Ex Parte Wahl

Patent Trial and Appeal BoardAug 7, 2013

12458346 (P.T.A.B. Aug. 7, 2013)

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. 12/458,346 07/08/2009 Norbert Wahl 076326-0409 8568 22428 7590 08/08/2013 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER KIM, SANG K ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 08/08/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte NORBERT WAHL ____________ Appeal 2011-008125 Application 12/458,346 Technology Center 3600 ____________ Before: JOHN C. KERINS, WILLIAM A. CAPP and JILL D. HILL Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-15 under 35 U.S.C. §§ 102(a) and (e) as anticipated by Daeuber (US 2006/0144984, pub. Jul. 6, 2006). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-008125 Application 12/458,346 - 2 - THE INVENTION Appellant’s invention relates to a sensor unit for activating a blocking mechanism for a belt retractor of a motor vehicle. Spec. 1, para [0002]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A sensor unit for activating a blocking mechanism for a belt retractor of an occupant protection system for motor vehicles comprising: - a sensor element, - a receptacle for displaceably mounting of the sensor element so that the sensor element is deflected by the impact of forces acting transversally to weight, and - a coupling mechanism coupling the sensor element with the blocking mechanism of the belt retractor in such a manner that the blocking mechanism is triggered by a deflection of the sensor element, wherein the sensor element has a mean roughness depth of at least 0.1 µm at least in such areas of its surface by which the sensor element rests against a bearing surface of the receptacle. OPINION The Examiner finds that Daeuber discloses all of the elements of claim 1. Ans. 4. In particular, the Examiner finds Daeuber’s sensor element has a mean roughness of at least 0.1 µm. Id. (referring to Daeuber’s inertial body 18). Appellant traverses the Examiner’s rejection by arguing that Daeuber’s roughness disclosure applies to the surface of lower shell 22, not to the surface of inertia body 18. App. Br. 4. The Examiner responds by referring to paragraph [0029] of Daeuber as disclosing a roughness of about 0.1 µm. Ans. 4. Daeuber and the instant invention both disclose sensors for activating a locking mechanism on a vehicle safety belt. See Daeuber, claim 1; Clms. Appeal 2011-008125 Application 12/458,346 - 3 - App’x., claim 1. The sensors of both Daeuber and the instant invention use a sphere that rests on a substantially concave surface. See Daeuber, fig. 1; Appellant’s Figure. Both inventions are directed, at least in part, to friction related surface roughness between their respective spheres and resting concave surfaces. Daeuber, para [0029]; Spec. paras. [0025] – [0026] (discussing surface roughness to reduce adhesion). After considering the Examiner’s and the Appellant’s respective contentions, the entire dispute over the anticipation rejection boils down to an interpretation of the following paragraph from Daeuber. Tests with a view to minimizing the friction of the inertia body 18 have shown that both the adhesive sliding contacts of very smooth surfaces (with a roughness of about 1 µm) and the deformative sliding contacts of very rough surfaces (with a roughness of about 12 µm) must be minimized. In this connection, a roughness in the range of 5 to 8 µm has proved to be particularly advantageous. This roughness applies particularly to the surface of the lower shell 22 since the sensor lever 24, especially when configured in the form of the upper shell 30 of the sensor lever 24, is only in a brief shock contact with the inertia body 18. Daeuber, para. [0029]. The Examiner contends that the surface roughness parameters discussed in this paragraph refer to the surface of the inertia body 18. Appellant contends that the surface roughness parameters discussed above refer to the surface of lower shell 22, and that Daeuber is otherwise silent as to the surface roughness of inertia body 18. When friction is generated between two opposing contact surfaces, we would normally expect a reference to discuss the roughness of both surfaces, not just one. However, in this case, Daeuber discusses the roughness of only the upper and lower shell, “particularly” the surface of the lower shell. Appeal 2011-008125 Application 12/458,346 - 4 - Appellant is correct that paragraph [0029] is silent as to the roughness of the surface of the inertia body 18. To establish anticipation, it is not enough that Daeuber discloses roughness on one of two sliding surfaces. In order to anticipate under 35 U.S.C. § 102, a reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements “arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). . . . the “arranged as in the claim” requirement applies to all claims and refers to the need for an anticipatory reference to show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order. The test is thus more accurately understood to mean “arranged or combined in the same way as in the claim.” Id. at 1370. Because Daeuber discloses roughness on the shell surface, but not the inertia body, it does not contain all of the elements of claim 1 arranged as in the claim. Accordingly, we do not sustain the rejection of claims 1-15. DECISION The decision of the Examiner to reject claims 1-15 is reversed. REVERSED mls