Panasonic Intellectual Property Management Co., Ltd.Download PDFPatent Trials and Appeals BoardMar 16, 20212019006183 (P.T.A.B. Mar. 16, 2021) 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. 14/736,817 06/11/2015 Hideo MATSUOKA PIPMM-54594 7454 52054 7590 03/16/2021 PEARNE & GORDON LLP 1801 EAST 9TH STREET SUITE 1200 CLEVELAND, OH 44114-3108 EXAMINER CARTER, CHRISTOPHER W ART UNIT PAPER NUMBER 2117 NOTIFICATION DATE DELIVERY MODE 03/16/2021 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): patdocket@pearne.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte HIDEO MATSUOKA ____________________ Appeal 2019-006183 Application 14/736,817 Technology Center 2100 ____________________ Before JOHN A. EVANS, JUSTIN BUSCH, and JOHN P. PINKERTON, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge PINKERTON. Opinion Dissenting filed by Administrative Patent Judge BUSCH. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1 and 3, which are all of the claims pending in the application. Claims 2 and 4 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Panasonic Corporation and Panasonic Intellectual Property Management Co., Ltd. as the real parties in interest. Appeal Br. 2. Appeal 2019-006183 Application 14/736,817 2 STATEMENT OF THE CASE Introduction Appellant generally describes the disclosed and claimed invention as relating to “a component mounting system that mounts a component on a substrate, and a component data creation method.” Spec. ¶ 1.2 The Specification explains that, when the master component is not in stock in a mounting line, the same type of alternative component supplied by the same manufacturer may not be prepared, so an alternative component whose component data has not been created needs to be used. Id. ¶ 6. The Specification further explains that such an alternative component may be brought from another mounting line, but in order to use it in production, an operator must manually create its component data, during which time the operation of the apparatus must be stopped. Id. Therefore, according to the Specification, “it is difficult to rapidly cope with such a situation at the production site.” Id. To address this problem, the Specification describes “a component mounting system and a component data creation method capable of rapidly and simply creating component data regarding an alternative component at a production site.” Id. ¶ 7. Claims 1 and 3 are independent claims. Claim 1, which is reproduced below, is illustrative of the subject matter on appeal: 2 Our Decision refers to the Final Office Action mailed Mar. 28, 2018 (“Final Act.”) and Advisory Action mailed Aug. 7, 2018 (“Advisory Act.”), Appellant’s Appeal Brief filed Mar. 14, 2019 (“Appeal Br.”) and Reply Brief filed Aug. 20, 2019 (“Reply Br.”), the Examiner’s Answer mailed June 25, 2019 (“Ans.”), and the Specification filed June 11, 2015 (“Spec.”). Appeal 2019-006183 Application 14/736,817 3 1. A component mounting system comprising: a component mounting apparatus which mounts components supplied from a component supply member disposed in a component supplying unit on a substrate; a data creating apparatus which creates component data, which is a control parameter set for mounting the component on the substrate by the component mounting apparatus, for each component; and a component arranging operation supporting apparatus which includes an identification information acquiring unit that acquires component identification information given to the component supplying member, and a control unit which checks whether or not the component disposed in a predetermined position in the component supplying unit is a component to be disposed in the predetermined position based on the component identification information acquired by the identification information acquiring unit, wherein the control unit of the component arranging operation supporting apparatus includes a component data creation requesting unit that transmits the component identification information acquired by the identification information acquiring unit and identification information related to an alternative component that is used as an alternative to the component to the data creating apparatus and performs a request for a creation of component data regarding the alternative component, and the data creating apparatus receives the request from the component data creation requesting unit and creates the component data regarding the alternative component by copying the component data regarding the component that is replaced with the alternative component, wherein the component mounting apparatus is configured to mount the alternative component supplied from the component supply member to the substrate based on the component data regarding the alternative component created by the data creating apparatus. Appeal Br. 11–12 (Claims App.). Appeal 2019-006183 Application 14/736,817 4 Rejection on Appeal3 Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ishimoto (US 8,849,442 B2; issued Sept. 30, 2014) and Elhanan et al. (US 2007/0250201 A1; published Oct. 25, 2007) (“Elhanan”). Final Act. 4–11. ANALYSIS The dispositive4 issue raised by the arguments in Appellant’s briefs is whether the combination of Ishimoto and Elhanan teaches or suggests “the data creating apparatus . . . creates the component data regarding the alternative component by copying the component data regarding the component