Ex Parte Hoe et al

Board of Patent Appeals and Interferences

Mar 26, 2012

10184233 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/184,233 06/28/2002 Shih Hsiung Hoe STL10557.00 3017
7590 03/26/2012
FELLRS, SNIDER, BLANKENSHIP,BAILEY & TIPPENS, P.C
BANK ONE TOWER
100 NORTH BROADWAY
SUITE 1700
OKLAHOMA CITY, OK 73102-8820
EXAMINER
UNDERWOOD, DONALD W
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
03/26/2012 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
____________

Ex parte SHIH HSIUNG HOE, HUA KEE LEE, SIAK SHUA LEOW,
PUEH LENG NG, CHEE SUAN LOW, and CECILIA HUI SAN WOO
____________

Appeal 2010-003508
Application 10/184,233
Technology Center 3600
____________

Before LINDA E. HORNER, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Shih Hsiung Hoe et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 3, 5, 7, and 9-15, which
are all of the pending claims. Appellants presented arguments at oral
hearing on March 15, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellants’ claimed invention relates to “a device . . . for loading and
unloading work pieces from a stack of trays containing the work pieces.”
Spec. 1, para. [0002].1 The Specification describes:
It has been determined that optimal automated loading
and unloading can be achieved by shuttling trays from a first
plurality of stacked trays to a second plurality of stacked trays,
and staging the trays at a handling zone therebetween the
stacked trays whereat the singulated tray can be operatively
presented to an automatic pick and place device. By
simultaneously shuttling a tray from the first stack to the
handling zone while shuttling another tray from the handling
zone to the second stack, and by singulating and stacking the
trays while the pick and place device operates, then continuous
picking and placing operations can be performed while the trays
are being shuttled.
Spec. 2, para. [0006].
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A handling device for stacked articles comprising:
a shuttle that is moveable between first and second
positions, and configured for simultaneously transporting two
singulated articles of the stacked articles while moving from the
first position to the second position, and configured for moving
from the second position to the first position independently of
the previously transported articles; and

