Ex Parte Kuehn

Patent Trial and Appeal Board

May 4, 2016

12280048 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/280,048 01/13/2009 Thomas Kuehn
23550 7590 05/06/2016
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
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.
WEBE-0032 7277
EXAMINER
LE,SONT
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS KUEHN
Appeal2014-008541
Application 12/280,048
Technology Center 2800
Before ROBERT E. NAPPI, ERIC S. FRAHM, and SCOTT B. HOWARD,
Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 23-38 and 41--45, which constitute all of the claims pending in this
application. Claims 1-22 have been cancelled. Claims 39 and 40 have been
objected to as depending from a rejected base claim. Final Act. 13. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Pepperl + Fuchs GmbH as the real party in interest.
App. Br. 1.
Appeal2014-008541
Application 12/280,048
THE INVENTION
The claimed invention is directed to an inductive proximity switch
and method for its operation. Abstract.
Claim 23, reproduced below, is illustrative of the claimed subject
matter:
23. Network for the operation of an inductive proximity
switch, the network having a current-fed resonant circuit
comprising a resonant circuit transmitting coil and a capacitance,
and
the resonant circuit transmitting coil generating an
alternating magnetic field for inducing a mutual induction
voltage in at least one receiving coil, and
an oscillation state of the resonant circuit is influenced by
a metallic release entering or moving away from the alternating
magnetic field, and from a change of the oscillation state of the
resonant circuit is obtained a switching signal, a change of a
complex coupling between the at least two coils, namely
transmitting coil and receiving coil, being evaluatable as a
switching signal with aid of an alternating auxiliary voltage in a
presence or absence of the release, \~1herein the alternating
auxiliary voltage signal is obtained as a partial voltage from an
alternating resonant circuit voltage of the resonant circuit of the
network in a presettable ratio, a complex voltage divider
resulting from a series connection of two complex resistors is
connected in parallel to at least one of the transmitting coil and
capacitance of the resonant circuit, wherein the alternating
auxiliary voltage signal falls across one of the complex resistors,
the alternating auxiliary voltage signal being connected in series
with the mutual induction voltage induced in the receiving coil
such that a differential voltage to ground or to a potential is
obtained at an output of the receiving coil, wherein a value of the
differential voltage is reduced by the alternating auxiliary voltage
signal compared with the induced mutual induction voltage, the
switching signal being generated from the differential voltage.
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Appeal2014-008541
Application 12/280,048
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Tigges ("Tigges us 5,012,206 Apr. 30, 1991
'206")
Tigges ("Tigges us 5,264,733 Nov. 23, 1993
'733")
Guichard et al. us 5,508,662 Apr. 16, 1996
Haffner et al. US 6,731,119 B2 May4, 2004
Ehls et al. US 7,106,052 B2 Sept. 12, 2006
REJECTIONS
Claims 23-25, 29, 32, 34, 37, 41, and 42 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Tigges '733. Final Act. 4--7.
Claims 26, 27, 30, 31, 33, and 43-45 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tigges '733 in view of Tigges '206.
Final Act. 8-10.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tigges '733 in view of Tigges '206 and Guichard. Final
Act. 11.
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tigges '733 in view ofEhls. Final Act. 11-12.
Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tigges '733 in view of Haffner. Final Act. 12-13.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we consider
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Appeal2014-008541
Application 12/280,048
all evidence presented and all arguments made by Appellant. We disagree
with Appellant's arguments regarding the pending claims, and we
incorporate herein and adopt as our own: ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 4--13), and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellant's arguments (Ans. 2-11). We incorporate
such findings, reasons, and rebuttals herein by reference unless otherwise
noted. However, we highlight and address specific findings and arguments
for emphasis as follows.
Appellant argues the Examiner erred in finding Tigges '733 discloses
an alternating or oscillating voltage at node 1. 2 App. Br. 5. Instead,
Appellant argues node 1 has a constant voltage determined by the constant
voltage at connections 11 and the ratio of the two resistors, 17 and 18. App.
Br. 5; Reply Br. 3. Moreover, Appellant argues the capacitor associated
