Helmut Koeck et al.

Patent Trials and Appeals Board

Jun 12, 2020

14812907 - (D) (P.T.A.B. Jun. 12, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/812,907 07/29/2015 Helmut Koeck INF 2015 P 50995 US 6902
48154 7590 06/12/2020
SLATER MATSIL, LLP/INFINEON
17950 PRESTON ROAD
SUITE 1000
DALLAS, TX 75252
EXAMINER
RODRIGUEZ, DOUGLAS X
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
06/12/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HELMUT KOECK,
TOBIAS WERTH, FRANK HEINRICHS,
and UDO AUSSERLECHNER
__________

Appeal 2018-007109
Application 14/812,907
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Infineon
Technologies AG. Appeal Brief dated January 22, 2018 (“App. Br.”), at 2.
Appeal 2018-007109
Application 14/812,907

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The claims on appeal are directed to a magnetic-field sensor. Claim 1, the
sole independent claim on appeal, is reproduced below from the Claims Appendix
to the Appeal Brief. The limitation at issue is italicized.
1. A magnetic-field sensor comprising:
a magnetic-field sensor arrangement; and
a back-bias magnet, wherein a structure of the back-bias
magnet comprises an inhomogeneous magnetization.
App. Br. 19.
The Appellant’s Figure 1a, reproduced below, illustrates a magnetic-field
sensor according to the disclosed invention.

Appellant’s Fig. 1a is a cross-sectional view of
an embodiment of a magnetic-field sensor
according to the Appellant’s invention.
The Appellant discloses that magnetic-field sensor 100 comprises a
magnetic body or back-bias magnet 110 and a magnetic-field sensor arrangement
120. Spec. ¶ 34. The Appellant discloses that the magnetic body or back-bias
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magnet 110 has an inhomogeneous magnetization as indicated by arrows 170 in
Figure 1a. Spec. ¶ 44. According to the Appellant, “a magnetization of a magnetic
body is inhomogeneous when it is largely not homogeneous.” Spec. ¶ 45. In other
words, magnetic body 110 in Figure 1a is said to have
an inhomogeneous magnetization, as is shown by the arrows 170,
since its magnetization does not have a constant direction and/or a
constant magnitude of the magnetization M, in the vectorial sense,
across the entire magnetic body or across a substantial part of the
entire magnetic body.[2] In the context of the present application, a
substantial portion of the entire magnetic body 110, or of the magnetic
body 110, is understood to mean a volume fraction of the magnetic
body 110 which ranges from 50 % to 100 % . . . .
Spec. ¶ 45.
The Appellant discloses that “the presence of an inhomogeneous magnetic
field on the outside and/or inside of a magnet need not be an indication that the
magnetization, too, is inhomogeneous.” Spec. ¶ 46 (emphasis added); see also
App. Br. 8 (stating that “[i]t is well known in the art that a uniformly magnetized
object can produce an inhomogeneous magnetic field by virtue of its geometry
alone” (emphasis added)).
The Appellant’s Figure 14a, reproduced below, illustrates another
inhomogeneous magnet according to the disclosed invention.

2 A homogeneous magnetization, on the other hand, is said to mean, in the context
of the Appellant’s invention, “a magnetization which is constant and unidirectional
with regard to its direction and intensity.” Spec. ¶ 45.
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Appellant’s Figure 14a is a cross-sectional view
of an additional inhomogeneous magnet
according to the Appellant’s invention.
The Appellant discloses that “[a] person of ordinary skill will appreciate that
it is feasible to produce a bulk magnet comprising an inhomogeneous
magnetization as illustrated in Fig. 14A using a mold process.” Spec ¶ 146.
According to a first variant of such molding process, . . . the molding
tool may be configured to generate a spatially varying magnetic flux
density inside the tool while magnetizable molding material is
injected into and/or melted inside the molding tool. The spatially
varying magnetic flux density inside the molding tool will project
onto the magnetizable molding material and shall persist once the
molding process is completed yielding the bulk magnet 400 with
inhomogeneous magnetization as a unitary member.
Spec. ¶ 146.
In an alternative molding process, the molding tool may be filled with a
standard magnetizable or magnetic molding material. Spec. ¶ 147. “Once the
magnetizable molding material is hardened, an inhomogeneous external magnetic
field may be applied to the hardened molding material in the shape of the
inhomogeneous magnet to be produced.” Spec. ¶ 147.
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The claims on appeal stand rejected as follows:
(1) claim 1 provisionally on the ground of nonstatutory double patenting
as unpatentable over claims 1 and 12 of Application 14/812,869;3
(2) claims 1, 2, 4, 5, 7, 8, 10–15, and 17–19 under 35 U.S.C. § 102(b) as
anticipated by Butzmann;4,5
(3) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Butzmann;
(4) claims 3 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Butzmann in view of Hoag;6
(5) claim 16 under 35 U.S.C. § 103(a) as unpatentable over Butzmann in
view of Bloodworth et al.;7 and
(6) claim 20 under 35 U.S.C. § 103(a) as unpatentable over Butzmann in
view of Gonsalves et al.8
B. DISCUSSION
1. Rejection (1)
The Examiner concludes that claims 1 and 12 of Application 14/812,869
recite a sensor comprising a magnetic-field sensor arrangement and a back-bias
magnet arrangement corresponding to claim 1 of the instant Application. Final
Act. 4.9

