Ex Parte HEINZELMANN et al

Patent Trials and Appeals Board

Apr 8, 2019

14060879 - (D) (P.T.A.B. Apr. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/060,879 10/23/2013
24972 7590 04/10/2019
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Wolfgang HEINZELMANN
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.
BOSC.P8393US/l 000355023 9225
EXAMINER
ASSOUAD, PATRICKJ
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
04/10/2019 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFGANG HEINZELMANN, MOHAMAD IY AD
AL DIBS, RAINER STRAUB, STEFAN PINTER, FREDERIC
NJIKAM NJIMONZIE, JOERG MUCHOW, HELMUT
GRUTZECK, SIMON ARMBRUSTER,
and SEBASTIAN REISS
Appeal 2018-005155
Application 14/060,879
Technology Center 2800
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In our Decision, we refer to the Specification filed Oct. 23, 2013
("Spec."); the Final Action dated June 26, 2017 ("Final Act."); the Response
After Final Rejection filed Sept. 19, 2017 ("Resp. After Final"); the
Advisory Action dated Oct. 24, 2017 (Adv. Act.); the Appeal Brief filed
December 11, 2017 ("App. Br."); the Examiner's Answer dated March 27,
2018 ("Ans."); and the Reply Brief filed April 20, 2018 ("Reply Br.").
Appeal 2018-005155
Application 14/060,879
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 5-13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to mechanical components and manufacturing
methods for such mechanical components. Claim 1, reproduced below from
the Claims Appendix to the Appeal Brief with the key limitation italicized,
illustrates the claimed subject matter:
1. A mechanical component, comprising:
a mounting;
a movable part connected via at least one first spring and
one second spring to the mounting so that the movable part is
movable with respect to the mounting at least about a rotational
axis extending through a first anchoring area of the first spring
on the mounting and a second anchoring area of the second
spring on the mounting;
a first sensor device with at least one first resistor
situated at least one of on or in the first spring; and
a second sensor device with at least one second resistor
situated at least one of on or in the second spring;
wherein the first sensor device includes a first
Wheatstone half bridge and the second sensor device includes a
second Wheatstone half bridge, the first Wheatstone half bridge
and the second Wheatstone half bridge being connected to form
a Wheatstone full bridge,
wherein the mechanical component includes an actuator
device with the aid of which the movable part is excitable to
undergo an oscillating motion about the rotational axis,
2 Appellant is the Applicant, Robert Bosch GmbH, identified in the Appeal
Brief as the real party in interest. App. Br. 1.
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Application 14/060,879
wherein the mechanical component includes a control
device with the aid of which the actuator device is controllable
into at least one operating mode in which the movable part is
excitable to undergo a quasi-steady-state oscillating motion
about the rotational axis,
wherein at least one spurious mode is actively
suppressed or prevented during the quasi-steady-state
oscillating motion of the mechanical component.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Israelachvili US 6,578,410 B 1
Nakajima US 2008/0024590 Al
Asai et al. ("Asai") US 7,446,911 B2
REJECTIONS
June 17,2003
Jan. 31, 2008
Nov. 4, 2008
The Examiner maintains and Appellant seeks review of the following
rejections:
A. Claims 1, 2, and 5-12 3 under 35 U.S.C § 112, first paragraph4
for failing to comply with the written description requirement;
3 The Examiner did not identify claim 13 as being rejected under 35 U.S.C.
§ 112, first or second paragraph. See Final Act. 3-5. However, because
claim 13 depends from claim 1, and therefore includes all limitations of
claim 1, we regard the omission of claim 13 from these rejections as a
harmless typographical error. We review the§ 112 rejections as applying to
all pending claims.
4 Because this application is the national stage of a PCT application filed
before the March 16, 2013, effective date of the America Invents Act, we
refer to the pre-AIA version of the statute.
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Application 14/060,879
B. Claims 1, 2, and 5-12 under 35 U.S.C § 112, second paragraph
as indefinite for failing to particularly point out and distinctly
claim the subject matter which the applicant regards as the
invention;
C. Claims 1, 2, 6-9, and 11-13 under 35 U.S.C § 102(b) as
anticipated by Israelachvili;
D. Claim 5 under 35 U.S.C § 103(a) as obvious over Israelachvili
further in view of Nakajima; and
E. Claim 10 under 35 U.S.C § 103(a) as obvious over Israelachvili
further in view of Asai.
Final Act. 3-14; App. Br. 4.
