Ex Parte Kudva et alDownload PDFPatent Trial and Appeal BoardDec 15, 201613231124 (P.T.A.B. Dec. 15, 2016) Copy Citation 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. 13/231,124 09/13/2011 Gautam Narendra Kudva SP08-130A 6580 22928 7590 12/19/2016 TORNTNO TNmRPORATFD EXAMINER SP-TI-3-1 CORNING, NY 14831 HESS, DOUGLAS A ART UNIT PAPER NUMBER 3651 NOTIFICATION DATE DELIVERY MODE 12/19/2016 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): u sdocket @ corning .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GAUTAM NARENDRA KUDVA, WEIWEI LOU, YOSHIHIRO NAKAMURA, and TETSUZOU YAMADA Appeal 2015-001385 Application 13/231,1241 Technology Center 3600 Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Gautam Narendra Kudva et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—9 under 35 U.S.C. § 103(a) as unpatentable over Fong (US 3,734,567, iss. May 22, 1973). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Coming Incorporated. Appeal Br. 2 (filed June 20, 2014). Appeal 2015-001385 Application 13/231,124 INVENTION Appellants’ invention relates to a “methods and apparatus for transporting glass sheets, e.g., the glass sheets used as substrates in the manufacture of liquid crystal displays (LCDs )” and, more specifically, “to transporting glass sheets without mechanical contact with the sheet’s major surfaces.” Spec. 12. Claim 1, reproduced below, is independent and representative of the claimed invention. 1. A non-contact bearing for use in transporting a glass sheet comprising a front surface which has a plurality of orifices, the front surface facing the glass sheet and the orifices ejecting liquid towards a major surface of the glass sheet during use of the bearing, wherein: (a) the orifices are distributed on the front surface to form at least one row that is oriented horizontally during use of the bearing; and (b) the orifices have an average horizontal pitch P which satisfies the relationship: 20 < P < 55, where P is in millimeters. Appeal Br. (Claims App.) (emphasis added). ANALYSIS Rejecting claims 1—9, the Examiner finds Pong discloses the “structural items” recited, but “does not teach the exact. . . pitch of the orifices.” Pinal Act. 2. The specific pitch (i.e., 20 < P < 55) the claims require “would have been an obvious matter of design choice . . . based on the type of article and amount of liquid being supplied to the bearings,” the Examiner concludes. Id. “The mere claiming of such specifics do not 2 Appeal 2015-001385 Application 13/231,124 provide a patentable departure over the device of Fong.” Id. at 2—3 (emphasis omitted). Appellants argue persuasively that “the Examiner has failed to sufficiently explain how Fong renders the present claims obvious when Fong is lacking: (i) disclosure regarding orifice pitch of 20 to 55 mm as set forth in claim 1.” Appeal Br. 9. Rather than being a simple design choice, Appellants assert, (1) the amount of liquid supplied to the bearings does not impact the orifice pitch ... as far as Fong is concerned, and (2) one looking to design an orifice [pitch] to suit the purpose in Fong would come up with different values than Appellants claim because the purposes in Fong and the present invention are different. Id. As support, Appellants identify that “Fong is directed to an air bearing in which orifices are designed (pitched and sized) so as to eject air from the surface thereof.” Id. (citing Fong, Abstract; col. 1,11. 3—8, 46—62; col. 3,11. 10-23). Because the claimed orifices must “eject[] liquid towards a major surface of the glass sheet during use of the bearing,” Appellants contend ejecting air, as Fong discloses, presents different considerations that would cause a skilled artisan to look in a different direction than the specific pitches recited for the claimed orifices. Id. at 10. Fong discloses, as Appellants note, ejecting air through the orifices to repel (or lift) an article to either force the article away from a side wall of the conveyor or force the article toward the end of the conveyor. Id. at 10-11 (citing Fong, col. 2,11. 23-35; col. 3,11. 32^18, 47-64; col. 3,1. 64-col. 4,1. 3; col. 4,11. 3-9; Figs. 2, 3, 6). Appellants assert, “the purpose of providing positive pressure would lead one toward smaller and smaller orifice . . . pitches.” Id. at 11. 