Ex Parte Proksch et al

Board of Patent Appeals and Interferences

Jul 21, 2011

10016475 (B.P.A.I. Jul. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROGER PROKSCH, JASON CLEVELAND, and
DAN BOCEK
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Appeal 2009-013068
Application 10/016,475
Technology Center 2800
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-3 and 62-69.
We affirm.

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STATEMENT OF THE CASE
Appellants describe their invention as follows:
A linear variable transformer (LVDT) for use in a
transducer. The LVDT has a non-ferromagnetic core which
minimizes or reduces Barkhausen noise and thereby improve
[sic] the sensitivity of the resulting measurements. In one
aspect, this system may be used in an atomic force microscope.
(Abstract).
Claims 1 and 62 are representative:1
1. A displacement transducer comprising: first and second
non-ferromagnetic coil forms with a common axis, each of said
first and second coil forms wound with at least one winding;
an outside diameter of the first form and said at least one
winding being smaller than an inside diameter of the second
form so that said first and second forms may be displaced
relative to each other with the first form inside the second form,
one of the coil forms being movable and the other coil form
being stationary;
the at least one winding on the movable form
magnetically coupled to the at least one winding on the

1 Appellants separately argue only claims 1 and 62. See, e.g., App. Br. 10
(stating, “[t]he remaining claims should be allowable for similar reasons”).
Appellants nominally argue independent claim 69 separately from claims 1
and 62 (App. Br. 10-11), but these arguments merely constitute a reiteration
of the claim’s language coupled with a summary allegation that the cited art
does not teach the language. See 37 C.F.R. § 41.37(c)(1)(vii) (noting, “[a]
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim”).
Accordingly, we select claims 1 and 62 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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stationary form in the absence of any ferromagnetic element
inductively coupling the windings; and
electronic circuitry generating a signal responsive to
relative displacements between the coil forms in the range of
microns or less and having an RMS [root-mean-square] noise
representing less than 2.1 nm of movement between the coils.
62. A transducer as in claim 1, wherein said first coil form
and said second core2 form collectively means for reducing
Barkhausen noise in the displacement transducer.

ARGUMENTS AND ANALYSIS
Claims 1-3 and 62-69 stand rejected under 35 U.S.C. § 103(a) as
obvious over Neff (US 2,452,862; issued Nov. 2, 1948) (“Neff ‘862”) in
view of Applicants’ admitted prior art (AAPA) and official notice of
common knowledge in the art. The Examiner relies on the following
findings: Neff ‘862 discloses linear variable transformers that include coil
forms (Ans. 5). Neff ‘862, via its incorporation of US 2,364,237 (also
issued to Neff; Dec. 5, 1944) (Neff ‘237), discloses the claim limitation of
“electronic circuitry generating a signal responsive to relative displacements

2 Appellants inconsistently refer to the claimed non-ferromagnetic
components, first as “first and second coil forms” (e.g., claim 1), but
alternatively as a first coil form and a second “core” (e.g., claims 62 and 66).
Because the Examiner has not issued an indefiniteness rejection under
35 U.S.C. § 112, ¶ 2 for claim 62 having improper antecedent basis, we
provisionally interpret claim 62 as intending to recite first and second coil
forms – not a second core.
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between the coil forms in the range of microns or less” (Ans. 5-6 and 10-11).
“Applicants admitted prior art teaches to remove Barkhausen noise from the
output signal by various means,” including the use of air core or non-
ferromagnetic coil forms (Ans. 6, (citing Spec. 5-6)). The coil forms of Neff
‘862 were either inherently made from non-ferromagnetic material, or
alternatively, it would have at least been obvious to use non-ferromagnetic
forms (Ans. 6). The Examiner cites seven additional references to support
his taking of official notice that it was common knowledge in the art to
provide non-ferromagnetic coil forms. See Ans. 4 and 8-9 for the details of
these additional references.
Appellants contend, inter alia, that the Examiner’s rejection is based
upon impermissible hindsight reasoning (e.g., Reply Br. 4). Specifically,
Appellants contend the Examiner misinterprets their Specification in finding
it includes admissions that it was known to remove Barkhausen noise from
the output signal by various means, including the use of air core or non-
ferromagnetic coil forms (Reply Br. 4). Appellants contend that reducing
Barkhausen noise “is the whole subject of the invention. . . . No one has
suggested it prior to [Appellants’] invention” (id.). Restated, Appellants
contend that their Specification contains no admission that it was known
how to achieve RMS noise representing less than 2.1 nm using transducers
having non-ferromagnetic coil forms (Reply Br. 1, 4).

