Ex Parte ZieglerDownload PDFPatent Trial and Appeal BoardJan 20, 201512202509 (P.T.A.B. Jan. 20, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte PATRICK ZIEGLER ________________ Appeal 2012-010974 Application 12/202,509 Technology Center 3700 ________________ Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patrick Ziegler (Appellant) seeks our review under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–12. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE THE CLAIMED SUBJECT MATTER The claimed invention is directed to a method and apparatus for inductively heating an electrically conductive workpiece. Claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A device for inductively heating an electrically conductive workpiece (2) made in the form of a closed ring, Appeal 2012-010974 Application 12/202,509 2 wherein the device has a first U-shaped magnet core (3) with two legs (4) and at least one electrically conducting coil (5) wound around at least one of the legs (4) of the first U- shaped magnet core (3) and connectable with an alternating current source, wherein a magnet yoke (6) is provided in spaced relation to at least one freestanding end of one of the legs (4) of the first U-shaped magnet core (3) so that a closed magnetic circuit with at least one air gap (7) between the at least one freestanding end and the magnet yoke is formed, and wherein the height of the at least one air gap (7) is chosen to permit the electrically conducting workpiece (2) to be moved in a non-contacting manner through the air gap (7). REFERENCES RELIED ON BY THE EXAMINER Beckert US 3,187,155 June 1, 1965 Junya US 4,311,896 Jan. 19, 1982 Hansen US 5,444,220 Aug. 22, 1995 Loveless US 2005/0247704 A1 Nov. 10, 2005 Kagan US 2006/0219709 Al Oct. 5, 2006 THE REJECTIONS ON APPEAL Claims 1–5 and 9 are rejected under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Beckert. Claims 1, 3–5, 8, and 9 are rejected under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Junya. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over either Beckert or Junya and Kagan. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over either Beckert or Junya and Hansen. Appeal 2012-010974 Application 12/202,509 3 Claims 10–12 are rejected under 35 U.S.C. § 103(a) as unpatentable over either Beckert or Junya and Loveless. ANALYSIS The rejection of claims 1–5 and 9 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Beckert and the rejection of claims 1, 3–5, 8, and 9 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Junya Claim 1 recites, in part: wherein a magnet yoke (6) is provided in spaced relation to at least one freestanding end of one of the legs (4) of the first U-shaped magnet core (3) so that a closed magnetic circuit with at least one air gap (7) between the at least one freestanding end and the magnet yoke is formed. The Examiner finds Beckert discloses a closed magnetic circuit with at least one air gap, stating: Beckert teaches a device….wherein a magnet yoke (3) is provided in spaced relation (Fig. 1, at dotted line position) to at least one freestanding end of one of the legs of the first U- shaped magnet core so that a closed magnetic circuit (Fig. 1) between the at least one freestanding end and the magnet yoke is formed, and at least one air gap (the air gap formed between 3 in the position of the dotted line and the end of 2) is formed. Final Act. 4–5. The Examiner also states: Regarding claims 1, 2, though Beckert does not teach explicitly that the closed magnetic circuit [has] air gaps, however inherently or obviously, when the air gap is small, [a] magnetic field exists in the air gap and a closed loop magnetic circuit can be formed, as evidenced by Roth et al. (US 4,740,663), Meinke et al. (US 4,166,261), etc. Appeal 2012-010974 Application 12/202,509 4 Final Act. 5 (emphasis added). The Examiner makes similar findings regarding the rejection premised on Junya. Final Act. 7. The Examiner concludes “[A]ppellant’s argument is directed to a desired result and/or an intended use of the structure, not the structure itself.” Ans. 3. Appellant traverses the Examiner’s anticipation rejections, asserting that Beckert fails to disclose either a magnet yoke provided in spaced relation to a freestanding end of a leg of a core, or a closed magnetic circuit with at least one air gap. Appeal Br. 16. Appellant notes that the Examiner relies on the yoke member 3 of Beckert for the yoke recited in claim 1, and the yoke 3 of Beckert abuts the core disclosed by Beckert, i.e., there is no spaced relationship or air gap as recited in claim 1. Br. 15–16 (citing Beckert, col. 2, ll. 11–25). Appellant further asserts the “dotted line” position of the yoke in Fig. 1 of Beckert refers to the detached position of the movable yoke after the yoke is moved, subsequent to completion of the process performed by Beckert, and Beckert does not disclose a closed magnetic circuit while the yoke is in this detached position. Br. 17. Appellant asserts that rather than an intended use of the device recited in claim 1, the air gap is a structural feature that is not disclosed by Beckert. Br. 16. Appellant asserts that the rejection based on Junya is similarly flawed. App. Br. 22-23. As for the Examiner’s statement “inherently or obviously, when the air gap is small, magnetic field exists in the air gap and a closed loop magnetic circuit can be formed,” Final Act. 5 (emphasis added), Appellant asserts the Examiner has not explained why such a feature would have been obvious to add to Beckert, Br. 19. Appeal 2012-010974 Application 12/202,509 5 We agree that Beckert does not disclose a closed magnetic circuit with at least one air gap between the at least one freestanding end and the magnet yoke. Rather, Beckert describes a detachable yoke that creates a closed magnetic circuit when abutted with its respective core, i.e., at a time when there is no air gap between the yoke and the core. It is true that the mere recitation of a result of a particular arrangement will not distinguish over the prior art. This is because such results, like latent properties, are inherent. Similarly, it is also true that if a prior art device can be put to a use recited, the claim will not distinguish over that device, again because the ability to be put to that use is inherent in the prior art. Here, the Examiner has not established that the arrangements of Beckert or Junya, configured in a state with their respective yokes detached, as shown in Fig. 1 of Beckert and Figs. 1 and 3 of Junya (at dotted line position), would necessarily result in a closed magnetic circuit as recited in claim 1. The Examiner does not provide any technical reasoning to establish that there is a sound basis for the Examiner’s belief that Beckert’s device and Junya’s device would operate in the detached state in a manner similar to the devices of Roth, Meinke, etc . . .“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). To the extent that the Examiner relies on obviousness to account for the deficiency discussed above, we agree with Appellant that the Examiner has not articulated reasons why it would have been obvious to include this feature. Accordingly, we do not sustain the rejection of claim 1, or of the claims depending therefrom, under 35 U.S.C. § 102(b) as anticipated by, or Appeal 2012-010974 Application 12/202,509 6 in the alternative, under 35 U.S.C. § 103(a) as unpatentable over, Beckert or Junya. The rejections of dependent claims 6 and 7 and of claims 10–12 The rejections of dependent claims 6 and 7 and of claims 10–12, which incorporate the features of claim 1 by reference, are based on either Beckert or Junya and suffer from the same shortcomings as set forth supra. As such, we cannot sustain the rejection of claim 6 as unpatentable over either Beckert or Junya and Kagan, the rejection of claim 7 as unpatentable over either Beckert or Junya and Hansen, or the rejection of claims 10–12 over either Beckert or Junya and Loveless. DECISION We REVERSE the Examiner’s rejection of claims 1–12. mp Copy with citationCopy as parenthetical citation