1 Citations to the Specification are to the Substitute Specification filed on
August 16, 2007.
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a singulating device comprising:
an actuator that is extensible toward the shuttle to
present an outermost article of the stacked articles for
singulating;
a stripper that is extensible toward the stacked
articles to restrain all the stacked articles except the
outermost article; and
an end effector supported by the shuttle that is extensible
toward and engageable with the outermost article, and that is
subsequently retractable from the stacked articles to withdraw
the outermost article from the stacked articles independently of
shuttle movement.
THE EVIDENCE
The Examiner relies upon the following evidence:
Miura US 5,498,122 Mar. 12, 1996
Kuhl US 5,807,065 Sep. 15, 1998
King US 6,152,678 Nov. 28, 2000
Lee US 6,629,812 B1 Oct. 7, 2003
THE REJECTIONS
Appellants seek review of the rejection of claims 1, 3, 5, 7, and 9-15
under 35 U.S.C. § 103(a) as unpatentable over King, Kuhl, and Lee. App.
Br. 5. The Examiner also rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over King, Kuhl, Lee, and Miura. Final Office Action of May
16, 2007, at 3. Appellants did not explicitly include this separate rejection
of claim 11 in the grounds of rejection to be reviewed on appeal. Because
the arguments for reversal of the rejection of claim 1 based on King, Kuhl,
and Lee, also apply to the rejection of claim 11 by virtue of its dependence
from claim 1, we treat this second ground of rejection, which further
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includes Miura, as having been traversed for the same reasons as presented
for claim 1.
CONTENTIONS AND ISSUE
Appellants argue claims 1, 3, 5, 7, and 9-15 as a group. App. Br. 6.
We select claim 1 as representative, and the remaining claims stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). For the reasons
provided supra, the rejection of claim 11 based on King, Kuhl, Lee, and
Miura also turns on our determination of the patentability of claim 1 over
King, Kuhl, and Lee.
The Examiner determined that King discloses the claimed handling
device except that it does not disclose a singulating device and does not
clearly identify the structure of its end effectors. Ans. 3-4. The Examiner
determined that it would have been obvious to add Kuhl’s stripper to the
device of King “to assure that only one article is picked up.” Ans. 4.
Appellants do not contest the Examiner’s proposed modification of King
with the singulating device of Kuhl. The Examiner also determined that it
would have been obvious “to use an end effector in King which extends in
view of the teaching in Lee.” Id. The Examiner explains that “the operation
of the grippers in King are not clearly shown and thus it would have been
obvious for an artisan to use any other conventional grippers for those in
King including those in Lee” and that such “would be a substitution of one
known gripper for another to obtain predictable results.” Ans. 5-6. The
Examiner also explained “an artisan would glean from [the statements in
King that the pallets are ‘set down’] that one could use grippers that lower
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and raise the pallets similar to the conventional grippers in Lee . . .
[p]articularly if desiring not to jar the pallets.” Ans. 6.
Appellants argue that King clearly discloses setting down the pallet by
opening the gripping elements such that the pallet is “set down” by the force
of gravity when the gripping elements are opened. App. Br. 9. Appellants
further argue that “[t]he skilled artisan would further appreciate that the
gripping structure of King ‘678 is fundamentally purposed to minimize the
cycle time delays associated with repositioning the pallets 8; the object being
to make the delays negligibly short.” App. Br. 10-11. Appellants argue that
“substituting the gripping elements 14 of King ‘678 with two transfers 31 of
Lee ‘812 would increase the pallet feed cycle time, in direct contravention to
King’s stated objective.” App. Br. 11. Appellants thus assert that “the
Office’s stated rationale is merely a conclusory statement lacking the
requisite rational underpinning to support any legal conclusion of
obviousness.” App. Br. 16.
The issue presented by this appeal is whether it would have been
obvious to one of ordinary skill in the art at the time of Appellants’
invention to use extensible and retractable end effectors as taught by Lee in
place of the gripping elements of King.
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. King discloses that in an apparatus having a first pallet lift carrying
pallets of workpieces to be processed, a second pallet lift for removal
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of the processed pallets, and a horizontally displaceable transporting
frame equipped with gripping elements for transporting the pallets
from the first pallet lift to a processing station and then to the second
pallet lift, “it is necessary for the pallet transportation to and from a
processing station to run as quickly as possible, i.e., without
significant idling times or standstill times between the individual
pallet station” so as “to ensure that the pallet located in the processing
position is not involved in the horizontal transportation throughout the
processing period.” Col. 1, ll. 10-26.
2. King discloses that an object of the invention is:
to eliminate the disadvantages of the known continuous
production system and to provide an apparatus for the
mechanical handling of pallets in the case of which, with
clock control, the running times for removing a processed
pallet and feeding to a processing station a pallet loaded
with workpieces are as short as possible, i.e. negligibly
short.
Col. 1, ll. 58-64.
3. King achieves this short running time by providing a pallet table
between two pallet lifts, where the table is level with the vertical top
end position of the lifts, on which it is possible to deposit a pallet so
that the pallet is disengaged from the transporting frame during
processing of the pallet. Col. 1, l. 64 – col. 2, l. 3.
4. King also achieves the desired short running time by providing a
transporting frame that is designed to carry two pallets at the same
time. Col. 2, ll. 3-9.
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5. King also achieves the desired short running time by providing pallet-
gripping elements which are “arranged beneath the pallet plane” and
which “can be opened and closed irrespective of the processing of the
pallet.” Col. 2, ll. 10-17.
6. King describes that when the transporting frame 10, which is carrying
a pallet 8, has reached the processing position 16 over the pallet table
12, “the pallet 8 is dynamically disengaged from the transporting
frame 10, by virtue of the pallet-gripping elements 14 being opened,
and set down on the pallet table 12, for processing of the workpieces.”
Col. 3, ll. 26-33; fig. 4.
7. King describes that “[t]he transporting frame 10 immediately moves
back, in the empty state, into a position, in accordance with the
illustration of FIG. 5, for receiving a loaded pallet 8 again.” Col. 3,
ll. 36-38.
8. King describes that “[a]s soon as [the pallet 8 on the pallet table 12]
has been processed, it is fixed in a force-fitting manner by the
adjacent pallet-gripping elements 14” and “[t]he transporting frame 10
then immediately . . . transports the processed pallet 8.1 over the lift
table 6 and dynamically disengages it from the transporting frame
10.” Col. 3, ll. 39-45.
9. Lee discloses a method and apparatus for circulating pallets in an
elevator unit of a module integrated circuit handler. Col. 1, ll. 10-12.
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10. Lee discloses a transfer 31 that is used to transfer a pallet 5 from a
loading position 19 or unloading position 26 into a rotation position
30. Col. 8, ll. 51-53; Figs. 9a-9d.
11. Transfer 31 consists of a transferring block 50, which is moved along
a guide rail disposed parallel to the loading and unloading positions
19 and 26, an elevation plate 52, which ascends or descends by a drive
of a cylinder 51 installed in the transferring block 50, a guide rod 53
inserted into the transferring block that guides movement of the
elevation plate 52, and fingers 33 widened or narrowed by a drive of a
