Ex Parte Lang

Board of Patent Appeals and Interferences

Jun 22, 2009

11289232 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARKUS LANG
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Appeal 2009-002605
Application 11/289,2321
Technology Center 2800
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Decided:2 June 22, 2009
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

1 Application 11/289,232, Sensor Having a Self-Test, filed 28 November
2005, claiming the benefit under 35 U.S.C. § 119 of a German application
filed 2 December 2004. The specification is referred to as the
“232 Specification,” and is cited as “Spec.” The real party in interest is
listed as Robert Bosch GmbH. (Appeal Brief Pursuant to 37 C.F.R. § 41.37,
filed 28 April 2008 (“Br.”), 3.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002605
Application 11/289,232
DECISION ON APPEAL
A. Introduction
Markus Lang (“Lang”) timely appeals under 35 U.S.C. § 134(a) from
the final rejection3 of claims 1 and 3-13, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to a sensor that generates a
measurement signal based on a driven movable part, and that further
comprises a self-test function that is based on measurements of the parasitic
deflection of the driven movable part. Micromechanical sensors are said to
gain special benefits because space on the sensor elements need not be used
to provide an additional test drive, thereby permitting larger electrodes for
detecting the deflection of the movable part.
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal (square bracketed labels added for ease of
reference only):
1. A sensor, comprising:
[a] a self-test function;
[b] a movable part having its own drive; and
[c] an evaluation unit;
[d] wherein a measured variable is represented by a
deflection of the movable part with respect to a reference
position,

3 Office action mailed 25 September 2007 (“Final Rejection”; cited as
“FR”).
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[e] the drive adapted to provide at least one additional,
parasitic deflection,
[f] the self-test function implemented by valuing the
parasitic deflection in the evaluation unit,
[g] wherein an amplitude of the parasitic deflection is
independent of an amplitude of the deflection by the
measured variable.
(Br., Claims App. 1; paragraphing, indentation, and square bracketed labels
added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 1, 4, 6-9, and 11-13 stand rejected under
35 U.S.C. § 102(b) in view of Funk.5
B. Claim 3 stands rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Funk and Miekley.6
C. Claims 5 and 10 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Funk and Pfaff.7
Lang argues in the Principal Brief on Appeal (Br. 9), that Funk fails to
show a “drive adapted to provide at least one additional parasitic deflection,
the self-test function implemented by valuing the parasitic deflection in the
evaluation unit,” as required by claim 1. In particular, Lang urges that Funk

4 Examiner’s Answer mailed 25 June 2008. (“Ans.”).
5 Karsten Funk et al., Device for Bias Potential Generation for an
Oscillating Rotation Speed Sensor, U.S. Patent 6,554,833 B1 (2003).
[Assigned to Robert Bosch GmbH.]
6 Klaus Miekley and Manfred Abendroth, Apparatus for Ascertaining a
Rotation Rate and for Performing a Self-Test, U.S. Patent 6,427,518 B1
(2002). [Assigned to Robert Bosch GmbH.]
7 Georg Pfaff et al., Device for Ascertaining a Rate of Rotation, U.S.
Patent 5,889,193 (1999). [Assigned to Robert Bosch GmbH.]
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seeks to reduce or eliminate systematic errors in the rotation rate sensors
used to evaluate the Coriolis effect by generating suitable bias voltage
signals, which requires additional structures, whereas “the claimed subject
matter omits such additional structures.” (Br. 9, second full paragraph.)
Therefore, according to Lang, “[s]ince Funk does not disclose the feature of
a ‘drive adapted to provide at least one additional, parasitic deflection,’ as
provided for in the context of the claimed subject matter, claim 1 and its
dependent claims are allowable.” (Id., last paragraph.)
The Examiner finds that all the limitations recited in claim 1 are
disclosed by Funk at column 1, lines 10-31. (FR 2.) The Examiner finds
further that Funk describes sensors having limitations recited in the various
dependent claims. (FR 2-3.) Notably, the Examiner finds that Funk
describes a seismic vibrating mass having an “additional parasitic deflection
in at least one measuring direction for the rotation rate.” (FR 3, last
paragraph.) The Examiner also finds that “Funk discloses a test signal,
which causes an additional, arbitrarily generated, acceleration in the sensor”
(Column 1, lines 21-24). Therefore, it would be apparent that the arbitrarily
generated acceleration is independent of the measured variable.” (FR 6;
emphasis omitted.) The Examiner argues further, in the Response to
Argument section of the Examiner’s Answer, that “Funk further discloses
that an additional, arbitrary and therefore parasitic, test signal is supplied to
the sensors, and induces an acceleration or movement onto to moveable part
(Column 1, line 21-27).” (Ans. 7, last paragraph.) The Examiner then states
that “the disclosure of a single electronic circuit [is viewed] as being the
circuit which supplies both mentioned voltages.” (Id.) The Examiner
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explains that “[i]t is understood that a single circuit is fully capable of
supplying multiple voltages.” (Id.) The Examiner concludes that “the drive
of the moveable part is adapted to provide an additional parasitic
deflection.” (Ans. 8, ll. 5-6.)
Lang responds in the Reply Brief,8 that limitations [e] and [f] are not
met. In particular, Lang argues that “the cited section of Funk discloses that
the additional, arbitrarily generated acceleration which acts on the sensor is
used to obtain information about the properties of the acceleration sensor
and the downstream evaluation circuit.” (Reply Br. 3, ll. 1-4.) “Therefore,
Lang concludes, “the self test of Funk is not implemented in the evaluation
circuit.” (Id. at ll. 4-5.) Lang reiterates its arguments concerning systematic
errors and the omission of additional structures in its claimed subject matter
that would be required for the Funk system. Finally, Lang argues that “the
Answer concedes that Funk does not explicitly disclose that a single
electronic circuit generates the voltages for the sensor measurements and for
the additional, arbitrary and therefore parasitic test signal to induce
movement onto the moving part.” (Id. at ll. 18-21; underscored emphasis
added.) In Lang’s view, the Examiner’s finding that a single circuit
performs these functions is error because the possibility that a result or
characteristic may occur does not establish inherency of that result or
characteristic. (Id. at 3, ll. 23-24.)
Lang argues that the secondary references relied on in the rejections
for obviousness does not cure the deficiencies of Funk, and that claim 3 and

8 Reply Brief Pursuant to 37 C.F.R. § 41.37, filed 25 August 2008 (cited as
“Reply Br.”).
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claims 5 and 10 are “allowable for essentially the same reasons as base
claim 1.” (Br. at 11, l. 4 and the sentence bridging 11-12; Reply Br. at 4,
first and third full paragraphs.)
The critical issues in this appeal are, has Lang shown harmful error in
the Examiner’s findings that (1) Funk describes a “drive adapted to provide
at least one additional parasitic deflection” (limitation [e]) and (2) Funk
describes a self test function that evaluates the parasitic deflection in the
evaluation unit (limitation [f])?
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 232 Specification describes a mechanically-based sensor in which
the signal-generating element comprises a periodically driven movable
object, the motion of which is detected and converted into a signal. (Spec. 2,
ll. 12-15.) Figures 2A and 2B, which are reproduced below, illustrate an
embodiment of the sensor.
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{Figure 2A is said to show a top view of a rotation rate sensor;
Figure 2B is said to show a side view of the rotation rate sensor}
In this embodiment, the movable part is a flat plate 100, which is fastened to
substrate 200 via vibratory springs 120 and suspension 110, such that it can
execute rotatory vibrations in the x-y plane. (Id. at 6, ll. 25-29.) Movable
part 100, which is itself an electrode, is driven vertically in the z-direction by
drive electrodes 150, which together are said to form capacitative drive
structure 160. (Id. at 6, ll. 30-35.) The motion of movable part 100 is
detected by measuring electrodes 130, which detect the change in
capacitance as the distance between electrodes 100 and 130 changes. (Id.
at 7, ll. 12-16.) External motions of the object to which the sensor is
attached [such as an automobile] superimpose additional motions on the
disk, which can be measured and distinguished from the driven motions by
standard processing techniques.
The 232 Specification describes a way to execute a self-test function
based on the utilization of so-called “parasitic deflections” of the movable
part. The self-test function is said to evaluate “the mechanical mobility of
the sensors and the electrical signal path.” (Spec. 2, ll. 7-9; 4, ll. 3-6.)
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According to the 232 Specification, the parasitic deflections arise when a
periodic driving force is applied to the movable part due to inhomogeneities
in the sensor structure (Spec. 3, ll. 34, to 4, l. 1), “which, in general, is a
given in each micromechanical sensor” (id. at 4, ll. 1-2). The amplitude of
parasitic deflections is said to be a function of the amplitude of the drive
vibration (id. at 9, ll. 23-25), and to have “a different phase position with
respect to the deflection caused by the measuring variable” (id. at ll. 25-27).
The desired deflection signal and self-test signal are measured as
shown in Figure 4, which is reproduced below.

{Figure 4 is said to show a block diagram of the signal measurement and
analysis methods used with the sensor}
According to the 232 Specification, a drive signal 401 having variable
amplitude is applied to drive structure 160, while data on the amplitude and
phase of drive signal 401 are provided to evaluation unit 320.
(Spec. 9, 27-32.) The deflection of moving part 100 is detected as a change
in capacitance, and the deflection signal 131 is provided to evaluation
unit 320. (Id. at 9, 33, to 10, l 2.) The 232 Specification continues: “[i]n
evaluation unit 320, deflection signal 131 is evaluated for [the deflection
signal] in a phase-sensitive manner, and from this there is generated a
measuring signal 425 and a test signal 435.” (Id. at 10, ll. 4-7.)
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The 232 Specification then explains that the “quadrature,” i.e., signal
supplied by actively operated sensors that is “phase-shifted by 900 [sic: 90°]
on account of inhomogeneities of the sensor structure,” (id. at ll. l0-12) can
be separately evaluated (id. at 10, l. 27 through 11, l. 26.)
Funk
Funk, in a section headed “PRIOR ART,” describes micromechanical
rotation rate sensors that utilize the Coriolis effect. (Funk, col. 1, ll. 9-14.)
The sensors are said to be used in used in motor vehicles to help control
“vehicle dynamics.” (Id. at ll. 10-11.) In Funk’s words:
A rotation rate sensor has one or more seismic masses, which,
by means of a voltage generated in an electronic circuit is
excited to perform mechanical vibration. This vibration acts on
one or more acceleration sensors, which upon a rotation of the
system measure the Coriolis acceleration acting on the vibrating
masses. From the excitation and acceleration signal,,the rotation
rate of the system can be determined with the aid of an
evaluation circuit.
(Funk, col. 1, ll. 13-20.)
Funk continues, “[a]n additional electrical test signal, which is fed to the
acceleration sensor or sensors, can serve to cause an additional, arbitrarily
generated acceleration to act on the sensor. Thus information about the
properties of the acceleration sensor and the downstream evaluation circuit,
for instance, can be obtained.” (Id. at 21-26.) Funk teaches further that
systematic errors, which are said to be exhibited by rotation rate sensors, can
also be detected and accordingly “minimized by a suitable choice of
evaluation methods.” (Id. at ll. 26-30.)
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We do not find it necessary to discuss the teachings of Miekley or
Pfaff.
C. Discussion
As the Appellant, Lang bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Gechter v. Davidson,
116 F.3d 1454, 1460 (Fed. Cir. 1997) ("[W]e expect that the Board's
anticipation analysis be conducted on a limitation by limitation basis, with
specific fact findings for each contested limitation and satisfactory
explanations for such findings.") (emphasis added). “A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii) (2004)
(last sentence).
Lang’s arguments in the Principal Brief on Appeal against the
Examiner’s rejections focus on claim 1. (Br. 8-14.) Indeed, as Lang does
not present substantively distinct arguments for the patentability of the
claims rejected over the combined teachings of Funk and Miekley or Pfaff,
all claims stand or fall with claim 1.
More particularly, Lang does not dispute that Funk teaches
limitations [a] through [d]; nor does Lang address limitation [g] regarding
the amplitude of parasitic deflection (except indirectly, by arguing that Funk
does not describe parasitic deflection). As for limitation [e] (drive adapted
to provide parasitic deflection), Lang urges that:
[t]he Final Office Action conclusorily asserts that the feature
pertaining to “the drive adapted to provide at least one
additional, parasitic deflection, the self-test function
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implemented by valuing the parasitic deflection in the
evaluation unit” is disclosed by the text at column 1
(lines 10-31). It is respectfully submitted, however, that
nowhere in this cited section – nor anywhere else in the Funk
reference, is this feature identically disclosed (nor even
suggested). In the claimed subject matter, “[t]he movable part,
in this context, has its own drive.” (Substitute Specification,
p. 1, ll. 9-10).
(Br. 9, first full paragraph.)
The first two sentences of the argument just quoted merely recite the
text of claim limitations [e] and [f] verbatim and deny that Funk teaches
these elements. Such a statement does not constitute an argument for
patentability under the regulations governing appeals to the Board. Rather,
it invites the Board to analyze, in the first instance, the teachings of the
reference. The last sentence does not distinguish over the sensor described
by Funk in column 1, which provides a drive to the “seismic mass,” which is
a movable part.
Lang proceeds to cite disclosures in the 232 Specification describing
the alleged benefits of the design. These secondary arguments, that “this
design”9 (Br. 9, l. 12) results in a “self-test signal [that] may have no
temperature effects or aging effects” (id. at ll.12-16, citing
the 232 Specification at 4, ll. 29-30) improperly seeks to import a limitation
from an embodiment described in the specification into the claims. The
conditional term “may” indicates that the absence of temperature or aging
effects is not inevitable. Nor has Lang presented argument supported by
credible evidence that the absence of such effects is inherent in all sensors

