Ex Parte Theuss

Patent Trial and Appeal Board

Dec 21, 2012

11956971 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/956,971 12/14/2007 Horst Theuss I560.157.101/2007P52440US 8465
106581 7590 12/24/2012
Dicke, Billig & Czaja, PLLC
100 South Fifth Street, Suite 2250
Minneapolis, MN 55402
EXAMINER
BLOUIN, MARK S
ART UNIT PAPER NUMBER
2686
MAIL DATE DELIVERY MODE
12/24/2012 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 HORST THEUSS
____________________

Appeal 2010-011175
Application 11/956,971
Technology Center 2600
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 11-20. Claims 1-10 and 21 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellant’s Disclosed Invention
Appellant’s disclosed invention pertains to a magnetic speed sensor
module (Spec. 1:5; Figs. 1A-D) including (i) a substrate 102 (Fig. 1C) or
212 (Fig. 2G) having a magnetically sensitive element (Fig. 1C, 104A-C or
Fig. 2G, 208A-C), (ii) four solder elements (Fig. 1C, 112 or Fig. 2G, 218) on
the substrate of which two solder elements are connected with a conducting
line 110A-C or 216A-C (see claim 11), and (iii) a conductor coil for
generating the magnetic field of the magnetically sensitive element of the
substrate (see claim 20). See Spec. 3:30 to 6:3.
Exemplary Claim
Exemplary claims 11, 15, and 18-20 under appeal, with emphases
added, read as follows:
11. A sensor module comprising:

a substrate comprising a magnetically sensitive element;

at least four solder elements applied to the substrate; and

a conducting line connecting at least two of the at least four
solder elements.

15. The sensor module of claim 11, wherein the conducting line is a
coil.

18. The sensor module of claim 11, and further comprising:
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a laminate applied to the substrate, wherein the laminate
comprises the conducting line.

19. The sensor module of claim 11, wherein the conducting line is
configured to generate a magnetic field for testing the magnetically
sensitive element.

20. A sensor module, comprising:

a substrate comprising a magnetically sensitive element; and

a conductor coil configured to generate a magnetic field that is
adapted to be applied to the magnetically sensitive element.
The Examiner’s Rejections
(1) The Examiner rejected claims 11, 12, 15, 18, 19, and 20 under 35
U.S.C. § 102(b) as being anticipated by Kato (US 2003/0206373 A1).1 Ans.
3.
(2) The Examiner rejected dependent claims 13 and 14 as being
unpatentable under 35 U.S.C. § 103(a) over Kato. Ans. 3-4.
(3) The Examiner rejected dependent claims 16 and 17 as being
unpatentable under 35 U.S.C. § 103(a) over Kato and Hsiao (US
2003/0067721 A1). Ans. 4.

1 Separate patentability is not argued for claims 12-14, 16, and 17.
Appellant presents nominal and conclusory arguments for (i) claims 13 and
14 (see App. Br. 9; Reply Br. 6-7), and for (ii) claims 16 and 17 (see App.
Br. 9; Reply Br. 7) which do not constitute separate arguments for
patentability.

