Ex Parte 6580501 et al

Board of Patent Appeals and Interferences

May 17, 2012

95000028 (B.P.A.I. May. 17, 2012)

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.
95/000,028 11/13/2003 6580501 70179-REEXAM 7612
23872 7590 05/17/2012
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

OK INTERNATIONAL INC.
Requester and Respondent

v.

ERSA GmbH
Patent Owner and Appellant
____________

Appeal 2012-004545
Reexamination Control 95/000,028
Patent 6,580,501 B21
Technology Center 3900
____________

Before JEFFERY B. ROBERTSON, DANIEL S. SONG, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent in this reexamination appeal proceeding (the “‘501
Patent”) issued to Mark Cannon on June 17, 2003 from Application
09/866,400 filed May 25, 2001.
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A. STATEMENT OF THE CASE
Summary
Patent Owner ERSA GmbH (“ERSA”) appeals under 35 U.S.C.
§§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-29.2 Third-
Party Requester OK International Inc. (“OK Int’l”) urges that the
Examiner’s decision must be affirmed.3 We have jurisdiction under 35
U.S.C. §§ 134(b) and 315(a).
We reverse the Examiner’s decision to reject claims 1-29.
The Invention
The invention relates to device allowing for the visual inspection of
concealed soldered joints between an electronic component and a printed
circuit board. (‘501 Patent, Abstract.) The device incorporates a lens head,
which includes an “image deflection” component (id. at 2:43-56) described
as a “deviating prism” or “deviating mirror,” and allows for viewing of the
soldered joints from the side (id. at 4:5-23). In explaining the improvement
of its disclosed invention over the known prior art (termed “known
endoscopes”), the ‘501 Patent sets forth the following (id. at 2:57-67):
In contrast to the known endoscopes, however, in which the lens or
the deflection device is by virtue of the type of construction located at
least a short distance from the axially outer “distal” end of the lens
head, with the apparatus according to the invention the device for
image deflection extends up to the axially outer end of lens head. For

2 See ERSA’s Appeal Brief filed September 29, 2008 (“App. Br.”).

3 See OK Int’l’s Respondent Brief filed October 29, 2008 (“Resp. Br.”).

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this reason alone the image exit or image entry point of the lens can be
placed considerably closer to the printed circuit board in comparison
with the prior art, so that gaps of smaller height or soldered joints
disposed therein are visually inspectable.

In further describing the configuration of preferred embodiments of
the invention, the ‘501 Patent also explains (id. at 4:15-18):
This means in other words that the lower end of the deviating prism or
the deviating mirror can be brought to rest directly against the printed
circuit board, in order to guarantee an image deviation also into
extremely low gaps[.]

Claims 1 and 22 are illustrative of the appealed subject matter and
read as follows (App. Br., pp. 32, 38, Claims App’x.):
1. An apparatus for the visual inspection of soldered joints
between an electric or electronic component disposed on the surface
of a printed circuit board and the printed circuit board, the apparatus
comprising:

an ocular unit;

a lens head;

an image transmission unit for transmitting the image received
by said lens head to said ocular unit; and

an illuminating device for illuminating the soldered joints to be
inspected, said lens head comprising a device for image deflection
extending up to an axially outermost end of said lens head, said
illuminating device being disposed in said lens head to provide a light
exit directed toward the soldered joints to be inspected, said light exit
being disposed besides said device for image deflection at the axially
outer end of said lens head.

22. A visual inspection apparatus comprising:

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an image transmission unit having a longitudinal axis with first
and second ends at opposite longitudinal ends, said image
transmission unit transmitting an image from said first end to said
second end along said longitudinal axis;

head arranged at said first end of said image transmission unit,
said head extending a predetermined distance from said first end of
said imagine [sic] transmission unit to form an assembly with a head
end at substantially a farthest longitudinal distance of said head from
said image transmission unit and with said head end defining an axial
extent of said assembly;

an image deflection device arranged in said head for receiving
an external image at an image axis angularly spaced from said
longitudinal axis of said image transmission unit, said image
deflection device for feeding the external image into said first end of
said image transmission unit substantially along said longitudinal axis,
said image deflection device for receiving the external image at said
substantially farthest longitudinal distance of said head from said
image transmission unit;

an illuminating device in said bead, said illuminating device
emitting light substantially parallel to said image axis at a longitudinal
position of said image deflection device.

The Prior Art
D’Amelio et al. (“D’Amelio”) 4,699,463 Oct. 13, 1987
Kuroiwa et al. (“Kuroiwa”) 4,735,483 Apr. 5, 1988
Holliday et al. (“Holliday”) 6,043,876 Mar. 28, 2000

Japanese Patent Application H04-242213 from inventor Susumu Takahashi
published August 28, 1992 (“Takahashi”)4.

Article from Instrumentation Scouting Reports titled “High-Reliability
Soldering” dated March 1990. (“High-Reliability Soldering”)

4 The record includes an English translation of this Japanese document.
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The Involved Rejections
The Examiner rejected claim 22 under 35 U.S.C. § 102(b) as
anticipated by Kuroiwa.
The Examiner rejected claims 1 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and High-Reliability Soldering.
The Examiner rejected claims 2-6 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and High-Reliability Soldering.
The Examiner rejected claims 7, 8, and 11-16 under 35 U.S.C.
§ 103(a) as unpatentable over Kuroiwa, High-Reliability Soldering, and
Takahashi.
The Examiner rejected claims 9 and 21 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa, High-Reliability Soldering, and D’Amelio.
The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and Holliday.
The Examiner rejected claims 18 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and Holliday.
The Examiner rejected claims 23-28 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and Takahashi.
The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and High-Reliability Soldering.
The Examiner rejected claim 29 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejected claims 22 and 29 under 35 U.S.C. § 112,
second paragraph, as indefinite.
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B. ISSUES
1. Did the Examiner correctly determine that Kuroiwa either
discloses or renders obvious a visual inspection apparatus or inspection
method involving an image deflection device that extends to an “axially
outermost end” of a lens head of the apparatus?
2. Did the Examiner correctly determine that Kuroiwa discloses or
renders obvious a visual inspection apparatus incorporating an assembly
formed by a lens head and image transmission unit in which: (1) an end of
the lens is “at substantially a farthest longitudinal distance” from the head to
the transmission unit; (2) the head end defines “an axial extent” of the
assembly; and (3) an image deflection device extends to, or is positioned for
receiving an image at, the head end?
3. Did the Examiner correctly determine that features of claim 29
lacks adequate written description support in the specification of the ‘501
Patent?
4. Did the Examiner correctly determine that claims 22 and 29 are
indefinite?
C. ANALYSIS
The Examiner rejected the claims as follows: (1) claims 1-29 over the
prior art; (2) claim 29 as lacking adequate written description in the
specification; and (3) claims 22 and 29 as indefinite.
The Prior Art Rejections
Claims 1, 17, 20, 22, and 29 are independent claims. Claims 1, 20,
and 29 are drawn to an “apparatus for the visual inspection of soldered joints
between an electric or electronic components” disposed on a substrate, such
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as the surface of a printed circuit board. (App. Br., pp. 32, 37, 40, Claims
App’x.) Claim 17 is directed to a “method for checking the quality” of
solder joints. (Id. at p. 35, Claims App’x.) Claim 22 is drawn to a “visual
inspection apparatus.” (Id. at p. 38, Claims App’x.)
Claim 22 was rejected as anticipated by Kuroiwa while claims 1, 17,
20, and 29 were rejected as obvious based on Kuroiwa. The issue with
respect to all of those rejections centers on a feature in each claim involving
the positioning of an image deflection device with respect to the end of a
lens head. In every instance of rejection, the Examiner relies on the
disclosure of Kuroiwa to account for the pertinent feature. Because there is
some variation in how that feature is expressed in connection with claims 1,
17, and 20 as compared with claims 22 and 29, we address the claims in two
groupings.
Claims 1, 17, and 20
Claim 1 calls for a “lens head comprising a device for image
deflection extending up to an axially outermost end of said lens head.”
(App. Br., p. 32, Claims App’x.) Claim 17 requires the use of a lens head
which “comprises a deviating prism for image deflection which extends up
to the axially outermost end of the lens head.” (Id. at p. 35, Claims App’x.)
Claim 20 sets forth an assembly including a “lens head comprising an image
deflection device” where the image deflection device is “extending up to an
axially outermost end of said lens head and up to” the “axial extent” of the
assembly. (Id. at p. 37, Claims App’x.) Claims 1, 17, and 20 thus require
the feature of a “device for image deflection” or “image deflection device”
which extends to an “axially outermost end” of the head.
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axially outermost end of Kirowa’s probe tube 24 by the end wall of the tube.
(Id.)
We agree with ERSA. The “axially outermost end” of the head is the
portion that is at a furthest axial extent of the head and necessarily excludes
any additional or intervening structure extending beyond that end which is
“outermost.” Kuroiwa’s probe tube 24 constitutes an enclosure for prism
21c and includes, as a part of that enclosure, an end wall portion, which is a
structure that contributes to the axial dimension of the lens head and extends
axially beyond the prism. The prism thus does not extend to the axially
“outermost” end of the probe tube.
We observe that the Examiner and OK Int’l are also apparently of the
view that even if Kuroiwa does not disclose that its prism is at the axially
outermost end of tube 24, that requirement represents a dimension which is
“de minimis” and thus allegedly would have been obvious. (RAN, p. 7, ll. 7-
19; Resp. Br., p. 5.) We do not agree. Although the physical dimension
which is relevant in separating Kuroiwa’s prism from the end surface that is
“axially outermost” may be small, that is not itself a sufficient reason to
support a conclusion of obviousness. Indeed, as set forth in the ‘501 Patent,
the alleged “de minimis” distance constitutes the improvement over the prior
art in allowing for “closer” positioning of the image deflection device with
respect to a circuit board and therefore allowing visual inspection of smaller
gaps. (‘501 Patent 2:57-67.) Thus, the preponderance of the evidence
supports ERSA’s view that the distance between the prism and the end
surface is not a “de minimis” distance. The Examiner has not offered
suitably articulated reasoning with a rational underpinning in support of a
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conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
In addition to the Kuroiwa disclosure, the rejections of claims 1, 17,
and 20 are based on the teachings of one of High-Reliability Soldering and
Holliday. The Examiner, however, relies on the teachings of those
additional references to account for other claim features and not to make up
for the deficiencies discussed above with respect to Kuroiwa. For the
foregoing reasons, we conclude that the Examiner erred in rejecting claims
1, 17, and 20 over the Kuroiwa taken with one of High-Reliability Soldering
and Holliday.
Claims 2-16, 18, 19, and 21 are ultimately dependent on, and thus
include all the limitations of, one of claims 1, 17, and 20. Claims 2-16, 18,
19, and 21 were rejected over Kuroiwa taken with one or more of High-
Reliability Soldering, Takahashi, Holliday, and D’Amelio. The Examiner
does not rely on any of the additional references to remedy the shortcomings
involving the above-noted features of claims 1, 17, and 20 missing from
Kuroiwa. Hence, we also do not sustain the rejection of claims 2-16, 18, 19,
and 21.
Claims 22 and 29
Claim 22 recites a head and an image transmission unit which (App.
Br., p. 38, Claims App’x):
form an assembly with a head end at substantially a farthest
longitudinal distance of said head from said image transmission unit
and with said head end defining an axial extent of said assembly.