3 Appeal 2015-001385 Application 13/231,124 The purpose of orifices ejecting air is contrary to the purpose of the claimed liquid ejecting orifices, according to Appellants, because the claimed “arrangement is directed towards producing a balanced positive and negative pressure on the sheet to minimize damage thereto as it is conveyed.” Id. at 10. Pointing to the Specification, Appellants explain that the claimed orifices eject liquid “towards a major surface of the glass sheet during use of the bearing” to create a balanced repelling/sucking force with the liquid barrier between the conveyor wall and the article. Id. at 11 (citing Spec. 4, 5, 30-39; Figs. 2A—2E). Appellants point out that, with respect to orifice pitch, it was found that a horizontal pitch of 15 mm produced unacceptably large repulsive forces on the glass sheet, whereby the glass sheet would tend to fly off of the bearing since the attractive forces were insufficient to restrain the sheet, whereas an average horizontal pitch of 65 mm produced insufficient repulsive force so that there would be no guarantee that the sheet would not be damaged as a result of contact with the bearing, whereas a horizontal pitch of 20—55 mm (as set forth in claim 1) produced desirable results. Id. at 11—12 (citing Spec. H 40-43, 49; Fig. 7). The difference between using a liquid-ejecting orifice to create balanced repelling/attracting forces and using an air-ejecting orifice to create only repelling forces, as Fong does, is significant because the purpose drives the choices a skilled artisan would make for the orifice pitch, Appellants argue. Id. at 12. In response, the Examiner asserts Appellants’ liquid/air points of distinction “are not relevant because . . . liquid is not part of the claimed invention,” and “[t]he claims do not require the article to be balanced between a positive and negative air as argued against the Fong reference.” Ans. 4. The Examiner further contends, “[t]he claimed invention is merely a non-contact bearing surface with a plurality of orifices, whereby the orifices 4 Appeal 2015-001385 Application 13/231,124 are claimed with a specific pitch range and orifice size. Any arguments beyond that are not being addressed any further since they are not claimed and therefore, not convincing.” Id. Notably, however, the Examiner does not dispute Appellants’ evidence or argument that using a liquid-ejecting orifice would lead a skilled artisan to make different choices for the orifice pitch parameters. Nor does the Examiner offer additional support or explanation for why the specifically claimed orifice pitches would have been a recognized option to a skilled artisan for the orifices Fong discloses. The Examiner is mistaken that Appellants do not positively claim and require liquid-ejecting orifices. Following the transitional term “comprising” setting forth limitations of the claimed apparatus, claim 1 recites, “the orifices ejecting liquid towards a major surface of the glass sheet during use of the bearing.” Appeal Br. (Claims App.). The broadest reasonable interpretation of that language, with the Specification as a backdrop, limits the claimed apparatus to having liquid-ejecting orifices that eject liquid towards a major surface of the glass sheet during use of the bearing. As such, the Examiner erred by dismissing Appellants’ arguments as irrelevant and not giving all of the claimed limitations proper weight. Furthermore, the Examiner’s conclusion that the specific orifice pitch claimed would have been an obvious “design choice” lacks a rational underpinning. Although the Examiner determines “the type of article and amount of liquid being supplied to the bearings” would guide a skilled artisan to the pitches claimed, the Examiner offers no explanation or evidence to support this position. This is particularly problematic in this case because the Examiner also fails to offer a persuasive rebuttal to the reasoning and facts Appellants present arguing a skilled artisan’s selection 5 Appeal 2015-001385 Application 13/231,124 of which pitch to use with Fong’s air-ejecting orifices would have led away from the claimed orifice pitches. Still further, we note the Examiner does not offer any facts or explanation for why a skilled artisan would have been motivated to modify Fong to eject a liquid, instead of air, from the orifices. “[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l v. Teleflex, 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citations omitted)); see also In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995) (citing In re Gal, 980 F.2d 717 (Fed.Cir.1992) (“design choice” reasoning is generally unpersuasive where the claimed structure and the function it performs are different from that of the prior art)). Therefore, because Appellants have persuasively demonstrated there are significant distinct differences between the Fong apparatus and the claimed structure and the function it performs, we do not sustain the Examiner’s rejection of claims 1—9 as unpatentable over Fong. SUMMARY The Examiner’s anticipation rejection of claims 1—9 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation