Siegfried Hofler et al.

Patent Trials and Appeals Board

Aug 20, 2020

12225962 - (D) (P.T.A.B. Aug. 20, 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.
12/225,962 10/01/2008 Siegfried Hofler 169068.169079 3736
140334 7590 08/20/2020
Warner Norcross + Judd LLP - IP Group
In re WABCO
1500 Warner Building
150 Ottawa Ave NW
Grand Rapids, MI 49503
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
08/20/2020 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):
patents@wnj.com
rpeck@wnj.com
vciaravino@wnj.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIEGFRIED HOFLER and GUNTHER SINGBARTL
____________

Appeal 2019-000186
Application 12/225,962
Technology Center 2800
___________

Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s non-final decision rejecting claims 1–8, 15, 16, 18–28, and 31–
34. We have jurisdiction over the appeal 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(a). Appellant identifies the real party in interest as WABCO GmbH
(Appeal Br. 2).
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key limitation in dispute):
1. An inductive sensor, comprising:
an electric coil subassembly disposed in a housing, the
coil subassembly comprising:
a coil former, a coil winding wound about the coil
former, a wire end extending from the coil winding, an
electrical terminal element, and a terminal point
extending from the electrical terminal element, the wire
end being wound about the terminal point and the coil
subassembly being at least partly coated with an
injection-molding compound;
and
at least one barrier disposed between the terminal point
and an entry point of the injection-molding compound, each of
at least two rounded corners of the at least one barrier abutting
immediately against an inner surface of the housing, a first
rounded corner of the at least two rounded comers being
disposed diagonally opposite a second rounded corner of the at
least two rounded corners, a first portion of the injection-
molding compound being situated between the at least one
barrier and the wire end, a plurality of holes defined through
the at least one barrier, each hole of the plurality of holes
extending from a top surface of the at least one barrier to a
bottom surface of the at least one barrier, the electrical terminal
element extending through a first hole of the plurality of holes,
an additional terminal element extending through a second hole
of the plurality of holes, a second portion of the injection-
molding compound being disposed through a third hole of the
plurality of holes, the third hole being disposed between the
first and second holes.
Claims Appendix; Appeal Br. 19.
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Independent claim 33 is similar to claim 1 but requires only that the
barrier has one rounded corner abutting against an inner surface and does not
recite any holes in the barrier. Claims Appendix; Appeal Br. 24.
Initially, Appellant’s arguments are directed to claim 1. Appeal Br.
5–14. Appellant does not present substantially different arguments for
independent claim 33. Id. 14. Appellant then argues specific limitations of
dependent claims 27 and 34, separately. Id. 14–17. For the claims that are
not separately argued (id. 17), we select claim 1 as a representative claim.
See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, claims 2–8, 15, 16, 18–26, 28,
and 31–33 will stand or fall with independent claim 1.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Adachi et al. US 4,305,863 Dec. 15, 1981
Kohen US 4,680,543 July 14, 1987
Buchschmid et al. US 5,039,942 Aug. 13, 1991
Singbartl US 5,896,029 Apr. 20, 1999
Palfenier et al. US 6,424,144 B1 July 23, 2002
Fathauer US 2007/0176595 A1 Aug. 02, 2007

REJECTION
Claims 1–3, 5, 15, 16, 18–20, 23–27, 31–33 are rejected under 35
U.S.C. § 103 as being unpatentable over Kohen and Palfenier.
Claim 4 is rejected under 35 U.S.C. § 103 over Kohen and Palfenier,
further in view of Buchschmid.
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Claims 6–8 are rejected under 35 U.S.C. § 103 over Kohen and
Palfenier, further in view of Adachi.
Claims 21–22 are rejected under 35 U.S.C. § 103 over Kohen and
Palfenier, further in view of Fathauer.
Claims 28 and 34 are rejected under 35 U.S.C. § 103 over Kohen and
Palfenier, further in view of Singbartl.

ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm
Examiner’s rejections for the reasons expressed in the Non-Final Office
Action and the Answer. We add the following for emphasis.
Appellant argues primarily that 1) the claimed “holes defined through
at least one barrier” do not encompass the notches of Kohen, 2) there are no
rounded corners disposed diagonally opposite each other in Kohen, and 3) it
would not have been obvious to modify Kohen by Palfenier. Appeal Br. 5–
17.
“[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
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art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification.” In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997).
We disagree with Appellant that the broadest reasonable interpretation
of the term “hole” requires an opening entirely surrounded by barrier
material and therefore, the notches of Kohen are not “an opening through
something” as recited in the Examiner’s definition. Appeal Br. 7. The
Appellant’s Specification has not provided a particular definition and there
is no indication that the example configuration represented in the figures,
without additional structural claim language, should limit the scope of the
broad “hole” language recited in claim 1.
While there is no in haec verba requirement for claim language, the
Specification never utilizes the term “hole” now in dispute. The “holes”
Appellant relies upon, namely 102, 103, 104 of Figure 11, are referred to
instead as “openings” – but so are openings 105, 106, 107, and 108. Spec.
8–9. Those “openings” 105, 106, 107, and 108 are not completely
surrounded by the barrier (Spec. Fig. 11) and are not structurally
distinguished from the former “openings” in the Specification or by use of
the term “holes.” Because of the breadth reasonably given to the express
language of the claims in light of the Specification’s lack of limiting
description of “holes,” the Examiner’s interpretation, though broad, is not
unreasonable.
We are further persuaded by the Examiner’s analogizing to hole in a
piece of paper made by a paper hole puncher. Ans. 6. The Examiner points
out that a hole formed on the perimeter of a planar surface, not entirely
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surrounded by the surface, is still a hole punched through the paper. Id.
Without more structural limitation in the claims, Kohen’s notch, an area with
material removed in order to create an opening through a barrier, can
broadly but reasonably be construed as a “hole.” Ans. 5–6. In Kohen, the
notch runs the length of the barrier, therefore, it is “through” the barrier. Id.
Appellant further argues that the rounded corners do not encompass
the edges of the barrier of Kohen. Appeal Br. 8–10; Reply Br. 3–4. Using
the Appellant’s own definition of corner as “the place or angle where
converging sides or edges meet” (Appeal Br. 8), the Examiner points out
that the corner of Kohen has two converging sides meeting – the planar
surface of the top of the barrier (Examiner’s “top surface”) and the rounded
edge of the portion that abuts housing 18. Ans. 9–10 (depicted in the
annotated figures). Since Kohen’s housing is circular, that corner with those
two edges meeting is rounded to follow the circular shape of the housing.
Id. Although Appellant then attempts to distance from the definition
provided and rely instead on the Specification, we are not persuaded of any
error. Reply Br. 3–4. In the Specification, Figure 11’s depiction of a
generally square plate, with four rounded corners where the corners of a
square generally would be does not expressly limit the meaning of the term
“corner” recited in the claims, as argued by Appellant (see Reply Br. 3–5),
because the barrier in the claims is not structurally limited to, for example, a
generally regularly polygonal shape, such as the generally square shaped
barrier in Figure 11. Nor does the additional adjective of “rounded”
appended to “corner” of the claim further limit the barrier to be the generally
square plate with rounded corners exemplified in Figure 11. “Though
understanding the claim language may be aided by the explanations
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contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.” Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The Examiner’s broad
interpretation of the term “rounded corner” is reasonable.
While Appellant also maintains that the diagonal opposition of the
rounded corners is not taught by Kohen (Reply Br. 2 (merely stating
“Kohen’s protuberances 16 are not ‘diagonally disposed opposite’ each
other”)), this argument is little more than repeating what the claim states and
arguing that the feature is not present, without addressing the Examiner’s
reasoned findings that the corners are not limited to corners of the face of the
barrier on one side, but can fairly be considered to be where the top and
bottom surface of the barrier meet the housing. Ans. 9 (as shown in the
marked up figure).2 Such general and conclusory statements are not
considered arguments for separate patentability of these claims. See 37
C.F.R. § 41.37(c)(l)(vii); See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (holding that the Board had reasonably interpreted 37 C.F.R. §
41.37(c)(l)(vii) as requiring “more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art”).
Appellant additionally argues that the modification of Kohen with
Palfenier would not have been obvious to a person of ordinary skill in the art

2 For similar reasons, we are not persuaded by Appellant’s separate
arguments with respect to claim 27 (App. Br. 14–15), which are not directed
to and do not rebut the Examiner’s specific finding and rationale in rejecting
claim 27 set forth in the Non-Final Rejection. See Non-Final Rej. 15, 23–
24; Ans. 18–19.
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at the time of the invention because Kohen does not disclose where the coil
wire terminates and where the conducting wire begins (Reply Br. 5) and the
modification would increase complexity by adding the terminal of Palfenier
with no apparent benefit. Appeal Br. 12. While the Examiner maintains that
the Palfenier’s solution would still reduce overall time and costs because
there would then be no need for varnishing or tapering the coil (Ans. 13–14),
Appellant alleges that Kohen’s invention already removed the need for those
steps by encapsulation to immobilize the wire ends. Reply Br. 6.
We are not persuaded of any error in the Examiner’s reasoning.
While Kohen might not disclose explicitly where the coil wire terminates
and where the conducting wire begins, an obviousness analysis “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l v.
Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner persuasively
explains that the location of where wire coil 13 is attached to conducting
wires 7 is not an imaginary location but a real physical location. Ans. 12
(“this physical wire end portion of coil 13 is the intermediate element that
Appellant argues is not found in Kohen”). Indeed, Kohen states that “[t]he
ends of the welding wire 13 are connected to the conducting wires 7 or to the
snap contacts.” Kohen, col. 3, ll. 21–23. Further, Palfenier’s teaching of
winding a coil before attaching to a terminal, even if it did involve additional
handling of the wire, is persuasively argued by the Examiner (Ans. 11–17)
to be well within the creativity of the ordinarily skilled artisan such that it
would have been an obvious modification. In re Fritch, 972 F.2d 1260,
1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
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thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Additionally, Appellant’s argument that there would be no reason to
modify since the encapsulation technique of Kohen removes the problem
about maintaining fixed wire positions is likewise unpersuasive. The
Examiner is not relying on the teachings of Palfenier to replace the
encapsulation of the coil taught by Kohen. Rather, the Examiner relies on
Palfenier’s teaching as an improved alternative to soldering or using snap
contacts to connect the wires in the manner taught by Kohen. Ans. 15
(“[T]he coil end is wound around a terminal point instead of being
soldered/wired to it”). The Examiner notes the additional security taught by
Palfienier’s connection should the wires become slack and the coil
undesirably unwind. Ans. 14 (citing Palfenier, col. 1, ll. 15–19). The
Examiner notes that Kohen does not rely on the encapsulating material to
keep the coil wound, so as to be unnecessary with the alternative terminal
connection taught by Palfenier. Ans. 14. Rather, the Examiner, in
determining a sensor having both Palfenier’s terminal connection and
Kohen’s encapsulation would have been obvious to the skilled artisan, even
with additional costs and processing steps, finds that Kohen teaches different
and alternative benefits to using encapsulation material, namely in that it
“protects the coil from mechanical, physical, or chemical aggressions from
the surrounding medium[, i.e.] protects the coil from the external
environment.” Id.; see also Kohen, col. 1, ll. 1417.
Finally, we are not persuaded that Appellant has demonstrated
superior improvement in thermal fatigue resistance in a sensor by using a
barrier for the injection molding compound because Kohen teaches
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substantially the same configuration and Appellant has not compared the
thermal fatigue resistance of the claimed sensor to that of the closest prior
art, so as to demonstrate criticality or results that are superior or unexpected
vis-à-vis the teaching of Kohen. Secondary considerations are generally not
persuasive when the prior art possesses the same characteristics relied upon
by the patent owner in the evidence of the secondary consideration. In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); J.T. Eaton &
Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir.
1997). For a secondary consideration to be persuasive evidence of
nonobviousness, it must be connected to the features of the claimed
invention beyond what was readily available in the prior art. Id.
Accordingly, Appellant has shown no reversible error in the
Examiner’s rejection of independent claims 1 and 33 as being unpatentable
in view of Kohen and Palfenier.

Claim 34
Claim 34 recites an “opening” in the barrier “being entirely defined
within the barrier.” The Examiner, in distinguishing the broader “hole”
language recited in claim 1, acknowledges that Kohen’s barrier defines
opening, but not openings “entirely defined within the barrier.” Non-Final
Rej. 28. The Examiner determines that it would have been obvious to
modify Kohen in view of Palfenier with Singbartl, which teaches a barrier
having opening entirely defined by the barrier, since the opening “entirely
defined by the barrier” could have fixed the position of the coil carrier,
insured that the sensing mechanism stays stationary, and provide additional
material surrounding the terminals to control their movement. Id. 28–29.
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Appellant contends that the elastic barrier taught by Singbartl would not
have accommodated an accurately centered body because it is not rigid like
the barrier of Kohen. Appeal Br. 15–16. We agree with at least one of the
Examiner’s purported rationales. See Ans. 20. We note that the Examiner
lists a variety of reasons why it would have been obvious for the skilled
artisan to have changed the openings of Kohen’s barrier through which the
terminal element passes to be entirely defined within the barrier, as taught by
Singbartl. Id. Appellant’s arguments about elasticity does not address the
Examiner’s rationale for merely changing the opening structure of Kohen to
be entirely defined by the barrier. The multiple reasons the Examiner
provides for utilizing the completely defined hole of Singbartl in the barrier
of Kohen and Palfenier are persuasive.
Accordingly, Appellant has shown no reversible error in the
Examiner’s rejection of claim 34 as being unpatentable in view of Kohen
and Palfenier.

To the extent Appellant presents any substantive arguments for any of
the remaining dependent claims, no reversible error has been identified. See
Ans. 2–21.
Thus, Appellant has not persuasively presented facts or reasons to
convince us that Examiner failed to establish a prima facie case of
obviousness as to any of the claims on appeal.
Accordingly, we sustain the § 103 rejections of all of the claims on
appeal.
The decision of the Examiner is affirmed.

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In summary:
Claims
Rejected
35 U.S.C.
§
Reference/Basis Affirmed Reversed
1–3, 5, 15,
16, 18–20,
23, 27, 31–33
103 Kohen, Palfenier 1–3, 5, 15,
16, 18–20,
23–27, 31–33

4 103 Kohen, Palfenier,
Buchschmid
4
6–8 103 Kohen, Palfenier,
Adachi
6–8
21, 22 103 Kohen, Palfenier,
Fathauer
21, 22
28 and 34 103 Kohen, Palfenier,
Singbartl
28 and 34
OVERALL 1–8, 15, 16,
18–28, 31–34

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