KOKAWA, Ryohei

Patent Trials and Appeals Board

Dec 17, 2019

15030914 - (D) (P.T.A.B. Dec. 17, 2019)

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.
15/030,914 04/21/2016 Ryohei KOKAWA Q224712 6960
23373 7590 12/17/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
MCCORMACK, JASON L
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte RYOHEI KOKAWA1
________________

Appeal 2018-004695
Application 15/030,914
Technology Center 2800
________________

Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
RUSSELL E. CASS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–4, which constitute all claims pending in this
application. Appeal Br. 4.2 We have jurisdiction under 35 U.S.C. § 6(b).
Oral argument was held on December 9, 2019. A copy of the transcript will
be added to the record in due course. We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Shimadzu
Corporation. Appeal Brief filed January 2, 2018(“Appeal Br.”), 2.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
May 9, 2017 (“Final Act.”); the Examiner’s Answer mailed February 8,
2018 (“Ans.”); and the Reply Brief filed March 28, 2018 (“Reply Br.”).
Appeal 2018-004695
Application 15/030,914

2
CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
The invention provides a cantilever attachment fitting that
makes it easy to attach a [scanning probe microscope] cantilever
to a cantilever holder. The cantilever attachment fitting has an
attachment platform of which the upper surface is to have a
cantilever placed on, a pressing member for pressing the
cantilever against the upper surface of the attachment platform,
and a lifting mechanism for moving the pressing member upward
from the upper surface of the attachment platform. The
cantilever attachment fitting is further provided with [the
following elements]: a sliding platform having a sliding surface
for sliding the cantilever toward the attachment platform; a base
for fixing the cantilever holder in the horizontal direction so that
the attachment platform is in a predetermined location relative to
the sliding platform; and a pressing unit for pressing downward
the cantilever holder fixed to the base.
Abstract.
Independent claim 1, reproduced below, illustrates the appealed
claims:
1. A cantilever attachment fitting to be used for attaching a
cantilever to a cantilever holder, comprising:
an attachment platform including an upper surface
configured to have a cantilever placed on the upper surface,
a pressing member for pressing the cantilever against the
upper surface of the attachment platform,
a lifting mechanism for moving the pressing member
upward from the upper surface of the attachment platform,
a sliding platform having a sliding surface, the sliding
surface being configured to allow said cantilever to be slid along
the sliding surface by a person toward said attachment platform;
a base for fixing said cantilever holder in the horizontal
direction so that said attachment platform is in a predetermined
location relative to said sliding platform; and
Appeal 2018-004695
Application 15/030,914

3
a pressing unit for pressing downward said cantilever
holder fixed to said base so that the cantilever is attached to the
cantilever holder,
wherein the upper surface of the attachment platform and
said sliding surface of the sliding platform face upward relative
to the vertical direction, the vertical direction being a direction
perpendicular to a plane of the ground that supports the cantilever
attachment fitting.

STATEMENT OF THE REJECTIONS
Claims 1–4 stand rejected under 35 U.S.C. § 112(b) or pre-AIA 112,
¶ 2, as being indefinite. Final Act. 3.
Claims 1–4 stand rejected under 35 U.S.C. § 103 as being
unpatentable. Final Act. 3–7.
The Examiner bases the prior-art rejection on the following
references:
Name Reference Date
Young et al. 5,705,814 Jan. 6, 1998
Howard 5,450,746 Sept. 19, 1995

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

THE INDEFINITENESS REJECTION
Determinations and Arguments
The Examiner initially finds that there is insufficient antecedent basis
for claim 1’s term “the vertical direction” and determines that “it is therefore
Appeal 2018-004695
Application 15/030,914

4
unclear which direction is ‘the vertical direction.’” Final Act. 3. The
Examiner does not further address the indefiniteness rejection either in the
“Response to Arguments” section of the Final Action (see id. at 2) or in the
Examiner’s Answer (see Ans. 3–5).
The Examiner does clarify in the Answer’s discussion of the
obviousness rejection, though, how the claim language, “the vertical
direction” is being interpreted:
Although it appears that Appellant believes that claim 1 is limited
only to the interpretation that the “vertical direction” is the
positive Z-direction perpendicular to and away from the ground,
claim 1 can reasonably be interpreted that the “vertical direction”
is instead the negative Z-direction (which is still perpendicular to
and away from the ground); in which case “upward” becomes
“downward”, and “upper” becomes “lower”.
Ans. 5.
As such, we understand the Examiner’s position to be that claim 1’s
recitation of “the vertical direction” is unclear because it might be referring
to a direction perpendicular to the ground that is either away from the
ground (the positive Z-direction) or towards the ground (the negative Z-
direction).
Appellant argues that, reading claim 1 as a whole, it is reasonably
clear that the recited “vertical direction” refers to the positive Z direction.
Appeal Br. 5–6.
Analysis
For the purposes of the indefiniteness rejection, we need not decide
whether the claim recitation of “the vertical direction” is limited to the
positive Z-direction, as Appellant urges, or is broad enough to read on either
direction of a vertical axis (either the positive or negative Z-direction), as the
Appeal 2018-004695
Application 15/030,914

5
Examiner determines. Even if we were to assume, solely for the sake of
argument, that the Examiner correctly determined that “the vertical
direction” corresponds to the vertical axis that could indicate either the
positive or the negative direction, that interpretation would not render the
claim scope indefinite. That interpretation merely would make the claim
scope generic to two possible embodiments and, therefore, broader than
Appellant urges it to be. The legal principle has been long and clearly
established that breadth of a claim is not to be equated with indefiniteness.
See, e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971).
Accordingly, we do not sustain the indefiniteness rejection of
independent claim 1 or of dependent claims 2–4.

THE OBVIOUSNESS REJECTION
Determinations and Arguments
The Examiner finds that Young discloses all of the limitations of
claim 1 with the exception that “there is no explicit disclosure of sliding the
cantilever by a person along the sliding surface.” Final Act. 4–5. The
Examiner finds that Howard teaches that the removal and replacement of
such a cantilever and holder can be performed by a person, and the
Examiner concludes that motivation existed to have modified Young
according to the teachings of Howard. Id. at 5.
The embodiment of Young’s Figure 6 on which the Examiner relies
differs from the present invention, at least as disclosed, in some notable
aspects. Primarily, Young’s probe mount pickup mechanism 32 has an
orientation that essentially is upside down (i.e., inverted) relative to the
orientation of Appellant’s cantilever holder 20. That is, the present
Appeal 2018-004695
Application 15/030,914

6
invention is designed to hold the cantilever down upon the upper surface of
an attachment platform 21, whereas Young’s probe pickup mechanism is
designed to hold the cantilever 4 up against the bottom surface of the probe
mount 32. Compare, e.g., Appellant’s Figure 1 with Young’s Figure 6.
The Examiner and Appellant do not disagree on this fact. Rather, the
Examiner interprets Appellant’s claim 1 to be drafted broadly enough
reasonably to read additionally on such an upside down orientation. As
noted in the preceding section of this Opinion, the Examiner reasons, as
follows:
Although it appears that Appellant believes that claim 1 is limited
only to the interpretation that the “vertical direction” is the
positive Z-direction perpendicular to and away from the ground,
claim 1 can reasonably be interpreted that the “vertical direction”
is instead the negative Z-direction (which is still perpendicular to
and away from the ground); in which case “upward” becomes
“downward”, and “upper” becomes “lower”.
Ans. 5.
Appellant presents various arguments for why the Examiner’s failure
to take the recited directions into consideration leads to an unreasonably
broad construction of the claim language. Appeal Br. 6. For example,
Appellant argues that claim 1 recites a lifting mechanism, whereas Young’s
probe 4 is lowered, which is the opposite of lifting. Id. Appellant also
argues, “it is the Examiner’s position that a lower surface of the mount 32
corresponds to the recited sliding surface that faces upward.” Id. (citing
Final Act. 4:14–20).
Analysis
Appellant’s arguments are persuasive. As previously noted, the
Examiner appears to justify the broad interpretation of “upward” and “the
Appeal 2018-004695
Application 15/030,914

7
vertical direction” on the premise that “the vertical direction” is broad
enough to mean either the positive or negative Z-direction. Ans. 5. But this
adopted interpretation requires reading the claim term “vertical direction” in
isolation and out of context from the remainder of the claim. The Examiner
even admits that in order for the claim to read on the cited art, the claim
language “‘upward’ becomes ‘downward’, and ‘upper’ becomes ‘lower’.”
Id.
That is, the Examiner acknowledges that he premises the adopted
claim interpretation on broadly attributing meanings to various claim terms
that are the exact opposite of their generally understood meanings. Such
interpretations run contrary to the well-established principle that during
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).
Furthermore, the Examiner neither takes the position, nor cites
evidence or reasoning sufficient to support a conclusion, that Young’s
device would be operable in an upside-down orientation. Final Act. 3–7;
Ans. 3–5.
Accordingly, we do not sustain the obviousness rejection of
independent claim 1 or of dependent claims 2–4.

Appeal 2018-004695
Application 15/030,914

8
CONCLUSION
In summary:

REVERSED

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–4 112(b) Indefiniteness 1–4
1–4 103 Young, Howard 1–4
Overall
Outcome
1–4