Ex Parte Hofmann et al

Board of Patent Appeals and Interferences

Oct 7, 2009

10360497 (B.P.A.I. Oct. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ACHIM HOFMANN and HORST LAUCHT
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Appeal 2009-002540
Application 10/360,497
Technology Center 1700
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Decided: October 07, 2009
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-3, 6, 8-11, and 13-22. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1, the only independent claim on appeal, is representative. We
reproduce claim 1 below with changes in formatting to add clarity.

Appeal 2009-002540
Application 10/360,497

Claim 1. A component of a safety system in motor vehicles, said component
comprising

a core which has end and side faces and is made of an explosive
material,

a jacket made of a solid semiconductor that surrounds said explosive
material on said side faces of said core,

a membrane provided on one of said end faces of said core, and

an ignition element situated between electric contact surfaces on
either said membrane or another one of said end faces of said core opposite
to said membrane,

wherein said ignition element initiating an ignition of said explosive
material when current flows through said ignition element, said explosive
material consisting of a porous fuel and of an oxidizer incorporated into said
porous fuel, said porous fuel and said solid semiconductor being made of the
same material.

The Examiner maintains, and Appellants appeal, the rejection of:
1. claims 1-3, 6, 8-11, and 13-22 under 35 U.S.C. § 103(a) as
unpatentable over the German patent to Laucht1 in view of Mikulec2 and the
University of California News Release3; and

1 Laucht et al., DE 198 15 928 A1, pub. Nov. 4, 1999, as translated.
Appellants also cite to US 6,220,164 B1, issued Apr. 2001, which they state
is the U.S. counterpart. We have reviewed both the translation and the U.S.
Patent.
2 Frederic V. Mikulec et al., Explosive Nanocrystalline Porous Silicon and
Its Use in Atomic Emission Spectroscopy, in 14 Adv. Mater. No. 1 at 38-41
(2002).
3 News Release, Univ. of Calif., San Diego: External Relations, Computer
Chips Found to Possess Explosive Properties Useful for Chemical Analysis
and Nanoscale Sensors, (Jan. 9, 2002) (hereafter “University of California
News Release”).
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Appeal 2009-002540
Application 10/360,497

2. claims 1-3, 6, 8-11, and 13-22 under 35 U.S.C. § 103(a) as
unpatentable over Laucht in view of Kovalev4, Mikulec, and the University
of California News Release.
II. DISPOSITIVE ISSUE
The issue is: Have Appellants established that the Examiner
reversibly erred by failing to support the conclusion of obviousness with
adequate findings with regard to the teachings of Laucht and with regard to a
reason to combine the structure of Laucht with the explosive porous silicon
of Mikulec?
We answer in the affirmative.
III. FINDINGS OF FACT
The Examiner finds that “[t]he German patent [Laucht] discloses the
structure as claimed, see Fig. 2. This patent also discloses the use of porous
silicon as a reaction layer on the igniter structure. The specific claimed
details are not disclosed.” (Final Office Action 2; Ans. 3).
Figure 2 of Laucht is reproduced below:

4 D. Kovalev, et al., Strong Explosive Interaction of Hydrogenated Porous
Silicon with Oxygen at Cryogenic Temperatures, in 87 Physical Review
Letters No. 6 at 068301-1 to 068301-4 (2001).
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Application 10/360,497

Fig. 2 is a cross-section of a semiconductor igniter (Laucht, translation 4; US
‘164, col. 2, ll. 62-63)

In the Response to Argument section of the Answer, the Examiner
equates element 2, or alternatively element 8, shown in Figure 2 of Laucht
with the claimed “membrane” and equates elements 14 and 16 with the
claimed “ignition element.” (Ans. 7.)
Figure 2, according to Laucht, shows a thermal insulating layer 4
(porous silicon), and an ignition path range 8 of a semiconductor bridge 6
overlying the thermal insulating layer 4. The semiconductor bridge 6 is
connected electrically at the bridge end sections 10, 12 to large area
contactors 14, 16. (Laucht, translation 5; U.S. ‘164, col. 3, ll. 6-23.)
The porous silicon of thermal layer 4 can be oxidized at least at the
surface regions adjoining the ignition path 8 to improve the thermal
protection effect of the layer (Laucht, translation 5; U.S. ‘164, col. 3, ll. 23-
37).
Mikulec (and University of California News Release, which reports
on Mikulec) describes a porous silicon treated with nitrate that explodes
when scratched with a diamond scribe or when subjected to a small electric
spark. Freshly etched silicon samples were used because samples that
contained a large amount of surface oxide were usually not explosive.
(Mikulec, p. 38, col. 2, first full para.)
Mikulec states that the explosive silicon material might be useful in
various applications including “smart” ignition systems, but does not
provide any further guidance on the structure of such systems (Mikulec, p.
38, para. bridging cols. 1 and 2).

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IV. PRINCIPLES OF LAW
In order to establish a prima facie case of obviousness, the examiner
must show that each and every limitation of the claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). “[T]here must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
V. ANALYSIS
The Examiner finds that elements 14 and 16 shown in Laucht’s Figure
2 meet the limitation of “an ignition element situated between electric
contact surfaces” as required by claim 1 (Ans. 7; see also FF above).
Appellants point out that there is no element, let alone an ignition element,
between the contactor 14 and 16 (Reply Br. 9).5 A review of Figure 2,
reproduced in the FF above, shows that Appellants’ position is correct.
There is nothing but a space between contacts 14 and 16.
The Examiner further finds that element 8 is a membrane within the
meaning of the claim. In fact, element 8 is an ignition path and bridge 6 is
an ignition element (see FF above).
We cannot say that the Examiner has sufficiently established that
Laucht describes a component having both a membrane and an ignition
element as required by the claims.

5 Appellants’ new arguments in the Reply Brief were necessitated by the
Examiner’s new findings linking the structures of Laucht to the structures
required by claim 1 (Compare Ans. 7 with Final Rejection mailed Oct. 2,
2006 and Non-Final Rejection mailed Feb. 16, 2006). In this circumstance,
it is appropriate for us to consider the new arguments in the Reply Brief.
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The Examiner further finds that the mere disclosure in Mikulec that
explosive porous silicon might be useful in “smart” ignition systems
provides a reason to use the composition of Mikulec in the semiconductor
igniter of Laucht (Ans. 4; Ans. 7). However, Appellants point out that the
porous silicon disclosed by Laucht serves a different purpose than the porous
silicon disclosed by Mikulec. The porous silicon disclosed by Laucht is
used to form a thermal insulating layer. The porous silicon of Mikulec is
treated with an oxidizer to form a solid state explosive. (Br. 8-9; Reply Br.
11.) The evidence supports Appellants’ argument (see FF above). The
Examiner has not adequately responded to this argument (Ans. 7). Given
the difference in function, more technical analysis was required on the part
of the Examiner to support a reason for the modification.
Appellants have established that the Examiner reversibly erred by
failing to support the conclusion of obviousness with adequate findings with
regard to the teachings of Laucht and with regard to a reason to combine the
structure of Laucht with the explosive porous silicon of Mikulec.
The Examiner’s reliance on Kovalev does not cure the deficiencies
discussed above.
VI. CONCLUSION
We do not sustain either of the rejections maintained by the Examiner.

VII. DECISION
The decision of the Examiner is reversed.

REVERSED

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Application 10/360,497

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