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The claim also calls for an “image deflection device” arranged in the
head for receiving an external image “at said substantially farthest
longitudinal distance of said head from said image transmission unit.” (Id.)
Claim 29 recites a “lens head extending to a lens head axial end at an
axially outermost end of said lens head” and that the lens head end is “at
substantially a farthest longitudinal distance of said head from said image
transmission unit, defining an axial extent of” an assembly formed by an
image transmission unit and the lens head. (Id. at p. 40, Claims App’x.)
ERSA submits that the above-noted features of claims 22 and 29
require that the “substantially farthest longitudinal distance of the head”
establishes a head end “defining an axial extent” of an assembly formed by
the head and image transmission unit assembly, and an image deflection
device which also extends to the axial extent of the assembly. (Id. at p. 14,
ll. 7-17; p. 26, ll. 5-16.)
The underlying basis of the Examiner’s rejection of each of claims 22
and 29 is that the term “substantially” in claims 22 and 29 is sufficient to
expand the scope of coverage of those claims so as to encompass the
positioning of Kuroiwa’s prism 21c in connection with its probe tube 24 as
shown in Figure 6. (RAN, pp. 3-5; p. 16.) In challenging the Examiner’s
rejections, ERSA argues that the end wall portion of probe tube 24, i.e.,
Kuroiwa’s lens head, constitutes a component forming part of the axial
extent of the head, and that part does not contain or include any portion of
prism 21c, i.e., the image deflection means. (App. Br. p. 16; p. 26, ll. 13-
15.) ERSA submits that the term “substantially” in connection with the
farthest longitudinal distance of the head end simply allows for irregularities
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in the edge or surface constituting the axial extent of the head. ERSA
contends that its claims cannot reasonably be construed as encompassing an
assembly, such as that of Kuroiwa, which includes an intervening structural
component, i.e., the end wall of probe tube 24, contributing to the axial
dimension of the assembly. (Id. at p. 15.)
We are in agreement with ERSA. Claims 22 and 29 each specifically
provides that the “head end” is at “substantially a farthest longitudinal
distance of” the head from an image transmission unit and that the head end
itself defines an “axial extent” of the overall assembly. With particular
regard to claim 29, the claim clearly sets forth that the image deflection
device extends to the axial end, which is at the “axially outermost end” of
the lens head. We do not discern how, in the context of the ‘501 Patent, the
above discussed features of claim 29 can reasonably be construed as
encompassing the structure of Kuroiwa in which the end wall of the probe
tube 24 contributes to the axial extent of Kuroiwa’s assembly but does not
receive or contain any portion of prism 21c.
In rejecting claim 29, the Examiner also pointed to the teachings of
High-Reliability Soldering. The Examiner, however, does not rely on those
teachings to make up for the above-discussed deficiencies in Kuroiwa.
With respect to claim 22, the claim expresses that the image deflection
device operates “for receiving an image at said substantially farthest
longitudinal distance.” Thus, claim 22 requires an image deflection device
that is configured for performing the function of receiving an image at the
“substantially farthest longitudinal distance” of the head, which, as noted
above, is at the head end defining the “axial extent” of an assembly
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including the head. ERSA argues that Kuroiwa’s prism 21c is not
configured for performing that function. (App. Br., p. 14, l. 22-p. 15, l. 2.)
Neither the Examiner nor OK Int’l offers any persuasive explanation as to
how Kuroiwa is configured in a manner to perform the specified function,
especially considering the presence of the probe tube end wall which is the
axial extent in Kuroiwa’s assembly.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 22 as anticipated by Kuroiwa or the rejection of claim 29 as
unpatentable over Kuroiwa and High- Reliability Soldering.
Claims 23-28 depend from claim 22. Claims 23-28 were rejected as
unpatentable over Kuroiwa and Takahashi. The Examiner does not rely on
Takahashi to remedy the above-noted shortcomings of Kuroiwa in
connection with claim 22. We do not sustain the rejection of claims 23-28.
The Written Description Rejection
The Examiner rejected claim 29 as failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph. The Examiner’s
statement of the rejection is reproduced below (RAN, p. 17):
The claims(s) contains subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled in
the relevant art that the inventor(s), at the time the application was
filed, had possession of the claimed invention. The disclosure in the
‘501 Patent fails to disclose in the specification corresponding to the
mean-plus-function language of claim 29.

It is not apparent, however, what “mean-plus-function” language of
claim 29 the Examiner finds objectionable or inadequately supported. To
the extent that the Examiner is referring to the “image deflection means” and
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the “image transmission means” of claim 29, as argued by ERSA (App. Br.,
pp. 27-28), we observe that the ‘501 Patent provides adequate disclosure of
structure corresponding to those features in describing a “deviating prism 9”
for deflecting an image (‘501 Patent, 8:4-9) and “a glass fiber bundle 18” or
“a series of lenses” for transmitting the image to an ocular unit (id. at 7:54-
62).
As further justification for the rejection, the Examiner states that
(RAN, p. 18):
[T]he ‘501 Patent disclosure fails to disclose “a lens head end at
substantially a farthest longitudinal distance of said head” which is
needed to determine if the “lens head end” is at the axial extent of the
assembly, therefore failing to enable the claimed limitations.

However, the ‘501 Patent provides disclosure of a “lens head 2” (‘501
Patent, 7:50-54), which is shown as forming an end component of an
endoscope 1 and includes an end positioned adjacent the surface of a printed
circuit board (Figs. 1-4). We have considered the Examiner’s rejection but
are unable to discern how or why, in light of the above-noted disclosure of
the ‘501 Patent, claim 29 runs afoul of the requirements of 35 U.S.C. § 112,
first paragraph.
We do not sustain the Examiner’s written description rejection.
The Indefiniteness Rejection
The Examiner rejected claims 22 and 29 as being indefinite under 35
U.S.C. § 112, second paragraph. In support of that rejection, the Examiner
states (RAN, p. 17):
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In claims 22 and 29, the phrase “substantially” a farthest longitudinal
distance fails to clearly claim the structure as to how far is the head
end from the image transmission unit.

We do not agree that the term “substantially a farthest distance” in
connection with the distance from an image transmission unit to a head end
renders the claims of indefinite or unascertainable scope to one of ordinary
skill in the art. The end of the head defines an axial extent of the assembly
formed by the image transmission unit and head and is positioned at
substantially the farthest longitudinal distance from the image transmission
unit. Although the term “substantially” provides for a measure of
variability, the specification of the ‘501 Patent provides the context for
ascertaining the extent of the possible variation. When evaluated in light of
the specification, we agree with ERSA (App. Br., p. 30) that one with
ordinary skill in the art would appreciate that the term “substantially”
provides for a measure of deviation in the configuration of the head end such
that, in defining an axial extent of the assembly, the farthest longitudinal
distance of the head includes possible minor deviations or tolerance issues
between the head end and the image deflection device.
Accordingly, we do not sustain the rejection of claims 22 and 29 as
indefinite.
D. CONCLUSION
1. The Examiner did not correctly determine that Kuroiwa either
discloses or renders obvious a visual inspection apparatus or inspection
method involving an image deflection device that extends to an “axially
outermost end” of a lens head of the apparatus.
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2. The Examiner did not correctly determine that Kuroiwa
discloses or renders obvious a visual inspection apparatus incorporating an
assembly formed by a lens head and image transmission unit in which: (1)
an end of the lens is “at substantially a farthest longitudinal distance” from
the head to the transmission unit; (2) the head end defines “an axial extent”
of the assembly; and (3) an image deflection device extends to, or is
positioned for receiving an image at, the head end.
3. The Examiner did not correctly determine that features of claim
29 lacks adequate written description support in the specification of the ‘501
Patent.
4. The Examiner did not correctly determine that claims 22 and 29
are indefinite.
E. ORDER
The rejection of claim 22 under 35 U.S.C. § 102(b) as anticipated by
Kuroiwa is reversed.
The rejection of claims 1 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and High-Reliability Soldering is reversed.
The rejection of claims 2-6 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and High-Reliability Soldering is reversed.
The rejection of claims 7, 8, and 11-16 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa, High-Reliability Soldering, and Takahashi is
reversed.
The rejection of claims 9 and 21 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa, High-Reliability Soldering, and D’Amelio is
reversed.
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The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Kuroiwa and Holliday is reversed.
The rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and Holliday is reversed.
The rejection of claims 23-28 under 35 U.S.C. § 103(a) as
unpatentable over Kuroiwa and Takahashi is reversed.
The rejection of claim 29 under 35 U.S.C. § 103(a) as unpatentable
over Kuroiwa and High-Reliability Soldering is reversed.
The rejection of claim 29 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is reversed.
The rejection of claims 22 and 29 under 35 U.S.C. § 112, second
paragraph, as indefinite is reversed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
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inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).

REVERSED

PATENT OWNER:

MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH NY 10510-9227

THIRD-PARTY REQUESTER:
CHRISTIE, PARKER & HALE, LLP
PO BOX 7068
PASADENA, CA 91109-7068