Ex Parte Ito et al

Board of Patent Appeals and Interferences

Nov 3, 2010

11100521 (B.P.A.I. Nov. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YASUSHI ITO and TATSUO SATO
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Appeal 2009-008457
Application 11/100,521
Technology Center 3700
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Before: LINDA E. HORNER, WILLIAM F. PATE III, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Yasushi Ito et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-4, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
THE INVENTION
Appellants’ claimed invention is a laser machining apparatus.
Spec. 1, para. [0001]. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A laser machining apparatus for machining sheet-like
workpieces, said apparatus comprising:
a table disposed on a bed and configured to move in a
plane;
a laser beam generating device configured to generate a
laser beam orthogonal to the plane and being coupled to the
bed;
a supply-side roll holding device and a take-up side roll
holding device disposed on said table so as to be moved
together in the plane with said table;
a supply-side roll coupled to said supply-side roll holding
device, said supply-side roll containing the sheet-like
workpieces and configured to supply the sheet-like workpieces
to said table;
a take-up side roll coupled to said take-up side roll
holding device, said take-up side roll configured to receive
finished sheet-like workpieces from said table; and
a machining area defined on said table, said machining
area configured to receive and fix the sheet-like workpieces
thereto and move with the sheet-like workpieces relative to the
laser beam during machining.
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THE REJECTIONS
Appellants seek review of the following Examiner’s rejections:
1. Rejection of claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable
over Harding (US 3,226,527, issued Dec. 28, 1965).
2. Rejection of claims 2 and 4 under 35 U.S.C. § 103(a) as unpatentable
over Harding and Rice (US 2004/0154749 A1, issued Aug. 12, 2004).
ISSUE
The issue presented by this appeal is whether the proposed
modification to Harding is based upon a sufficient reason with a rational
underpinning to explain why a person of ordinary skill in the art would have
combined portions of Harding’s three embodiments, and moved the supply-
side and take-up side roll holding devices to be disposed on the table to
reach the subject matter of independent claim 1.
ANALYSIS
Rejection of claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable over
Harding
Independent claim 1 is directed to a laser machining apparatus that
includes a table disposed on a bed and configured to move in a plane. The
apparatus further includes a supply-side roll holding device and a take-up
side roll holding device, each disposed on the table so as to move together in
the plane with the table.
The Examiner found that a first embodiment of Harding’s laser
apparatus includes a supply side roll (web roll 44) mounted on a supply-side
roll holding device (shaft 46 supported by an arm 48) attached to a table
(bed 12) of the machine. Ans. 3 (see col. 2, l. 33 to col. 3, l. 9 and figs. 1-3).
The Examiner found that a second embodiment of Harding’s laser
apparatus includes a table (bed 86) disposed on a bed (base 80) configured to
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move in a plane (a table 82 is mounted on base 80 for providing transverse
movement, a second table 84 is mounted upon table 82 for providing
longitudinal movement, and bed 86 is secured to table 84). Ans. 3-4, 7 (see
col. 3, l. 10 to col. 4, l. 47 and figs. 4-7). The Examiner found that this
second embodiment of Harding’s apparatus also includes a laser beam
generating device (laser 90) that projects a beam 92 from a vertical column
94 to the table (bed 86) and bed (base 80). Ans. 3.
The Examiner found that a third embodiment of Harding’s laser
apparatus includes supply-side rolls (feed rolls 210, 212, and 214)
containing sheet-like workpieces (web material W) and take-up side rolls
(take-up rolls 200, 202, 204). Ans. 4 (see col. 4, l. 48 to col. 5, l. 47 and
figs. 8-10). The Examiner found that Harding does not disclose placement
of the supply-side roll holding device and the take-up side roll holding
device disposed on the table. Id. The Examiner concluded it would have
been obvious to combine the enumerated portions of the three embodiments,
and to further modify the combination to dispose the supply-side and take-up
side roll holding devices on the table. Id.
The Examiner reasons that it would have been obvious to combine
elements of Harding’s three embodiments because “Harding teaches all the
parts of the apparatus of instant claims albeit in different embodiments they
are not significantly different and are capable of operating in combination
with each other.” Ans. 8. The Examiner does not support this conclusion
with a citation to a specific portion of the reference. Contrary to the
Examiner’s finding, Harding does not disclose that the elements of each of
the three embodiments are capable of operating in combination with each
other. Harding, passim.
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The Examiner also reasons that the reference teaches all the parts of
