Ex Parte Johansson

Board of Patent Appeals and Interferences

Jul 11, 2012

10571003 (B.P.A.I. Jul. 11, 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.
10/571,003 03/08/2006 Kenny Johansson B1706.0012/P012 6705
24998 7590 07/11/2012
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
KRAMER, DEAN J
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
07/11/2012 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 KENNY JOHANSSON
________________

Appeal 2010-004743
Application 10/571,003
Technology Center 3600
________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER and,
BENJAMIN D. M. WOOD, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004743
Application 10/571,003

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 4 and 5 (App. Br. 2). Claims 1-3 have been cancelled
(App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
The claimed subject matter is directed to a method of forming a
gripping means as a solid material unit by “freeforming” interconnected
channels in the gripping means and attaching a suction cup and a vacuum
nipple to different channels. Sole independent claim 4 is representative of
the claims on appeal and is reproduced below:
4. A method for forming a gripping means for fixing of a
detail intended to be handled by aid of a robot arm comprising:
forming the gripping means as a solid material unit by
the steps of:
freeforming an integrated collecting channel (7) in
the center of the gripping means;
freeforming a plurality of arms (2) having
integrally formed vacuum channels (8), wherein a first
end of each of the vacuum channels (8) is integrally
formed with the collecting channel (7) and the plurality
of arms (2) are radially formed around the collecting
channel (7);
freeforming a connecting channel (9) integrally
with the collecting channel (7);
attaching a suction cup (6) to a second end of each
of the plurality of vacuum channels (8); and
attaching a vacuum nipple (5) to the connecting
channel (9).

Appeal 2010-004743
Application 10/571,003

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References Relied on by the Examiner
Fortune US 4,221,356 Sep. 9, 1980
Nam US 5,765,889 Jun. 16, 1998
Baan US 6,341,808 B1 Jan. 29, 2002
Nagler US 2003/0107227 A1 Jun. 12, 2003
Baumann US 2004/0100110 A1 May 27, 2004
Bonora US 7,055,875 B2 Jun. 6, 2006

The Rejections on Appeal
1. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagler and Fortune (Ans. 3).
2. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over either Bonora or Nam in view of Baumann and Baan
(Ans. 5).

ANALYSIS
The rejection of claims 4 and 5
as being unpatentable over Nagler and Fortune
This rejection of claims 4 and 5 relies, in part, on the Examiner’s
interpretation of “second end” of the vacuum channel (Ans. 8). We take
issue with the Examiner’s definition of “second end” and the Examiner’s
analysis that “channels (14) can be considered to have three ends” (Ans. 8).
Independent claim 4 recites a vacuum channel (8) having a first end
emanating from a collecting channel (7) and a “second end” attached to a
suction cup (6). The Examiner finds that Nagler’s suction cups are “attached
to one end (18) of each channel (14)” and further that bores (18) “can be
considered one end of channels (14)” (Ans. 7-8). Appellant contends that
Nagler’s Figure 5 discloses the suction devices being “attached to a midpoint
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Application 10/571,003

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of the alleged vacuum channel (14) and not the end” (App. Br. 5). Figure 5
of Nagler clearly discloses bore 18 being connected at a midpoint along
channel 14 and not at an end as claimed. The Examiner does not indicate
where Nagler otherwise supports the Examiner’s contention that Nagler’s
channel 14 has three ends or where Nagler might suggest the same. In view
of Nagler’s disclosure of securing the suction devices at a mid-region and
not an end, we are not persuaded that the Examiner has articulated reasoning
with rational underpinning to support the legal conclusion of obviousness.
We reverse the Examiner’s rejection of claims 4 and 5 in view of Nagler and
Fortune.
The rejection of claims 4 and 5 as being unpatentable
over either Bonora or Nam in view of Baumann and Baan
Appellant argues claims 4 and 5 together and we select independent
claim 4 for review with claim 5 standing or falling with claim 4 (App. Br. 6;
37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 4 requires multiple steps
involving the “freeforming” of a channel or arm and Appellant contends that
none of the cited references teach “freeforming” (App. Br. 6, see also Reply
Br. 6-7). The Examiner finds that “[i]n the absence of a definition,
description, or example of ‘freeforming’ in the original specification, the
term ‘freeforming’ is being interpreted in its broadest sense as simply
integrally forming or forming something into an integrated product” (Ans.
6). The Examiner finds that it is clear from the cross-hatching of Nagler’s
Figure 5, that the unit shown “is an integrated structure and must have been
freeformed (e.g.[,] molded, cast, machined) into such an integral body”
(Ans. 7).
Appellant submits that “[f]reeforming, as defined in Wikipedia, is a
technique for manufacturing solid objects by sequential delivery of material
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Application 10/571,003