9 Apparently referring to the driven parasitic deflection recited in
limitation [e].
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within the scope of claim 1. The combination of the virtual absence of
recited structure and the reliance on functional limitations to define the
claimed sensors mandates a comprehensive explanation or demonstration
that such properties are inherent. As Lang has failed to provide either, we
decline to read those limitations from the specification into the claims.
Similarly, Lang’s argument that Funk requires additional structures,
whereas “the claimed subject matter omits such additional structures” (Br. 9,
penultimate paragraph), is without merit. Claim 1 uses the transitional term
“comprising” to limit the sensor. The term “comprising” is open to
additional elements that are not recited in the claim.
Lang did not raise any further substantive arguments in its Principal
Brief on Appeal. However, the Examiner, for the first time, argued in the
Examiner’s Answer that “Funk further discloses that an additional, arbitrary
and therefore parasitic, test signal is supplied to the sensors . . . The
Examiner views the disclosure of a single electronic circuit as being the
circuit which supplies both mentioned voltages.” (Ans. 7, last paragraph.)
We therefore consider Lang’s new arguments in the Reply Brief.
In the Reply Brief, Lang argues that “the self-test of Funk is not
implemented in the evaluation circuit” because the additional arbitrarily
generated acceleration of the sensor “is used to obtain information about the
properties of the acceleration sensor and the downstream evaluation unit.”
(Reply Br. 3, ll. 2-5.) Lang, however, has not directed our attention to any
definition in the 232 Specification that limits the term “evaluation unit” as
that term is used in claim 1. The 232 Specification does teach that the test
function values the “mechanical mobility of sensors and the electrical signal
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path.” (Spec. 2, ll. 8-9.) The only function attributed to the “evaluation
unit” in claim 1 is the “valuing” of the parasitic deflections. Lang does not
explain why its claim language does not read on—i.e., encompass—the
circuitry described by Funk to evaluate the “parasitic test signal.”
Finally, Lang argues that “the Answer concedes that Funk does not
explicitly disclose that a single electronic circuit generates the voltages for
the sensor measurements and for the additional, arbitrary and therefore
parasitic test signal to induce movement onto the moving part. ‘The
Examiner views the disclosure of a single electronic circuit as being the
circuit which supplies both mentioned voltages’ (See Examiner[’]s Answer
at p. 7).” (Reply Br. 3, ll. 18-22; emphasis added.) Lang argues that the
Examiner’s finding that a single circuit performs these functions is error
because the possibility that a result or characteristic may occur does not
establish inherency of that result or characteristic. (Id. at 3, ll. 23-24.)
We understand Lang to agree with the Examiner that Funk does
provide a “parasitic test signal,” but to dispute that the same electrical circuit
that generates the voltage that excites the mechanical vibrations also
provides the parasitic test signal. Lang does not explain, however, why a
person having ordinary skill in the art would not have understood from
Funk’s express disclosure of a single driving circuit that that circuit would
not also provide the parasitic test signal. In effect, Lang has merely invited
the Board to read Funk, make findings of fact as to what Funk teaches the
person having ordinary skill in the art, and to reach Lang’s proposed
conclusion. While it is true that the Examiner has “merely” pointed to a
portion of Funk and asserted that that portion discloses an embodiment of
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the claimed sensor, that portion is only 21 lines long. Moreover, Funk
describes a rotation rate sensor that operates on similar principles as the
sensor described and claimed by Lang—and Funk is assigned to the same
assignee as Lang. Lang is therefore ideally situated to explain precisely in
what ways the sensors described by Funk that the Examiner has relied on
differ from sensors covered by claim 1. Lang, however, has failed to carry
its burden of production and persuasion.
We conclude that Lang has failed to show reversible error in the
finding that the subject matter of claim 1 is anticipated by Funk. As no
distinct arguments have been advanced regarding harmful error in the
rejections of the remaining claims, we AFFIRM the rejections of all claims.
D. Order
We AFFIRM the rejection of claims 1, 4, 6-9, and 11-13 under
35 U.S.C. § 102(b) in view of Funk.
We AFFIRM the rejection of claim 3 under 35 U.S.C. § 103(a) in
view of the combined teachings of Funk and Miekley.
We AFFIRM the rejection of claims 5 and 10 under
35 U.S.C. § 103(a) in view of the combined teachings of Funk and Pfaff..
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

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tc

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