Ex Parte Zimmer et al

Patent Trials and Appeals Board

Jan 23, 2019

12908469 - (D) (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/908,469 10/20/2010
51092 7590 01/25/2019
Eschweiler & Potashnik, LLC.
Rosetta Center
629 Euclid Ave., Suite 1000
Cleveland, OH 44114
FIRST NAMED INVENTOR
Juergen Zimmer
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.
INFAP442US
(2010P50883US
CONFIRMATION NO.
3956
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
01/25/2019 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):
docketing@eschweilerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUERGEN ZIMMER and WOLFGANG RABERG
Appeal2018-003387
Application 12/908,469
Technology Center 2800
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4, 6, 8, and 18. 3 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision refers to the Specification ("Spec.") filed October 20, 2010,
the Examiner's Final Office Action ("Final") dated January 13, 2017,
Appellants' Appeal Brief ("Br.") filed June 19, 2017, and the Examiner's
Answer ("Ans.") dated November 8, 2017.
2 Appellants identify Infineon Technologies AG as the real party in interest
(Br. 1 ).
3 Pending claim 10 has been withdrawn from consideration and is not before
us on appeal (Non-Final Office Action dated July 18, 2016, 2-3).
Appeal2018-003387
Application 12/908,469
STATEMENT OF THE CASE
The invention relates to anisotropic magnetoresistive (XMR) sensors
with reduced discontinuities (Spec. 1, Title), particularly to magnetoresistive
integrated circuit (IC) sensors for rotational speed sensing applications (id.,
Technical Field).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
1. A magnetoresistive sensor element sensitive to a magnetic field
strength, the sensor element comprising:
a magnetoresistive strip comprising a plurality of serial
segments, adjacent ones of the segments having different tilt
angles that are associated with, in the presence of a rotating
magnetic field, discontinuities at different magnetic field angles
at which edge magnetization switching occurs, wherein a tilt
angle is an orientation between a shape anisotropy axis and an
axis perpendicular to and in plane with a reference
magnetization of a pinned layer for a given point on the
magnetoresistive strip,
wherein a first plurality of the plurality of serial segments
form a first substrip and a second plurality of the plurality of
serial segments comprise a second substrip, the first and second
substrips being serially connected by non-magnetic metal
connectors.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection:
1. Claims 1--4, 6, 8, and 18 under 35 U.S.C. § 112, second
paragraph, as indefinite;
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Application 12/908,469
2. Claims 1--4, 6, 8, and 184 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement; and
3. Claims 1--4, 6, 8, and 18 under 35 U.S.C. § I02(b) as
anticipated by Bartos. 5
ANALYSIS
Rejection 1: Indefiniteness 6
The second paragraph of 35 U.S.C. § 112 requires the specification
"conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention."
35 U.S.C. § 112 ,r 2. This portion of the statute requires the claims "be cast
in clear-as opposed to ambiguous, vague, indefinite-terms." In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Although exact precision is
not required, the claim language must be as reasonably precise as the subject
matter permits. Id.; see also In re Moore, 439 F.2d 1232, 1235 (CCPA
1971) (The first inquiry "is merely to determine whether the claims do, in
fact, set out and circumscribe a particular area with a reasonable degree of
precision and particularity.").
The Examiner rejects claims 1--4, 6, 8, and 18 under 35 U.S.C. § 112,
second paragraph, as indefinite. Specifically, the Examiner determines that,
in claim 1, the phrase "adjacent ones of the segments having different tilt
angles that are associated with, in the presence of a rotating magnetic field,
4 The Examiner inadvertently included cancelled claims 5, 9, and 11 in the
statement of this rejection
5 Bartos et al., US 2007 /0080683 Al, published April 12, 2007 ("Bartos").
6 The Examiner withdrew the rejection with respect to the issue that the
claims were indefinite because a single point does not have an axis or
direction (Ans. 2).
3
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Application 12/908,469
discontinuities at different magnetic field angles at which edge
magnetization switching occurs, wherein a tilt angle is an orientation
between s shape anisotropy axis and an axis perpendicular to an in plane
with a reference magnetization of a pinned layer for a given point on the
magnetoresistive strip" is not clearly understood (Final 13, ,r 25). The
Examiner raises two issues with regard to this phrase: 1) that the tilt angle is
not associated with discontinuities; and 2) that the discontinuities require the
application of an external magnetic field (id. at 13-14, ,r 25).
Regarding the first issue, the Examiner finds that while a discontinuity
may occur for a tilt angle in a rotating magnetic field, "that does not mean
that the tilt angle itself is associated with the discontinuity" (Final 13, ,r 25).
Also, although the Examiner finds Appellants disclose a relationship
between field angle and edge magnetization, the Examiner finds the field
angle is not the tilt angle and there is no stated relationship between the tilt
angle and a discontinuity (id.). Regarding the second issue, the Examiner
further determines that this phrase is unclear because discontinuities only
occur in the presence of an external magnetic field which is not a part of the
final product, but is directed to a use of the product (id. at 14). The
Examiner rejects claim 18 as indefinite for similar reasons as above for
claim 1, except with regard to different widths rather than of different angles
(id. ,I 27).