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to produce an integrated solid member” (App. Br. 4, see also Reply Br. 4).
Appellant contends that neither Nagler nor Fortune disclose or suggest a
method of forming a gripping means by “freeforming” (App. Br. 4, 5, see
also Reply Br. 5-6). The Examiner acknowledges Appellant’s stated
Wikipedia definition but states that this reference to Wikipedia in
Appellant’s arguments is “undated” and that Appellant’s original
Specification has no disclosure pertaining to “how a sequential delivery of
any material is used to produce the collecting channel, arms, or connecting
channel” as Appellant asserts (Ans. 6). The Examiner thus reiterates that
“the term ‘freeforming’, as recited in claims 4 and 5, will be given its
broadest reasonable interpretation consistent with the specification” (Ans. 6-
7 (emphasis in original). Appellant, in attempting to dissuade the Examiner
from this broad interpretation, argued additional references in the Reply
Brief (and submitted copies of same) in support of Appellant’s interpretation
of “freeforming” as discussed above and in support of their contention that
this term has a known meaning in the art (Reply Br. 4). In the subsequent
Advisory Action mailed October 25, 2010, the Examiner stated that the
Reply Brief will not be entered because these references were “not timely
filed before the filing of an appeal brief,” that such reference to unentered
evidence “is not permitted in a Reply Brief” and that “[n]either of these
references has been made of record during the examination of this
application.”
Our reviewing court has provided instruction that
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
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definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appellant’s
Specification discusses “free-forming” as directed to material optimization
(i.e., low weight) and the ability to obtain complex geometries (Spec. 1).
This description appears to merely pertain to advantages of using "free-
forming," but Appellant does not identify any description in the original
disclosure that provides additional guidance in construing this term, or that
precludes the Examiner's construction. Accordingly, and in view of the
record presented, Appellant has not persuasively argued that the Examiner’s
construction is unreasonable in view of, or inconsistent with, Appellant’s
Specification.
Regarding the rejection of obviousness, the PTO satisfies its initial
procedural burden of establishing a prima facie rejection by adequately
explaining the shortcomings it perceives so that the applicant is properly
notified and able to respond (In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011)). We further note that when an Examiner establishes a prima facie
case of obviousness, the burden shifts to the applicant to show non-
obviousness (In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993)).
We find the Examiner has satisfied the initial procedural burden
regarding the disclosure of the use of “freeforming” in the teachings of
Bonora and Nam based on the Examiner's construction of this term (Ans. 9-
10). It is incumbent on Appellant to show otherwise and we are not
persuaded by Appellant’s attorney argument that Appellant has shown the
Examiner’s findings regarding use of “freeforming” in the teachings of
Bonora or Nam to be in error (see App. Br. 6, Reply Br. 6).
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In this rejection, the Examiner also relies on Baumann’s arms 27 as
extending “radially away from the central collecting channel” (Ans. 5). The
Examiner finds that it would have been obvious to extend the arms of “either
Bonora et al. or Nam et al. radially away from the central collecting channel
similar to that shown in the Baumann et al. publication as an alternative yet
functionally equivalent means of supporting wafers of various sizes” (Ans.
5-6). Appellant contends that the “arms of Baumann are not formed radially
around the collecting channel as recited by claim 4, but instead, the arms of
Baumann project off the end of the collecting channel (30)” (App. Br. 7).
Baumann’s Figure 2 disclose arms 27 that radiate outward in contrast to the
parallel arms of the primary references (see Ans. 5). We do not find the
Examiner’s reasoning to be in error.
The Examiner also states that Bonora and Nam “both show grippers
having a main body or ‘unit’ that appear to be integrally formed from a
single piece of material” (Ans. 8). Appellant contends that the Examiner has
not asserted a reference where the various channels and assembly are “an
integral structure” or where the “components are integrally formed” (App.
Br. 7). In view of both Bonora and Nam, we are not persuaded by
Appellant’s contentions or that the Appellant has identified an error in the
Examiner’s findings that the references show units that appear to be
integrally formed.
In view of the above, we sustain the Examiner’s rejection of claims 4
and 5 over Bonora or Nam in view of Baumann and Baan.

Appeal 2010-004743
Application 10/571,003

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DECISION
The rejection of claims 4 and 5 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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