Ex Parte Gieskes et al

Patent Trial and Appeal Board

Feb 23, 2017

13033789 (P.T.A.B. Feb. 23, 2017)

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.
13/033,789 02/24/2011 Koenraad A. Gieskes UNIV.5923-NY 9563
5409 7590 02/27/2017
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
NASRI, MARYAM A
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
AZ5409@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOENRAAD A. GIESKES, MICHAEL R. VINSON,
and MICHAEL YINGLING
Appeal 2016-003512
Application 13/033,7891
Technology Center 2400
Before JOSEPH L. DIXON, LARRY J. HUME, and
CARL L. SILVERMAN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
LARRY J. HUME.
Opinion Dissenting filed by Administrative Patent Judge
JOSEPH L. DIXON.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1 and 3—20. Appellants have canceled claim 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Universal Instruments
Corp. App. Br. 2.
Appeal 2016-003512
Application 13/033,789
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions "relate[] to component
placement machines. More particularly, the subject matter relates to
capturing the image of imprints in a fluid, and the usage thereof, during the
placement cycle." Spec. 11.
Exemplary Claims
Claims 1, 3, 5, 6, and 14, reproduced below, are representative of the
subject matter on appeal (emphasis added):
1. A method of placing a component with a pick and
place machine, the method comprising:
picking a component from a feeder;
dipping the picked component in a layer of fluid;
transferring a portion of the layer of fluid onto the
component during the dipping, wherein an imprint of the
component resides in a layer of the fluid after the component is
dipped in the layer of fluid;
capturing an image of the imprint;
analyzing the image of the imprint; and
placing the dipped component onto a printed circuit
board, wherein the component is placed based on results of the
analysis of the image of the imprint.
3. The method of claim 1, wherein capturing an
image of the layer of fluid comprises capturing an image as
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 15, 2015); Reply Brief ("Reply Br.," filed Feb. 17, 2016); Examiner's
Answer ("Ans.," mailed Dec. 17, 2015); Non-Final Office Action ("Non-
Final Act.," mailed Mar. 23, 2015); and the original Specification ("Spec.,"
filed Feb. 24, 2011).
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Application 13/033,789
viewed from a top side of the layer of fluid and capturing an
image as viewed from a bottom side of the layer of fluid.
5. The method of claim 1, wherein analyzing the
image of the layer of fluid comprises determining that fluid was
not properly transferred to the component based on results of
the analysis of the image of the layer of fluid.
6. The method of claim 1, further comprising
determining the alignment status of the pick and place machine
using the image of the layer of fluid.
14. The method of claim 13, wherein determining the
alignment status of the pick and place machine based on the
analysis of the one or more than one image of the layer of fluid
comprises comparing an image as viewed from a top side of the
layer of fluid to an image as viewed from a bottom side of the
layer of fluid.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Terada et al. ("Terada")
Johnson et al. ("Johnson")
Morishima
Klein et al. ("Klein")
Shida et al. ("Shida")
Carman et al. ("Carmen")
Ohkura et al. ("Ohkura")
US 2003/0046812 Al
US 6,640,423 B1
US 2005/0157170 Al
US 2006/0021438 Al
US 2006/0185157 Al
US 2007/0119518 Al
US 2008/0037859 Al
Mar. 13, 2003
Nov. 4, 2003
July 21,2005
Feb. 2, 2006
Aug. 24, 2006
May 31, 2007
Feb. 14, 2008
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Application 13/033,789
Rejections on Appeal
Rl. Claims 1, 4, 8, 9, 15, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ohkura and Shida.
Ans. 2; Non-Final Act. 6.
R2. Claims 3 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ohkura, Shida, and Carman.
Ans. 8; Non-Final Act. 12.
R3. Claims 5 and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ohkura, Shida, and Klein.
Ans. 9; Non-Final Act. 13.
R4. Claims 6, 7, 10, 11, 13, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ohkura, Shida, and
Johnson. Ans. 11; Non-Final Act. 15.
R5. Claims 14 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ohkura, Shida, Terada,3 and
Morishima. Ans. 14; Non-Final Act. 18.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 15—23), we decide the
appeal of obviousness Rejection Rl of claims 1, 4, 8, 9, 15, 16, and 18 on
the basis of representative claim 1; we decide the appeal of obviousness
Rejection R2 of claims 3 and 17 on the basis of representative claim 3; we
3 We note both the Non-Final Action and the Examiner's Answer incorrectly
cite "Johnson (US 2003/0046812 Al)" in the combination of references in
Rejection R5. However, US 2003/0046812 Al is to Terada et al.
Appellants do not argue this typographical error by the Examiner.
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decide the appeal of obviousness Rejection R3 of claims 5 and 12 on the
basis of representative claim 5; we decide the appeal of obviousness
Rejection R4 of claims 6, 7, 10, 11, 13, and 19 on the basis of representative
claim 6; and we decide the appeal of obviousness Rejection R5 of claims 14
and 20 on the basis of representative claim 14.4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to the claims on
appeal, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1,3,
5, 6, and 14 for emphasis as follows.
1. $103 Rejection R1 of Claims E 4, 8, 9, 15, 16, and 18
Issue 1
Appellants argue (App. Br. 15—19; Reply Br. 2—3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/033,789
combination of Ohkura and Shida is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method of placing a component with a pick and place
machine" that includes, inter alia, the steps of:
dipping the picked component in a layer of fluid . . .
capturing an image of the imprint [of the component
residing in a layer of the fluid after the component is dipped in
the layer of fluid];
analyzing the image of the imprint; and
placing the dipped component onto a printed circuit
board, wherein the component is placed based on results of the
analysis of the image of the imprint,
as recited in claim 1?
Analysis
Appellants contend the Examiner erred in rejecting claim 1 because
Ohkura in view of Shida do not teach or suggest imaging an
imprint of a component in a layer of fluid, caused by the
dipping of the component into the layer of fluid, a portion of the
fluid being transferred onto a component, where the placing is
based on the imaging of the imprint of the component.
App. Br. 15. Further, "Okhura's [sic] process is completely different than
Appellant's present claims. Appellant specifically claims applying a fluid to
a component in a dipping motion and thereafter placing the dipped
component. Thus, Appellant specifically claims 'dipping the component in
the layer of fluid.'" Id. "Appellant's claims are very specifically tailored to
this type of a pick and place machine and process: a machine and process
which dips a component into an adhesive fluid for the purposes of applying
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fluid to the component and using the fluid later for placement." App. Br. 16.
"In light of the prior art cited by the Patent Office, Appellant respectfully
contends that it is extremely clear that no combination of references cited
against Appellant's claims teaches imaging an imprint left in an adhesive
fluid in this type of method." Id.
Appellants admit "Okhura [sic] does teach imagine a dicing tape after
a component has been removed, [but] the similarities to Appellant's claims
end there. Ohkura does not teach a process whereby a component leaves an
imprint in a layer of fluid from a dipping step .... Nothing teaches an
imprint of a component in the dicing tape." Id.
Appellants further allege:
The Patent Office cannot simply cite a prior art fluid
dipping patent, such as Shida, to conclude that the combination
would render Appellant's completely new pick and place
process unpatentable. For the first time in the pick and place
industry, Appellant’s invention teaches imaging a layer of
adhesive fluid (solder, adhesive, flux and the like) after a
component has been dipped in the layer offluid during a fluid
application step prior to placement, and using the image of
fluid to help place the component. This is a major
advancement in the art. Never before has the fluid layer, which
is applied to a component for use in a later placement step, been
imaged. To combine a dice cutting reference, which images a
vacant dicing tape post-component removal, with a fluid
dipping invention such as Shida clearly would not render
Appellant's advancement unpatentable.
App. Br. 17.
In response, the Examiner finds, and we agree:
Ohkura discloses a backside 103b of the wafer 103 opposite to
the surface 103a is arranged just above a surface 119a of the
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dicing tape 119. An adhesive layer 121 (see FIGS. 16 and 17)
having an adhesive property is formed on the surface 119a of
the dicing tape 119; hence, the backside 103b of the wafer 103
is adhered to the surface 119a of the dicing tape 119 (see
paragraph 73). In this case the adhesive layer reads on "the
layer of fluid" disclosed by the mentioned claims. After
transporting the components to the chip tray (see paragraph 83),
an image capturing device captures an image of the surface
119a so as to perform inspection (see paragraph 84). Fig. 15
shows an image of the imprints left on the tape. Areas 81—84,
on which the semiconductor chips 101 are adhered, are the
imprints of the components (see paragraph 86). Any defect in
the component will leave some kind of mark on the area
corresponding to the defective component such as crack CM in
area 84. When at least one of the defective elements is detected
in the adhesive area of the dicing tape 119 adhering to the
chip 101 on the basis of the aforementioned image (reads on
"where the placing is based on the imaging of the imprint of
the component"), chip 101 is determined to be a defective
product and is removed from the chip tray 123 (see paragraph
103).
Ans. 16—17 (emphasis added).
We agree with the Examiner as quoted above that "the adhesive layer
reads on 'the layer of fluid' [recited] by the mentioned claims" because
Appellants have not cited to a definition of "layer of fluid" in the
Specification that would preclude the Examiner's broader reading.5 Id.
5 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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Specifically, we note Appellants' Specification discloses "[f]or some
processes a component may need to have a fluid, such as flux, an adhesive,
solder paste or the like, applied prior to placement of the component on the
printed circuit board or substrate." Spec. 1 5 (emphasis added). Thus, we
find no error in the Examiner reading of the recited "layer of fluid" onto the
prior art's disclosed "adhesive layer."
Moreover, we are not persuaded by Appellants' argument quoted
above regarding the claimed invention's alleged "major advancement in the
art" which, on this record, lacks any evidentiary support.6 Appellants'
assertions regarding the claimed invention's purported novelty amount to
unsupported attorney argument, and therefore we give them little weight.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Huang, 100 F.3d 135, 139—140 (Fed. Cir. 1996). Appellants have not
provided objective evidence of secondary considerations which our
reviewing court guides "operates as a beneficial check on hindsight," such
that Appellants have not overcome the prima facie case of obviousness
under § 103. See Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys.,
725 F.3d 1341, 1352 (Fed. Cir. 2013). (See also App. Br. 30, "Appendix B
. . . Evidence Appendix . . . None."). (Emphasis omitted).
As for Appellants' argument "the Ohkura reference is simply not
analogous to the Appellant's method" (App. Br. 17), we disagree. Whether a
reference in the prior art is "analogous" is a fact question. In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg., 810
F.2d 1561, 1568 n.9 (Fed. Cir.), cert, denied, 481 U.S. 1052 (1987)). Two
6 We note there is no affidavit or declaration evidence of record to support
Appellants' contentions.
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criteria have evolved for determining whether prior art is analogous:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed, and (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. Id. (