Ex Parte Keckes et al

Patent Trial and Appeal Board

Sep 19, 2018

14007740 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/007,740 01/02/2014
86378 7590 09/21/2018
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Antal Keckes
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.
KEMP-47942US1 1155
EXAMINER
YUSHINA, GALINA G
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANT AL KECKES, PETER SCHULER, and
THOMAS HERMANN
Appeal2018-001262
Application 14/007, 7 40
Technology Center 2800
Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 11-21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants state that the invention relates to an electronic proximity
sensor. (Spec. 2 1, 1. 1.) Claim 11, reproduced below, is illustrative of the
claimed subject matter:
11. Method for producing an electronic proximity sensor,
having the steps of:
- providing a capacitive proximity sensor having a sensor
surface, and
- coating the sensor surface with a semiconductor layer, the
thickness of which is between 10 nm and 100 nm, wherein the coating
is achieved by a vacuum process,
wherein the semiconductor layer is a silicon layer or a
germanium layer or a layer consisting of silicon and germanium, and
wherein the electronic proximity sensor has a decorative surface
with a metallic appearance.
(Appeal Brief, Claims Appendix 21.)
THE REJECTIONS
The Examiner rejected claims 11-21 under pre-AIA
35 U.S.C. § I03(a) as follows:
1. Claims 11-16, 19, and 21 as obvious over Pfau et al. (US
2012/0161795 Al, published on June 28, 2012) (hereinafter
1 Oerlikon Surface Solutions AG, Pfaffikon (formerly known as Oerlikon
Trading AG, Trubbach) is identified as the real party in interest. (Appeal
Brief filed June 5, 2017, hereinafter "Appeal Br.," 3.)
2 We refer to the Specification, filed September 26, 2013 as amended on
September 14, 2015 ("Spec.").
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"Pfau") in view of Kawaguchi et al. (WO 2010/084733 Al,
published on July 29, 2010, references to US equivalent
2011/0273356 Al, published on November 10, 2011) (hereinafter
"Kawaguchi"); and further in view of Roth et al. (US
2006/0105196 Al, published on May 18, 2006) (hereinafter
"Roth");
2. Claims 17 and 18 as obvious over Pfau, Kawaguchi, Roth, in view
ofBemeth et al. (US 2003/0006516 Al, published on January 9,
2003) (hereinafter "Bemeth"); and
3. Claims 11, 14, 16, and 20 as obvious over Pfau, Kawaguchi, in
view of Kaufman et al. (US 6,189,835 Bl, issued on February 20,
2001) (hereinafter "Kaufman").
(Final Office Action, mailed September 8, 2016, (hereinafter "Final Act.")
3-12; Examiner's Answer, mailed September 22, 2017, (hereinafter "Ans.")
2.)
ISSUES
In rejecting claims 11-16, 19, and 21 as obvious over Pfau,
Kawaguchi, and Roth (Rejection 1 ), the Examiner found that Pfau discloses
a method for producing a capacitive proximity sensor including providing a
capacitive proximity sensor having a sensor surface. (Final Act. 3, citing
Pfau ,r,r 8, 17, 20; Fig. 3.) The Examiner found that Pfau does not disclose
coating the sensor surface with a semiconductor layer, wherein the electronic
proximity sensor has a decorative surface with a metallic appearance as
recited in claim 11. (Id.) The Examiner found that Kawaguchi discloses a
proximity sensor with a metallic luster having coating that is a reflecting
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semiconductor layer of silicon or germanium combined with a metal having
a thickness as recited in claim 11 and that is deposited by a vacuum process.
(Final Act. 3--4; citing Kawaguchi ,r,r 1, 7, 69, 80, 82, 85, 91, 92; Fig. 3.)
The Examiner determined that it would have been obvious to have modified
the method of Pfau by disposing a decorative coating having a
semiconductor layer of silicon or germanium on the surface of the proximity
sensor to create a proximity sensor with a decorative surface of a metallic
luster for aesthetic purposes. (Id.) The Examiner acknowledged that
Kawaguchi's coating is not 100 percent semiconductor because it contains
metal, and an outer coating of a proximity sensor having metal would reduce
the sensitivity of the sensor. (Id.) The Examiner found that Roth discloses a
semiconductor layer comprising silicon and germanium as a reflective layer
having excellent reflective properties. (Final Act. 4--5.) The Examiner
found that Roth was analogous art to Pfau and Kawaguchi because they are
directed to reflective layers comprising silicon, and as such, reasonably
pertinent to the problem faced by the inventor. (Final Act. 5; Ans. 18-19.)