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ANALYSIS
Claim 1
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). In the present appeal, we must first interpret the last limitation of
representative claim 1: “electronic circuitry generating a signal responsive to
relative displacements between the coil forms in the range of microns or less
and having an RMS [root-mean-square] noise representing less than 2.1 nm
of movement between the coils.”
We note that claim 1, having a preamble that recites “[a] displacement
transducer comprising,” is unambiguously an apparatus claim. As such, the
last limitation cannot be interpreted to be a method step of actually
generating a signal responsive to the recited movement and having the
recited noise. Rather, this limitation must be interpreted as reciting
electronic circuitry that has an associated functionality of being capable of
“generating a signal responsive to relative displacements between the coil
forms in the range of microns or less and having an RMS [root-mean-
square] noise representing less than 2.1 nm of movement between the coils,”
as recited by claim 1, in the event that such relative displacements between
the two coil forms were actually achieved. That is, nothing in claim 1
actually requires that the two coil forms, themselves, be capable of any
particular fine range of relative movement – just that the electronic circuitry
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used in conjunction with the two recited coil forms be sensitive enough to
satisfy the recited function should such a fine movement occur.
Assuming for a moment, that it were known, or at least obvious, to
form displacement transducers with first and second non-ferromagnetic coil
forms as recited in the first three limitations of claim 1, no evidence
indicates that the further inclusion of the last limitation would cause claim 1
to be novel or unobvious. Appellants do not allege that they have invented
some improved electronic circuitry that can better generate a signal when
coils move a relative range of less than 2.1 nm (cf. Spec.). Rather,
Appellants indicate that their invention relates to the ability to more
accurately determine two coils’ relative movements with conventional
electronic circuitry by using two non-ferromagnetic coil forms, and that this
new ability is due to Appellants’ discovery that non-ferromagnetic coil
forms produce lower noise levels in the conventional electronic circuitry
(see e.g., Spec. 1-7; Reply Br. 4 (noting that conventional electronic
circuitry could generate signals from air cores with an RMS noise level of
1.9 nm). As such, the inclusion of conventional electronic circuitry having
the claimed level of sensitivity would merely constitute the use of a known
component for its intended purpose. Moreover, it would have been obvious
to use highly sensitive electronic circuitry, even in displacement transducer
applications where the circuitry’s sensitivity exceeds the coil forms’
movement sensitivity, to ensure that the circuitry is not the limiting aspect of
the system.
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Turning, then, to the question of whether non-ferromagnetic coil
forms were known, Appellants various arguments include the assertion that
differences exist between air cores and non-ferromagnetic coil forms (e.g.,
App. Br. 5 (wherein Appellants argue that an air core cannot be deemed to
constitute a form)). We understand Appellants’ arguments to be based upon
the implicit position that the terms “core” and “coil form” are allegedly
synonymous. See e.g., Appellants’ Figure 2 wherein the non-ferromagnetic
coil form 14 is a solid cylindrical core. That is, we understand Appellants to
be arguing that the Examiner has failed to provide evidence that it was
known to make a core from non-ferromagnetic material (instead of making a
core from iron or air).
Neff ‘862 demonstrates, though, that a coil form does not necessarily
have to be in the shape of a core. See, e.g., Neff ‘862, col. 1, ll. 41-53
(indicating coil forms 2, 6 are separate and distinct from Figure 1’s iron core
7 and Figure 2’s air core 8). Furthermore, the present rejection is premised
upon the position that it would have been either inherent, or at least obvious,
to employ non-ferromagnetic material for the coil forms 2, 6 of Neff ‘862 –
not for Neff’s iron core 7 or air core 8 (e.g., Ans. 5-6, 8-9). Appellants have
not provided any arguments, much less evidence, regarding what was known
about the compositions of coil forms that are separate and distinct from
cores.
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Claim 62
Appellants contend that nothing in the cited prior art teaches or
suggests that the cited prior art actually reduces the Barkhausen noise (App.
Br. 9-10).3 This argument is not persuasive. Appellants’ patent application
is specifically predicated on their finding that coil forms composed of a non-
ferromagnetic material will exhibit reduced Barkhausen noise relative to if
the coil forms are composed of a ferromagnetic material (Abstract). As
such, by establishing a prima facie showing that it was known to make a
displacement transducer with non-ferromagnetic first and second coil forms,
the Examiner has established that the first and second coil forms collectively
form means for reducing Barkhausen noise relative to if they were formed of
a ferromagnetic material.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of representative claims 1 and 62.
Accordingly, we will sustain the Examiner’s rejection of those claims, as
well as the rejection of claims 2, 3, and 63-69, which were not separately
argued.

3 Neither claim 62, nor Appellants’ arguments, alleges any objective
baseline relative to which the Barkhausen noise must be reduced in order to
fall within the claim’s metes and bounds.
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DECISION
The Examiner’s decision rejecting claims 1-3 and 62-69 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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