Ex parte Schmidt

Board of Patent Appeals and Interferences

Sep 10, 1997

08069931 (B.P.A.I. Sep. 10, 1997)

Application for patent filed May 28, 1993.1
1
Paper No. 19
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte KLAUS SCHMIDT
______________
Appeal No. 97-0894
Application 08/069,931 1
_______________
ON BRIEF
_______________
Before THOMAS, FLEMING and TORCZON, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1, 3, 4, 7 and 10, after having
canceled claim 2. The examiner has objected to claims 5, 6, 8
and 9, but page 2 of the final rejection indicates that they
would be allowable if rewritten in independent form including all
the limitations of the base claim and any intervening claims.
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Representative claim 1 is reproduced below:
1. A measurement device for producing an electrical
measurement signal from an object without contacting the object
physically, said measurement device comprising a one-piece
injection molded magnetizable plastic part, said plastic part
including a magnetizable plastic coil body, and at least one coil
arranged on the magnetizable plastic coil body and through which
an electric current flows during production of the electrical
measurement signal.
The following references are relied on by the examiner:
Tomczak et al. (Tomczak) 4,024,484 May 17, 1977
Anderson 4,256,986 Mar. 17, 1981
Mueller et al. (Mueller) 5,239,204 Aug. 24, 1993
(filed Feb. 5, 1991)
Claims 1, 3, 4, 7 and 10 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness, the examiner relies upon the
collective teachings of Tomczak in view of Mueller and Anderson.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
OPINION
As embellished here, we sustain the prior art rejection of
all claims on appeal for the reasons generally set forth by the
examiner in the statement of the rejection at page 3 of the
answer.
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Generally speaking, appellant has collectively considered
the teachings of Tomczak and Mueller together but considered the
teachings of Anderson separately. Thus, appellant has failed to
consider collectively the teachings of the three references
relied upon by the examiner. Moreover, appellant’s analytical
approach is to initially argue against the rejection of
comparatively detailed independent claim 7 first and then the
features of dependent claims 3 and 4, which depend from separate
independent claim 1. Dependent claim 10 is not argued.
Appellant’s arguments recognize that Tomczak’s coil body or
bobbin 52 is plastic and of one-piece construction. Contrary to
that which is argued by appellant, Tomczak’s device does not
contact physically the object to be measured, which is the vacuum
entering through nipple 50 for operation within the vacuum
chamber 24 to the left of Figure 2. Although the examiner
correctly recognizes that the molded plastic bobbin 52 is not
specifically taught to be injection molded, Tomczak is merely
silent as to the method of manufacturing this bobbin. However,
the enclosure 60, also a molded plastic element which encloses
the bobbin 52 in Figure 2, is taught at column 3, lines 25 to 27
to be injection-molded around the coil 54 and its bobbin 52.
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Thus, such a manufacturing approach would have been obviously
suggested to the artisan to use to manufacture the bobbin 52.
The examiner’s position also correctly recognizes that
Tomczak fails to disclose that the plastic bobbin 52 is filled
with a weakly magnetizable material. As evidence of obviousness
in the art, the examiner points to Mueller as suggesting such in
the fabrication of his electronic proximity switch coil bobbin
29, which is taught to be made out of synthetic resin. As
indicated at the end of the abstract in this reference, in the
paragraph bridging columns 1 and 2, as well as in the paragraph
bridging columns 3 and 4, the examiner notes that the teaching at
these locations is to enrich the synthetic resin formed coil
bobbin 29 with a “pulverulent permeable material 34" in Figure 5
“whereby the inductance of the resonant circuit coil 16 is
increased.”
It is this approach which allows Mueller’s invention to
fulfill the manufacturing advantages of the invention as set
forth beginning at column 2, line 3 of Mueller. As such, we
agree with the examiner’s observation that it would have been
obvious for the artisan to have utilized this manufacturing
technique in Mueller to manufacture the coil body/bobbin 52 in
Tomczak.
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The examiner’s further reliance upon Anderson further
buttresses the same conclusion. This can be seen by study of
the embodiments in Figures 3 and 4 in Anderson which show the
magnetic sleeve 31 in Figure 3 and the magnetic sleeve 41 in
Figure 4. Magnetic sleeve 31 is of one-piece construction and
has one end formed as a coil bobbin. The coil 46 in the Figure 4
embodiment is molded within the magnetic sleeve 41. The discus-
sion in columns 2 through 4 of this reference indicates that the
magnetic sleeve/coil bobbin is formed by injection molding
techniques into which magnetic materials have been placed,
which are clearly magnetizable.
In view of this complete analysis of the three references
relied upon by the examiner, we agree with the examiner’s