The Examiner determined that it would have been obvious to have
substituted the reflective layer of Roth because the modification would
eliminate the reflective layer from being subject to corrosion. (Final Act. 5.)
In rejecting claims 11, 14, 16, and 20 as obvious over the combination
of Pfau, Kawaguchi, and Kaufman (Rejection 3), the Examiner similarly
relied on Pfau, Kawaguchi as above, relying on Kaufman for a
semiconductor layer consisting of germanium. (Final Act. 9-11.) In this
regard, the Examiner found that Pfau, Kawaguchi and Kaufman are
analogous art as directed to reflective layers comprising silicon or
germanium. (Final Act. 10; Ans. 22.)
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Appellants argue, inter alia, that the Examiner's combination of Pfau,
Kawaguchi, and Roth, is not supported by the teachings in the references
themselves, and that the Examiner has used Appellants' disclosure as a road
map in order to combine the prior art, such that the combination is based on
impermissible hindsight. (Appeal Br. 10.) Appellants contend that Roth is
not analogous art because a control blanket for a spacecraft is a highly
specialized engineered product and that the Examiner's analysis with respect
to Roth being reasonably pertinent to the problem faced by the Examiner is
deficient. (Appeal Br. 12-13; Reply Brief filed November 20, 2017,
hereinafter "Reply Br.," 5.)
Appellants set forth similar arguments for the combination of Pfau,
Kawaguchi, and Kaufman. (Appeal Br. 17-18.) In particular, Appellants
argue that Kaufman relates to a spacecraft antenna, which is not in the same
field of endeavor, and that the Examiner has used Appellants' disclosure as a
road map for the combination. (Id.)
Therefore, the dispositive issues on appeal are:
1. Did the Examiner err in rejecting the claims as obvious over Pfau,
Kawaguchi, and Roth or Kaufman by finding that Roth and
Kaufman are analogous art?
2. Did the Examiner set forth a sufficient rationale in rejecting the
claims as obvious over the combinations of Pfau, Kawaguchi, and
Roth or Kaufman?
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DISCUSSION
Issue 1 - Analogous Art
Two criteria are relevant in determining whether prior art is
analogous: "(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved."
Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010)
(quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Whether a
reference in the prior art is "analogous" is a fact question. In re Clay, 966
F.2d at 658.
Re} ection 1 - Roth
It is undisputed that Roth is not from the same field of endeavor as
Appellants' claims. (See Ans. 18-19.) As such, we focus our analysis on
whether Roth is reasonably pertinent to the particular problem with which
the Appellants are involved.
We agree with Appellants that Roth is not reasonably pertinent to the
particular problem with which the Appellants are involved. In this regard,
the Specification states that the "problem can thus be described as follows:
on the one hand, there is a request for synthetic surfaces with a metallic
gloss, which on the other hand do not shield the capacitive sensors lying
underneath." (Spec. 2, 11. 1-3.) The Examiner stated that Roth's discussion
of a reflective layer would be sufficient to render the disclosure pertinent
because: "in order to change ( or create) a decorative coating on any device,
it is not necessary to have an example of this coating exclusively on a device
from the same field of endeavor - a view of any everyday device with an
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attractive coating could stimulate one of ordinary skill in the art into
changing a decorative coating on device he/she is developing, even if the
devices are from different field of endeavor." (Ans. 19.) However, as
pointed out by Appellants, the Examiner's position does not sufficiently
address how Roth's thermal control blanket, which is constructed to reflect
solar radiation, is reasonably pertinent to the problem of providing a
decorative layer with a metal luster that does not shield a capacitive sensor
underneath. (Reply Br. 5; Roth Abst., ,r 1.) We are of the view that mere
disclosure of a reflective layer in Roth is not sufficient in this case where
Roth is concerned with reflecting solar radiation, rather than the decorative
nature of the coating to provide a metallic luster. In this regard, the
Examiner has not pointed to any disclosure in Roth related to a decorative or
an attractive coating.
Thus, we are of the view that Roth is not reasonably pertinent to the
problem with which the inventors were concerned, and therefore, is not
analogous art.
Rejection 3 - Kaufman
It is undisputed that Kaufman is not from the same field of endeavor
as Appellants' claims. (See Ans. 18-19, 22.) As such, we focus our analysis
on whether Kaufman is reasonably pertinent to the particular problem with
which the Appellants are involved.
We agree with Appellants that Kaufman is not reasonably pertinent to
the particular problem with which the Appellants are involved. Kaufman
relates to an "apparatus for controlling angular momentum build up of a
spacecraft" by providing reflective antenna thermal blanket designs
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(Kaufman, col. 1, 11. 7-12; col. 2, 11. 1-5.) The Examiner's position
regarding Kaufman is similar to Roth (Ans. 22.) Accordingly, similar to the
analysis above with respect to Roth, we are of the view that mere disclosure
of a reflective layer is not sufficient, and the Examiner does not point to any
disclosure in Kaufman related to a decorative or an attractive coating.
Thus, we determine that Kaufman is not analogous art.
Issue 2 - The Examiner's Rationale for Prior Art Combinations
Rejection 1
We essentially agree with Appellants that the combination of Pfau,
Kawaguchi, and Roth is not sufficiently supported. (Appeal Br. 10.) In
particular, we agree with Appellants, that the Examiner has not identified a
sufficient reason to support the determination that one of ordinary skill in the
art would have combined the metal-containing silicon/germanium alloys
disclosed in Kawaguchi for use a decorative coatings of radio wave
transmitting devices with the proximity capacitance sensors in Pfau.
(Appeal Br. 9-10.)
As discussed above, the Examiner points to Kawaguchi's disclosure
regarding a decorative coating with a metallic luster along with the desire to
create a decorative appearance on a capacitive proximity sensor in Pfau as a
sufficient reason to combine Pfau and Kawaguchi. (Final Act. 3; Ans. 5-7;
Kawaguchi ,r,r 1, 7 .) However, we agree with Appellants that the presence
of metal in the silicon/ germanium coating of Kawaguchi, combined with the
difference between the radio wave transmitting devices of Kawaguchi and
the capacitance proximity sensors of Pfau would not have led one of
ordinary skill in the art to have looked to the decorative coatings in
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Kawaguchi. Indeed, the Examiner has recognized that the coating in
Kawaguchi "is not a 100 % semiconductor layer since it contains metal,
even the metal amount could be chosen to be very small. Moreover, having
metal in an outer coating of a proximity sensor would reduce the sensor'
sensitivity, and is not desirable." (Final Act. 4.) Further, the purpose of
Kawaguchi is to provide a coating with a metal combined with
silicon/ germanium, such coating providing particular advantages such as
improving reflectance and lightness, reduced internal stress, and improved
adhesiveness compared to silicon or germanium used alone. (Kawaguchi
,r,r 24, 25, 70.)
Thus, we are persuaded that the Examiner's position that one of
ordinary skill in the art would have understood the effects of metal in a
decorative coating and have looked to have addressed the presence of metal
in the coatings of Kawaguchi in applying such coatings in capacitive
proximity sensors ( Ans. 6-11 ), is not supported by sufficient rational
underpinnings. "' [R ]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness."' KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006).
Accordingly, we reverse the Examiner's rejection of claims 11-16,
19, and 21 as obvious over Pfau, Kawaguchi, and Roth.
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Rejection 3
The Examiner's rejection of claims 11, 14, 16, and 20 as obvious over
Pfau, Kawaguchi, and Kaufman relies on similar rationale as discussed
above with respect to Rejection 1. (Final Act. 9-12; Ans. 22.)
Accordingly, we reverse the Examiner's rejection of claims 11, 14,
16, and 20 as obvious over Pfau, Kawaguchi, and Kaufman for similar
reasons as discussed above with respect to Rejection 1.
Rejection 2
The Examiner relied on Bemeth for the disclosure of UV acrylic
lacquer as recited in claims 17 and 18, which both depend from claim 11.
(Final Act. 7-9.) This disclosure does not remedy the deficiencies of Pfau,
Kawaguchi, and Roth discussed above. Accordingly, we reverse the
rejection of claims 17 and 18 as obvious over the combination of Pfau,
Kawaguchi, Roth, and Bemeth for similar reasons as discussed above for the
rejection of Pfau, Kawaguchi and Roth.
DECISION
We reverse the Examiner's rejections of claims 11-21.
TIME FOR RESPONSE
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).
REVERSED
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