Ex Parte Zhang et alDownload PDFPatent Trial and Appeal BoardDec 13, 201311803152 (P.T.A.B. Dec. 13, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte XUEREN ZHANG, ANDREA LORENZO VITALI, FEDERICO GIOVANNI ZIGLIOLI, BRUNO BIFFI, and TONG YAN TEE __________ Appeal 2011-008358 Application 11/803,152 Technology Center 2800 ____________ Before MARK NAGUMO, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-24. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellant’s invention is said to be directed to devices for sensing a force and more particularly to a piezo-resistive force sensor for use in vehicle brake applications (Spec. para. [002]). Claim 1 is illustrative: 1. A device to measure the force from a load, the device comprising: Appeal 2011-008358 Application 11/803,152 2 a plunger configured to receive the force from the load, wherein a lower surface of the plunger has a ring-shaped first groove; a disc-shaped membrane having an upper surface and lower surface, wherein the membrane is flexible according to the force received by the plunger, wherein the upper surface of the membrane has a ring-shaped first bump configured to complementarily fit into the first groove on the lower surface of the plunger, and wherein the lower surface of the membrane has a ring-shaped second bump; a sensor centrally disposed on the membrane, wherein the sensor measures the force of the load when being bent or compressed caused by the membrane; and a support plate having a ring-shaped second groove configured to complementarily fit into the second bump, wherein the force received by the plunger from the load is transmitted to the membrane, causing the membrane to flex, which in turn causes the bending or compressing of the sensing means, resulting in the measurement of the force from the load. Appellants appeal the following rejections: 1. Claims 1-3, 5-18, and 20-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the Admitted Prior Art (APA in paragraph [006] of the Specification) in view of Godlewsky et al. (US 2005/0212355 A1, published Sept. 29, 2005). 2. Claims 4 and 19 are rejected under 35 U.S.C. §103(a) as being unpatentable over APA in view of Godlewsky, and Wollenweber et al. (US 5,279,394, issued Jan. 18, 1994). ISSUE Did the Examiner reversibly err in relying solely on case law precedent as a rationale why it would have been obvious to modify the positions of the rings and grooves in the APA to arrive at the claimed invention? We decide this issue in the affirmative. Appeal 2011-008358 Application 11/803,152 3 FINDINGS OF FACT AND ANALYSES Appellants argue that the Examiner improperly relies on a per se rule from case law precedent as a basis for concluding the claimed invention would have been obvious over APA in view of Godlewsky without supporting factual analysis regarding similarity or differences, relative to the subject matter (App. Br.1 16). Appellants further argue that the Examiner improperly ignored evidence provided in Figures 12 and 13 and paragraph 36 of the Specification which Appellants allege shows that the change in location of the bumps and corresponding grooves achieves unexpectedly superior results not evident from the structure of Figure 1. Id. at 16-17. The Examiner finds that the APA teaches all the features recited in claim 1, except for the ring shaped bumps on the top and bottom side of the flexible, disc-shaped membrane and the grooves in the support plate and plunger matching the shape of the ring shaped bumps (Ans. 4-5). Citing In re Einstein, 46 F.2d 373, 8 USPQ 166 (CCPA 1931), the Examiner concludes that it would have been obvious to reverse the location of the bumps with the location of the grooves, “since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art” (Ans. 5). The Examiner’s sole reliance on the precedent in Einstein as a factual basis for concluding that the subject matter of claim 1 would have been obvious is improper because precedent cannot establish facts. See, e.g., Case v. CPC Int’l, Inc., 730 F.2d 745, 750 (Fed. Cir. 1984). The Examiner provides no analysis of facts established via the prior art or otherwise in the body of the rejection that would support the conclusion that it would have 1 We reference the Appeal Brief filed April 26, 2010. Appeal 2011-008358 Application 11/803,152 4 been obvious to switch the location of the rings from the plunger 2 or 20 and support plate 6 or 60 to the top and bottom surface of the membrane 4 or 40 and to form grooves complementary to the rings on the plunger and support plate instead of the membrane as shown in Appellants’ Figures 1 and 3. While the Examiner determines that the reversal of the bumps and grooves in the APA would have resulted in the same function in the claimed invention (i.e., permitting force to be applied to the plunger to flex the membrane) (Ans. 10), such a determination does not adequately explain why one of ordinary skill in the art would have made such a modification of the APA absent hindsight. Moreover, the Examiner failed to address or consider Appellants’ evidence of unexpected results contained in paragraph [36] and Figures 12 and 13 of the Specification. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“[T]he PTO must consider comparative data in the specification in determining whether the claimed invention provides unexpected results.”). The Examiner does not respond to Appellants’ arguments and evidence of unexpected results (Ans. 7-16). While the evidence presented by Appellants’ in Figures 12 and 13 that shows the results of “mechanical simulations” is thin at best, nevertheless, the Examiner must consider Appellants’ evidence of unexpected results even if it is contained solely in the Specification. The Examiner might have found facts regarding the showings in the Specification, criticized the inadequacies of those showings, and indicated that further evidence such as a declaration would be required to overcome the rejection. However, the Examiner appears to require that the evidence be contained in a Rule 132 Declaration form (Final Off. Act. 7). There is no such requirement. The Examiner’s failure to address or Appeal 2011-008358 Application 11/803,152 5 consider such evidence of unexpected results is legally improper and further deprives the record of the benefit of the Examiner’s knowledgeable analysis. On this record, we are constrained to reverse the Examiner’s § 103 rejections. DECISION The Examiner’s decision is reversed. ORDER REVERSED cdc Copy with citationCopy as parenthetical citation