Peter Urdl et al.

Patent Trials and Appeals Board

Dec 11, 2020

2019002807 (P.T.A.B. Dec. 11, 2020)

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.
14/433,865 04/07/2015 Peter Urdl EHF-15-1086 7412
35811 7590 12/11/2020
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
12/11/2020 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):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PETER URDL,
GERALD KLOIBER, and LUTZ KIRSTEN
__________

Appeal 2019-002807
Application 14/433,865
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 17, 19–25, and 33. Claims 27–31, 34, and 35 are
also pending but have been withdrawn from consideration. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as EPCOS AG. Appeal
Brief dated November 2, 2018 (“App. Br.”), at 1.
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The claimed subject matter is directed to a ceramic negative temperature
coefficient (NTC) component.
The Appellant discloses that electroceramic components having variable
resistance properties are known and include, for example, temperature-dependent
resistors. Spec. 1, ll. 7–10. Temperature-dependent resistors are said to
encompass hot conductors or NTC resistors, wherein the ceramics are
characterized by “an increasing electrical conductivity as the temperature is
increased.” Spec. 1, ll. 10–17. The Appellant discloses that hot conductors or
NTC resistors may be used as temperature sensors in motor vehicles. Spec. 1, ll.
19–22.
When using NTC resistors as temperature sensors in automotive
applications, the Appellant discloses that a change in specific electrical parameters,
in particular an increase in the specific resistance, or even a loss of function, is
frequently observed under use conditions as the time of use increases. Spec. 1, ll.
24–28. According to the Appellant, “[t]his lack of stability and reliability of
conventional ceramic components is a known problem.” Spec. 1, ll. 30–31.
The Appellant discloses that “[i]t is . . . an object of the present invention to
provide ceramic components which display improved stability and reliability in
respect of their specific electrical parameters under use conditions.” Spec. 2, ll. 1–
4. This object is said to be achieved by the claimed ceramic component. Spec. 2,
ll. 6–7.
Claim 17, the sole independent claim on appeal, is reproduced below from
the Claims Appendix to the Appeal Brief. The limitation at issue is italicized.
17. A ceramic NTC-component comprising:
a monolithic ceramic main body having at least two
metallizations on opposite exterior surfaces of the main body and at
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least two electric inlet leads each in electrical contact with the
metallizations on the opposite exterior surfaces, and
an inner protective layer and an outer protective layer
comprising epoxy resin that encapsulates the component,
wherein the inner protective layer comprises at least
phosphonates (SAMP),
the inner protective layer
a) contains at least first functional groups via which
covalent chemical bonding to at least the ceramic main body is
effected and/or
b) has been deposited by chemical vapor deposition,
and
the inner protective layer is arranged on the ceramic main body,
and the metallization and at least the part of the electric inlet lead
adjoin the metallization.
App. Br. 7.
The Examiner maintains the following grounds of rejection on appeal:
(1) claims 17 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Ishiguro2 in view of Henry,3 Shepherd et al.,4 Hanson et al.,5 Peinsipp et al.,6 Liu,7
Park et al.,8 Dudesek et al.,9 and Sasaki et al.;10

2 US 5,321,386, issued June 14, 1994 (“Ishiguro”).
3 WO 2012/178193 A1, published December 27, 2012 (“Henry”).
4 US 2010/0129637 A1, published May 27, 2010 (“Shepherd”).
5 US 2005/0285101 A1, published December 29, 2005 (“Hanson”).
6 US 2004/0026106 A1, published February 12, 2004 (“Peinsipp”).
7 US 2008/0191343 A1, published August 14, 2008 (“Liu”).
8 US 2007/0063330 A1, published March 22, 2007 (“Park”).
9 US 2009/0155624 A1, published June 18, 2009 (“Dudesek”).
10 US 2013/0162372 A1, published June 27, 2013 (“Sasaki”).
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(2) claims 21 and 33 under 35 U.S.C. § 103(a) as unpatentable over
Ishiguro in view of Henry, Shepherd, Hanson, Peinsipp, Liu, Park, Dudesek, and
Sasaki, further in view of Mishra et al.;11
(3) claims 20, 22, and 24 under 35 U.S.C. § 103(a) as unpatentable over
Ishiguro in view of Henry, Shepherd, Hanson, Peinsipp, Liu, Park, Dudesek, and
Sasaki, further in view of Narita;12
(4) claim 23 under 35 U.S.C. § 103(a) as unpatentable over Ishiguro in
view of Henry, Shepherd, Hanson, Peinsipp, Liu, Park, Dudesek, and Sasaki,
further in view of Abe et al.;13 and
(5) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Ishiguro in
view of Henry, Shepherd, Hanson, Peinsipp, Liu, Park, Dudesek, and Sasaki,
further in view of Krause et al.14
B. DISCUSSION
The Examiner finds Ishiguro discloses a ceramic component that
encompasses a NTC resistor. Final Act. 3.15 Ishiguro Figure 1 is reproduced
below.

11 US 4,634,756, issued January 6, 1987 (“Mishra”).
12 WO 2011/145295 A1, published November 24, 2011 (“Narita”).
13 US 2005/0174212 A1, published August 11, 2005 (“Abe”).
14 US 4,987,010, issued January 22, 1991 (“Krause”).
15 Final Office Action dated September 11, 2018.
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Ishiguro Figure 1 is a sectional view illustrating
an embodiment of a resistor element according
to the disclosed invention.
Ishiguro discloses that the resistor comprises a cylindrical ceramic pipe 10
having a patterned metal thin film 11 on the outer surface thereof. Ishiguro, col. 2,
ll. 58–62. Ishiguro discloses that thin film 11 is electrically connected at both ends
of ceramic pipe 10 with first and second lead wires 12 and 13 through an
electrically conductive paste 14. Ishiguro, col. 2, ll. 62–66. Insulating protective
film 16 protects thin film 11, and resinous material layer 17 is provided around
film 16. Ishiguro, col. 3, ll. 7–10, 15–17.
The Appellant argues that “Ishiguro fails to disclose, teach or suggest a
‘monolithic ceramic main body.’ Instead, Ishiguro discloses ceramic layers with
electrical leads embedded between them.”16 App. Br. 3. The Examiner recognizes
as much. Final Act. 3 (finding that Ishiguro does not disclose that ceramic body 10
is a monolithic ceramic body).

16 The Appellant does not define the term “monolithic ceramic body” in the
Specification. The Appellant discloses that “[t]he ceramic main body can, for
example, be configured as a monolithic ceramic main body. As a further variant, it
is possible for the main body to be configured as a stack of ceramic layers.” Spec.
5, ll. 4–7.
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The Examiner, however, finds “Dudesek discloses a multilayer structure
wherein a plurality of ceramic layers in a monolithic ceramic body alternate with
metallization levels arranged between them.” Final Act. 4 (citing Dudesek ¶ 21).
In the alternative, the Examiner finds “Sasaki discloses a monolithic ceramic
electronic component includ[ing] at least two types of stacked ceramic layers
having different dielectric constants.” Final Act. 4–5 (citing Sasaki Abstract).
The Appellant argues that one of ordinary skill in the art would not have
been motivated to combine Ishiguro (as modified by Henry, Shepherd, Hanson,
Peinsipp, Liu, and/or Park) with Dudesek and Sasaki because “the references are
non-analogous art.”17 App. Br. 4.
As explained by the Court in In re Wood, 599 F.2d 1032, 1036 (CCPA
1979), determining that a reference is from a nonanalogous art is two-fold. “First,
we decide if the reference is within the field of the inventor’s endeavor. If it is not,
we proceed to determine whether the reference is reasonably pertinent to the
particular problem with which the inventor was involved.” Id. “A reference is
reasonably pertinent if, even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in considering his
problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
The Appellant argues that “the field of endeavor of the subject matter of the
rejected claims is providing a ceramic NTC-component having improved stability

