Ex Parte N¿mmer et al

Patent Trial and Appeal Board

Aug 10, 2017

12808310 (P.T.A.B. Aug. 10, 2017)

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.
12/808,310 06/15/2010 Franz N^mmer NOMM3002/TJM/TL 2328
23364 7590
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
TRAN, BINH BACH THANH
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
08/14/2017 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):
MAIL @B ACONTHOMAS .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANZ NOMMER and ANTONIUS ROSSBERGER1
Appeal 2016-003021
Application 12/808,310
Technology Center 2800
Before BRUCE R. WINSOR, JON M. JURGOVAN, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 26—33, 35, 56, and 58—65, all of the pending claims
of the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is GIESECKE &
DEVRIENT GMBH. Appeal Br. 2.
Appeal 2016-003021
Application 12/808,310
STATEMENT OF THE CASE
According to Appellants, the application relates to “a method for
sealing a housing assembled from several housing members against the
penetration of dust which allows reliable sealing even in the case of complex
contact geometries.” Spec. 13.2 Claims 58, 61, and 62 are independent and
are reproduced below:
58. A method for sealing against the penetration of dust
for a housing comprising several housing members and in which
there is received a sensor for checking value documents, wherein
at least two of the housing members that abut are mutually sealed
by a sealing compound, comprising the steps of:
assembling and fixing several of the housing members for
forming the housing or a partial housing such that between the
housing members to be mutually sealed there is formed at least
one closed channel which has at least one inlet opening for the
sealing compound, and checking a functional capability of the
sensor received in the housing or partial housing and/or of
components of the sensor that are received in the housing or
partial housing, and
filling the at least one closed channel with the sealing
compound through the at least one inlet opening, wherein the
filling of the channel with the sealing compound is only effected
after a successful function check of the sensor.
61. A method for sealing against the penetration of dust
for a housing comprising several housing members and in which
there is received a sensor for checking value documents, wherein
2 This Decision refers to: (1) Appellants’ Specification filed June 15, 2010
and subsequent amendments on December 27, 2012 and November 20, 2013
(Spec.); (2) the Final Office Action (Final Act.) mailed March 23, 2015; (3)
the Appeal Brief (Appeal Br.) filed June 17, 2015; (4) the Examiner’s
Answer (Ans.) mailed November 24, 2015 and (5) the Reply Brief (Reply
Br.) filed January 21, 2016.
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Application 12/808,310
at least two of the housing members that abut are mutually sealed
by a sealing compound, comprising the steps of:
assembling and fixing several of the housing members for
forming the housing or a partial housing such that between the
housing members to be mutually sealed there is formed at least
one closed channel which has at least one inlet opening for the
sealing compound,
checking a functional capability of the sensor received in
the housing or partial housing and/or of components of the sensor
that are received in the housing or partial housing, wherein if the
functional capability of the sensor turns out to be negative,
disassembling the housing or partial housing and repeating the
assembling and fixing of the housing members, and
only if the functional capability check of the sensor is
successful, filling the at least one closed channel with the sealing
compound through the at least one inlet opening.
62. A method for sealing against the penetration of dust
for a housing comprising several housing members and in which
there is received a sensor for checking value documents, wherein
at least two of the housing members that abut are mutually sealed
by a sealing compound, comprising the steps of:
assembling and fixing several of the housing members for
forming the housing such that between the housing members to
be mutually sealed there is formed at least one closed channel
which has at least one inlet opening for the sealing compound,
wherein the assembled and fixed housing members form an
enclosed housing in which there is received a sensor,
checking a functional capability of the sensor received in
the enclosed housing and/or of components of the sensor that are
received in the enclosed housing, wherein if the functional
capability of the sensor turns out to be negative, disassembling
the enclosed housing and repeating the assembling and fixing of
the housing members, and
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Application 12/808,310
only if the functional capability check of the sensor is
successful, filling the at least one closed channel with the sealing
compound through the at least one inlet opening.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Blaich
Tmamura et al.
(“Imamura”)
Ironmonger et al.
(“Ironmonger”)
Ehrhardt et al.
(“Ehrhardt”)
US 3,258,369
US 5,383,034
GB2 115 084 A
June 28, 1966
Jan. 17, 1995
Sept. 1, 1983
DE 10 2004 050 437 Al Apr. 20, 2006
REJECTIONS
(1) Claims 26—32, 35, 56, 58, 59, and 61—65 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Imamura and
Ironmonger. Final Act. 3—13.
(2) Claim 33 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Imamura, Ironmonger, and Blaich.
Final Act. 13.
(3) Claim 60 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Imamura, Ironmonger, and Ehrhardt.
Final Act. 13—14.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellants. Arguments not made are waived.
See MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(1).
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ISSUES
1. Does the Examiner err in finding that independent claim 58 is
obvious in view of the teachings and suggestions of Imamura and
Ironmonger?
2. Does the Examiner err in finding the combination of Imamura and
Ironmonger teaches or suggests “filling the at least one closed channel with
the sealing compound through the at least one inlet opening, wherein the
filling of the channel with the sealing compound is only effected after a
successful function check of the sensor,” as recited in claim 58?
3. Does the Examiner err in finding the combination of Imamura and
Ironmonger teaches or suggests “checking a functional capability of the
sensor received in the housing or partial housing,” as recited in claim 61?
4. Does the Examiner err in finding the combination of Imamura and
Ironmonger teaches or suggests “checking a functional capability of the
sensor received in the enclosed housing,” as recited in claim 62?
CONTENTIONS AND DISCUSSION
Claim 58
We disagree with Appellants’ contentions with respect to independent
claim 58, and we adopt as our own (1) the Examiner’s findings and
reasoning set forth in the Office Action from which this appeal is taken
(Final Act. 3—5) and (2) the Examiner’s reasoning set forth in the
Examiner’s Answer (Ans. 2—7). We highlight the following points for
emphasis.
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Application 12/808,310
The Examiner finds claim 58 is unpatentable over the combination of
Tmamura and Ironmonger. Final Act. 3—5; Ans. 2—7.
Appellants argue,
Applicants do not observe any articulated reason with some
rational underpinning that establishes how or why the skilled
person would have been led or motivated to modify the method
for providing an image sensor of Imamura in accordance with
the teachings of Ironmonger to further include using the groove
and inlet disclosed in Ironmonger.
Appeal Br. 11.
We are not persuaded by Appellants’ argument because the Examiner
has provided reasoning with rational underpinnings as a reason to combine
the teachings of Imamura and Ironmonger, namely, “[i]t would have been
obvious to one of ordinary skill in the art at the time the invention was made
to modify Imamura’s sealing groove by adding an inlet opening, as
suggested by Ironmonger, in order to inject the sealing compound into the
groove after abutting the housing parts.” Final Act. 5; see In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
[require] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”) (cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellants also fail to
provide any evidence demonstrating the Examiner’s proffered combination
would have been “uniquely challenging or difficult for one of ordinary skill
in the artf Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
Appellants further argue “the Examiner has not provided any evidence
in any of the prior art references” to support the Examiner’s combination of
the teachings of Imamura and Ironmonger. Appeal Br. 11—12. We find this
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argument unpersuasive of Examiner error. The Federal Circuit has “[held]
that while an analysis of obviousness always depends on evidence that
supports the required Graham factual findings, 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 or expert
opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009); see also Natl Steel Car, Ltd. v. Canadian Pacific Ry., Ltd.,
357 F.3d 1319, 1337 (Fed. Cir. 2004) (“It has long been the law that the
motivation to combine need not be found in prior art references, but equally
can be found ‘in the knowledge generally available to one of ordinary skill
in the art.’” (quoting In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992))).
Accordingly, because the Examiner has provided a reason to combine the
cited references and because that reason need not be explicitly found in any
reference, we find Appellants’ argument unpersuasive of error.
Appellants argue “the proposed modification would have changed the
principle of operation of Imamura” and rendered it “unsatisfactory for its
intended purpose.” Appeal Br. 12. Specifically, they argue
Imamura is clearly only directed to a method for providing an
image sensor that prevents adhesive from flowing onto the
outer and/or inner walls by using first and second grooves, so
that excess adhesive overflows out of the first groove and into
the second groove. In view of such disclosure, Applicants
submit that the skilled person would have appreciated that
changing the operation of the grooves so that one of the grooves
is enclosed, as taught in Ironmonger, would have prevented any
excess adhesive from overflowing from the enclosed groove to
the second groove which would have changed the principle of
operation of the teachings of Imamura.
Id.
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We disagree with Appellants’ reading of the references. First, we
note that Imamura itself teaches enclosing grooves 1 and 2 by glass covering
12. See Imamura Fig. 3. In fact, it is the step of adhering glass covering 12
to frame 11 that causes the excess adhesive to flow onto the outer and/or
inner walls of the frame 11 causing damage or contamination. Imamura 1:
26—32. It is this flow of excess adhesive onto the frame that Imamura seeks
to prevent. Imamura 1: 40-45. Imamura thus teaches to add second groove
2 to catch any adhesive that overflows out of the first groove 1 after the glass
covering 12 is placed and pressed on the top, i.e., after the grooves are
enclosed. Imamura 3: 30-38.
We therefore disagree with Appellants’ assertion that combining the
teachings of the references would have changed the operation of the grooves
in Imamura so that one of the grooves is enclosed because Imamura itself
teaches enclosing both grooves 1 and 2 using glass covering 12. Id.
Furthermore, Appellants fail to provide sufficient evidence that enclosing
both grooves with glass covering 12, “would have prevented any excess
adhesive from overflowing from the enclosed groove to the second groove”
(Appeal Br. 12), particularly in view of Imamura’s teaching that groove 2
collects overflow adhesive from groove 1 after both grooves are enclosed,
i.e., after the glass covering 12 is placed and pressed on the top (Imamura 3:
30-38). Accordingly, we find Appellants’ argument concerning the
incompatibility of the structures to be unpersuasive in fact.
