Ex Parte Frauenholz et al

Patent Trial and Appeal Board

Sep 30, 2016

13700638 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/700,638 11128/2012
27799 7590 10/04/2016
Cozen O'Connor
277 Park A venue, 20th floor
NEW YORK, NY 10172
FIRST NAMED INVENTOR
Rainer Frauenholz
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.
502901-1050PUS-329819.000 7341
EXAMINER
COTEY, PHILIP L
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
patentsecretary@cozen.com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER FRAUENHOLZ and STEPHEN SETESCAK
Appeal2015-004588
Application 13/700,638 1
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from the Examiner's
decision finally rejecting claims 9, 11, and 14--16 under 35 U.S.C. § 103 as being
unpatentable over Saito2 in view of Tanimoto3 and Speldrich4 and rejecting claims
12 and 13 under 35 U.S.C. § 103 as being unpatentable over Saito in view of
Tanimoto, and Speldrich and further in view of Ban. 5
1 According to Appellants, the real party in interest is Continental Automotive
GmbH. Appeal Br. 1.
2 Saito et al., US 2006/0277990 Al, published December 14, 2006 ("Saito").
3 Tanimoto et al., JP 63-218821 A, published September 12, 1988 ("Tanimoto").
4 Speldrich, US 2009/0158838 Al, published June 25, 2009 ("Speldrich").
5 Ban, US 2008/0173099 Al, published July 24, 2008 ("Ban").
Appeal2015-004588
Application 13/700,638
We have jurisdiction under 35 U.S.C. § 6(b). 6
We REVERSE.
The subject matter on appeal is directed to air mass flow meters (see, e.g.,
claim 9). Appellants disclose that air mass flow meters are known and used, for
example, in automobiles to detect the air mass flowing to an engine. Spec. 1, 11.
11-13. Appellants disclose an air mass flow meter embodiment including a sensor
element having a microelectromechanical system (MEMS)7 design. Spec. 2, 11.
20-23. According to Appellants, it is important to discharge charged dirt particles
in the flow channel, before reaching the sensor element, because the charged dirt
particles, such as charged dust, are attracted to the charged surfaces of the MEMS
sensor element. Spec. 2, 11. 21-25. Once deposited on those charged surfaces,
discharge of the dirt particles is said to be prevented due to the highly insulating
passivating layer on the charged surfaces of the sensor element. Spec. 2, 11. 25-27.
To address this problem, Appellants disclose that the charged dirt particles
are discharged in an electrostatically dissipative part of a flow channel before
reaching the MEMS sensor element. Spec. 2, 11. 27-30. As a result, the air mass
flow meter can provide accurate measurements without error. Spec. 1, 11. 24--26.
Claim 9 is illustrative of the claims on appeal and is reproduced below from
the Claims Appendix of the Appeal Brief. The limitations at issue are italicized.
9. An air mass flow meter, comprising:
a housing made of a plastic which has an electrically insulating
effect;
a flow channel formed in the housing;
6 Our decision refers to Appellants' Specification filed November 28, 2012 (Spec.),
the Final Office Action mailed June 6, 2014 (Final Act.), Appellants' Appeal Brief
filed November 6, 2014 (Appeal Br.), the Examiner's Answer mailed January 15,
2015 (Ans.), and Appellants' Reply Brief filed March 12, 2015 (Reply Br.).
7 Speldrich i-f 1 (MEMS is an abbreviation for "microelectromechanical systems").
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Appeal2015-004588
Application 13/700,638
a sensor element having a MEMS design arranged in the housing
and for detecting an air mass flowing in the flow channel; and
conductor tracks which connect the sensor element to connection
pins arranged in the housing, wherein:
an entirety of the housing is formed from the plastic, and
at least one region of the flow channel is an electrically
dissipative region having an electrostatically dissipative property.
Appeal Br. 9 (emphasis added).
B. DISCUSSION
The Examiner finds Saito discloses an air mass flow meter comprising a
housing made of plastic and having a flow channel, a sensor element for detecting
an air mass flowing in the flow channel, and conductor tracks for the sensor
element. Final Act. 5. The Examiner finds Saito does not disclose that at least one
region of the flow channel is an electrically dissipative region having an
electrostatically dissipative property or that the sensor element has a MEMS
design. Id. at 5---6.
The Examiner finds Tanimoto discloses a flow channel having at least one
region that is an electrically dissipative region having an electrostatically
dissipative property. Id. at 5. The Examiner concludes it would have been obvious
to modify the flow channel of Saito to include the electrically dissipative region of
Tanimoto to keep dust particles from adhering to the surface of Saito' s sensor
element and to reduce the need to change flow meter sensors. Id. The Examiner
further finds Speldrich discloses a sensor element having a MEMS design. Id. at 6.
The Examiner concludes it would have been obvious to modify the sensor of Saito
to have the MEMS design of Speldrich because Speldrich discloses such designs
are small in size and are thermally isolated. Id.
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Appeal2015-004588
Application 13/700,638
Appellants argue it would not have been obvious to modify Saito in view of
Tanimoto and Speldrich to provide the air mass flow meter of claim 9 because the
prior art does not disclose the problem of electrostatic attraction of particles to
MEMS sensors. Appeal Br. 5. As a result, one of ordinary skill in the art would
have lacked a reason to modify Saito to include both a MEMS design sensor
element and at least one region in a flow channel that is an electrically dissipative
region having an electrostatically dissipative property, as recited in claim 9. Id. at
5---6. In view of this, Appellants assert the Examiner has engaged in impermissible
hindsight by rejecting claim 9 over the combination of Saito, Tanimoto, and
Speldrich. Id. at 6.
Appellants' arguments are persuasive of reversible error. "While the
Supreme Court made clear that a mechanical application of the teaching-
suggestion-motivation test, requiring an explicit teaching in the prior art, is
inappropriate, ' [ w ]e must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how or
why the references would be combined to produce the claimed invention."'
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir.
2012) (citing Innogenetics, N. V. v. Abbott Labs., 512 F.3d 1363, 1374 n. 3 (Fed.
Cir. 2008) ).
Here, the Examiner finds Tanimoto discloses a flow channel having at least
one region that is an electrically dissipative region having an electrostatically
dissipative property and finds Speldrich discloses a sensor element having a
MEMS design. Final Act. 5---6. In the Examiner's Answer, the Examiner finds the
combination of Saito, Tanimoto, and Speldrich discloses all of the elements of
claim 9 and provides motivation to combine the elements, citing Tanimoto's
disclosure of preventing particles from adhering to the surface of a detection
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Appeal2015-004588
Application 13/700,638
element and less frequent changing of flow meter sensors. Ans. 3. However, the
Examiner has failed to show that the electrically dissipative region of Tanimoto
would be of benefit for the MEMS design of Speldrich. In other words, the
Examiner has not found that Tanimoto discloses that dust particles adhering to
surfaces of a MEMS sensor were known to be a problem at the time of Appellants'
invention. Thus, absent such a teaching in Tanimoto, there would have been no
reason to combine the prior art as proposed by the Examiner.
In sum, the Examiner has engaged in impermissible hindsight when rejecting
claim 9 over the combination of Saito, Tanimoto, and Speldrich. For the reasons
discussed above, the rejection of claims 9, 11, and 14--16 under 35 U.S.C. § 103 as
unpatentable over Saito in view of Tanimoto and Speldrich is not sustained.
The remaining§ 103 rejection of dependent claims 12 and 13 includes Ban
as an additional prior art reference. The Examiner does not rely on Ban to remedy
the deficiencies in the combination of Saito, Tanimoto, and Speldrich discussed
above in the rejection of claim 9. Therefore, we do not sustain the Examiner's
§ 103 rejection of claims 12 and 13 over the combination of Saito, Tanimoto,
Speldrich, and Ban.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
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