Ex Parte Kimura

Patent Trial and Appeal Board

Feb 26, 2018

14480797 (P.T.A.B. Feb. 26, 2018)

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.
14/480,797 09/09/2014 Nobumichi KIMURA 002000-000180 7686
78198 7590 02/28/2018
StiiHehaker & Rraokett PP EXAMINER
8255 Greensboro Drive NGO, LIEN M
Suite 300
Tysons, VA 22102 ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
info@ sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOBUMICHI KIMURA
Appeal 2017-003257
Application 14/480,797
Technology Center 3700
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
4—6, 8, and 10. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2017-003257
Application 14/480,797
CLAIMED SUBJECT MATTER
The claims are directed to a bonding material applying method. Claim
4, the sole independent claim, is reproduced below and illustrative of the
claimed subject matter:
4. A bonding material applying method carried out in a bonding
material applying apparatus including[:]
a syringe in which a bonding material is filled, the syringe
including a discharge nozzle disposed at a tip thereof to discharge
the bonding material filled in the syringe; and
a compressed air supply mechanism that supplies
compressed air to the syringe and discharges the bonding
material from the discharge nozzle, the bonding material
applying method comprising[:]
supplying compressed air by the compressed air supply
mechanism for a time when a discharge interval from end of
discharge to start of discharge of the bonding material lasts for a
certain time or longer, the time of supplying compressed air by
the compressed air supply being shorter than a discharge time
necessary to discharge the bonding material, to such an extent
that the bonding material is substantially not discharged.
REJECTION
Claims 4—6, 8, and 10 are rejected under 35 U.S.C. § 102(a) as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as unpatentable
over Roajanasiri (US 2010/0108256 Al; published May 6, 2010).
OPINION
If the prior art contains, or demonstrates the obviousness of, a device
that includes all the recited structure and can perform all the functional steps
recited it will typically serve to demonstrate the unpatentability of a claim
directed to a machine or apparatus, or at least shift the burden of
demonstrating the inability to perform the recited functions to an applicant.
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Appeal 2017-003257
Application 14/480,797
See MPEP § 2112. Here, Appellant correctly and succinctly points out the
fundamental flaw in the Examiner’s rejection: even assuming Roajanasiri
provides a structure that might be capable of performing the steps of the
recited method (Final Act. 2—3), this does not, without more, demonstrate
the unpatentability of a claim directed to a particular method or process of
using that structure when that method or process is nowhere disclosed by, or
rendered obvious in light of, the prior art. App. Br. 7 (citing MPEP
§ 2112.02 (citing In re King, 801 F.2d 1324 (Fed. Cir. 1986))); see also, e.g.,
Catalina Marketing Int 7 v. Coolsavings.com, 289 F.3d 801, 809—810 (Fed.
Cir. 2002). The Examiner’s rejection lacks sufficient findings to satisfy the
legal requirements for demonstrating the unpatentability of method claim 4
and its dependents.
DECISION
The Examiner’s rejection is reversed.
REVERSED
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