Ex Parte Hoenicka et al

Patent Trial and Appeal BoardDec 21, 2018

13463335 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/463,335 05/03/2012 826 7590 12/26/2018 ALSTON & BIRD LLP BANK OF AMERICA PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE, NC 28280-4000 FIRST NAMED INVENTOR Reinhold Hoenicka 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. 034691/417576 2473 EXAMINER PATEL, PARESH H ART UNIT PAPER NUMBER 2868 NOTIFICATION DATE DELIVERY MODE 12/26/2018 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte REINHOLD HOENICKA, SABINE SCHMIDEDER, and GUNTER SCHALLMOSER Appeal2018-002325 Application 13/463,335 1 Technology Center 2800 Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and JANEE. INGLESE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellants seek our review of the Examiner's rejection of claims 1, 4---6, 11, 13, and 15-192 in the Non-Final Office Action. We have jurisdiction. 35 U.S.C. Â§ 6. We reverse. 1 MICRO-EPSILON Messtechnik GmbH & Co. KG is identified as the real party in interest. (App. Br. 3.) 2 Claims 2, 7-9, 12, 14, and 20-23 have been withdrawn from consideration (App. Br. 5). Appeal2018-002325 Application 13/463,335 STATEMENT OF THE CASE According to the Specification, Appellants' invention relates to inductively operating sensors suitable for measuring distances and positions of metallic objects. (Spec. ,r 3 .) Independent claim 1 is illustrative of the appealed subject matter, and is reproduced below: 1. An inductively operating sensor, particularly for the distance and position measurement of a metallic object, said sensor compnsmg: a coil having a coil axis, at least one of a ferromagnetic core or a ferrite core, and a sensor element comprising a housing, wherein: the coil is embedded in at least one of a single or a multi- layered ceramic, the coil jointly with the ceramic defines a coil body, the coil body comprises an open recess, the core is positioned within the open recess such that at least a portion of the core is not encompassed by the coil, the coil body and the core are fixedly connected to each other in a form-fitting fashion via the open recess, the core fully encompasses the coil body around a central axis of the coil body, and the central axis is parallel to and aligned with the coil axis. On appeal, the Examiner maintains the rejection under 35 U.S.C. Â§ 102(b) of claims 1, 4--6, 11, 13, and 15-19 over Grader (US 5,479,695, issued Jan. 2, 1996). The complete statement of the rejection appears in the Non-Final Action. (Non-Final Act. 3--4.) 2 Appeal2018-002325 Application 13/463,335 We select independent claim 1 as representative, and limit our discussion thereto. OPINION The Examiner finds, with reference to the below-reproduced and annotated version of Figure 28 of Grader, Grader describes an inductively operating sensor as required by the claimed invention. (Non-Final Act. 2- 4.) m Annotated version of Figure 28 including a depiction of a central axis and a coil axis. The Examiner determines that in Grader the coil body portion above the gap is fully encompassed by the core. The Examiner specifically states: [Figs]. 26, 28 and 30 [ of Grader] disclose[] an inductively operating sensor ( with housing and a planar, continuous ceramic surface) comprising a coil [portion of 283 above 281, fig. 28 as an example] having a coil axis [ not shown, vertical axis passing from the center of coil] embedded in a single or multilayered ceramic [284, fig. 18 as an example], the coil body [281, 284] with open recess for a ferrite core (high permeability) [E core portion 261 as an example] having at least 3 Appeal2018-002325 Application 13/463,335 one of a circular, oval, triangular, or square/rectangle cross section, a housing lid ( claim 17) [263] and the core fully encompasses the coil body around a central axis [imaginary vertical axis at center of fig. 28] of the coil body, and the central axis is parallel to and aligned with the coil axis [ as shown above in fig. 28 under response to argument]. (Non-Final Act. 3 (emphasis omitted).) Appellants argue the language of the claims recites that the core fully encompasses the coil body around a central axis of the coil body. (App. Br. 6.) Appellants arguethe gapped pot core structure of Grader-as shown by Figure 28-incorporates gap 281 that is a discontinuity that does not encompass the coil as required by the claimed invention. (App. Br. 6-8.) We agree with Appellants that the Examiner has failed to provide an adequate explanation of how the inductively operating sensor of Grader discloses a coil body fully encompassed by a core. The Examiner relied upon Figure 28 of Grader as providing the anticipatory description of the claimed invention. Figure 28 of Grader illustrates a gapped pot core structure. (Grader col. 10, 11. 50-58.) In order to obtain the structure described by Figure 28, a gap is necessary. The relied-upon structure of Grader fails to anticipate the claimed subject matter because Figure 28 necessarily includes gap 281, which prevents the coil body from being fully encompassed by the core structure around a central axis of the coil body as required by independent claim 1. The Examiner contends the claimed subject matter is anticipated by Grader because of the open-ended phrase "comprising." (Ans. 3.) The Examiner appears to be contending that the claim language allows for the inclusion of Grader's gap portion 281. The Examiner's position is 4 Appeal2018-002325 Application 13/463,335 unavailing because the inclusion of a gap does not allow the coil body fully to be encompassed by a core as required by the claimed subject matter. For the foregoing reasons and those provided by the Appellants, we reverse the appealed rejection. DECISION The Examiner's appealed rejection of claims 1, 4---6, 11, 13, and 15-19 is reversed. REVERSED 5