Wolfgang Ullermann et al.

Patent Trials and Appeals Board

Sep 27, 2019

13849745 - (D) (P.T.A.B. Sep. 27, 2019)

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.
13/849,745 03/25/2013 WOLFGANG ULLERMANN FDST-P100982 4949
24131 7590 09/27/2019
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
CRUM, JACOB R
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WOLFGANG ULLERMANN and HELMUT KRAUS

Appeal 2019-000525
Application 13/849,745
Technology Center 2800
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. 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 Ellenberger &
Poensgen GmbH. Appeal Br. 1.
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Application 13/849,745
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BACKGROUND

The pending application “relates to a miniature safety switch for use
in motor vehicle electronics.” Spec. ¶ 2. Miniature safety switches are
sometimes used in place of fuses in the automotive industry. Id. ¶ 3. These
switches employ a bimetallic snap disk as a trigger mechanism. Id. ¶ 4.
Bimetallic snap disks change position suddenly in response to changes in
temperature. Id. In normal operation, electricity passes through the
bimetallic snap disk and through a pair of contacts. Id. “As soon as the
temperature prevailing in the safety switch exceeds the temperature
threshold value as a result of an overcurrent, the bimetallic snap disk
suddenly changes its shape, whereby the moving contact is lifted from the
fixed contact and the current path is thus disconnected.” Id.
The miniature safety switch further includes a PTC (positive thermal
coefficient) resistor. The PTC resistor is arranged in conjunction with a
compression spring so that the PTC resistor remains in contact with the
bimetallic snap disk when it is triggered. Id. ¶ 16. When the safety switch is
in an open (nonconductive) position, a current passes through a PTC resistor
and the resistor is heated. Id. This heat from the PTC resistor prevents the
bimetallic disk from returning to its prior position. Id. ¶ 17.
Figures 6 and 7 of the Application are reproduced below.

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Figure 6 (left) is a side view of a safety switch in an electrically conductive
state. Id. ¶ 28. Figure 7 (right) is a side view of a safety switch in a
triggered (nonconductive) state. Id. ¶ 29. In the conductive state (left) fixed
contact 8 and moving contact 9 are in contact. In the nonconductive state
(right) fixed contact 8 and moving contact 9 are not in contact. Spring 28
exerts a force upon the PTC resistor 29 so that it stays in contact with the
bimetallic snap disk in both configurations. The Specification teaches that
“the conical spring contacts the PTC resistor 29 as centrally as possible,
where it forms a central tilt point 30.” Id. ¶ 41.
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Application 13/849,745
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Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A miniature safety switch for use in motor vehicle
electronics, comprising:
a housing having a housing base made of an insulating material
and a housing cover that can be fitted, or is fitted, on said housing
base;
first and second elongate and flat contact arms disposed parallel
to one another in terms of a longitudinal direction, disposed in said
housing base and being led at a base side from said housing base, said
second contact arm having an second contact arm inner end in said
housing opposite said base side;
a fixed contact disposed in said housing and attached to said
first contact arm;
a moving contact for contacting said fixed contact;
a bimetallic snap disk affixed to said second contact arm at said
second contact arm inner end, said bimetallic snap disk
spanning from said second contact arm inner end to said fixed contact
and carrying said moving contact thereon in a position for contacting
said fixed contact and connecting said first contact arm to said second
contact arm;
a separate compression spring supported on said first
contact arm beneath said fixed contact in the longitudinal
direction; and a PTC resistor being electrically incorporated such
that, as a result of heat generated by said PTC resistor, said bimetallic
snap disk remains in an open position thereof in an event of
triggering, said PTC resistor being brought into direct contact
with said bimetallic snap disk by means of said separate
compression spring.

Appeal Br. 22–23 (Claims App.) (emphases added).