3 Application 14/812,869 is now US Patent 10,338,159, issued July 2, 2019.
4 US 2005/0007102 A1, published January 13, 2005 (“Butzmann”).
5 The rejection of claims 1, 2, 4, 5, 7, 8, 10–15, and 17–19 under
35 U.S.C. § 103(a) as unpatentable over Butzmann was withdrawn in the
Examiner’s Answer. Examiner’s Answer dated May 2, 2018 (“Ans.”), at 2.
6 US 4,849,666, issued July 18, 1989 (“Hoag”).
7 US 4,339,715, issued July 13, 1982 (“Bloodworth”).
8 US 5,021,736, issued June 4, 1991 (“Gonsalves”).
9 Final Office Action dated July 7, 2017.
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The Appellant does not direct us to any error in the Examiner’s conclusion.
Rather, the Appellant “requests that the double patenting rejection be held in
abeyance until all other claim rejections have been withdrawn.” App. Br. 17.
Application 14/812,869 matured into US Patent 10,338,159 on July 2, 2019.
Therefore, the provisional nonstatutory double patenting rejection of claim 1 is
now moot. Nonetheless, the Examiner may consider whether an obviousness-type
double patenting rejection is proper based on the claims of US Patent 10,338,159.
2. Rejection (2)
“To anticipate a claim, a prior art reference must disclose every limitation of
the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).
The Examiner finds Butzmann discloses a magnetic-field sensor comprising
a magnetic-field sensor arrangement and back-bias magnet 8. Final Act. 5–6. The
Examiner finds the structure of magnet 8 comprises an inhomogeneous
magnetization as recited in claim 1 because the magnet produces an
inhomogeneous magnetic field. Final Act. 6 (citing Butzmann ¶ 16); Butzmann
¶ 16 (disclosing that “[t]he invention is based on the recognition that a rectangular
permanent magnet used as a working magnet produces an inhomogeneous
magnetic field”). Alternatively, the Examiner finds “it is implicit that magnet 8
has a structure comprising an inhomogeneous magnetization.” Final Act. 6 (citing
Butzmann ¶ 16).
Butzmann Figure 1, reproduced below, shows magnet 8 in the disclosed
magnetic-field sensor.
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Butzmann’s Figure 1 shows an example
of an arrangement for measuring the rotational
speed of a rotating motion sensor element.
The Appellant argues that Butzmann Figure 1 “do[es] not show what is
going on inside the magnet. This is particularly clear in Figure 1 . . . , where the
H-arrows start to the right of magnet 8, are not visible within magnet 8, and then
extend to the left of magnet 8.” App. Br. 6 (emphasis omitted). The Appellant
also argues that the written disclosure of Butzmann “does not address the
magnetization of the structure of magnet 8 at all.” App. Br. 7; id. (arguing that the
word “magnetization” only appears once in Butzmann’s Specification at paragraph
25).
As for inherency, the Appellant argues that “the Examiner has not provided
the legally required basis in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent characteristic (a structure comprising
an inhomogeneous magnetization) necessarily flows from the teachings of the
applied prior art.” App. Br. 7 (emphasis omitted).
The Appellant’s arguments are persuasive of reversible error. The Examiner
bears the initial burden of presenting a prima facie case of unpatentability. In re
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Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In this case, the Examiner does not
direct us to any disclosure in Butzmann expressly disclosing that the structure of
magnet 8 comprises an inhomogeneous magnetization. See Reply Br. 2
(contending that “the Examiner does not dispute that Butzmann does not explicitly
disclose a structure of the back-bias magnet comprising an inhomogeneous
magnetization” (emphasis omitted)).10
The Examiner does find that the structure of Butzmann’s magnet inherently
comprises an inhomogeneous magnetization based on its shape. See Ans. 4
(finding that Butzmann’s magnet, like the Appellant’s magnet 400 illustrated in
Figure 14a, has a rectangular structure and is a unitary member); Ans. 9 (finding
that “any magnet having a rectangular shape corresponds to a structure comprising
an inhomogeneous magnetization”). However, we concur with the Appellant that
the Examiner’s findings are not sufficient to support a finding of inherency. See
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939) (“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.”). More specifically, we
find that a preponderance of the evidence of record does not establish that the
structure of Butzmann’s unitary, rectangular magnet which has an inhomogeneous
magnetic field necessarily comprises an inhomogeneous magnetization as recited
in claim 1. See Spec. ¶ 46 (disclosing that “the presence of an inhomogeneous
magnetic field on the outside and/or inside of a magnet need not be an indication
that the magnetization, too, is inhomogeneous”); see also App. Br. 8–9 (relying on
a Wikipedia article to show a magnet having a uniform magnetization and an
inhomogeneous magnetic field).

