AICHI STEEL CORPORATION

Patent Trials and Appeals Board

Oct 30, 2020

2019006893 (P.T.A.B. Oct. 30, 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.
14/433,555 04/03/2015 Katsuhiko Nishihata Q230569 8245
23373 7590 10/30/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
LIAN, MANG TIN BIK
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KATSUHIKO NISHIHATA, HIDENOBU ITO,
NORIKAZU NAITOH, and HISATSUNE MATSUKAWA

Appeal 2019-006893
Application 14/433,555
Technology Center 2800
____________

Before MICHAEL P. COLAIANNI, MONTÉ T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–6. 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. Appellant identifies the real party in interest as AICHI
STEEL CORPORATION. Appeal Brief dated March 7, 2018 (“Appeal
Br.”) 4.
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Application 14/433,555

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CLAIMED SUBJECT MATTER

The present application generally relates to a magneto-impedance
element (“MI element”) which is taught to attain an increase in output power
and size reduction. Specification filed April 3, 2015 (“Spec.”) ¶¶ 1, 8.
According to the Specification, such advantages are achieved by “having a
structure which allows stable formation of a fine-pitch detection coil.” Id. ¶
8. MI elements may be used in portable devices as geomagnetic sensors. Id.
¶ 2.
The Specification teaches that the inventive element “comprises a
substrate, a magneto-sensitive wire provided above the substrate, a detection
coil winding around the magneto-sensitive wire, and an electrically
insulating part fixing the magneto-sensitive wire and the detection coil.” Id.
¶ 10. This is shown in Figures 1 and 2 of the Application, reproduced
below.

Figure 1, above, is a plan view of a magneto-impedance element; Figure 2,
above, is a cross-sectional view taken along line A-A of Figure 1. Id. ¶ 14.
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The MI element 1 comprises substrate 11, amorphous wire 12, detection coil
13 (including posts2 133, 134), and insulating resin 14. Id. ¶¶ 31, 32.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A magneto-impedance element, comprising:
a substrate;
an amorphous wire provided above the substrate;
a detection coil that winds around the amorphous wire; and
an electrically insulating part fixing the amorphous wire and the
detection coil,
wherein the amorphous wire has a circular cross section and is
electrically connected to a terminal, the terminal is on a flat surface
of the substrate,
wherein the detection coil comprises:
a first wiring part comprising film-shaped electrically
conductive bodies on the flat surface of the substrate and
crossing the amorphous wire;
a second wiring part comprising film-shaped electrically
conductive bodies on an opposite side of the amorphous wire to
the first wiring part and crossing the amorphous wire; and
a connecting part comprising columnar or tubular
electrically conductive bodies surrounded by the electrically
insulating part at both lateral sides of the amorphous wire and
extending in a normal direction of the substrate so as to connect
predetermined positions of the first wiring part and those of the
second wiring part.
Appeal Br. 12 (Claims App’x.) (reformatted for clarity, emphasis added)

2 Posts 133, 134 are also referred to as “connecting part[s].” Abstract.
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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Hatano US 2005/0088269 A1 Apr. 28, 2005
Honkura et al. (“Honkura”) US 2011/0080164 A1 Apr. 7, 2011
Dalmia et al. (“Dalmia”) US 2014/0043130 Al Feb. 13, 2014

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 2, and 4–6 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Honkura in view of
Dalmia. Final Office Action dated Sept. 26, 2017 (“Final
Act.”) 3–8.
2. Claim 3 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Honkura in view of Dalmia, and further in
view of Hatano. Id. at 8–9.
DISCUSSION
Rejection 1. The Examiner rejects claims 1, 2, and 4–6 as obvious
over Honkura in view of Dalmia. Id. at 3–8. In support of the rejection, the
Examiner relies on Honkura as teaching all elements of the claims other than
the claimed “connecting part.” Id. at 4. Figure 2 of Honkura is reproduced
below.
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Figure 2 of Honkura, above, “is a front conceptual diagram showing an MI
element.” Honkura ¶ 42. Honkura teaches that “a detection coil 3 disposed
around a magnetosensitive wire 1 through an insulator 4 (not shown) is
installed on a substrate 10.” Id. ¶ 68. Honkura does not teach posts
arranged normal to the substrate connected to the first and second wiring
parts. Final Act. 4.
The Examiner finds that Dalmia teaches
a connecting part 124 comprising columnar or tubular
electrically conductive bodies surrounded by the electrically
insulating part 140, 150, and 152 at both lateral sides of the
magnetic wire 106 and extending in a normal direction of the
substrate 156 so as to connect predetermined positions of the first
wiring part 122 and those of the second wiring part 120.