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Application 13/849,745
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REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–13, 16, and 18 are rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over Furukawa (US 5,607,610, issued Mar. 4, 1997) in view
of Yamashita et al. (US 5,078,115, issued Jan. 7, 1992) (“Yamashita”).
Final Act. 2–11.
2. Claims 14 and 15 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Furukawa in view of Yamashita and Cenky (US
4,808,965, issued Feb 28, 1989). Id. at 12.
3. Claim 17 is rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over
Furukawa in view of Yamashita and Cenky. Id. at 13–18.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–13, 16, and 18 as obvious
over Furukawa in view of Yamashita. Id. at 2–11. Each of these claims
depends from claim 1, directly or indirectly. Appeal Br. 22–29 (Claims
App.). Appellant presents argument limited to certain limitations of claim 1
(and claim 17, rejected separately). Id. at 9–19. Accordingly, pursuant to 37
C.F.R. § 41.37(c)(1)(iv), we confine our discussion to appealed claim 1.
The Examiner finds that Furukawa teaches all elements of claim 1
other than “a separate compression spring supported on said first contact arm
beneath said fixed contact in the longitudinal direction” and “said PTC
resistor being brought into direct contact with said bimetallic snap disk by
means of said separate compression spring.” Final Act. 3. Figures 3 and 4
of Furukawa are reproduced below.

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Figure 3 (left) is an expanded view of a portion of the device of Furukawa.
Furukawa, 2:45–46. Figure 4 (right) shows the device in an intermediate
assembled state. Id. at 2:49–50. The Figures show movable electrode 26
which includes bimetallic member 26a. Id. at 3:58–59. Furukawa teaches as
follows regarding the operation of the device:
In the normal original state, bimetal 26a of the movable
electrode 26 holds movable contact 28 in electrical contact
engagement to fixed contact 20. The electric current that flows
from the terminal 14 in this original state to terminal 12 passes
through the frame-shaped holding part 30, the frame-shaped
engagement part 26b of the movable electrode 26, the base 26d
and the bimetal part 26a, the movable contact 28, the fixed
contact 20 and the fixed electrode 18.
When the electric current starts flowing, bimetal 26a is
heated mainly by its own resistance heating and to a much lesser
extent by the resistance heating of the conductors around it, in
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addition to the heat it receives from the motor coils through
casing 10. Despite such heating, the bimetal part 26a remains at
its original position with the contacts in the closed state unless
the temperature reaches an action temperature due to an
overcurrent and/or overheat condition so that the electric current
flows between both electrodes 18 and 26 with no substantial
electric current flowing through the PTC element 24 and thus the
element is scarcely heated.
When the action temperature is reached due to heating by
an overcurrent or by the heating of the load, the bimetal element
26a is displaced and snaps so that its tip is elevated, as is shown
in FIG. 2. Because of the displacement of the bimetal part 26a,
the movable contact 28 becomes separated from the fixed contact
20, thereby bringing about an open contact state which stops the
flow of current between the contacts.
With the contacts in the open state in this manner, the
voltage between both electrodes 18 and 26 is impressed to PTC
element 24 and it starts to conduct electricity with a result that
heating takes place. By proper choice of characteristics for PTC
element 24, it will function as a fixed temperature heater. Due
to the device design, the heat from the PTC element 24 is
effectively all transmitted to the bimetal part 26b.
The heating of PTC element 24 as described above results
in the bimetal 26a element being held at the displaced position
and the two contacts 20 and 28 are maintained in the state of
being separated from each other.

Id. at 4:57–5:28.
The Examiner further finds that Yamashita “suggests that it is known
to provide a separate compression spring 5 (Fig. 1) between a PTC resistor 4
(col. 3, lines 21-26) and an electrically conducting contact 7, in order to
provide a selected contact pressure (col. 3, lines 40-43).” Final Act. 3.
Figure 1 of Yamashita is reproduced below.
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Figure 1 is a cross-sectional view of a heating device. Yamashita, 3:66–67.
It shows disc-shaped heating element 4, conductive spring 5, insulating plate
6, conductive plate 7, and tripod spring 8, as well as movable contact 10 and
stationary contact 11. Id. at 3:21–32, 3:44–56.
The Examiner finds that one of skill in the art would have had reason
to combine the teachings of the references as proposed “in order to provide a
selected contact pressure between the PTC resistor and the bimetal 26 [of
Furukawa].” Final Act. 4.
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In the Answer, the Examiner asserts that Yamashita teaches to
“provid[e] a separate compression spring 5 (Fig. 1) between a PTC resistor 4
(col. 3, lines 21–26) and an electrically conducting contact 7, in order to
provide a selected contact pressure (col. 3, lines 40–43) between the PTC
resistor and the contact.” Answer 4. The Examiner then determines as
follows:
Placing a spring between the first contact arm 18/12 and
the PTC resistor 24 of Furukawa would similarly provide a
selected contact pressure between the PTC resistor and the
bimetal snap disk (as recited in the previous Office Action), and
would further provide a selected contact pressure downward
between the PTC resistor and the first contact arm through the
spring. Thus, there is explicit motivation, gleaned only from the
secondary reference, for the modification of Furukawa, and the
modification of Furukawa meets the claimed limitation “said
PTC resistor being brought into direct contact with said
bimetallic snap disk by means of said separate compression
spring”, even though neither reference discloses the claimed
limitation alone.