Appellants direct attention to Figure 2 and paragraph 31, which
describe simulation data for five different tilt angles, wherein discontinuities
are circled for each of these tilt angles (Br. 5). Appellants urge that different
tilt angles are associated with discontinuities at different magnetic field
angles, in the presence of a rotating magnetic field (id.). In addition,
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Application 12/908,469
Appellants contend that these features relate to properties of the sensor
element and exist even without the application of an external magnetic field
(id.).
Appellants' argument is persuasive of reversible error. The claim
language at issue recites, with reasonable precision, properties of the sensor
element: that, in the presence of a rotating magnetic field, adjacent ones of
the segments have different tilt angles associated with discontinuities at
different magnetic field angles. "From the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
thing." In re Papesch, 315 F.2d 381,391 (CCPA 1963). Aspirin not only
has a pain relief property, it also has a blood thinning property; however,
both properties require that the aspirin actually be used for those properties
to evidenced or seen. Likewise, a binary memory element in a logic circuit
has the ability to be placed in one of two states (e.g., "O" or "1), but this
property can only be achieved via an electrical "write" current. Nonetheless,
reciting the properties for either aspirin or the binary memory element would
not render claims to either indefinite, even though both require use of the
product. Here, Figure 2 clearly depicts, in the presence of a rotating
magnetic field, each segment displays discontinuities at a different tilt angles
from adjacent segments. This property-the ability to have a discontinuity
at a particular tilt angle-inherently exists in each of the serial segments,
even in the absence of the rotating magnetic field.
Accordingly, for the reasons given by Appellants in the Appeal Brief,
we will not sustain the Examiner's rejection of claims 1--4, 6, 8, and 18
under 35 U.S.C. § 112, second paragraph.
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Application 12/908,469
Rejection 2: New Matter
In rejecting a claim under the first paragraph of 35 U.S.C. § 112 for
lack of adequate descriptive support, it is incumbent upon the Examiner to
establish that the originally-filed disclosure would not have reasonably
conveyed to one having ordinary skill in the art that Appellants had
possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Adequate
description under the first paragraph of 35 U.S.C. § 112 does not require
literal support for the claimed invention. In re Herschler, 591 F.2d 693, 701
(CCPA 1979); In re Wertheim, 541 F.2d 257, 262 (CCPA 1976).
Appearance of a claim in the specification in ipsis verbis does not guarantee
that the written description requirement is satisfied, see, e.g., Enzo Biochem,
Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002), nor does a
failure to meet that standard require a finding that a claim does not comply
with the written description requirement, In re Edwards, 568 F.2d 1349,
1351-52 (Fed. Cir. 1978). All that is required is that the specification
demonstrate to a person of ordinary skill in the art that the inventor was in
possession of the invention. Carnegie Mellon Univ. v. Hoffmann-La Roche
Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008); In re Anderson, 471 F.2d 1237,
1242 (CCPA 1973).
The Examiner rejects claims 1--4, 6, 8, and 18 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Specifically, the Examiner finds that the limitation that the
metal connectors are non-magnetic is new matter that was not described in
the Specification as originally filed (Final 11, ,r 17). While acknowledging
that the Specification discloses that the connectors may be a suitable metal,
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Application 12/908,469
the Examiner finds that Appellants fail to disclose the type of metal, e.g.,
magnetic or non-magnetic (id.). Further, the Examiner notes that the
Specification discloses a non-magnetic layer between two other layers of a
magnetic sensor, but finds this non-magnetic layer refers to a single sensor,
rather than a connector (id.).
Appellants direct our attention to paragraphs 27 and 36 of the
published application (US 2012/0098533 Al, published April 26, 2012) for
written description support for the limitation that the metal connectors are
non-magnetic in the Specification as originally filed (Br. 3--4). In paragraph
27, Appellants note that the Specification states that at least one non-
magnetic metal, copper, is discussed in the context of magnetic decoupling
(id.; "magnetically decoupled by a non-magnetic interlayer ( e.g., Cu, etc.)").
Appellants further note that, in paragraph 38, the Specification states that the
metal connectors also can function to magnetically decouple (id.).
After carefully considering the respective positions of the Examiner
and Appellants and the originally filed Specification, we are persuaded that a
person of ordinary skill in the art would have understood that the Inventors
were in possession of the claimed invention, specifically that the metal
connectors are non-magnetic. As Appellants note, the Specification recites
that an averaging effect takes place in the sensor element because the
plurality of serially coupled strip segments each have differing phase angles
of the switching discontinuity (Spec. ,r 38). The Specification recites that
this averaging effect also occurs it a long strip is subdivided into substrips
which are serially connected by connectors (id.). Decoupling of the
magnetic properties, according to the Specification, allows the single
substrips to react individually which leads to this averaging effect (id.). The
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Application 12/908,469
Specification discloses that such magnetic decoupling can be done using a
non-magnetic layer, i.e., a non-magnetic material (id. ,r 27). Therefore, the
ordinary artisan would have understood that the magnetic decoupling
discussed in paragraph 38 would involve a non-magnetic material for the
metal connectors that connect each of the magnetic substrips.