10 Reply Brief dated June 29, 2018.
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We recognize that both the Appellant and Butzmann disclose rectangular
magnets. See Appellant Fig. 14a; Butzmann Fig. 1. The evidence of record,
however, establishes that shape is not the sole factor affecting a magnet’s
magnetization. Rather, the Appellant discloses that the method of making a
magnet, for example, also affects its magnetization. See Spec. ¶¶ 146, 147. The
Examiner appears to recognize as much but does not consider that additional factor
in attempting to show inherency because it is not recited in the claims. See Ans. 5
(concluding that “claim 1 does not recite any particular design, arrangement or
shape of the structure, a composition of the structure or a manufacturing process of
the structure leading to an inhomogeneous magnetization”).
The Examiner’s interpretation of claim 1 is erroneous. The Appellant
discloses that the structure of a magnet comprising an inhomogeneous
magnetization as recited in claim 1 “does not have a constant direction and/or a
constant magnitude of the magnetization M, in the vectorial sense, across the entire
magnetic body or across a substantial part of the entire magnetic body.” Spec.
¶ 45. The Examiner does not show that the magnetization of Butzmann’s magnet 8
is “inhomogeneous” as that term is used in paragraph 45 of the Appellant’s
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“the PTO
applies to the verbiage of the proposed claims the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of ordinary
skill in the art, taking into account whatever enlightenment by way of definitions
or otherwise that may be afforded by the written description contained in the
applicant’s specification”). Therefore, in order to overcome the anticipation
rejection on appeal, the Appellant, on this record, is not required to further limit the
claimed invention to a particular method of making the magnet, the material(s)
used to make the magnet, and/or a particular magnet shape. See Ethicon Endo-
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Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996),
citing In re Vickers, 141 F.2d 522, 525 (CCPA 1944) (“an applicant . . . is
generally allowed claims, when the art permits, which cover more than the specific
embodiment shown” (emphasis omitted)).
For the reasons set forth above, the anticipation rejection of claims 1, 2, 4, 5,
7, 8, 10–15, and 17–19 is not sustained.
The Examiner does not rely on Butzmann, Hoag, Bloodworth, and/or
Gonsalves in the obviousness rejections on appeal to cure the deficiencies in
Butzmann identified above in the anticipation rejection. Therefore, the
obviousness rejections of claims 3, 6, 9, 16, and 20 also are not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 7,
8, 10–15, 17–
19
102(b) Butzmann 1, 2, 4, 5, 7,
8, 10–15, 17–
19
6 103(a) Butzmann 6
3, 9 103(a) Butzmann, Hoag 3, 9
16 103(a) Butzmann,
Bloodworth
16
20 103(a) Butzmann,
Gonsalves
20
Overall
Outcome11
1–20

11 Claim 1 was also provisionally rejected on the ground of nonstatutory double
patenting as unpatentable over claims 1 and 2 of Application 14/812,869. For the
reasons discussed above, that rejection is now moot.
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REVERSED