Final Act. 4.
Dalmia is titled “Planar Electronic Device.” Dalmia, code (54). It
teaches a planar electronic device that includes conductors on a top side of a
substrate connected by vias to bottom conductors on the opposite side of the
substrate. Dalmia, Abstract. The conductors and vias may surround a ferrite
core. Id. ¶ 3. Figures 1 and 7 of Dalmia are reproduced below.
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Figure 1, above, is a perspective view of a planar electronic device of
Dalmia. Id. ¶ 9. Figure 7, above, illustrates primary and secondary
conductive loops 500, 502 of planar electronic device 504 as well as top
conductors 506 and bottom conductors 508. Id. ¶ 44.
Dalmia teaches that the device includes a magnetic component 102
disposed in a nonconductive substrate 104. Id. ¶ 17. Dalmia further teaches
that “vias 124, top conductors 120, and bottom conductors 122 form looping
or winding conductive pathways that wrap around the ferrite material.” Id. ¶
19.
The Examiner finds that a person of ordinary skill in the art would
have had reason to add “the connecting part as taught by Dalmia to the
magneto-impedance element of Honkura to provide equal space between the
amorphous wire and each of the first and second wire part to provide the
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required [impedance].” 3 Final Act. 5. Accordingly, the Examiner
determines claims 1, 2, and 4–6 to be obvious over Honkura in view of
Dalmia. Id. at 3–8.
Appellant argues that the rejection should be reversed. Appeal Br. 6–
11. Appellant argues that Dalmia is not analogous art and that, even if it
were analogous art, there is insufficient reason to combine the teachings of
Honkura and Dalmia.

Analogous Art
Appellant argues that Dalmia is not analogous art as it is neither from
the same field of endeavor as the Application nor reasonably pertinent to the
problem faced by the inventors. Id. at 7–9. With respect to the field of
endeavor, Appellant argues that Dalmia relates to an inductor while the
present application relates to MI sensors. Id. With regard to whether
Dalmia is reasonably pertinent to the problem faced by the inventors,
Appellant argues that the inventors were concerned with attaining both a
high level of output power and a high level of size reduction of an Ml sensor
while Dalmia concerns “arranging conductors provided on the top and
bottom sides in a particular manner.” Id. at 9.
We consider the latter argument, regarding whether Dalmia is
reasonably pertinent to the problem faced by the inventors, first. In order for

3 In the Final Office Action the Examiner refers to “the required inductance”
where context suggests that the Examiner intends to refer to “the required
impedance.” Final Act. 5. Similarly, in the Examiner’s Answer, the
Examiner refers to “the total inductance” where context suggests that the
Examiner intends to refer to “the total impedance.” Ans. 10.
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a reference to be reasonably pertinent to the problem, it must “logically[]
have commended itself to an inventor’s attention in considering his
problem.” See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80
(Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,658 (Fed. Cir. 1992)). In
the Answer, the Examiner determines that the Specification teaches “to
provide a fine pitch detection coil that is difficult to obtain by conventional
detection coil formation method such as photolithography.” Examiner’s
Answer dated July 11, 2019 (“Ans.”) 8 (citing Spec. ¶¶ 7, 9); see also Spec.
¶ 8 (“MI elements having the detection coils require the detection coils to be
wound tightly, that is to say, have a fine pitch.”). Similarly, the Examiner
finds that, in Dalmia, “the displacement of the via location and the
difference in size and length of the conductors allow the increase in the
number of turns or the density of the inductor coil.” Ans. 8 (citing Dalmia ¶
33). This is generally consistent with Appellant’s statement that “Dalmia
discloses that the size and shape of the ferrite cores has an effect on density
of the conductive windings as well as the layout of the conductive windings,
and solves the problem by arranging conductors provided on the top and
bottom sides in a particular manner.” Appeal Br. 9. In view of the
foregoing, the Examiner finds that both Dalmia and the inventors faced the
problem of increasing the density of the coil.4 Appellant did not file a Reply
Brief.