finger cylinder 34 installed at both side of the elevation plate 52.
Col. 8, ll. 53-61.
12. To pick up and move a pallet, Lee discloses that the transferring block
50 of the transfer 31 is moved along the guide rail so that it is
disposed above the pallet 5 to be moved, elevation plate 52 descends
to the bottom dead point by a drive of the cylinder 51, the fingers 33
driven by the finger cylinder 34 are narrowed to hold the bottom
surface of the pallet 5, the re-drive of the cylinder 51 moves the
elevation plate 52 up to the top dead point, the transferring block 50 is
transferred to the position at which the pallet 5 is to be moved,
elevation plate 52 descends to the bottom dead point by the drive of
cylinder 51, and the fingers 33 driven by the cylinder 34 are widened
to release the pallet 5. Col. 9, l. 34 – col. 10, l. 18.
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PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248” id. (citing Graham, 383 U.S. at 12), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416.
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The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. The operative question in this “functional approach” is “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after
Graham [that] illustrate the application of this doctrine.” Id. at 416. “In
United States v. Adams, . . . [t]he Court recognized that when a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. “Sakraida and
Anderson’s-Black Rock are illustrative – a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established function.” Id. at 417.
The Supreme Court stated:
Following these principles may be more difficult in other cases
than it is here because the claimed subject matter may involve
more than the simple substitution of one known element for
another or the mere application of a known technique to a piece
of prior art ready for the improvement. Often, it will be
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necessary for a court to look to interrelated teachings of multiple
patents; the effects of demands known to the design community
or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in
order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the
patent at issue.
Id. at 417-18. The Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
The Court also acknowledged the corollary principle that “when the
prior art teaches away from combining certain known elements, discovery of
a successful means of combining them is more likely to be nonobvious.” Id.
at 416 (citing U.S. v. Adams, 383 U.S. 39, 51-52 (1966)). “A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, . . . would be led in a direction divergent from the path that was
taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001). “When a piece of prior art ‘suggests that the line of development
flowing from the reference's disclosure is unlikely to be productive of the
result sought by the applicant’ the piece of prior art is said to ‘teach away’
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from the claimed invention.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 53 (Fed.
Cir. 1994)). In Medichem, however, the Federal Circuit further explained:
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.
See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n. 8 (Fed. Cir. 2000)] (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.”).
Where the prior art contains “apparently conflicting” teachings
(i.e., where some references teach the combination and others
teach away from it) each reference must be considered “for its
power to suggest solutions to an artisan of ordinary skill.…
consider [ing] the degree to which one reference might
accurately discredit another.” In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991).
Id.
ANALYSIS
King’s gripping elements are supported on the transporting frame.
Fact 6. King’s disclosure that the pallet-gripping elements are “arranged
beneath the pallet plane” when read in combination with King’s disclosure
that the pallets are “set down” by opening the gripping elements appears to
describe pallet gripping elements that move horizontally toward and away
from a pallet between a closed position for gripping the pallet and an open
position for setting down the pallets. Facts 5, 6. King’s gripping elements
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move between open and closed positions independently of the movement of
the transport frame. Facts 5-8. Thus, while King’s gripping elements are
extensible toward and engageable with the topmost pallet, King’s gripping
elements are not retractable from the stacked pallets to withdraw the
outermost pallet from the stacked pallets independently of shuttle
movement. Rather, King’s gripping elements remain closed, i.e., extended,
and the entire transporting frame is translated to move the gripping elements
away from the stacked pallets to withdraw the outermost pallet from the
stack. Fact 8.
Lee discloses another conventional mechanism for transporting a
pallet from one position to another that consists of a transfer 31 having an
elevation plate 52 that is extensible toward and engageable with the
outermost pallet via a drive of cylinder 51 to extend the plate toward the
pallet and a drive of cylinder 34 to narrow fingers 33 to engage the pallet.
Facts 10-12. Elevation plate 52 of transfer 31 is subsequently retractable
from the stacked articles via a re-drive of cylinder 51 to withdraw the
outermost pallet from the stacked pallets. Fact 12.
Appellants posit that King’s apparatus sets down the pallets by
opening the gripping elements and allowing the pallets to fall by the force of
gravity. App. Br. 9. We agree with this reading of King. Fact 6.
Appellants further assert that King’s gripping elements dynamically
disengage the pallet by opening while the transport frame is still moving
horizontally. Reply Br. 5. King does not support this assertion. Rather,
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King discloses that the gripping elements open only after the transporting
frame has reached the processing position over the pallet table. Fact 6.
The Examiner explained that one of ordinary skill in the art would
have found the extensible and retractable end effectors of Lee to be an
improvement to King’s system because Lee’s end effectors allow the device
to set down the pallets without jarring. Ans. 6. The Examiner’s articulated
reason to modify King, to use extensible and retractable end effectors as
taught by Lee, is based on rational underpinnings. Such end effectors would
enable the system to place pallets gently on the pallet table instead of
dropping the pallet from above. The substitution of one gripping mechanism
for another is merely the predictable use of prior art elements according to
their established functions.
We acknowledge that the use of extensible and retractable end
effectors in place of the gripping elements of King may detract from the
overall cycle time savings achieved by King’s system. Compare Facts 5-8
and Facts 10-12. The device of King, as modified, would still achieve,
however, considerable cycle time savings by the use of King’s pallet table
between the two pallet lifts for allowing the pallet to be deposited and
disengaged from the transporting frame during processing of the pallet and
through King’s transporting frame that simultaneously transports two pallets.
Facts 1-4. Thus, the proposed modification would not render King’s system
inoperable for its intended purpose. Further, the Examiner’s proposed
modification to replace King’s gripping elements with extensible and
retractable end effectors has the simultaneous advantage of allowing a pallet
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to be gingerly placed on the pallet table and the disadvantage of increasing
to a degree the cycle time achieved by King. This disadvantage does not
obviate the motivation to combine when one would want to take care not to
jar the pallets.
CONCLUSION
It would have been obvious to one of ordinary skill in the art at the
time of Appellants’ invention to use extensible and retractable end effectors
as taught by Lee in place of the gripping elements of King.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 3, 5, 7,
and 9-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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