Ex Parte Ziegler

Patent Trial and Appeal Board

Jan 20, 2015

12202509 (P.T.A.B. Jan. 20, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PATRICK ZIEGLER
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Appeal 2012-010974
Application 12/202,509
Technology Center 3700
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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,
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Application 12/202,509

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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.
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Application 12/202,509

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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.
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Application 12/202,509

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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.
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Application 12/202,509

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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
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Application 12/202,509

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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.

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