Ex Parte Boghun et al

Patent Trial and Appeal Board

Jun 14, 2018

13129862 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/129,862 05/18/2011 DirkBoghun
23364 7590 06/18/2018
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BOGH3003/FJD/TL 2934
EXAMINER
JAGAN, MIRELL YS
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIRK BOGHUN, TORS TEN ISEL T,
and LARRY DE GUZMANN
Appeal2017-007260
Application 13/129,862
Technology Center 2800
Before KAREN M. HASTINGS, JENNIFER R. GUPTA, and
SHELDON M. McGEE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 16-26, 31, 34, and 35 under 35 U.S.C. § 103(a) as
unpatentable over at least the combination of Wehrmann (US 6,246,000 Bl;
June 12, 2001) and Mizoguchi (US 2009/0016409 Al; Jan. 15, 2009). 2 We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
WE AFFIRM.
1 The real party in interest is stated to be "Endress + Hauser W etzer GmbH +
Co. KG" (Appeal Br. 1 ).
2 The rejection of dependent claims 22 and 23 also includes Keep, Jr.
(US 4,388,523; June 14, 1983) ("Keep") (Final Action 11-12). Appellants
do not present any additional arguments for these claims (Appeal Br. 9).
Appeal2017-007260
Application 13/129,862
Claim 16 is illustrative of the claimed subject matter:
16. An industrial temperature measuring device,
compnsmg:
at least one sensor element, which is connected to at least
one connection line, said sensor element serving for measuring
temperature, by evaluating a temperature dependent resistance
of said sensor element, located in a cap, said cap being welded
to the outer sheath of a sheath line, said sensor element being at
least partially embedded in a potting compound, said
connecting line of said sensor element extends out from the
potting compound;
at least one conductor element of said sheath line, which
conductor element is connected to said connection line; and
at least one formed part, wherein:
at least one opening is provided in said formed part for
introduction of said connection line;
at least one opening is provided in said formed part for
introduction of said conductor element;
there is provided in said formed part at least one chamber
section, into which open said opening for introduction of said
connection line and said opening for introduction of said
conductor element;
said formed part has at least one contacting opening,
which opens into said chamber section and through which said
connection line and said conductor element are directly
connected with one another by laser welding; and
the connection line of the sensor element is thinner than
the conductor element, and the connection line lies between the
conductor element and said formed part.
Appeal Br. 11-12 (Claims Appendix).
Appellants' arguments focus on limitations common to independent
claims 16 and 31 (Appeal Br. 6-8). We choose independent claim 16 as
representative. Appellants do not present any arguments to the dependent
claims, including those claims separately rejected (see, e.g., Appeal Br. 9).
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Application 13/129,862
ANALYSIS
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's§ 103(a) rejections essentially for the reasons set out by the
Examiner in the Answer.
We add the following for emphasis.
Appellants' main arguments are that 1) Wehrmann requires additional
connection elements not needed with the present invention (Appeal Br. 7-8),
2) Mizoguchi does not mention "any contacting element which serves for
enablement of automated manufacturing" (Appeal Br. 8), and 3) the gas
sensor of Wehrmann would not work properly if installed in a cement filled
metal tube as in Mizoguchi (Appeal Br. 8). These arguments are reiterated
in more detail in the Reply Brief. 3 The arguments are not persuasive.
First of all, we see no fault in the Examiner's determination that the
claimed connection of the connection lines and conductor elements within
3 To the extent any of the arguments presented in the Reply Brief may be
viewed as new, any argument not presented in the Appeal Brief will not be
considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("the reply brief [is not] an opportunity to make arguments that
could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not."); compare also Optivus Tech., Inc. v.
Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief is considered waived); see also 37
C.F.R. § 4I.41(b)(2)(2013).
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Appeal2017-007260
Application 13/129,862
the formed part encompasses the connection of similar parts in Wehrmann
(see, e.g., Ans. 2 (the Examiner sets out how the various features claimed
correspond to those of Wehrmann)). Appellants' repeated argument that
Wehrmann does not show these features of claim 16 does not indicate with
any specificity where the Examiner has gone astray, and does not show any
reversible error in the Examiner's findings (e.g., Ans. 2; Reply
Br. generally). The Examiner also aptly points out that the claims use open-
ended language "comprising" and, thus, do not preclude any additional
elements that may be taught in Wehrmann (Ans. 2).
To the extent the arguments may be construed as teaching away from
combining the applied prior art, whether the prior art teaches away from the
claimed invention is a question of fact. DyStar Textilfarben GmbH & Co.
Deutsch/and KG v. CH Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006);
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); cf Para-Ordnance Mfg.
v. SGS Importers Int'!, 73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach away, a
reference must state that a feature "should not" or "cannot" be used in
combination with other features in the prior art). As the Examiner has
pointed out, Mizoguchi exemplifies that an exhaust gas temperature sensor
may be embedded in a potting compound in a cap (Ans. 3; Mizoguchi ,r,r 9,
54, 58). Wehrmann is also directed to any type of sensor, inclusive of a
temperature sensor, for use in an exhaust gas of an internal combustion
engine (Ans. generally; Wehrmann, col. I, 11. 9--20, col. 2, 11. 50-66). One of
ordinary skill in the art would have readily inferred that the generic gas
sensor of Wehrmann encompasses a temperature sensor. It has been
established that "the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
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Application 13/129,862
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--65 (Fed.
Cir. 1992) (a reference stands for all of the specific teachings thereof as well
as the inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom).
It has also been established that the reason for combining references
does not have to be identical to that of the applicant in order to establish
obviousness. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). In KSR
(550 U.S. at 419--20), the Supreme Court observed that:
In determining whether the subject matter of a ...
claim is obvious, neither the particular motivation nor
the avowed purpose of the patentee controls. What
matters is the objective reach of the claim. If the claim
extends to what is obvious, it is ... [ unpatentable]
under§ 103.
Appellants have not shown error in the Examiner's determination that
one of ordinary skill in the art, using no more than ordinary creativity, would
have placed a (temperature) sensor, such as exemplified in Wehrmann,
partially embedded in a potting compound as exemplified in Mizoguchi (see,
e.g., Ans. 2-3; Appeal Br. 7-8; Reply Br. generally). In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) (obviousness only requires a reasonable
expectation of success). See also In re Keller, 642 F.2d 413,425 (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 . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art."); In re
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Nievelt, 482 F.2d 965,968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
As the Supreme Court has noted, "[ t ]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR, 550 U.S. at 416. Appellants
have not persuaded us that the Examiner erred in concluding that the
claimed combination of familiar elements is such a case of obviousness.
Accordingly, we affirm the Examiner's 103 rejections.
The Examiner's decision 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).
AFFIRMED
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