17 In the Appeal Brief, the Appellant does not explain, in any detail, why Henry,
Shepherd, Hanson, Peinsipp, Liu, or Park is non-analogous art.
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and reliability.” App. Br. 5 (citing paragraph 4 of published Application
2015/0259256 (“Application 256”)).18
In contrast, the Appellant argues that “Dudasek [sic] pertains to ceramic
material having a dielectric constant above twenty with a sufficiently low sintering
temperature, or whose dielectric constants have the necessary temperature stability
and which can be processed with LTCC technology.” App. Br. 5 (citing Dudesek
¶ 4). The Appellant argues that “[t]he field of endeavor of Sasaki further relates to
a monolithic ceramic electronic component including at least two types of stacked
ceramic layers having different dielectric constants.” App. Br. 5 (citing Sasaki
¶ 1).
In response, the Examiner finds that Dudesek and Sasaki “are directed
towards the ceramic electronic component art.” Ans. 13; see also Ans. 14 (finding
that Dudesek and Sasaki “are both drawn to ceramic components”).19
The mere fact that Dudesek and Sasaki are ceramic electronic components is
not sufficient to support a finding that either reference is within the Appellant’s
field of endeavor. To find otherwise would lead to the unreasonable result that
every ceramic body is within the Appellant’s field of endeavor. See Clay, 966 F.2d
at 659 (finding that Sydansk cannot be considered to be within the applicant’s field
of endeavor merely because both relate to the petroleum industry).
The Appellant also argues that “the problem faced by the inventors is that, in
conventional ceramic components, a change in the specific electrical parameters is
frequently observed under typical conditions of use as the time of use increases.”
App. Br. 5. For support, the Appellant relies on paragraph 3 of Application 256,

18 It appears that paragraph 4 of Application 256 corresponds to page 2, lines 1–4
of the originally filed Specification.
19 Examiner’s Answer dated December 27, 2018.
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which corresponds to page 1, lines 24–31 of the Specification as originally filed.
That portion of the Specification states:
In the case of conventional ceramic components, a change in the
specific electrical parameters, in particular an increase in the specific
resistance, or even a loss of function is frequently observed under use
conditions as the time of use increases. This applies, for example, to
the use of NTC resistors as temperature sensors in automotive
applications. This lack of stability and reliability of conventional
ceramic components is a known problem.
Spec. 1, ll. 24–31.
The Appellant argues that Dudesek and Sasaki are not concerned with
changes in electrical parameters that occur over time. App. Br. 5 (citing Dudesek
¶¶ 6–16; Sasaki ¶ 5). The Appellant argues that “the problem in Dudasek [sic]
pertains to developing a two-phase ceramic composition that can be sintered at a
temperature of below 960°C” and “[t]he problem faced by Sasaki . . . was
interdiffusion of different materials between the ceramic layers.” App. Br. 5.
In response, the Examiner does not make any factual findings relating to the
problem with which the Appellant or Dudesek was involved. See Ans. 15
(focusing on the motivation in the obviousness rejection on appeal).20 The
Examiner, however, finds Sasaki discloses “minimizing variation and deterioration
of electrical properties.” Ans. 16 (citing Sasaki ¶¶ 9, 12, 13).