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The Examiner’s Findings and Conclusions
With regard to claim 11, the Examiner relies upon Kato’s relay
terminals 118 and 119 shown in Figures 1 and 2 (Ans. 3) as teaching the
“solder elements” recited in claim 11. The Examiner defines the word
“terminals” as used by Kato as “the mechanical device by means of which
an electric connection to an apparatus is established; the point of current
entry to, or point of current departure from, any conducting component in an
electric circuit” (Ans. 6 citing Dictionary.com), and finds that Kato uses
terminals 118 and 119 to solder connections of the wiring of the actuator
assembly (see Fig. 5, actuator arm 306 and magnetic head assembly 301
make up the actuator assembly) to the magnetic head slider 1 (see Figs. 1
and 5). (Ans. 6.) The Examiner determines (Ans. 6) that the relay terminals
118 and 119 are soldered to lead-out wires 116a and 116b and thus are
solder elements.
With regard to claims 11 and 19, the Examiner relies upon the “coil”
113 with the lead-out wires 116a and 116b as teaching the “conducting line
connecting at least two ... solder elements” recited in claim 1 (Ans. 3), and
determines that the coil 113 connects at least two solder elements 118 with
lead-out wires 116a, and two solder elements 119 with lead-out wires 116b
(Ans. 3, 6 citing Fig. 1; ¶¶ [0038] and [0043]).
With regard to claim 15, the Examiner rejects the “coil” with the lead-
out wires 116 + coil 113 (Ans. 3). As discussed above with respect to claim
11, the coil 113 connects at least two terminals 118 and/or 119 (see Ans. 7)
With regard to claim 18, the Examiner relies upon the “laminate” with
113 (Ans. 3), finding that 113 is a laminated layer because it is made up of
multiple layers having a layer upon layer structure (Ans. 7 citing Fig. 2).
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With regard to claims 19 and 20, the Examiner relies upon the coil
113 as the conducting line recited in claim 19 and the conducting coil recited
in claim 20, determining that the coil 113 is configured to generate a
magnetic field which is applied to a magnetically sensitive element because
the inherent function of a coil is to generate a magnetic field (Ans. 3, 7, and
8).
Appellant’s Contentions
Appellant contends (App. Br. 4-9; Reply Br. 2-7) that the Examiner
erred in rejecting (a) claims 11, 12, 15, 18, 19, and 20 under
35 U.S.C. § 102(b), and (b) claims 13, 14, 16, and 17 under § 103(a) for
numerous reasons, including:
(1) Kato’s terminals 118 and 119 are not “solder elements,” as recited
in claim 11 (App. Br. 5-6; Reply Br. 2-3);
(2) Kato’s lines 116a and 116b do not each “connect[] at least two . . .
solder elements,” as recited in claim 11 (App. Br. 7; Reply Br. 3);
(3) paragraph [0050] of Kato discloses that elements 118 and 119 are
gold (Au) elements, and not solder elements, thus elements 118 and 119 are
not necessarily solder elements under § 102 (App. Br. 6; Reply Br. 3);
(4) while Kato discloses (Kato, ¶ [0038]) a “coil,” the coil is not
disclosed as connecting at least two solder elements, as required by claims
11 and 15 (App. Br. 7; Reply Br. 4);
(5) Kato shows a coil not a “laminate,” as recited in claim 18 (App.
Br. 7-8; Reply Br. 4-5);
(6) Examiner did not include citations to how claim 19 was met, and
Kato fails teach a conducting line connecting solder elements and to
generate a magnetic field, as recited in claim 19 (App. Br. 8; Reply Br. 5-6);
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(7) the Examiner did not include citations as to how claim 20 was met,
and did not explain how a coil “is configured to generate a magnetic field
that is adapted to be applied to a magnetically sensitive element,” as recited
in claim 20 (App. Br. 8-9; Reply Br. 6); and
(8) Kato fails teach a conducting coil configured to generate a
magnetic field to be applied to a magnetic sensitive element, as recited in
claim 20 (App. Br. 8-9; Reply Br. 6).
Issues on Appeal
Did the Examiner err in rejecting (i) claims 11, 12, 15, 18, 19, and 20
as being anticipated, and (ii) claims 13, 14, 16, and 17 as being obvious,
because Kato fails to disclose: (a) the “solder elements” recited in claim 11,
(b) the “conducting line” recited in claim 11, (c) the “coil” recited in claim
15, (d) the “laminate” recited in claim 18, (e) the “conducting line” that “is
configured to generate a magnetic field” recited in claim 19, and (f) the
“conductor coil” that is “configured to generate a magnetic field” to be
applied to a magnetic sensitive element, as recited in claim 20?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (App. Br. 4-9) and Reply Brief (Reply Br. 2-
7) that the Examiner has erred. We disagree with Appellant’s conclusions.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken, as well as the Advisory Action
mailed October 19, 2009, and (2) the reasons set forth by the Examiner in
the Examiner’s Answer (Ans. 3-9) in response to Appellant’s Appeal Brief.
We concur with the conclusions reached by the Examiner, and highlight and
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emphasize certain arguments and findings with regard to Kato and
