Ex Parte CLASSEN

Patent Trial and Appeal BoardApr 22, 2016

12614176 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/614,176 11/06/2009 24972 7590 04/26/2016 NORTON ROSE FULBRIGHT US LLP 666 FIFTH A VE NEW YORK, NY 10103-3198 FIRST NAMED INVENTOR Johannes CLASSEN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 10191/6085 7946 EXAMINER CHAPMAN JR, JOHN E ART UNIT PAPER NUMBER 2855 NOTIFICATION DATE DELIVERY MODE 04/26/2016 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): nyipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHANNES CLASSEN1 Appeal2014-005839 Application 12/614,176 Technology Center 2800 Before THU A. DANG, JOHN P. PINKERTON, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from a Non-Final Rejection of claims 1-18. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b). 2 We affirm. 1 Appellant identifies ROBERT BOSCH GmbH as the real party in interest. App. Br. 1. 2 Although the action appealed from is a Non-Final Rejection, we have jurisdiction pursuant to 35 U.S.C. Â§Â§ 6 and 134 because the claims on appeal have been twice rejected. Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BP AI 1994) (precedential). Appeal2014-005839 Application 12/614,176 STATEMENT OF THE CASE Introduction Appellant's invention is directed to a sensor system. Abstract. In a disclosed embodiment, a sensor system comprises a seismic mass that is asymmetrically distributed with respect to a torsional axis, but also presents a symmetric area to a substrate. Spec. 2--4. According to the Specification, Appellant's disclosed sensor provides a cost-effective approach for packaging of the sensor system in mold packages while also reducing the sensitivity of the sensor system to mechanical stress. Spec. 3. Claim 1 is representative of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: 1. A sensor system, comprising: a substrate having a main plane of extension; a seismic mass which is movable about a torsional axis that is parallel to the main plane of extension, the seismic mass having an asymmetrical mass distribution with respect to the torsional axis due to at least one of a mass element and extension situated on one side of the torsional axis, wherein an area of the seismic mass facing the substrate is symmetrical with respect to the torsional axis, and at least one at least partially self-supporting electrode connected to the substrate and directly adjacent to the suspension region, the suspension region being situated along the torsional axis. The Examiner's Rejection Claims 1-18 stand rejected under 35 U.S.C Â§ 103(a) as being unpatentable over Bennett et al. (US 5,249,465; Oct. 5, 1993) ("Bennett"). Non-Final Act. 3-9. 2 Appeal2014-005839 Application 12/614,176 Issues on Appeal 1. Did the Examiner err in finding Bennett teaches or suggests a "seismic mass having an asymmetrical mass distribution with respect to the torsional axis," as recited in claim 1? 2. Did the Examiner err in finding Bennett teaches or suggests "an area of the seismic mass facing the substrate is symmetrical with respect to the torsional axis," as recited in claim 1? ANALYSIS 3 Appellant contends the Examiner erred in relying on Bennett as teaching or suggesting the use of a seismic mass having an asymmetrical mass distribution with respect to the torsional axis because Bennett uses a seismic mass having a symmetrical mass distribution. App. Br. 3. Appellant argues that all of the specific examples taught by Bennett rely on symmetrical distribution of seismic mass. Id. Although Appellant concedes Bennett discloses "it is believed that other embodiments may benefit from an asymmetrical arrangement of seismic mass," Appellant argues that Bennett fails to provide an enabling disclosure of an embodiment having an asymmetrical distribution of seismic mass. Id. Additionally, Appellant argues the Examiner's statement that "the prior art specifically details the use of an asymmetrical mass distribution as this allows for a predetermined 3 Throughout this Decision we have considered the Appeal Brief filed December 31, 2013 ("App. Br."); Reply Brief filed April 11, 2014 ("Reply Br."); the Examiner's Answer mailed on February 14, 2014 ("Ans."); and the Non-Final Office Action mailed on August 1, 2013, from which this Appeal is taken ("Non-Final Act."). 3 Appeal2014-005839 Application 12/614,176 difference in the sensitivity to acceleration in different modes and directions" is without basis or support in the disclosure of Bennett. Reply Br. 2 (citing Ans. 2). In relevant part, and as identified by the Examiner, Bennett teaches: "It is believed that other embodiments may benefit from an asymmetrical arrangement of seismic mass 28 and the positions of electrode pairs around the periphery so as to produce a predetermined difference in sensitivity to acceleration in different modes and directions." Bennett, col. 3, 11. 20-25; see also Non-Final Act. 3; Ans. 2. Thus, contrary to Appellant's assertions, Bennett teaches, or at least reasonably suggests, the use of an asymmetrical distribution of seismic mass to produce differences in sensitivity to acceleration in different modes and directions. Further, under Â§ 103, "a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003). See also Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) ("a non-enabling reference may qualify as prior art for the purpose of determining obviousness under Â§ 103"); Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) ("[e]ven if a reference discloses an inoperative device, it is prior art for all that it teaches"). Accordingly, we agree with the Examiner's finding that Bennett teaches or reasonably suggests a "seismic mass having an asymmetrical mass distribution with respect to the torsional axis," as recited in claim 1. Appellant further argues Bennett does not teach "an area of the seismic mass facing the substrate is symmetrical with respect to the torsional axis," as recited in claim 1. App. Br. 3. 4 Appeal2014-005839 Application 12/614,176 We are unpersuaded of Examiner error because, at least, Appellant's argument is not responsive to the Examiner's finding. The Examiner finds, and we agree, Figure 2 of Bennett illustrates symmetric areas with respect to the torsional axis of the seismic mass facing the substrate. Non-Final Act. 3 (citing Bennett, Fig. 2). A drawing teaches all that it reasonably discloses and suggests to a person of ordinary skill in the art. In re Aslanian, 590 F .2d 911, 914 (CCPA 1979). For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner's rejection of independent claim 1 and, for similar reasons, of independent claim 6, which similarly recites an asymmetrical distribution of seismic mass with respect to the torsional axis. Further, we sustain the rejection of dependent claims 2-5 and 7-18, which were not argued separately. App. Br. 3. DECISION We affirm the Examiner's decision rejecting claims 1-18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(f). AFFIRMED 5