4 In the Answer, the Examiner summarizes Appellant’s argument that
Dalmia is not reasonably pertinent to the problem with which the inventors
were concerned, then states that such argument is not persuasive. Answer
7–8. Subsequently, the Examiner states that “the coil formation of Dalmia is
not reasonably pertinent to the problem with which the appellant is
concerned.” Id. at 8 (emphasis added). We regard this as a typographical
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Appellant does not squarely contest the Examiner’s determination that
both Dalmia and the inventors faced the problem of increasing the density of
the coil. Accordingly, we determine that Appellant has not shown error in
the foregoing and has not shown that Dalmia is not analogous art. As a
result, we need not consider Appellant’s arguments regarding the field of the
endeavor.

Reason to Combine
Appellant further argues that, even if Dalmia is considered analogous
art, a person of ordinary skill in the art would not have had reason to modify
Honkura based on Dalmia. Appeal Br. 10–11. Appellant argues that there
are significant technical differences between the MI sensor of Honkura and
the inductor of Dalmia. Id. at 10. Appellant further argues that the
Examiner errs in determining that one of skill in the art would have relied on
Dalmia to teach one to provide equal space between the amorphous wire and
each of the first and second wire part in order to provide the required
inductance. Id. Appellant asserts that there is no such teaching in Dalmia.
Id.
In the Answer, the Examiner determines that, “[s]ince a MI sensor and
an inductor [both] use a coil to provide their respective purpose and
function, a person with ordinary skill in the art in a detection coil structure
for a MI sensor would look into the fields of inductor coil structure.”
Answer 9. The Examiner further determines that “a person with ordinary

error and construe the Answer to maintain that Dalmia is reasonably
pertinent to the problem with which the inventors were concerned.
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skill in the art would know that equal spacing between the amorphous wire
and the first and second wire part would have effect on the total
[impedance].” Ans. 10; see also Dalmia ¶ 4.
As persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art. Absent legal error or contrary factual evidence, those
findings can establish a prima facie case of obviousness. In re Berg, 320
F.3d 1310, 1315 (Fed. Cir. 2003); see also, In re Kunzmann, 326 F.2d 424,
425 n.3 (CCPA 1964) (Findings of an examiner not shown to be clearly
erroneous may be accepted as fact.). Here, the Examiner finds that equal
spacing would have an effect on the total impedance. Appellant does not
specifically rebut this finding. Accordingly, Appellant has not shown error
in the Examiner’s determination that one of ordinary skill in the art would
have combined Dalmia’s teachings of a connecting part (conductive vias)
with Honkura’s teaching of a magneto-impedance element in order to
achieve an MI element having equal space between the amorphous wire and
each of the first and second wire parts to provide the required impedance.

Rejection 2. The Examiner rejects claim 3 as obvious over Honkura
in view of Dalmia and further in view of Hatano. Final Act. 8–9. Appellant
argues that this rejection is in error for the same reasons argued with respect
to claims 1, 2, and 4–6, discussed above. Appeal Br. 11. As we have not
found such arguments to be persuasive, we determine that Appellant has not
shown error with respect to the rejection of claim 3.

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CONCLUSION

In view of the reasoning set forth in the Final Office Action, the
Examiner’s Answer, and above, the Examiner’s rejections are affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–6 103(a) Honkura, Dalmia 1, 2, 4–6
3 103(a) Honkura, Dalmia,
Hatano
3
Overall
Outcome
1–6

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED