Panasonic Intellectual Property Management Co., Ltd.

Patent Trials and Appeals Board

Mar 16, 2021

2019006183 (P.T.A.B. Mar. 16, 2021)

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.
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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.”).
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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.).
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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).
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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.
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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
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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
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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
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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
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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
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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

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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.
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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
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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
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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.