Id. (emphasis omitted).
Appellant makes a number of arguments asserting error in the rejection.
Appeal Br. 9–19. First, Appellant argues that Yamashita does not teach a
spring disposed for bringing a PTC resistor into direct contact with a
bimetallic snap disk. Id. at 10. Appellant argues that the PTC resistor 4
(below the spring 5) as well as conductive plate 7 (above the spring) are both
taught to be fixed in place. Id. As a result, Appellant argues, “the result
alleged by the examiner cannot and does not follow from a modification of
Furukawa based upon the disclosure of Yamashita.” Id.
Second, Appellant argues that Furukawa teaches a fixed connection
between movable electrode 26 and PTC resistor 24. Id. at 11–12.
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Specifically, Appellant argues, Furukawa teaches that the PTC resistor is
fixedly bonded to the bimetallic disk such that there would have been no
need for a spring mechanism to hold the PTC resistor in contact with the
disk. Id.
Third, Appellant argues that the Examiner’s proposed modification
would render Furukawa unsatisfactory for its intended purpose. Id. at 13–
17. Appellant argues that Furukawa “contains a great deal of explicit
disclosure pertaining to the structure, disposition, and function of the PTC
element . . . which is the core of Furukawa.” Id. at 14. Appellant further
argues that the proposed modification “would jeopardize guaranteeing a
stable and accurate contact opening and closing Action.” Id. at 16.
(emphasis omitted).
Fourth, Appellant argues that Furukawa teaches away from the use of
a spring as follows:
Moreover, there is no need to provide for an
electroconductive spring between the two electrodes 18 and 26,
with a result that it becomes possible to construct a thinner rigid
assembly with a smaller number of parts, thereby reducing the
size and thickness of the device as a whole including the casing
10.

Furukawa 5:58–63 (emphasis added).
We are persuaded that the Examiner’s determination is in error. The
proposed modification would yield a structure with duplicative mechanisms
for maintaining contact between the PTC resistor and the bimetallic member
of Furukawa. The Examiner has not articulated a persuasive rationale why
one of ordinary skill in the art would have reason to combine the teachings
as proposed. Further, the Examiner relies upon Yamashita’s teaching of a
spring that imparts “contact pressure.” Answer 4. The “contact pressure”
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applied by spring 5 of Yamashita, however, is pressure sufficient to maintain
the spring in contact with the PTC resistor 4 fixed below and the conductive
plate 7 fixed above. See Yamashita 3:40–43; Figs 1, 4. Yamashita does not
teach that spring 5 maintains any other components in contact (as required
by the proposed combination). Accordingly, a person of ordinary skill in the
art would not have been led to the Examiner’s proposed combination.
Further, Furukawa teaches that there is no need for a spring between the
electrodes. Indeed, Furukawa regards the absence of a spring as
advantageous. Whether or not this rises to the level of a “teaching away,” it
suggests that one of ordinary skill in the art would not have regarded a
spring-based mechanism as desirable.
Accordingly, Appellant has shown error in the rejection of claim 1.
As a consequence, Appellant has additionally shown error in the rejection of
claims 2–16 and 18 which depend (directly or indirectly) from claim 1.

Rejections 2 and 3. The Examiner rejects claims 14 and 15
(Rejection 2) and claim 17 (Rejection 3) as obvious over Furukawa, in view
of Yamashita and Cenky. Final Act. 12–18. Appellant relies upon the same
arguments presented in regard to claim 1 (claims 14 and 15 depend from
claim 1; independent claim 17 includes the same limitations at issue above).
Appeal Br. 19–20. As we have found such arguments to be persuasive, we
determine that Appellant has shown error in the rejection of claims 14, 15,
and 17.

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CONCLUSION

In summary:
Claims
Rejected
Basis Affirmed Reversed
1–13, 16, 18 § 103, Furukawa,
Yamashita
1–13, 16, and
18
14, 15 § 103, Furukawa,
Yamashita, Cenky
14, 15
17 § 103, Furukawa,
Yamashita, Cenky
17
Overall Outcome 1–18

REVERSED