Ex Parte Ausserlechner et al

Patent Trial and Appeal Board

Oct 5, 2017

12613376 (P.T.A.B. Oct. 5, 2017)

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.
12/613,376 11/05/2009 Udo Ausserlechner INF 2009 P 51203 US 6158
48154 7590 10/10/2017
SLATER MATSIL, LLP/Infineon
17950 PRESTON ROAD
SUITE 1000
DALLAS, TX 75252
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
10/10/2017 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, TOBIAS WERTH, PETER SLAMA,
JUERGEN ZIMMER, WOLFGANG RABERG, STEPHAN SCHMITT, and
MARTIN ORASCH
Appeal 2016-008015
Application 12/613,3761
Technology Center 2800
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections of claims 1—6, 15, 16, 25—27, 32, and 33.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify the real party in interest as Infineon Technologies AG.
App. Br. 2.
Appeal 2016-008015
Application 12/613,376
BACKGROUND
The subject matter on appeal is directed to magnetic encoder
elements, such as magnetic encoder wheels, to be used in a position
measurement system. Spec. 11.
Claim 1 is illustrative, is taken from the Claims Appendix of the
Appeal Brief, and appears below with the key limitation italicized.
1. A magnetic encoder element for use in a position measurement
system including a magnetic field sensor for measuring position along
a first direction, the encoder element comprising:
a first track comprising a plurality of segments having different
magnetizations,
wherein each of the plurality of segments are made of a
magnetic material having a same thickness along a North-South
direction,
the plurality of segments provide a magnetic pattern along
the first direction,
the magnetic pattern is formed by a remanent
magnetization vector that points essentially in one direction and
does not change its orientation along the first direction.
App. Br. 23.
REJECTIONS ON APPEAL
I. Claims 1—6, 15, 16, 25—27, 32, and 33 are rejected under 35 U.S.C.
§ 112, 1st paragraph as failing to comply with the written
description requirement (Final Act. 5—7);
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Application 12/613,376
II. Claims 1—6, 15, 25—27, and 33 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sugitani2 alone or in view of Nehl3
(Final Act. 7—18);
III. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sugitani alone or in view of Nehl and Lohberg4 (Final Act. 18—19);
and
IV. Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sugitani alone or in view of Nehl and Rissing5 (Final Act. 19-20).
OPINION
Rejection I
The purpose of the written description requirement set forth in
35 U.S.C. § 112,11 is to “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) (citations omitted). “[T]he
test for sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Compliance with the written description requirement is a question of fact
and is determined on a case-by-case basis. Centocor Ortho Biotech, Inc. v.
Abbott Labs., 636 F.3d 1341, 1347 (Fed. Cir. 2011); Vas-Cath, 935 F.2d at
1563; In re Alton, 76 F.3d 1168, 1171-72 (Fed. Cir. 1996).
2 Nobuyoshi Sugitani, US 6,147,487, issued November 14, 2000.
3 Thomas W. Nehl, et al., US 6,720,763 Bl, issued April 13, 2004.
4 Peter Lohberg, US 2003/0000307 Al, published January 2, 2003.
5 Lutz Rissing, et al., US 2001/0030535 Al, published October 18, 2001.
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Application 12/613,376
Appellants present arguments against this rejection as a group. App.
Br. 8—12; Reply Br. 1—4. That is, Appellants do not offer separate
substantive arguments for independent claims 25 and 26, or dependent
claims 2—6, 15, 16, 27, 32, and 33. App. Br. 12; Reply Br. 4. Therefore, we
select claim 1 as representative and decide the propriety of this rejection on
the basis of this claim. 37 C.F.R. § 41.37(c)(l)(iv).
After reviewing the respective positions of Appellants and the
Examiner, we find that a preponderance of the evidence supports the
Examiner’s position that the original disclosure does not provide adequate
support for the limitation requiring “each of the plurality of segments are
made of a magnetic material having a same thickness along a North-South
direction,” recited in independent claim 1, and similar limitations recited in
independent claims 25 and 26.
The Examiner notes, and Appellants admit, that the Specification fails
to expressly recite the limitation at issue. Final Act. 6; Ans. 2; App. Br. 11.
Although Appellants primarily rely on Figure 1 for written description
support of the disputed limitation (App. Br. 9—12; Reply Br. 2—4), the
Examiner correctly points out that “it is well established that patent drawings
do not define the precise proportions of the elements and may not be relied
on to show particular sizes if the specification is completely silent on the
issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int’l., Inc., 222 F.3d 951,
956 (Fed. Cir. 2000) (“Hockerson-Halberstadt’). “Ordinarily drawings
which accompany an application for patent are merely illustrative of the
principles embodied in the alleged invention claimed therein and do not
define the precise proportions of elements relied upon to endow the claims
with patentability.” In re Olson, 212 F.2d 590, 592 (CCPA 1954). See also
Nystrom v. Trex Co., 424 F.3d 1136, 1148-49 (Fed. Cir. 2005). Such is
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Application 12/613,376
precisely the case here. As the Examiner correctly observes (Ans. 6), the
Specification expressly states “[t]he components in the figures are not
necessarily to scale, instead emphasis [is] placed upon illustrating the
principles of the invention.” Spec. 19 (emphasis added). Thus, because