that is replaced with the alternative component,” as recited in claim 1 (“the copying limitation”), and as similarly recited in independent claim 3.5 Appeal Br. 7–9; Reply Br. 2–4. The Examiner rejects claim 1 under 35 U.S.C. § 103 for obviousness over the combination of Ishimoto and Elhanan. Final Act. 4–7. In particular, the Examiner finds Elhanan teaches the “copying” limitation of claim 1. Id. at 7 (citing Elhanan ¶¶ 71–73). According to the Examiner, 3 In the Final Office Action, the Examiner also rejected claims 1 and 3 under 35 U.S.C. § 101 “because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.” Final Act. 2–4. This rejection, however, is not before us on appeal because the Examiner withdrew the rejection in the Advisory Action. Advisory Act. 2 (“The applicant’s amendments to claims 1 and 3 have successfully overcome each and every 35 U.S.C. 101 rejection.”). 4 To the extent Appellant raises other arguments in its briefs, we do not address them because we determine that this issue is dispositive. 5 Appellant argues claims 1 and 3 as a group. See Appeal Br. 7–9; Reply Br. 2–4. We select claim 1 as illustrative; claim 3 stands or falls with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-006183 Application 14/736,817 5 Elhanan discloses “where generic geometric parameters are copied from a specific component to be used in the manufacturing process and where a substitute (alternative) component is chosen based on a match of a copy of the generic geometric parameters, thus the substitute (alternative) component is a copy of the specific component.” Id. The Examiner explains that Elhanan’s method “creates a copy of generic geometric component data of the part to be replaced, and finds a component that has a copy of the same parameters to replace the spent component,” which “in essence is creating a copy of the original component when finding a replacement part and also does not require human intervention.” Advisory Act. 2 (citing Elhanan ¶¶ 71–75). Elhanan describes a method of manufacturing electronic circuits in which substitute components may be employed on the manufacturing line instead of original components. Elhanan ¶¶ 1, 5, 31, 130–31. Figure 22 of Elhanan is illustrative and is reproduced below. Appeal 2019-006183 Application 14/736,817 6 Figure 22 of Elhanan is a flowchart showing the functionality of a system for automated manufacture of electronic circuits, including functionality for modifying operating instructions when seeking to employ a substitute component having a different characteristic on the manufacturing Appeal 2019-006183 Application 14/736,817 7 line. Id. ¶¶ 130–31, 316. As shown in Figure 22, the User Maintained Component Library (UMCL) is employed to find generic component geometric (GCG) parameters of original and substitute components. Id., Fig. 22. If the GCG parameters for the substitute component are not found, a new Programmer Component Number (PCN)/GCG method is employed. Id. ¶ 317, Figs. 17A–B, 22; see also ¶¶ 282–84 (describing Figures 17A–B). This method finds GCG parameters by (1) searching a Master Component Vendor Library (MCVL) for a different PCN having a component vendor (CV) or catalog number (CAT#) in common with the substitute component’s PCN, (2) searching the MCVL for a different CV/CAT# corresponding to the different PCN but not the substitute component’s PCN, and (3) employing the different CV/CAT# to search the Compiled Component Library (CCL) for corresponding GCG parameters. Id., Fig. 17A. If GCG parameters still are not found, they are manually generated for the substitute component. Id., Fig. 17B. Once the GCG parameters for the substitute component have been found or generated, they are auto-compared to the GCG parameters of the original component. Id., Fig. 22. If there are no discrepancies, the method is done. Id. If discrepancies are found, however, mappings are employed to find Machine Specific Shape Parameters (MSSHPs) corresponding to the substitute component. Id. ¶ 318, Figs. 6, 22; see also id. ¶¶ 194–213 (describing Figure 6). If MSSHPs are found, the operating instructions are updated accordingly. Id. ¶ 318. Otherwise, the MSSHPs are auto-generated for the substitute component by employing generic component shape identifiers and GCG parameters, and then the operating instructions are Appeal 2019-006183 Application 14/736,817 8 updated accordingly. Id. ¶ 318, Figs. 14, 15A–E; see also id. ¶¶ 266–79 (describing Figure 14 and Figures 15A–E). In the Answer, the Examiner “interpret[s] the claim such that the process of creating the alternative component data requires the data to be copied, but the claims do not preclude other steps from occurring after or before the copying.” Ans. 4. Accordingly, the Examiner explains that “[a]s long as the original data is copied as part of the creation process, the claim limitation is met,” and “the claim does not require the two component data to be identical, only that a copying operation takes place during the creation of the alternate data.” Id. The Examiner then finds Elhanan teaches the “copying” limitation for the following reasons: Pointing now to the Elhanan reference, and in particular Figure 22 and paragraphs [0070]-[0075], a similar event occurs in which a component is exhausted in a pick and place machine and the need for a substitute component arises. In response, with reference to box 1 of Fig. 22, the system uses