Accordingly, for the reasons given by Appellants in the Appeal Brief,
we will not sustain the Examiner's rejection of claims 1--4, 6, 8, and 18
under 35 U.S.C. § 112, first paragraph.
Rejection 3: Anticipation
The Examiner rejects claims 1--4, 6, 8, and 18 under 35 U.S.C.
§ 102(b) as anticipated by Bartos. The Examiner finds Bartos discloses a
magnetoresistive strip as claimed (Final 15-17). Appellants argue that
Bartos fails to teach 1) serially connected sub strips; 2) adjacent segments
having different tilt angles; and 3) that the magnetoresistive strip has
sensitivity to magnetic field strength (Br. 7-9).
In particular, Appellants contend that Bartos' strips are arranged in a
Wheatstone bridge arrangement, which is distinct from a serial arrangement
as recited in claim 1 (Br. 7). Alternatively, Appellants contend that
individual portions of strip 12 are not serially connected by non-magnetic
metal connectors that inherently magnetically decouple them (id.).
Appellants urge that each strip in Bartos is a magnetically coupled whole
that cannot be connected by non-magnetic metal connectors (id.). These
arguments are not persuasive of reversible error in the Examiner's finding of
anticipation.
As the Examiner notes, Appellants fail to explain why the presence of
a Wheatstone bridge arrangement in Bartos prevents the presence of a
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magnetoresistive strip comprising a plurality of serial segments (Ans. 17).
Indeed, even if a Wheatstone bridge does not itself have serially connected
strips such as shown in Bartos, Figure 4, those strips each contain serially
connected segments as required by Appellants' claim 1. Bartos teaches
magnetoresistive sensor elements, such as shown in Figures 4, 7, and 9,
comprising four strips ( or substrips ), wherein the leftmost two strips are
serially connected to each other and the rightmost two strips are serially
connected to each other (Bartos ,r 32; "The positive pole of the operating
voltage of the bridge is connected to the connecting contacts 6, and the
negative pole is connected to the connecting contact 5."). Further, Bartos
discloses that these strips are electrically connected to one another via
conductive, non-magnetic connections (id. ,r 43; "Four GMR strips 12 are
located on a chip surface 4 and have been supplemented by conductive, non-
magnetic connections .... ").
As to the second argument, Appellants contend that "the only
magnetization that could be considered a reference magnetization of a
pinned layer is magnetization M2 of the strip, the direction of which is
coupled to that of the third antiferromagnetic component" (Br. 8).
Appellants urge that Bartos discloses that the direction of magnetization is at
right angles to the edges in all cases, which Appellants contend means that
adjacent ones of the segments do not have different tilt angles (id.).
As the Examiner finds, the magnetization M2 follows the shape of the
substrip thereby providing a different tilt angle for each element along the
substrip (Ans. 19-20). Bartos discloses that edges 2, 3 of the substrips may
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follow sinusoidal curves, 7 such that the angle of magnetization M2 varies
along the substrip (Bartos ,r 30; "In the illustrated case, both edges 2; 3 run
parallel and are sinusoidal."). Because the direction of magnetization M2 is
at right angles to the edges 2, 3 at all points along the substrip, the angle of
this magnetization continuously varies along the length of the substrip due to
its sinusoidal shape. Thus, Bartos teaches each substrip has adjacent serial
segments having different tilt angles.
As to the third argument, Appellants contend that Bartos' sensors are
for determining angles or positions which a rotatable magnet assumes with
respect to the sensor (Br. 9. ). However, the Examiner finds that all
magnetoresistive elements are sensitive to a magnetic field strength (Ans.
21 ). Further, as the Examiner notes, though Appellants argue that Bartos'
sensors may determine angles and positions of a rotatable magnet relative to
the sensors, Appellants fail to explain how or why this functionality would
prevent Bartos' sensors from being sensitive to a magnetic field strength
(id.). As the Examiner notes, Bartos' sensors are structurally identical to
those of Appellants, as XMR sensors, and would be expected to be sensitive
to a magnetic field strength (compare Bartos ,r,r 42--43 with Spec. ,r 27). In
addition, Bartos discusses the importance of magnetic field strength in
designing these sensors, and indicates that the inventive sensors operate even
when the magnetic field strengths are relatively weak (Bartos ,r 12).
7 Bartos further teaches that the edges may be represented by any desired
mathematical function so long as the function varies continuously in the x-
direction (Bartos ,r 30).
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DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal Brief, the decision of the Examiner rejecting claims 1--4, 6, 8,
and 18 under 35 U.S.C. § 112, second paragraph, as indefinite, and under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, is reversed.
However, upon consideration of the record, and for the reasons given
above and in the Final Office Action and the Examiner's Answer, the
decision of the Examiner rejecting claims 1--4, 6, 8, and 18 under 35 U.S.C.
§ 102(b) as anticipated by Bartos is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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