Ex Parte Haas et al

Board of Patent Appeals and Interferences

Mar 26, 2012

10741661 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANS-PETER HAAS, WERNER HECK, and
KARLFRIED OSWALD
____________

Appeal 2010-000135
Application 10/741,661
Technology Center 3600
____________

Before STEFAN STAICOVICI, KEN B. BARRETT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000135
Application 10/741,661

2
STATEMENT OF THE CASE
Hans-Peter Haas et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision to reject under 35 U.S.C. § 102(b) claims 1-22
as anticipated by Malagrino (US 5,292,222, issued Mar. 8, 1994). We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a method and a device for gripping
and holding plate- and disk-shaped objects such as a Compact Disk (CD) or
a Digital Versatile Disk (DVD) from the edge by means of vacuum forces.
Spec. 1, para. [0002] and [0013] and figs. 1 and 3.
Claims 1 and 15 are illustrative of the claimed invention and read as
follows:
1. An apparatus for gripping a substantially flat disk object by
means of vacuum forces, the apparatus comprising:
a recessed portion, the outer shape of said recess portion
adapted to receive the outer edge of the disk object;
at least one air intake opening in the recessed portion;
and
a substantially V -shaped groove in the recessed portion
arranged perpendicular to the flat plane of the disk object and
differing from the edge of the disk object to form a streaming
channel when the disk object is in close proximity to the
gripping apparatus wherein when air is drawn into the one
or more air intake openings, an attraction force is generated to
draw the disk object into the gripping apparatus.

15. A method for gripping a substantially flat disk object by means
of vacuum forces, the method comprising:
drawing air in an intake opening located in a recessed
portion of a gripping device, the gripping device having a
recessed portion closely conforming with the outer edge of the
Appeal 2010-000135
Application 10/741,661

3
disk object, the intake opening located near the center to of the
recessed portion;
drawing air through a streaming channel to the air intake
opening, the streaming channel formed when the outer edge of
the disk object is in close proximity with a V -shaped groove in
a gripping element; and
attracting the object to the V -shaped groove with a
Bernoulli effect force created by the air drawn through the
formed streaming channel.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Claims 1-5, 8-11 13, 14, 19, 21, and 22
Appellants present the same arguments with respect to the rejection of
independent claims 1, 10 and 19 under 35 U.S.C. § 102(b) as anticipated by
Malagrino. See App. Br. 16 and 18. As such, the following analysis applies
equally to independent claims 1, 10 and 19.
The Examiner found, and we agree, that Malagrino teaches an
apparatus 12 for gripping a substantially flat disk object 15 by means of
vacuum forces, wherein the apparatus 12 includes a recessed portion 30, at
least one air intake opening 24 in the recessed portion 30 and a substantially
V-shaped groove (opposing angular surfaces 34 and 36) in the recessed
portion 30 arranged perpendicular to the flat plane of the disk object 15.
Ans. 3. See also Malagrino, figs. 1-2. In addition, the Examiner takes the
position that a streaming channel is formed when the edge of the disk 15 is
in close proximity to the substantially V-shaped groove formed by opposing
angular surfaces 34 and 36 of the gripper member 12 (i.e., gripping
Appeal 2010-000135
Application 10/741,661

4
apparatus), wherein air drawn through the streaming channel, which is
created by the movement of air into the air intake 24, is sufficient to provide
a Bernoulli effect force on the disk 15. Ans. 5 and 8. See also Malagrino,
col. 3, ll. 14-22.
Appellants first argue that Malagrino fails to teach a substantially V-
shaped groove that creates a streaming channel for generating an attraction
force by the Bernoulli effect when the disk is in close proximity to the
gripping apparatus. App. Br. 10-11. According to Appellants, because in
Malagrino non-chamfered disk 15 rests against flat 25 and portions 26 and
28 on either side of vacuum engagement slot 24 are shaped so that their
respective inner radii correspond to the radius of the disk 15, “[t]his design
does not form a streaming channel … but instead forms a surface closely
conforming to the shape of the non-chamfered disk 15.” App. Br. 11.
Hence, Appellants contend that the gripping device of Malagrino only
creates a vacuum force through the vacuum engagement slot 24, which is
different than forming a streaming channel to create a Bernoulli effect force.
App. Br. 11.
In other words, Appellants and the Examiner disagree as to whether a
“streaming channel” is formed between Malagrino’s disk 15 and gripping
apparatus. We are not persuaded by Appellants’ arguments for the
following reasons.
First, we agree with the Examiner that the claims do not require that
the disk be chamfered or non-chamfered or that it engages the sloped side
walls of the V-shaped groove. The claims merely require that a streaming
channel is formed when the disk is in close proximity to the gripping
Appeal 2010-000135
Application 10/741,661

