comprising a flowable liquid polymer silicon oil
because Damaschke’s molding process would not have been able to
substitute silicon oil for the soft plastic component of Damaschke’s first
electrically insulating layer. Appeal Br. 3–4. Specifically, Appellant argues
that Damaschke teaches a two component injection molding process where
soft plastic component 1 is injected around measuring resistor 2 to form a
casing and only then is hard plastic component 5 injected onto the soft
plastic component. Id. (citing Damaschke Fig. 1b, ¶¶ 9, 21, and 22).
Appellant argues a flowable liquid silicon oil would not be capable of
forming a polymer casing onto which the hard plastic component could be
formed because the flowable liquid silicon oil would simply flow off and
away from the measuring resistor before the hard plastic component was
formed. Id. at 4–5.
The Examiner responds that the claims are directed to an apparatus
while Appellant’s arguments are directed toward a process of making the
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apparatus. Ans. 3. Further, the Examiner determines that production of the
proposed modification to Damaschke’s sensor would have been achievable
by one of ordinary skill in the art because the ability to place an oil within a
structure without leaking would have been known in the art. Id. at 4–5
(citing In re Keller, 642 F.2d 413 (CCPA 1981) (the test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art)).
Appellant’s arguments do not persuasively identify reversible error.
The appealed claims do not require any particular process steps, and
therefore Appellant’s arguments based on adherence to the express process
steps of Damaschke are unavailing. Further, Appellant does not rebut the
Examiner’s finding that modifying Damaschke with a flowable liquid
polymer silicon oil insulation would have been achievable by one of
ordinary skill in the art because the ability to place an oil within a structure
without leaking would have been known in the art. See Ans. 3.
Accordingly, we affirm the rejections.
Rejection 3
The Examiner finds that Sasaki teaches a sensor arrangement
comprising sensor element 1 embedded in first electrically insulating layer 4
with plastic material body 6 sealing first electrically insulating layer in an air
tight manner. Final Act. 11 (citing Sasaki Fig. 1, ¶¶ 5 and 9). The Examiner
acknowledges that Sasaki does not teach that the first electrically insulating
layer comprises a flowable liquid polymer, but finds that Noma teaches a
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first electrically insulating layer comprising flowable liquid polymer silicon
oil 16. Id. (citing Noma Figs. 2, 4, 4:20–22).3 The Examiner determines
that replacing Damaschke’s first electrically insulating layer with a flowable
liquid polymer would have been obvious to a person of ordinary skill in the
art, in order to provide an excellent insulator that also acts as a heat
conductor. Id.
Appellant’s arguments with respect to this rejection are substantively
the same as the arguments discussed above. Accordingly, we affirm this
rejection for the same reasons as discussed above.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5 and 9 103(a) Damaschke and Noma 1, 4, 5, and
9

8 103(a) Damaschke, Noma and
Nelson
8
1–3 103(a) Sasaki and Noma 1–3
Overall
Outcome:
1–5, 8, and
9

3 The Examiner refers to “first electrically insulating layer (filler resin) 42
comprising a flowable liquid polymer (liquid crystal polymer) (see
paragraph 0105)” of Noma. Noma does not include that element or
paragraph. We understand the Examiner’s intended citations to Noma to be
those stated in Rejection 1. See Final Act. 9.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED