Ex Parte Herzer et al

Patent Trial and Appeal Board

Dec 27, 2018

11237515 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/237,515 09/27/2005 35161 7590 12/27/2018 DICKINSON WRIGHT PLLC 1825 Eye St., NW Suite 900 WASHINGTON, DC 20006 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Giselher Herzer 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. 333000-00243 8676 EXAMINER YANG,JIE ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 12/27/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GISELHER HERZER and DETLEF OTTE Appeal2018-001204 Application 11/237,515 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and MERRELL C. CASHION, JR., Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 2--4, 6-12, 14, 15, and 20-22 of Application 11/237,515 under 35 U.S.C. § 103(a) as obvious. Final Act. 5- 13 (June 24, 2016). The Examiner also rejected claim 20 under 35 U.S.C. § 112, ,r 2, as indefinite. Id. at 3--4. Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. 1 Vacuumschmelze GmbH & Co. KG is identified as the real party in interest. Appeal Br. 1. Appeal2018-001204 Application 11/237,515 BACKGROUND The '515 Application describes a magnetic core for use in, inter alia, current transformers. Spec. ,r 2. The Specification also describes alloys and methods used to produce such magnetic cores. Id. Claim 20 is representative of the '515 Application's claims and is reproduced below: 20. A current transformer for alternating power with a magnet core having a relative permeabilityµ that is greater than 5 00 and less than 15,000, a ratio of remanence induction to saturation induction of less than 30%, and a saturation magnetostriction As whose amount is less than 15 ppm and compnsmg: a ferromagnetic alloy in which at least 50% of the alloy consists of fine crystalline particles with an average particle size of 100 nm or less and having the formula FeaCobNicCudMeSifBgXh, wherein Mis at least one of the elements from the group consisting of V, Nb, Ta, Ti, Mo, W, Zr, Cr, Mn and Hf, a, b, c, d, e, f, g, hare stated in atom%, X denotes the elements P, Ge, C and a, b, c, d, e, f, g, h satisfy the following conditions: a = 100-b-c ---d---e-f-g - h 0 :Sb :S 40; 2 < C < 20; 0.5 :S d:S2; 1 :Se :S 4; 6.5:Sf:S18; 5:Sg:S14; h< 5· ' 5 < b+c < 45 · and - - ' 2 Appeal2018-001204 Application 11/237,515 b :S c so that the Co content is less than or equal to the Ni content; wherein the current transformer, in addition to the magnetic core as transformer core, has a primary winding and at least one secondary winding, wherein the secondary winding is terminated by a load resistance of a predetermined ohmage and/or measurement electronics. Response to Notification of Non-Compliant Appeal Brief 6 (July 19, 2017) ( emphasis added). REJECTIONS On appeal, the Examiner maintains2 the following rejections: 1. Claims 2--4, 6-12, and 20-22 are rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Otte3 and Yoshizawa. 4 Answer 3---6. 2. Claims 14 and 15 are rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Otte, Yoshizawa, and Zawada. 5 Answer 6-7. 2 The Examiner has withdrawn the rejection of claim 20 under 35 U.S.C. § 112, ,r 2, as indefinite. Advisory Action 2 (September 28, 2016); Answer 2. The Examiner has also withdrawn the obviousness rejections of claims 2- 4, 6-12, 14, 15, and 20-22 which were based, in part, on Yoshizawa '960 (US 6,425,960 Bl (issued July 30, 2002)). Answer 2. 3 US 6,563,411 Bl, issued May 13, 2003. 4 US 4,881,989, issued November 21, 1989. 5 US 5,363,079, issued November 8, 1994. 3 Appeal2018-001204 Application 11/237,515 DISCUSSION Rejection 1. Appellants argue for reversal of this rejection on the basis of limitations found in independent claim 20. Appeal Br. 7-9. Thus, we select claim 20 as representative of the claims subject to this ground of rejection. 37 C.F.R. § 4I.37(c)(l)(iv). Claims 2--4, 6-12, 21, and 22 will stand or fall with claim 20. In rejecting claim 20, the Examiner found that Otte describes or suggests each limitation of claim 20 except that Otte "does not specify the detail[ ed] ferromagnetic alloy composition as recited in the instant claim." Final Act. 10. The Examiner further found that Yoshizawa describes an alloy having a composition within the scope of claim 20. Id. at 10-11 ( citing Yoshizawa Table 11, Sample No. 3). The Examiner specifically found that "[ a ]11 of the alloy composition ranges disclosed by [Yoshizawa] are within the claimed composition ranges." Id. at 10. The Examiner further found that Yoshizawa's alloy has an alloy structure within the scope of claim 20. Id. The Examiner determined that it would have been obvious to a person of ordinary skill in the art at the time of the invention to use Yoshizawa' s alloy in Otte' s transformer because Yoshizawa describes the use of its soft magnetic alloy core in transformers. Id. Appellants argue that the Examiner has not established a prima facie case of obviousness because a transformer core comprised of Yoshizawa' s alloy has a relative magnetic permeability of 16,000, which exceeds the maximum (15,000) recited in claim 20. Appeal Br. 8. In response, the Examiner argues that the measured permeability (16,000) of Sample No. 3 in Yoshizawa's Table 11 "is also very close to the claimed up[per] limit 15,000 as recited in the instant claim 20." Answer 10. The Examiner further finds that Otte describes its ferromagnetic alloy as 4 Appeal2018-001204 Application 11/237,515 having a 70% amorphous microstructure and a permeability of< 1400. Id. (citing Otte 7:16-23). We agree with Appellants that there is error in the Examiner's determination of obviousness. The Examiner's suggestion that the magnetic permeability ofYoshizawa's Sample No. 3 alloy could be decreased by increasing the percentage of amorphous its material in the alloy's structure is not persuasive. Yoshizawa describes its alloys as having an alloy structure consisting of at least 50% fine crystalline particles. Yoshizawa 8:35--45. The Examiner has not established that a person of ordinary skill in the art would have a reasonable expectation of success in obtaining a magnetic permeability of less than 15,000 while maintaining at least 50% of Yoshizawa' s alloy in the form of fine crystalline particles as required by claim 20. As Appellants argues and the Examiner acknowledges, Otte's alloy has a different composition from that recited in claim 20. Appeal Br. 7; Final Act. 10. The Examiner does not provide an adequate technical explanation of why one skilled in the art would expect the properties of Yoshizawa's Sample No. 3 alloy to vary in the same way as Otte's alloy. Thus, the Examiner has not adequately explained how one skilled in the art would arrive at the claimed invention from the combined teachings of Otte and Yoshizawa. For the reasons set forth above, we reverse the rejection of claims 2--4, 6-12 and 20-22. Rejection 2. Appellants argue that the rejection of claims 14 and 15 as unpatentable over the combination of Otte, Yoshizawa, and Zawada should be reversed by virtue of their dependence from claim 20. Appeal Br. 10. Because we have reversed the rejection of claim 20 as unpatentable over the combination of Otte and Yoshizawa, we also reverse the rejection of 5 Appeal2018-001204 Application 11/237,515 claims 14 and 15 as unpatentable over the combination of Otte, Yoshizawa, and Zawada. CONCLUSION For the reasons set forth above, we reverse the rejection of claims 2--4, 6-12, 14, 15, and20-22 ofthe '515 Application. REVERSED 6