with the RC-combinations at resistor 18 and transistor 6 also serve to cancel
out or short any AC components to ground. App. Br. 5---6; Reply Br. 4.
The Examiner finds the voltage at node 14---formed by resistor 1 7,
capacitor 3 and transmitting coil 2-in Tigges '733 is an alternating voltage.
Ans. 8. More specifically, the voltage is alternating because the capacitor
and transmitting coil form a resonant circuit for the oscillator. Id.
Additionally, the Examiner finds Tigges '733 discloses an alternating
voltage at Node 1. Ans. 8 (citing Tigges '733 7:59-8: 12).
2 Node 1 is not explicitly identified in Tigges '733 Figure 1. Node 1 is the
node between resistors 17 and 18. App. Br. 5.
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Appeal2014-008541
Application 12/280,048
Appellant has not persuaded us that the Examiner erred. As the
Examiner finds, Tigges '373 expressly discloses an alternating voltage at
node 14, which results in an alternating voltage at node 1:
Resistors 1 7 and 18 as well as the RC combination located in the
emitter circuit establish the bias point of the transistor. The
alternating voltage differential UD which is composed of the
difference between voltages Ul and U2 induced in the sensing
coils controls the oscillation behavior of oscillator 1.
Tigges '733 8:7-12. In light of the explicit disclosure, Appellant's attorney
argument does not convince us the Examiner erred. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take
the place of evidence.").
Appellant also argues that Examiner erred in finding Tigges '733
discloses a voltage divider being connected in parallel with capacitor 3 and
transmitting coil 2. App. Br. 6. Instead, Appellant argues the voltage
divider is connected parallel to operating voltage present at connections 11.
Id. Appellant further argues that "[ e ]ven if one would, wrongly, assume that
the resonant circuit voltage somehow includes a voltage across transistor 6"
that would still not disclose the limitations of claim 23 because the claim
"explicitly require the voltage divider to be connected in parallel to either
one or both of the capacitance and transmitting coil of the resonance circuit."
Id.
The Examiner finds Tigges '733 discloses "a complex voltage divider
resulting from a series connection of two complex resistors is connected in
parallel to at least one of the transmitting coil and capacitance of the
resonant circuit" as recited in claim 23. Final Act. 5; Ans. 10. Specifically,
the Examiner finds:
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Appeal2014-008541
Application I2/280,048
Fig. 1 of T733 shows, the voltage divider (comprising RI 7 and
RI 8) is parallel with the oscillator circuit (comprising LC circuit
[ 4] oscillator amplifier [ 6] and RC circuit connected to the
emitter of [ 6]). The divider circuit and the oscillator circuit are
in parallel with each other because [RI 7] of the divider and [L2,
C3] of the oscillator sharing the same node [I4] and [RI8] of the
divider and [RC] of the oscillator sharing the other node.
Ans. IO.
Claim 23 uses the transitional phrase "having." The transitional
phrase "having" can result in the claim being open-ended. Crystal
Semiconductor Corp. v. Tritech Microelectronics Int 'l, Inc., 246 F.3d I336,
I348 (Fed. Cir. 200I); Lampi Corp. v. American Power Products Inc., 228
F.3d I365, I376 (Fed. Cir. 2000). However, the term "having" does not
convey the open-ended meaning as strongly as "comprising" and the
specification must be considered to determine whether the claim is open or
closed. Id.
Appellant has not provided any evidence that the claim term "having"
is closed, i.e., that it excludes additional components. See App. Br. 6; Reply
Br. 4--5. Absent a specific definition limiting the term "having," we
conclude that the Examiner properly interpreted the claim as allowing the
inclusion of additional components. See Genentech, Inc. v. Chiron
Corp., I I2 F.3d 495, 50I, (Fed. Cir. I997) (An open transition "means that
the named elements are essential, but other elements may be added and still
form a construct within the scope of the claim."). Accordingly, Appellant
has not persuaded us that the Examiner's finding is erroneous.
Appellant's remaining arguments are premised on the Examiner
having erred in finding an alternating auxiliary voltage. See App. Br. 7;
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Reply Br. 5. Because we do not find that the Examiner erred in finding an
alternating auxiliary voltage, those arguments are not persuasive.
For the reasons discussed above, we sustain the Examiner's rejection
of claim 23, along with the rejections of claim 41, which is argued on the
same grounds, and claims 24--38 and 42--45, which are not argued
separately.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
23-38 and 41--45.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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