OPINION
Rejections under 35 US.C. § 112
After receiving the Final Office Action rejecting the claims, and prior
to filing the Appeal Brief, Appellant proposed amending the pending claims
by removing the term "actively" from the limitation "wherein at least one
spurious mode is actively suppressed or prevented during the quasi-steady-
state oscillating motion of the mechanical component." Resp. After Final 2-
5. The Examiner refused to enter the amendment, finding that:
[T]he amendments fail to address the issue of new matter raised
in the prior office action. In the prior claims, the claims actively
suppressed or prevented means was rejected under 35 U.S.C.
§ 112(a) and in reply the limitation "actively" has been removed
[from] the claims now not entered, thus making the [broadest
reasonable interpretation] of the claims to be broader in scope,
which may include active and inactive means, each addressed in
the prior office action and is not considered to make the prior
rejection moot.
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Appeal 2018-005155
Application 14/060,879
Adv. Act. 1-2.
In the Appeal Brief, Appellant offers to amend the claims to remove
the term "actively," should prosecution be reopened. App. Br. 4.
The Federal Circuit has explained that on appeal, the appellant must
not only show the existence of error, but also that the error was harmful
because it affected the decision below. In re Chapman, 595 F.3d 1330, 1338
(Fed. Cir. 2010), quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009)
("the burden of showing that an error is harmful normally falls upon the
party attacking the agency's determination."); see also 37 C.F.R.
§ 4I.37(c)(l)(iv) (appellant's arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant). Moreover, "[i]t
is well-established that the Board is free to affirm an examiner's rejection so
long as 'appellants have had a fair opportunity to react to the thrust of the
rejection."' In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (quoting In re
Kronig, 539 F.2d 1300, 1302---03 (CCPA 1976)).
In view of Appellant's earlier failed attempt to amend the claims in
the same way (see Response After Final Action), we find that Appellant's
offer in the Appeal Brief fails to meet the burden of showing error in the
§ 112 rejections. We sustain the rejections of all pending claims under
§ 112.
Rejections under§§ 102(b) and 103(a)
The Examiner rejects claims 1, 2, 6-9, and 11-13 as anticipated by
Israelachvili, claim 5 as obvious over Israelachvili in view of Nakajima, and
claim 10 as obvious over Israelachvili in view of Asai. Final Act. 7-14;
Ans. 6-14.
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Appeal 2018-005155
Application 14/060,879
To assist in understanding the discussion below, we reproduce from
the Application annotated Figs. 2a-2d with some modifications for
simplicity:
66
F ' ., 1g ... a
68
!
,._!
. MVP
GND
··· MVM
Figs. 2a shows a schematic illustration and a coordinate system for
explaining a first specific embodiment of the mechanical component. Spec.
5, 11. 23-25. Figure 2a shows mounting 505 and movable part 52, movable
part 52 being connected to mounting 50 via at least one first spring 54a and
one second spring 54b (illustrated in part in enlarged scale in Figure 2a).
Spec. 6, 11. 5-9. Springs 54a and 54b connect movable part 52 to mounting
50 in such a way that movable part 52 is movable with respect to mounting
50 at least about rotational axis 56. Spec. 6, 11. 8-12.
The Specification explains that in the specific embodiment in Figs. 2a
through 2i, movable part 52 is excitable to undergo four different natural
modes/natural oscillations Ml through M 4 with respect to mounting 50.
Spec. 7, 11. 13-15. Three of these mounting modes are illustrated in Figs.
2b-2d below:
5 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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Application 14/060,879
Fig. 2b
............................................
Fig. 2c Fig. 2dj
Figs. 2b-2d show schematic illustrations and coordinate systems for
explaining a first specific embodiment of the mechanical component. Spec.
5, 11. 23-25. In natural mode Ml (Fig. 2b) movable part 52 oscillates
resonantly about rotational axis 56. Spec. 7, 11. 16-18. In natural mode M2,
movable part 52 oscillates along an axis 60 which is oriented in parallel to a
neutral position of optically active surface 52a of movable part 52. Spec. 7,
11. 20-22. Natural mode M3 occurs due to asymmetrical bending of springs
54a and 54b, thus rotating movable part 52 about a perpendicular bisector 62
oriented perpendicularly with respect to the neutral position of optically
active surface 52a of movable part 52. Spec. 7. 11. 28-32.
In disputing the§§ 102(b) and 103(a) rejections, Appellant argues that
"[ n ]owhere do the cited references disclose or suggest the feature of the at
least one spurious mode is actively suppressed or prevented during the
quasi-steady-state oscillating motion of the mechanical component." App.
Br. 4; Reply Br. 1. Appellant argues that the Specification defines a "quasi-
steady-state oscillating motion" as a "nonresonant oscillating motion of the
movable part of the mechanical component." Reply Br. 1. Appellant
contends that the invention teaches a spurious mode is actively suppressed or
prevented during a quasi-steady-state oscillating motion. Id. Appellant does
not identify where in the Specification the feature is taught. See id.
However, in the Summary of Claimed Subject Matter in the Appeal Brief,
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Appellant identifies page 11, lines 10-23 and page 12, line 28 through page
13, line 3 as support for "at least one spurious mode is actively suppressed or
prevented during the quasi-steady-state oscillating motion of the mechanical
component." App. Br. 2-3. Appellant provides no further explanation of
how the cited portions of the Specification support the limitation.
During prosecution, an application's claims are given their broadest
reasonable scope consistent with the specification. In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id.
With respect to "actively" in the limitation "wherein at least one
spurious mode is actively suppressed or prevented during the quasi-steady-
state oscillating motion of the mechanical component," the Examiner finds
that the broadest reasonable interpretation of "actively" is that active
suppression or prevention is directed to a controlling means in a dynamically
regulated system. Final Act. 3; Ans. 3. As discussed supra, the Examiner
finds that the Specification fails to disclose "actively" as used in claim 1,
making the claim indefinite.
The Examiner finds that the broadest reasonable interpretation of
"wherein at least one spurious/natural/desired mode of non-resonant motion
of the movable part is suppressed/prevented/minimized," (i.e., without
"actively" suppressing or preventing the spurious mode) in view of the
Specification is:
[ A ]t least mode M3 is prevented due to the combination of
placing resistors Rl-R4 while modes Ml-M2 remain
measureable due to Rl-R4 being electrically coupled in a
Wheatstone bridge and placed/manufactured on or in
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Application 14/060,879
symmetrically arranged cantilever springs and mounts with a
centered movable part, see at least p.11 ln.2-23, figure 2i, in other
words, the motion/mode due to asymmetrical bending of springs,
natural mode M3, is minimized, see at least p.7 ln.28 - p.8 ln.2.
Final Act. 9; Ans. 9.
The Appellant's argument that the limitation in question is not
disclosed in the prior art is unpersuasive. As the Examiner finds:
"Israelachvili teaches undesired direction/modes of movement are prevented
by the symmetrical design while at least three natural modes are enabled
and/or not impaired." Id. The Examiner finds Israelachvili teaches that each
of the following quasi-steady-state (non-oscillatory) motions is allowed to
occur while other motions are prevented:
vertical force is restricted to purely z-direction displacement ( a
first natural mode) without bending the tip or shifting it
laterally in any other direction ( at least one spurious mode),
lateral forces are restricted to pure buckling ( a second natural
mode) or twist-bending (a third natural mode) without
movement in any other motion ( at least one spurious mode each
due to movement in only respective natural modes).
Id. at 16-17.
In reply to the Answer, Appellant contends that Israelachvili fails to
disclose that the undesired direction/modes of movement are prevented
during a non-resonant oscillating motion. Reply Br. 2. Appellant waived
this argument by failing to raise it in the Appeal Brief. See In re Hyatt, 211
F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in
the Brief to the Board is waived on appeal); Ex parte Nakashima, 93
USPQ2d 1834 (BP AI 2010) (informative) ( explaining that arguments and
evidence not timely presented in the principal Brief will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
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Application 14/060,879
the argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly
interpreted, the Rules do not require the Board to take up a belated argument
that has not been addressed by the Examiner, absent a showing of good
cause.").
Based on the record before us, we sustain the Examiner's rejection of
the pending claims as anticipated or obvious.
DECISION
The Examiner's rejections are affirmed as follows:
Claims 1, 2, and 5-13 under 35 U.S.C § 112, first paragraph for
failing to comply with the written description requirement;
Claims 1, 2, and 5-12 under 35 U.S.C § 112, second paragraph as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention;
Claims 1, 2, 6-9, and 11-13 under 35 U.S.C § 102(b) as anticipated
by Israelachvili;
Claim 5 under 35 U.S.C § 103(a) as obvious over Israelachvili further
in view of Nakajima; and
Claim 10 under 35 U.S.C § 103(a) as obvious over Israelachvili
further in view of Asai.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015).
AFFIRMED
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