Appellants argue the combination of Imamura and Ironmonger does
not teach filling the channel only after sensor function check. Appeal
Br. 14. Appellants further argue the Examiner fails to provide the necessary
evidence to support modification of the combination. Appeal Br. 14—15.
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We find these arguments unpersuasive. Rather than relying on the
disclosures of Tmamura and Ironmonger to teach the claimed order, the
Examiner, citing KSR, indicates that it would have been obvious to try the
particular order suggested by the claim. The Examiner states
[the] “fact that claimed combination of elements was “obvious
to try” might show that such combination was obvious under 35
U.S.C. §103, since, if there is design need or market pressure to
solve problem, and there are finite number of identified,
predictable solution, person of ordinary skill in art has good
reason to pursue known options within his or her technical
grasp, and if this leads to anticipated success, it is likely product
of ordinary skill and common sense, not innovation.”
Ans. 5. The Examiner further concludes “[c]hecking a component before
placing it into a housing is a[] common procedure every technician would do
to make sure a working component is selected before assembling it into an
electronic device.” Ans. 7.
We agree with the Examiner that modification of the cited
combination to fill the channel after checking the function of the sensor
would have been well within the ordinary level of skill of an artisan, because
there are only two possible orders for performing the recited functions;
filling the channel after checking sensor function or before checking sensor
function.
Our reviewing court guides: Where “the problem is known, the
possible approaches to solving the problem are known and finite, and the
solution is predictable through use of a known option,” a solution that is
obvious to try may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544
F.3d 1341, 1351 (Fed. Cir. 2008), citing KSR, 550 U.S. at 420. See also
Ortho-McNeil Pharm., Inc. v. Mylan Labs. Inc., 520 F.3d 1358, 1364
(stating the number of options must be “small or easily traversed.”).
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Here, because there are only two possible sequences for performing
the respective functions of checking a functional capability of the sensor and
filling the at least one closed channel with the sealing compound, and
because we agree with the Examiner that an artisan would have had a reason
to check a component “before assembling it into an electronic device,” such
as a housing, we conclude the Examiner’s proffered modification would
have been “obvious to try.” Ans. 7.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 58. Dependent claims 26—33, 35, 56, 58—60, and 63—65 are not argued
separately, and thus fall with claim 58. Appeal Br. 17.
Claim 61
The Examiner finds independent claim 61 is obvious over the
combination of Tmamura and Ironmonger. Final Act. 8—10.
Appellants argue the Examiner’s finding is erroneous because the
cited combination fails to teach
checking a functional capability of the sensor received in
the housing or partial housing and/or of components of the
sensor that are received in the housing or partial housing,
wherein if the functional capability of the sensor turns out to be
negative, disassembling the housing or partial housing and
repeating the assembling and fixing of the housing members,
as recited in claim 61. Appeal Br. 18.
The Examiner finds the limitation would have been obvious over the
cited combination, explaining
It is a common procedure that every technician would do to
verify that the assembled device is working properly, such as
running the first scanning, before shipping to customer. If the
device was not working properly, the device would be
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Application 12/808,310
disassembled to replace the malfunctioning components. Note
that “A person of ordinary skill in the art is also a person of
ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
Inc., supra, at 1397. “[I]n many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like
pieces of a puzzle.” Id. at 420. Office personnel may also take
into account “the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418.
Ans. 8—9.
We agree with and adopt the Examiner’s findings as our own. Final
Act. 8—10; Ans. 8—9. We conclude one skilled in the art would have found it
obvious to disassemble the housing or partially-assembled housing if the
sensor stopped functioning in order to inspect and repair the sensor and then
to repeat the assembling and fixing of the housing members, after repair of
the sensor, in order to return the apparatus to normal function. Therefore,
we find Appellants’ argument unpersuasive of error.
We, thus, sustain the Examiner’s obviousness rejection of claim 61.
Claim 62
The Examiner finds independent claim 62 is obvious over the
combination of Imamura and Ironmonger. Final Act. 10—12.
Appellants argue the Examiner’s finding is erroneous because the
cited combination fails to teach
checking a functional capability of the sensor received in
the enclosed housing and/or of components of the sensor that
are received in the enclosed housing, wherein if the functional
capability of the sensor turns out to be negative, disassembling
the enclosed housing and repeating the assembling and fixing of
the housing members,
as recited in claim 62. Appeal Br. 18.
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The difference between the argued limitation of claim 62 and claim 61
is claim 62 recites that the housing is an “enclosed housing.” Here also, we
agree with and adopt the Examiner’s findings as our own. Final Act. 8—10;
Ans. 8—9. We conclude one skilled in the art would have found it obvious to
disassemble the enclosed housing if the sensor stopped functioning in order
to inspect and repair the sensor and then to repeat the assembling and fixing
of the housing members, after repair of the sensor, in order to return the
apparatus to normal function. Therefore, we find Appellants’ argument
unpersuasive of error.
We, thus, sustain the Examiner’s obviousness rejection of claim 62.
DECISION
We affirm the Examiner’s decision rejecting claims 26—33, 35, 56,
and 58—65 under 35 U.S.C. § 103(a).
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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