5
apparatus (as per claims 1 and 10) or the V-shaped groove (as per claim 19).
Ans. 7-8. See also App. Br., Claims Appendix.
Second, we note that the USPTO has the initial burden of providing a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic reasonably flows
from the teachings of the applied prior art. See In re King, 801 F.2d 1324,
1327 (Fed. Cir. 1986). Once the USPTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the applicant to prove
that the prior art does not possess the characteristic at issue. See Id. This is
the case whether the rejection is based on inherency under 35 U.S.C. § 102,
prima facie obviousness under 35 U.S.C. § 103, or both jointly or
alternatively. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In this
case, the Examiner found, and we agree, that Malagrino teaches an apparatus
12 for gripping a substantially flat disk object 15 by means of vacuum
forces, wherein the apparatus 12 includes a recessed portion 30, at least one
air intake opening 24 in the recessed portion 30 and a substantially V-shaped
groove (opposing angular surfaces 34 and 36) in the recessed portion 30
arranged perpendicular to the flat plane of the disk object 15. Ans. 3. See
also Malagrino, figs. 1-2. Malagrino further teaches that as the vacuum is
pulled through slot 24 a force is created to retain the edge of the disk 15
between the angular surfaces 34 and 36 of the gripper member 12. See
Malagrino, col. 3, ll. 17-22. Malagrino’s teaching of drawing air through
slot 24 and forcing disk 15 into contact with flat 25 provides a reasonable
basis for us to find that, as the disk 15 moves into proximity with the V-
shaped groove 34, 36, the area between the disk 15 and the V-groove
decreases as the disk gets closer to flat 25 so as to form a streaming channel
Appeal 2010-000135
Application 10/741,661

6
between the disk and the V-shaped groove which generates an attraction
force by Bernoulli effect.1 For the above reasons, we determine that the
teachings of Malagrino reasonably support the Examiner’s finding that a
streaming channel is created by the movement of disk 15 into close
proximity of the V-shaped groove (see Ans. 5 and 8), so as to shift the
burden to Appellants to show that this is not the case. The Appellants have
not come forward with any persuasive argument or evidence to satisfy this
burden.
Appellants then argue that “[a] modification of using a disk thicker
than the flat, as suggested by the Examiner, is not taught, disclosed, or even
suggested in Malagrino and therefore Malagrino is not enabling for this
modification.” App. Br. 15. We are not persuaded by Appellants’
argument, because the Examiner is not proposing to modify the disk of
Malagrino, as Appellants contend. Moreover, we agree with the Examiner
that “the disk in the instant case is not claimed and thus imparts no
patentability to the claims [1, 10, and 19].” Ans. 7-8. As stated by our
reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998),
“the name of the game is the claim.” It is well established that limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
Finally, Appellants argue that Malagrino teaches away from the
claimed invention (App. Br. 11-12 and 14-15) and that the Examiner used
impermissible hindsight (App. Br. 12-14; Reply Br. 5). We are not
persuaded because teaching away is not germane to the issue of anticipation.

1 As the area of flow decreases the velocity of air flow increases, which
in turn results in a decrease of the static pressure.
Appeal 2010-000135
Application 10/741,661

7
See Seachange Int’l, Inc. v. C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir.
2005). Similarly, impermissible hindsight is also not germane to the issue of
anticipation.
Accordingly, for the foregoing reasons, the rejection of independent
claims 1, 10 and 19 under 35 U.S.C. § 102(b) as anticipated by Malagrino is
sustained. With respect to dependent claims 2-5, 8, 9, 11, 13, 14, 21 and 22
Appellants do not present additional arguments. App. Br. 18-19.
Accordingly, the rejection of claims 2-5, 8, 9, 11, 13, 14, 21 and 22 is
likewise sustained.

Claims 6, 12, 16, and 20
Appellants argue that Malagrino fails to teach that the area of the
streaming channel formed when the disk object is in close proximity to the
V-shaped channel is approximately 1 mm². App. Br. 16-17. See also App.
Br., Claims Appendix. According to Appellants, the area of the streaming
channel “dictate[s] a relative size of the gripping apparatus with whatever
disk is used.” Reply Br. 5. We are not persuaded by Appellants’ arguments
for the following reasons.
As noted above, as the disk 15 of Malagrino moves into proximity
with the V-shaped groove 34, 36, the area between the disk 15 and the V-
groove decreases as the disk gets closer to flat 25 so as to form a streaming
channel. The area of this streaming channel varies from a maximum value
when the edge of the disk is located at the edge of the V-shaped groove 34,
36 to zero when the disk 15 is in contact with flat 25. Hence, we agree with
the Examiner that the streaming channel of Malagrino is not a permanent
channel. See Ans. 8. As such, we find that during the disk’s motion, the
Appeal 2010-000135
Application 10/741,661

8
streaming channel will have at a set point in time an area of approximately 1
mm², as called for by claims 6, 12, 16, and 20.
In conclusion, for the foregoing reasons, we shall also sustain the
rejection of dependent claims 6, 12, 16 and 20.

Claim 7
With respect to the rejection of dependent claim 7, Appellants make
similar arguments as presented with respect to the rejection of independent
claims 1, 10 and 19. App. Br. 18. As such, for the reasons discussed above,
these arguments are not persuasive. Therefore, the rejection of claim 7 is
also sustained.

Claims 15, 17, and 18
Regarding independent claim 15, Appellants argue that a disk in close
proximity to the flat 25 of Malagrino would form a temporary gap, not a
streaming channel, between the flat of the disk and the flat of the disk
holder, wherein the gap would disappear as the disk contacts the flat 25.
Reply Br. 6. We disagree. As noted above, as the disk 15 of Malagrino
moves into proximity with the V-shaped groove 34, 36, the area between the
disk 15 and the V-groove decreases as the disk gets closer to flat 25 so as to
form a streaming channel.
In conclusion, for the foregoing reasons, we shall sustain the rejection
of independent claim 15 under 35 U.S.C. § 102(b) as anticipated by
Malagrino. With respect to dependent claims 17 and 18, Appellants do not
present additional arguments. App. Br. 18. Accordingly, the rejection of
claims 17 and 18 is likewise sustained.
Appeal 2010-000135
Application 10/741,661

9

DECISION
The Examiner’s decision to reject claims 1-22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

mls