20 Before an obviousness analysis can be made, the Examiner must first determine
what is “prior art” or “analogous art.” See Clay, 966 F.2d at 658 (explaining that a
prerequisite to making the factual findings outlined in Graham v. John Deere Co.,
383 U.S. 1, 17 (1966), is “determining what is ‘prior art’”); In re Sovish, 769 F.2d
738, 742 (Fed. Cir. 1985) (explaining that the label “analogous art” merely
connotes that a reference is relevant to a consideration of obviousness under 35
U.S.C. § 103 as “‘prior art’”).
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The Appellant argues that “[t]he problem faced by Sasaki . . . is from the
interdiffusion of different materials between the ceramic layers during the
manufacturing of monolithic ceramic electronic component[s].” Reply Br. 721
(citing Sasaki ¶¶ 5, 6) (emphasis added). Thus, the Appellant identifies the cause
of the problem faced by Sasaki, but the Appellant does not identify the problem
itself.
We concur with the Appellant that the problem faced by Sasaki occurs
during a calcination step when different materials interdiffuse between the ceramic
layers of the monolithic ceramic component. Sasaki ¶¶ 4, 5. However, Sasaki
identifies the problem as the deterioration or significant variation of electrical
properties exhibited by the monolithic ceramic component. Sasaki ¶¶ 6, 24; see
also Ans. 16 (finding Sasaki is interested in “minimizing variation and
deterioration of electrical properties”). Thus, we find Sasaki’s problem is
“reasonably pertinent to the particular problem with which the inventor was
involved,”22 which, in this case, is the deterioration of electrical parameters in a
ceramic component over time. Spec. 1, l. 24–2, l. 4; App. Br. 5.
In the Reply Brief, the Appellant argues for the first time on appeal that the
Appellant’s problem is “preventing cracks in the protective layers of ceramic NTC-
components and preventing penetration of surrounding media to a ceramic
substrate, ensuring good protection of the ceramic NTC-component.” Reply Br. 3;
compare App. Br. 5 (arguing that the Appellant’s problem is “in conventional
ceramic components, a change in the specific electrical parameters is frequently
observed under typical conditions of use as the time of use increases”). The

21 Reply Brief dated February 22, 2019.
22 Wood, 599 F.2d at 1036.
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Appellant argues that Henry, Shepherd, Hanson, Peinsipp, Liu, Park, Dudesek, and
Sasaki are not reasonably pertinent to preventing cracks in the protective layers of
ceramic NTC-components and preventing penetration of surrounding media to a
ceramic substrate. Reply Br. 3–7.
According to 37 C.F.R. § 41.41(b)(2), “[a]ny argument raised in the reply
brief which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer . . . will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.” In this case, the
Appellant redefines the Appellant’s problem in the Reply Brief and argues, for the
first time on appeal, that Henry, Shepherd, Hanson, Peinsipp, Liu, Park, Dudesek,
and Sasaki are not reasonably pertinent to the Appellant’s newly defined problem.
Reply Br. 3–7.
Significantly, the Appellant’s argument is not responsive to an argument
raised for the first time in the Examiner’s Answer. See Ans. 14–16 (finding that
Sasaki is reasonably pertinent to the Appellant’s problem as defined in the Appeal
Brief). Moreover, the Appellant does not show good cause why the argument
could not have been raised in the Appeal Brief. For those reasons, the Appellant’s
argument is untimely and will not be considered on appeal.
Based on the foregoing, a preponderance of the evidence of record supports
a finding that Sasaki is analogous art. The Appellant does not direct us to any error
in the Examiner’s reasons for combining the prior art references in the obviousness
rejections on appeal. Therefore, the obviousness rejections of claims 17, 19–25,
and 33 are sustained.
C. CONCLUSION
The Examiner’s decision is affirmed.
In summary:
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17, 19 103(a) Ishiguro, Henry,
Shepherd, Hanson,
Peinsipp, Liu,
Park, Dudesek,
Sasaki
17, 19
21, 33 103(a) Ishiguro, Henry,
Shepherd, Hanson,
Peinsipp, Liu,
Park, Dudesek,
Sasaki, Mishra
21, 33
20, 22, 24 103(a) Ishiguro, Henry,
Shepherd, Hanson,
Peinsipp, Liu,
Park, Dudesek,
Sasaki, Narita
20, 22, 24
23 103(a) Ishiguro, Henry,
Shepherd, Hanson,
Peinsipp, Liu,
Park, Dudesek,
Sasaki, Abe
23
25 103(a) Ishiguro, Henry,
Shepherd, Hanson,
Peinsipp, Liu,
Park, Dudesek,
Sasaki, Krause
25
Overall
Outcome
17, 19–25, 33

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).
AFFIRMED