the apparatus of claim 1, and thus it would have been obvious to use these
parts together in differing embodiments. Ans. 10. By this logic, any
combination that can be produced from the elements of Harding’s three
separate embodiments is an obvious variation of Harding’s device. An
examiner cannot establish a prima facie case that a claim is obvious “merely
by demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We
conclude the proposed modification to combine the enumerated portions of
Harding’s three separate embodiments is not supported by an adequate
rationale.
The Examiner provides several explanations in support of the
rationale for moving the supply-side and take-up side roll holding devices to
be disposed on the table. First, the Examiner concludes that such
modification is an obvious rearrangement of parts, such as in In re Japikse,
181 F.2d 1019 (CCPA 1950). Ans. 4. In Japikse, the court held that moving
a starter switch to a location different from the prior art was an obvious
variation because the operation of the device would not be modified. In re
Japikse, 181 F.2d at 1023. Here, in contrast to Japikse, the proposed
modification alters the functioning of the device in that the roll holding
devices then move with the table. Thus, the modification is more than an
obvious rearrangement. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)
(finding of obvious design choice precluded when claimed structure and the
function it performs are different from the prior art).
Second, the Examiner concludes that such a modification would have
been obvious because Harding discloses a second embodiment including
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roller 172. Ans. 9. Harding’s second embodiment includes a driving roller
172 which feeds individual sheets of material S automatically to the
machine, and is not attached to the machine. Harding, col. 4, ll. 42-47;
fig. 5. We fail to see, and the Examiner has failed to adequately explain,
how a driving roller 172 that is not attached to a table would lead a person of
ordinary skill to dispose a supply-side roll holding device on a table.
Third, the Examiner concludes that moving the supply-side and take-
up side roll holding devices to be disposed on the table is a matter of
common sense because reducing the distance between the roll holding
device and the machining apparatus reduces the distance the web must travel
during processing, and in so doing, decreases the probability of irregularities
forming in the web. Ans. 10-11. In support of this conclusion, the
Examiner finds that Harding discloses that it was known that thin, flexible
material can be problematic to handle. Id. (citing Harding, col. 3, ll. 33-35).
Harding’s disclosure does not support the Examiner’s rationale.
Harding does not disclose that reducing the distance between the roll
holding device and the machining apparatus decreases the probability of
irregularities forming in the web. Rather, Harding discloses that thin,
flexible sheet material S (as opposed to web material) may require a special
support or clamping device to prevent sagging. Harding, col. 3, ll. 33-35;
fig. 7. We also cannot agree that such a modification would have been
simply a matter of common sense. There are many methods that could
contribute to decreasing the probability of irregularities in the web, such as a
special support as taught by Harding or the application of tension in the web
between the supply and take-up rolls. Thus, absent hindsight, we fail to see
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how common sense would have led a person of ordinary skill in the art to
dispose the supply-side and take-up side roll holding devices on the table.
We conclude the proposed modification to move the supply-side and
take-up side roll holding devices to be disposed on the table is not supported
by an adequate rationale. Because both of the proposed modifications to
Harding’s device are not supported by an adequate rationale, we cannot
sustain the rejection of independent claim 1. The rejection of claim 3, which
depends from independent claim 1, is based upon the same erroneous
rationale.
Rejection of claims 2 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Harding and Rice
Claims 2 and 4 depend, directly or indirectly, from claim 1. The
rejection of claims 2 and 4 relies upon the same proposed modifications of
Harding and the same rationales used for the rejection of claim 1.2 Ans. 4-5.
Consequently, for the reasons explained in the analysis of claim 1, supra, the
rejection of claims 2 and 4 is also in error.
CONCLUSIONS
The proposed modification to Harding is not based upon a sufficient
reason with a rational underpinning to explain why a person of ordinary skill
in the art would have combined portions of Harding’s three embodiments,
and moved the supply-side and take-up side roll holding devices to be
disposed on the table to reach the subject matter of independent claim 1.
DECISION
We REVERSE the Examiner’s decision to reject claims 1-4.

2 The rejection adds a further modification as taught by Rice to place the
supply-side and take-up side roll holding devices on the same side of the
table.
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REVERSED

nlk

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