original component to generate generic component parameters, thus creating a copy of the original components data. The system then uses the data to select a component with the same generic component data of the original component thus replacing the part with a copy of the original. In the event there is a discrepancy, only a correction is made for the discrepancy while the rest of the component remains a copy of the original component being replaced. When a replacement part is found, the system then utilizes the generated generic component parameters in the control program regardless of the specific component data of the replacement part as the control instructions for the pick and place machine. Id. 4–5 (citing Elhanan ¶¶ 70–75, Fig. 22). Appellant argues Elhanan does not teach or render obvious the “copying” limitation as recited, but “instead merely teaches independently getting the component data for the alternative component or independently Appeal 2019-006183 Application 14/736,817 9 generating data for an alternative (substitute) component based on generic data.” Reply Br. 2; see also Appeal Br. 8–9. In support of its argument, Appellant makes the following assertions. First, “the claimed subject matters utilizes the component data of a component being replaced (via copying) for the alternative component, whereas the component data for the alternative component in Elhanan is independent of the data for the component being replaced.” Id. Second, “nothing in Fig. 22 relates to how the parameters for the substitute component are created, let alone shows that they are copied; and nothing in Figs. 17A and 17B explains how the creation of parameters for a substitute component is based on copying those of a component being replaced.” Id. at 3 (citing Elhanan, Figs. 17A–B, 22). Third, the only relationship between the substitute component data and that of the component being replaced is the comparison of the two data to identify any discrepancies. . . . But the lack of discrepancies does not indicate that data was actually copied, only that it happened to be the same component. And in the event of discrepancies, nothing about the data of the substitute component is changed so that it becomes a copy of the data for the component being replaced; rather, only the operating instructions of the machine are updated to account for the discrepancy. Id. We are persuaded that the Examiner erred. As an initial matter, we conclude the Examiner’s interpretation of the claim term “copying” is unreasonably broad. The mere fact that an original component’s parameters correspond to, or are replaceable with, a substitute component’s parameters does not mean that “copying” of the original component’s parameters has occurred when creating the substitute component’s parameters. Rather, we Appeal 2019-006183 Application 14/736,817 10 conclude the broadest reasonable construction of the term “copying” is duplicating or reproducing an original—that is, starting with component data of the master component and duplicating or reproducing it to create component data of the alternative component. This is consistent with the Specification, which states that one reason the component data of the master component is copied “is because the labor of a person that initially creates the component data 20 is rendered unnecessary.” Spec. ¶ 43. The Examiner identifies no persuasive evidence either in the claims or Specification that supports a broader construction of “copying.” Applying the broadest reasonable interpretation of “copying,” we determine that the Examiner erred in finding the cited disclosures of Elhanan teach or suggest the copying limitation of claim 1. As discussed above, Elhanan describes various ways of finding or generating parameters for the substitute component, comparing those parameters to parameters of the original component, determining whether there are discrepancies between the parameters of the original and substitute components (in other words, determining whether the parameters correspond to one another), and resolving any existing discrepancies. But none of the cited disclosures of Elhanan teaches or even suggests “copying” parameters of the original component to create parameters of the substitute component. Accordingly, we find the preponderance of the evidence establishes that the cited portions of Elhanan do not teach or suggest the copying limitation of claim 1. The Examiner does not rely on Ishimoto to teach this limitation, nor does the Examiner provide a rationale to combine that cures the above deficiencies. Thus, we do not sustain the Examiner’s rejection of claim 1. For the same reasons, we do not sustain the Examiner’s rejection of Appeal 2019-006183 Application 14/736,817 11 independent claim 3, which falls with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We reverse the Examiner’s rejection of claims 1 and 3 under 35 U.S.C. § 103 as being unpatentable over Ishimoto and Elhanan. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3 103 Ishimoto, Elhanan 1, 3 REVERSED Appeal 2019-006183 Application 14/736,817 12 BUSCH, Administrative Patent Judge, dissenting. I agree with much of the Majority Opinion. In particular, I agree with the majority that Elhanan does not teach or suggest copying the original component’s GCG (Generic Component Geometry) parameters, which is the primary focus of the Appellant’s briefs and the Examiner’s findings. I write separately because I believe the Examiner has identified portions of Elhanan that would have rendered obvious “creating component data regarding the alternative component by copying the component data regarding the component that is replaced with the alternative component” (the disputed limitation). Accordingly, I agree with the Examiner’s conclusion of obviousness based on the cited disclosures. More specifically, I find Elhanan teaches or suggests copying component data—other than the GCG parameters—as described in Elhanan’s cited Figures and disclosures. The Examiner cites Figure 22 and paragraphs 71 through 75 as teaching this limitation, and paragraphs 310 through 318 describe Figure 22.6 The Majority Opinion succinctly summarize much of Elhanan’s cited disclosures, so I will not repeat most of that here. See Majority Opinion 5–8. Instead, I will focus my discussion on Elhanan’s particular disclosures that I believe teach or suggest the disputed limitation. These disclosures describe what occurs in Elhanan after comparing the GCG parameters for the original and substitute components. In particular, Elhanan discloses that, “it is assumed that the machine line programmer has already provided MSSUPs [(Machine Specific Supply 6 The Examiner relies on Elhanan only for this particular portion of the claims. In this Appeal, Appellant does not argue Ishimoto’s teachings or the Examiner’s rationale for combining Ishimoto’s and Elhanan’s teachings. See Appeal Br. 7–9; Reply Br. 2–4. Appeal 2019-006183 Application 14/736,817 13 Parameters)] and MSSHPs [(Machine Specific Shape Parameters or Machine Specific Component Shape Parameters)] for the production of a given electronic circuit on a machine line.” Elhanan ¶ 314; see Elhanan ¶¶ 22–23, 170, 189, 196, 265, 295 (defining the MSSHP and MSSUP acronyms). Elhanan discloses that “[i]t is necessary, sometimes at very short notice, to substitute one of the components used in production of the electronic circuit . . . by another component having at least one different characteristic.” Elhanan ¶ 314. The goal is then to “adapt the operating instructions without, insofar as possible, interrupting production by the machine line.” Elhanan ¶ 314. To facilitate swapping a substitute component for the original component, Elhanan discloses comparing the respective GCG parameters for the original and substitute components. Elhanan ¶¶ 315, 318. If there is a discrepancy, the system performs various steps to find or generate MSSHPs for the substitute component. Elhanan ¶ 318. On the other hand, if no discrepancy is found, as depicted in Figure 22, the process is “DONE.” Elhanan, Fig. 22; see Elhanan ¶¶ 314–318. Notably, Elhanan discloses that to substitute a component with as little interruption as possible, the “machine line programmer wishes to adapt the operating instructions.” Elhanan ¶ 314; see Elhanan ¶ 316 (describing Figure 22 as “a simplified flowchart illustrating . . . functionality for modifying operating instructions when a substitute component, having at least one different characteristic, is sought to be employed on a manufacturing line”). Elhanan uses the “new MSSHPs” for the substitute component to update the operating instructions. Elhanan ¶ 315. Viewed in the context of the flowchart and accompanying description, the reason for Appeal 2019-006183 Application 14/736,817 14 comparing the GCG parameters becomes apparent—to determine whether the system needs to generate new MSSHPs for the substitute part and, if so, how. Elhanan ¶¶ 316–318. Considering these disclosures together, Elhanan teaches that the substitute component’s MSSHPs and other component data used for the machine line do not need to be changed from the original component’s MSSHPs and other component data when there is no discrepancy between their respective GCG parameters. See Fig. 22 (depicting that the process is done when there is no discrepancy). Moreover, when there is no discrepancy, a person of ordinary skill in the art would understand two options for setting the substitute component’s MSSHPs—using the original component’s MSSHPs and other component data or copying the original component’s MSSHPs and other component data. In other words, copying the original component’s MSSHPs as described above would have been within the “inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Thus, given that Elhanan’s system “is preferably embodied in software loaded onto one or more computers,” I find that these disclosures taken together at least suggest copying the original component’s MSSHPs to create a new record in the database storing the necessary parameters and operating instructions for a particular machine and component. In that way, when the system looks up the substitute component in the future, the MSSHPs would be associated with that substitute component. Although Elhanan does not explicitly disclose copying these parameters, the claims stand rejected as obvious over the combination of Ishimoto and Elhanan, and Appeal 2019-006183 Application 14/736,817 15 an explicit disclosure is not required for showing obviousness. Because I would find Elhanan at least suggests the disputed limitation for the reasons discussed above, I conclude that the combination of Ishimoto and Elhanan renders the claimed subject matter obvious. Accordingly, I respectfully dissent. 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