conclusion that the subject matter of independent claim 1 on
appeal would have been obvious to the artisan within 35 U.S.C.
§ 103. To the extent broadly recited in dependent claim 3 on
appeal, the electrical terminals 56, 58 in Tomczak’s single-
piece molded plastic bobbin 52 would, as argued by the examiner,
are “mounted” in teh bobbin 52. Additional teachings as to
mounting elements apply to the threaded face 39 in the Figure 3
embodiment of Anderson in addition to the flange areas 30, 31 in
Figure 5 of Mueller which are stated at column 4, lines 7 and 8
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to function as mounting means. Finally, as to dependent claim 4,
the teachings in Anderson indicate that the thermoplastic
binder/resin is a polyamide resin filled with a magnetizable
material as indicated at column 4, lines 18 to 20.
Both independent claims 1 and 7 contain the open-ended term
“comprising” at the end of the preamble which clearly indicates
that other elements than those recited in the body of the claim
may be encompassed within the teachings of the references relied
upon by the examiner. The “included” and “consisting of”
language of independent claims 1 and 7 on appeal are met by the
reasoning advanced by the examiner, as embellished above.
From the collective teachings of the references it may be
seen that each of them function passively, in a non-contact
manner, and contain overlapping, common teachings of measurement
devices which produce an electric current output as a measurement
signal. Each of them also in some manner teaches some form of
coil bobbin/body of single-piece construction to which is
attached a coil for achieving this measurement purpose associated
with magnetic principles. Tomczak does not specifically teach,
but clearly suggests that the bobbin 52 in this reference may be
made by injection molding. This feature is, however,
specifically taught in Anderson and would have been clearly
Appeal No. 97-0894
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applicable to the manufacturing of the synthetic resin in
Mueller. These later two references both teach the plastic
substance of which the coil bobbin/body is made and each of these
references includes a magnetizable material, where Mueller
specifically teaches that the material is impregnated within the
plastic resin body to increase the inductance of an associated
electric coil. The magnetic material within each of Mueller
and Anderson is clearly “magnetizable” within the context of the
claims on appeal and is specifically taught to be magnetized
in the latter portions of column 4 of Anderson during its
manufacturing process. During use, it is apparent that the
artisan would have appreciated from the mere use of the coil
being activated in the claims on appeal by a current flowing
therethrough that the magnetizable material would have been
magnetized. Finally, each of the references teaches in some
manner the claimed mounting element.
The references relied upon clearly show the same or similar
features, used in the same manner and for the same purpose.
In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991).
Turning to appellant’s arguments, we note that the test for
obviousness is not whether the features of the secondary
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reference may be bodily incorporated into the structure of the
primary reference, and it is not that the claimed invention must
be expressly suggested in any one or all of the references.
Rather the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Note also In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991). The above-noted case law clearly addresses the
essence of appellant’s arguments and argumentative approaches and
the earlier noted consideration of the prior art addresses many
of the specific arguments raised by appellant. It is thus
apparent that the examiner has not exercised prohibitive
hindsight in relying upon the three prior art references as the
basis for the rejection of the claims on appeal, and the
examiner’s reasoning as well as our own embellished analysis
indicate an ample motivation or desirability from an artisan’s
perspective to have combined the teachings of the respective
references to have arrived at the claimed invention. Combining
teachings of references does not involve an ability to combine
their specific structures. In re Nievelt, 482 F.2d 965, 968, 179
USPQ 224, 226 (CCPA 1973).
Appeal No. 97-0894
Application 08/069,931
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As to those arguments raised but not specifically addressed
earlier in this opinion, we note that Mueller’s coil bobbin 29 in
Figure 5 is of one-piece construction even though it contains
within it the magnetic band 33 as a molded part. To follow
appellant’s reasoning, the magnetizable particles within his own
disclosed and claimed invention would not have made the coil
body/bobbin one-piece.
In view of the foregoing, the decision of the examiner
rejecting claims 1, 3, 4, 7 and 10 under 35 U.S.C. § 103 is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 97-0894
Application 08/069,931
10
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
RICHARD TORCZON )
Administrative Patent Judge )

Striker, Striker & Stenby
360 Lexington Avenue
New York, NY 10017
Appeal No. 97-0894
Application 08/069,931
11
JDT/cam