Ex Parte Galka et alDownload PDFPatent Trial and Appeal BoardJun 3, 201613602675 (P.T.A.B. Jun. 3, 2016) Copy Citation 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. 13/602,675 09/04/2012 William E. Galka 2630.3308.002 [1053] 8250 23399 7590 06/03/2016 REISING ETHINGTON P.C. P O BOX 4390 TROY, MI 48099-4390 EXAMINER HICKS, ANGELISA ART UNIT PAPER NUMBER 3753 MAIL DATE DELIVERY MODE 06/03/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM E. GALKA and DAVID L. SPEIRS ____________________ Appeal 2014-004816 Application 13/602,675 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, LEE L. STEPINA, and AMANDA F. WIEKER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE William E. Galka and David L. Speirs (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION. Appeal 2014-004816 Application 13/602,675 2 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A rotary position sensor assembly for determining the rotary position of a rotary component, comprising: a magnet carried by the rotary component for rotation with the rotary component; a sensor responsive to a characteristic of a magnetic field that changes as the magnet rotates or is rotated; a buffer zone around the magnet and the sensor to limit distortion of the magnetic field which buffer zone is at least 0.5 times the largest dimension of the magnet, and a housing enclosing the buffer zone, magnet and sensor and having at least one wall and the housing prohibiting a foreign object from passing into the buffer zone. REJECTION Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hattori (US 2007/0290680 A1, pub. Dec. 20, 2007). DISCUSSION Each of Appellants’ independent claims 1 and 11 requires, in pertinent part, a “buffer zone around the magnet and sensor [that] is at least 0.5 times the largest dimension of the magnet.” Appeal Br. 38, 40 (Claims App.). The Examiner did not make a finding that Hattori has a buffer zone at least 0.5 times the largest dimension of the magnet. With respect to the size of the buffer zone, the Examiner determined: It would have been obvious . . . to have a buffer zone that was large enough to accommodate the magnet, while protecting it from magnetic field interference that is external to the valve, as to not attract foreign objects, which would interfere with the Appeal 2014-004816 Application 13/602,675 3 function of the valve, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Final Act. 4 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Appellant argues that the routine optimization holding in Aller is not applicable here because Hattori does not recognize or address the inaccuracy problem (i.e., the problem Appellant seeks to solve by providing a buffer zone) and, thus, a person of ordinary skill in the art would not have known from Hattori “what to experiment with and/or to optimize.” Appeal Br. 18. The Examiner does not point to any disclosure in Hattori directed to a buffer zone or a need to limit distortions from objects outside of the throttle control device. See Final Act. 2–4; Ans. 8–9. Instead, the Examiner reasons that “[i]n order for the device of Hattori to work properly, there must be some degree of confidence that there is a level of accuracy associated with the detection device.” Ans. 8–9 (citing Hattori, paras. 31, 43, discussing rotational angle detection device). Thus, the Examiner finds that “[i]n order to ensure the operation of the invention of Hattori, there is inherently a dimension surrounding the magnets, 34, and the sensor to allow the detection device, 18, to function” and “[t]hat dimension is considered to be the buffer zone.” Id. at 9. As explained in In re Applied Materials, Inc., 692 F.3d 1289, 1296 (Fed. Cir. 2012): “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Aller, 220 F.2d at 456. This rule is limited to cases in which the optimized variable is a “result-effective variable.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977); see Boesch, 617 F.2d at 276 (“[D]iscovery of an Appeal 2014-004816 Application 13/602,675 4 optimum value of a result effective variable . . . is ordinarily within the skill of the art.”). In the present case, because the prior art disclosed values overlapping the claimed ranges, the “general conditions” of the claim are disclosed. See Aller, 220 F.2d at 456; see also Boesch, 617 F.2d at 276. The question is whether the dimensions were known to be result-effective variables. The Examiner does not point to any evidence in the record before us showing that the size of the buffer zone, much less the size of the buffer zone relative to the size of the magnet, was known by those of ordinary skill in the art at the time of the invention to be a result-effective variable. Thus, the Examiner does not establish the requisite factual basis to support the determination that the claimed buffer zone size (i.e., “at least 0.5 times the largest dimension of the magnet”) amounts to nothing more than routine optimization. Accordingly, we do not sustain the rejection of independent claims 1 and 11 or their dependent claims 2–10 and 12–20 under 35 U.S.C. § 103(a) as unpatentable over Hattori. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the following new ground of rejection. Claims 1–3, 6, 8, 11–13, 16, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hattori. Regarding claims 1 and 11, Hattori discloses a rotary position sensor assembly (rotational angle sensor 18, including magnetic detecting element 64 and stator 66) for determining the rotary position of a rotary component (shaft 14). Hattori ¶¶ 35, 41, 58. Hattori discloses a magnet (magnet piece 34) that is carried by the rotary component (shaft 14) for rotation with the rotary component (shaft 14). See Hattori, Fig. 1 (depicting magnet piece 34 Appeal 2014-004816 Application 13/602,675 5 connected to shaft 14 by throttle gear 30); ¶ 33. Hattori also discloses a sensor (rotational angle sensor 18, including stator 66 and magnetic detecting element 64) that is responsive to a characteristic of a magnetic field that changes as the magnet (magnet piece 34) rotates or is rotated. Hattori ¶¶ 41–43. Hattori further discloses a housing (main body 20 and cover 61), which encloses the magnet and sensor and includes at least one wall (e.g., cover 61) and would prohibit foreign objects from passing into the space enclosed by main body 20 and attached cover 61. See Hattori, Fig. 1; ¶¶ 41–42. Although Hattori does not explicitly mention a “buffer zone,” the volume enclosed by cover 61 and main body 20 is a “buffer zone” as defined by claims 1 and 11 and described in Appellants’ Specification, in that it surrounds the magnet (magnet piece 34) and sensor and spaces the magnet and sensor from objects outside the housing, thereby “limit[ing] distortion of the magnetic field that may be caused by objects outside of the buffer that are not part of the fluid flow control device.” Spec. ¶ 5 (emphasis added); see also id. ¶ 4 (explaining that “[t]he buffer is provided around the magnet to limit distortion of the magnet[ic] field” such that “[a]t least some foreign objects will not be sufficiently close to the sensor to alter the magnetic field experienced by the sensor”); ¶ 24 (describing that the “buffer” may be “an open space”). The housing (cover 61 and main body 20) accommodates and surrounds several structures, such as throttle gear 30, which accommodates plural magnets (magnet pieces 34); spring seat 26; springs 32, 28; roller bearing 23; attaching plate 42; yokes 36; intermediate gear 57; pinion 53; and motor 12. See Fig. 1. Appellants assert that Hattori’s “steel spring 32, steel spring 28, steel ball bearing assembly 23[,] steel attachment plate 42[, and electric motor Appeal 2014-004816 Application 13/602,675 6 12]” are all sufficiently close to magnet pieces 34 to cause distortions in the magnetic field. Appeal Br. 15–16. Appellants do not provide any persuasive evidence to support this assertion. Nevertheless, even accepting Appellants’ assertion as factually correct, all of the elements purported to cause distortions are inside the housing (cover 61 and main body 20) and part of the fluid flow control device. As such, any distortions caused by these elements are not among the distortions that the claimed buffer zone is intended to limit, as described in Appellants’ Specification. Appellants further assert that Hattori lacks a housing for “prohibiting foreign objects from passing into the buffer zone to prevent distortion of the magnetic field and resulting error and inaccuracies in angular sensing.” Reply Br. 6. Claims 1 and 11 require “a housing prohibiting a foreign object from passing into the buffer zone.” Appeal Br. 38, 40 (Claims App.). Notably, claims 1 and 11 do not recite a specific size or type of the foreign objects, nor do the claims require that the housing itself do more to limit distortion than prohibit passage of a foreign object into the buffer zone. Appellants acknowledge that “persons of ordinary skill would . . . know that the Hattori body and housing portions enclose all of the components to carry them and protect them from being contaminated by dust, dirt and the like.” Reply Br. 6. Thus, because “dust, dirt and the like” are “foreign objects” as recited in the claims, Appellants appear to concede that Hattori comprises housing structure as called for in claims 1 and 11. Hattori fails to disclose explicitly that the buffer zone around the magnet and the sensor enclosed by the housing (cover 61 and main body 20) is at least 0.5 times the largest dimension of the magnet, as called for in claim 1. However, one of ordinary skill in the art would have gleaned, or Appeal 2014-004816 Application 13/602,675 7 immediately envisaged, from the number and arrangement of components housed within the enclosed space depicted in Hattori’s Figure 1, as well as the conventional size ranges of such components, that the housing (cover 61 and main body 20) encloses a volume (i.e., buffer zone) of at least 0.5 times the largest dimension of the magnet (magnet piece 34) in order to accommodate all of the illustrated components and clearances. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see also Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“[W]hile an analysis of obviousness always depends on evidence . . . it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference.”). It is well established that an artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Therefore, it would have been obvious to a person of ordinary skill in the art, in light of Hattori’s disclosure and the knowledge of one skilled in the art, that Hattori’s buffer zone is at least 0.5 times the largest dimension of the magnet. Moreover, although Appellants’ Specification conveys that the buffer zone should be large enough to limit distortions from objects outside the buffer zone and that the required size of the buffer zone “may vary depending upon the strength of the magnet, shape of the magnet, or both, with a stronger magnet requiring a larger diameter sphere, and a weaker magnet requiring a smaller diameter sphere,” the Specification does not indicate, much less show, that there is any criticality to the claimed ratio of buffer zone size to magnet size in an assembly or device as recited in claims Appeal 2014-004816 Application 13/602,675 8 1 and 11, which do not specify any particular magnet strength or density. See Spec. ¶¶ 4, 5, 28, 29 (disclosing that, in a particular example, with specified flux energy density, “[t]he buffer zone may be 0.5 to 1.5 times the greatest dimension of the magnet or greater”). Appellants do not show that a device having the relative dimensions recited in claims 1 and 11 necessarily would perform differently than Hattori’s device; without such a showing, the claimed device is not patentably distinct from Hattori’s device. See Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984) (holding that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device). Regarding claim 11, Hattori discloses a fluid flow control device for a combustion engine. Hattori ¶ 44. Regarding claims 2 and 12, Hattori discloses an air gap between throttle gear 30, stator 66, sensor mount portion 62, cover 61, and intermediate gear 57. See Fig. 1. Regarding claims 3 and 13, Hattori’s written specification is silent as to the specific material of cover 61, but the cross hatching of cover 61 in Hattori’s Figure 1 is the same as that of throttle gear 30, which Hattori describes as “a resin-molded product.” Hattori, Fig. 1; ¶ 33. Therefore, one of ordinary skill in the art would have immediately envisaged constructing the cover of a resin (i.e., plastic) material. Moreover, the selection of a known material based upon its suitability for the intended use is a design Appeal 2014-004816 Application 13/602,675 9 consideration within the skill of the art. In re Leshin, 277 F.2d 197, 199 (CCPA 1960). Regarding claims 6 and 16, Hattori discloses the housing (cover 61 and main body 20) having a plurality of inner walls collectively surrounding the buffer volume surrounding the magnet (magnet piece 34) and sensor (detecting element 64 and stator 66). See Hattori, Fig. 1. Regarding claims 8 and 18, for the reasons set forth above in regard to claims 1 and 11, a buffer zone that is at least 0.5 times the largest dimension of the magnet would have been obvious in light of Hattori’s disclosure and the knowledge of one skilled in the art. As for the upper limit of the claimed range, Appellants disclose that “[t]he buffer zone may be 0.5 to 1.5 times the greatest dimension of the magnet or greater, or with a circular magnet, the buffer zone may be 1.5 times the radius of the magnet or greater.” Spec. ¶ 29 (emphasis added). Appellants’ Specification gives no indication that there is any criticality to the upper limit of the range. A person having ordinary skill in the art would have been prompted to make Hattori’s housing (cover 61 and main body 20) sufficiently large to accommodate all components shown in Hattori’s Figure 1, but no larger, in order to limit the overall size of the device. Thus, the claimed range does not patentably distinguish the device of claims 8 and 18 from Hattori’s device. See Leapfrog Enterprises, Inc. v. Fisher Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (recognizing decreased size as a commonly-understood motivating benefit); see also In re Rose, 220 F.2d 459, 463 (CCPA 1955) (“[T]he size of the article under consideration . . . is not ordinarily a matter of invention.”); Gardner, 725 F.2d at 1346. Appeal 2014-004816 Application 13/602,675 10 DECISION The Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103(a) is REVERSED. We enter a NEW GROUND OF REJECTION of 1–3, 6, 8, 11–13, 16, and 18 under 35 U.S.C. § 103(a) as unpatentable over Hattori, pursuant to our authority under 37 C.F.R § 41.50(b). FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the prosecution will be remanded to the Examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been Appeal 2014-004816 Application 13/602,675 11 misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation