Ex Parte Classen

Patent Trial and Appeal Board

Apr 22, 2016

12614176 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/614,176 11/06/2009
24972 7590 04/26/2016
NORTON ROSE FULBRIGHT US LLP
666 FIFTH A VE
NEW YORK, NY 10103-3198
FIRST NAMED INVENTOR
Johannes CLASSEN
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.
10191/6085 7946
EXAMINER
CHAPMAN JR, JOHN E
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
04/26/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES CLASSEN1
Appeal2014-005839
Application 12/614,176
Technology Center 2800
Before THU A. DANG, JOHN P. PINKERTON, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-18. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). 2
We affirm.
1 Appellant identifies ROBERT BOSCH GmbH as the real party in interest.
App. Br. 1.
2 Although the action appealed from is a Non-Final Rejection, we have
jurisdiction pursuant to 35 U.S.C. §§ 6 and 134 because the claims on appeal
have been twice rejected. Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BP AI
1994) (precedential).
Appeal2014-005839
Application 12/614,176
STATEMENT OF THE CASE
Introduction
Appellant's invention is directed to a sensor system. Abstract. In a
disclosed embodiment, a sensor system comprises a seismic mass that is
asymmetrically distributed with respect to a torsional axis, but also presents
a symmetric area to a substrate. Spec. 2--4. According to the Specification,
Appellant's disclosed sensor provides a cost-effective approach for
packaging of the sensor system in mold packages while also reducing the
sensitivity of the sensor system to mechanical stress. Spec. 3.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A sensor system, comprising:
a substrate having a main plane of extension;
a seismic mass which is movable about a torsional axis
that is parallel to the main plane of extension, the seismic mass
having an asymmetrical mass distribution with respect to the
torsional axis due to at least one of a mass element and extension
situated on one side of the torsional axis, wherein an area of the
seismic mass facing the substrate is symmetrical with respect to
the torsional axis, and
at least one at least partially self-supporting electrode
connected to the substrate and directly adjacent to the suspension
region, the suspension region being situated along the torsional
axis.
The Examiner's Rejection
Claims 1-18 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Bennett et al. (US 5,249,465; Oct. 5, 1993) ("Bennett").
Non-Final Act. 3-9.
2
Appeal2014-005839
Application 12/614,176
Issues on Appeal
1. Did the Examiner err in finding Bennett teaches or suggests a
"seismic mass having an asymmetrical mass distribution with respect to the
torsional axis," as recited in claim 1?
2. Did the Examiner err in finding Bennett teaches or suggests "an
area of the seismic mass facing the substrate is symmetrical with respect to
the torsional axis," as recited in claim 1?
ANALYSIS 3
Appellant contends the Examiner erred in relying on Bennett as
teaching or suggesting the use of a seismic mass having an asymmetrical
mass distribution with respect to the torsional axis because Bennett uses a
seismic mass having a symmetrical mass distribution. App. Br. 3.
Appellant argues that all of the specific examples taught by Bennett rely on
symmetrical distribution of seismic mass. Id. Although Appellant concedes
Bennett discloses "it is believed that other embodiments may benefit from an
asymmetrical arrangement of seismic mass," Appellant argues that Bennett
fails to provide an enabling disclosure of an embodiment having an
asymmetrical distribution of seismic mass. Id. Additionally, Appellant
argues the Examiner's statement that "the prior art specifically details the
use of an asymmetrical mass distribution as this allows for a predetermined
3 Throughout this Decision we have considered the Appeal Brief filed
December 31, 2013 ("App. Br."); Reply Brief filed April 11, 2014 ("Reply
Br."); the Examiner's Answer mailed on February 14, 2014 ("Ans."); and
the Non-Final Office Action mailed on August 1, 2013, from which this
Appeal is taken ("Non-Final Act.").
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Appeal2014-005839
Application 12/614,176
difference in the sensitivity to acceleration in different modes and
directions" is without basis or support in the disclosure of Bennett. Reply
Br. 2 (citing Ans. 2).
In relevant part, and as identified by the Examiner, Bennett teaches:
"It is believed that other embodiments may benefit from an asymmetrical
arrangement of seismic mass 28 and the positions of electrode pairs around
the periphery so as to produce a predetermined difference in sensitivity to
acceleration in different modes and directions." Bennett, col. 3, 11. 20-25;
see also Non-Final Act. 3; Ans. 2. Thus, contrary to Appellant's assertions,
Bennett teaches, or at least reasonably suggests, the use of an asymmetrical
distribution of seismic mass to produce differences in sensitivity to
acceleration in different modes and directions.
Further, under § 103, "a reference need not be enabled; it qualifies as
a prior art, regardless, for whatever is disclosed therein." Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003). See
also Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir.
1991) ("a non-enabling reference may qualify as prior art for the purpose of
determining obviousness under § 103"); Beckman Instruments, Inc. v. LKB
Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) ("[e]ven if a reference
discloses an inoperative device, it is prior art for all that it teaches").
Accordingly, we agree with the Examiner's finding that Bennett
teaches or reasonably suggests a "seismic mass having an asymmetrical
mass distribution with respect to the torsional axis," as recited in claim 1.
Appellant further argues Bennett does not teach "an area of the
seismic mass facing the substrate is symmetrical with respect to the torsional
axis," as recited in claim 1. App. Br. 3.
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Appeal2014-005839
Application 12/614,176
We are unpersuaded of Examiner error because, at least, Appellant's
argument is not responsive to the Examiner's finding. The Examiner finds,
and we agree, Figure 2 of Bennett illustrates symmetric areas with respect to
the torsional axis of the seismic mass facing the substrate. Non-Final Act. 3
(citing Bennett, Fig. 2). A drawing teaches all that it reasonably discloses
and suggests to a person of ordinary skill in the art. In re Aslanian, 590 F .2d
911, 914 (CCPA 1979).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1 and, for similar reasons, of independent claim 6, which similarly
recites an asymmetrical distribution of seismic mass with respect to the
torsional axis. Further, we sustain the rejection of dependent claims 2-5 and
7-18, which were not argued separately. App. Br. 3.
DECISION
We affirm the Examiner's decision rejecting claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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