Appellant’s Specification as follows.
Kato (Figs. 1, 2, and 6; ¶¶ [0034], [0036], [0038], and [0043])
discloses (a) relay terminals 118 and 119 that are equivalent to the solder
elements located on a substrate (Figs. 1 and 2, element101) recited in claim
11, (b) lead-out wires or conducting lines 116a-c as recited in claims 11 and
19, (c) a coil 113 as recited in claim 15, (d) a laminate 113 having a
conducting line as recited in claim 18, (e) a conducting line 113 configured
to generate a magnetic field as recited in claim 19, and (f) a conductor coil
113 configured to generate a magnetic field as recited in claim 20.
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)); see also In re Morris, 127 F.3d 1048, 1053-54
(Fed. Cir. 1997).
Appellant’s contention that Kato’s reference numerals 118 and 119
shown in Figures 1, 2, and 6 are not equivalent to the “solder elements”
recited in claim 11 is not persuasive in view of our interpretation of the
claim term “solder element” (see claim 11) as including (i) electrical
interconnects composed of copper (Cu) or gold (Au) studs covered with a tin
(Sn) cap, and (ii) solder balls, in light of Appellant’s Specification (see Spec.
4:5-12 and 5:19-24). Notably, the Specification describes electrical
interconnects 112 that “are solder elements” (Spec. 4:9), including solder
elements 112 (Spec. 4:4-12, 21, and 24; Figs. 1C and 1D) or electrical
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interconnects 112 which can be studs made of Cu or Au and covered with a
Sn cap (Spec. 4:11), a supply solder element 112, and a ground solder
element 112 (Spec. 5:21 and 24). The Specification also describes “an array
of solder elements (e.g., solder balls) 218” (Spec. 5:19-22; Fig. 2G) that
include “solder elements 218” (Spec. 5:21) or “solder balls 218” (Spec.
5:23), “a supply solder element 218” (Spec. 5:26), and “a ground solder
element 218” (Spec. 5:29). The electrical interconnects 112 made of Au or
Cu described in Appellant’s Specification are equivalent to Kato’s relay
terminals 118 and 119 which can also be made of Au and Cu (Kato, ¶
[0050]) and are also described as “for electrically connecting the
reproducing magnetic element [100] to the outside” (Kato, ¶ [0034]
(emphasis added)).
Under the broadest reasonable interpretation of claim 11, in light of
the Specification, the recitation of “solder elements” encompasses Kato’s
relay terminals 118 and 119 shown in Figures 1, 2, and 6 and described in
paragraphs [0034], [0038], and [0040]. Am. Acad. of Sci. Tech Ctr., 367
F.3d at 1364. We agree with the Examiner’s interpretation of “solder
elements,” recited in claim 11, as elements to which solder is applied to
make an electrical connection (Advisory Action mailed October 19, 2009).
We agree with the Examiner (Ans. 6) that elements 118 and 119 in Kato are
“solder elements.”
With regard to claim 19, Appellant’s arguments (App. Br. 8; Reply
Br. 5-6) that Kato fails to teach a conducting line configured to generate a
magnetic field are unpersuasive, because Kato’s coil operates to cause the
magneto-resistive (MR) element 105 to derive magnetic signals (see Kato, ¶
[0036]), and Kato discloses that “coil 113 for passing electric current to the
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upper magnetic pole for generating a magnetic field” (Kato, ¶ [0037]
(emphasis added)).
With regard to claim 20, Appellant’s arguments (App. Br. 8-9; Reply
Br. 6) that Kato fails to teach a conducting coil configured to generate a
magnetic field to be applied to a magnetic sensitive element are
unpersuasive, because Kato discloses that “coil 113 for passing electric
current to the upper magnetic pole for generating a magnetic field” (Kato, ¶
[0037] (emphasis added)) from MR element 105 and the magnetic recording
and reproducing element 100 (Kato, ¶¶ [0039], [0040], and [0042]).
In view of the foregoing, Appellant’s arguments that Kato does not
teach the solder elements, coil, laminate, conducting line, and conducting
coil, as set forth in claims 11, 15, and 18-20 are not convincing. In light of
the Examiner’s findings and reasoning, as set forth in the Answer,
Appellant’s remaining arguments regarding claims 12-14, 16, and 17 are no
more persuasive than the arguments addressed above with respect to claim
11. We will sustain the Examiner’s anticipation rejection of representative
claim 11, dependent claims 12, 15, 18, and 19 depending from claim 11, and
remaining independent claim 20. We will also sustain the Examiner’s two
obviousness rejections of dependent claims 13, 14, 16, and 17, all based on
Kato, for the same reasons as for representative claim 11.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 11, 12, 15, 18, 19,
and 20 as being anticipated under 35 U.S.C. § 102(b).
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(2) Appellant has not adequately demonstrated that the Examiner
erred in rejecting claims 13, 14, 16, and 17 as being unpatentable under 35
U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 11-20 are 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)(1)(iv).

AFFIRMED

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