Figure 1 is not necessarily to scale and contains no measurements that
demonstrate the precise thicknesses along the North-South direction of the
segments, this Figure, on its own, is insufficient to show that the inventor
had possession of such subject matter as of the filing date.
Hockerson-Halberstadt, 222 F.3d at 956.
Appellants’ attempt to distinguish Hockerson-Halberstadt (App. Br.
9—10) from the facts of the case before us is unavailing. Our reviewing
court’s holding in Hockerson-Halberstadt regarding the insufficiency of
patent drawings to evince a particular size or proportion is not limited to
cases where there is also a disclaimer of claim scope during prosecution.
We are also unpersuaded by Appellants’ unembellished assertions that
Figure 1 provides “the requisite ‘reasonable clarity’ to convey” possession
of the disputed limitation to the skilled artisan. App. Br. 11; see also Reply
Br. 3. In this regard, Appellants merely quote several passages from Vas-
Cath, 935 F.2d at 1565 and In re Heinle, 342 F.2d 1001 (CCPA 1965)
without explaining how the facts of those cases reveal error in the
Examiner’s findings in this particular case. App. Br. 10—11; Reply Br. 2—3.
Finally, we are not persuaded by Appellants’ arguments that suggest
that the Examiner somehow erred by confusing the respective orientations of
Figure 1 (i.e., a “side view”) and Figure 5 (i.e., a “top view”). App. Br. 11—
12; Reply Br. 3^4. Rather, we observe that the Examiner indeed
acknowledges that “Figures 5a—5e show a top view of the track.” Final Act.
5.
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Application 12/613,376
It follows that we sustain this rejection.
Rejections II—IV
Notwithstanding our determination that all claims before us lack
written description support, we have reviewed each of Appellants’
arguments against the obviousness rejections and are unpersuaded that
Appellants have identified reversible error. In re Jung, 637 F.3d 1356,
1365—66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellants to identity the alleged error in the Examiner’s
rejection). Therefore, we sustain the obviousness rejections for essentially
the same reasons expressed by the Examiner in the Final Action and in the
Answer. We add the following comments for emphasis.
Appellants contend that the Examiner’s rejections are in error because
the proposed modification would make Sugitani’s device perform
differently, thus making Sugitani’s device unsatisfactory for its intended
purpose. App. Br. 14—16, 20-21; Reply Br. 5—8. Specifically, Appellants
urge that modifying Sugitani’s “magnetic rotary member 10 to have the
same thickness . . . would cause the magnetic rotary element to have a
uniform magnetization around the entire circumference of the element.”
App. Br. 14; see also Reply Br. 6. Thus, according to Appellants, the
modified Sugitani rotary member 10 would not be able to produce a variable
magnetic field as it rotates, which would yield the system inoperable
because the magnetic sensor would not be able to detect rotational motion.
App. Br. 14; Reply Br. 6.
This argument fails to identify reversible error. As correctly observed
by the Examiner (Ans. 12), Appellants have not provided evidence or
technical reasoning that persuasively demonstrates that the Examiner’s
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proffered modification would actually yield a uniform magnetization around
the entire circumference of Sugitani’s rotary element as alleged. Rather,
Appellants primarily rely on attorney argument to support their contention.
App. Br. 14—15; Reply Br. 6. “Attorney’s argument in a brief cannot take
the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
On the other hand, the Examiner provides persuasive technical
reasoning that demonstrates that the modified Sugitani would provide the
varying magnetic field that Appellants argue is necessary for Sugitani to be
operable. Ans. 13. In this regard, the Examiner provides an annotated
Figure 36 from Sugitani. Id. at 11.
The Examiner’s annotated version of Sugitani Figure 36 is reproduced
below:
Annotated Figure 36 depicts a perspective view of a magnetic rotary
element magnetized with different magnetic poles at its inner and outer
peripheries.
The Examiner explains that “extending the magnetic segments to be
the same thickness as the magnetized segments would still provide [a
10d
10b
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Application 12/613,376
varying magnetic field] because the magnetized segments would provide a
stronger magnetic field than the magnetic segments.” Ans. 13. The
Examiner explains, more specifically, that as the member rotates, “the
magnetic field would get stronger and weaker at the sensor because a
magnetized segment must produce a stronger magnetic field than the
magnetic segments because the magnetic segments are not permanently
magnetized and are only partially magnetized due to their proximity to the
permanently magnetized segments.” Id. Notably, Appellants fail to
challenge the Examiner’s technical reasoning with any specificity in the
Reply Brief. Rather, Appellants focus their arguments on the Examiner’s
statement that the modified Sugitani element would behave similarly to
Appellants’ Figure 5B and contend that the Examiner engaged in
impermissible hindsight. Reply Br. 7. Such incomplete arguments neither
establish that modified Sugitani would have a uniform magnetization, nor
otherwise identify reversible error.
SUMMARY
The Examiner’s final decision to reject claims 1—6, 15, 16, 25—27, 32,
and 33 is affirmed.
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).
AFFIRMED
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