Ex Parte Kitagawa et al

Patent Trial and Appeal Board

Nov 21, 2017

13224063 (P.T.A.B. Nov. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/224,063 09/01/2011 Takeharu KITAGAWA 5070-0015 8681
22429 7590 11/24/2017
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
TUCKER, PHILIP C
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
11/24/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKEHARU KITAGAWA,
TAKUYA NAKAZONO, SHUSAKU GOTO,
MINORU MIYATAKE, TOMOHIRO MORI, and
TAKASHI KAMIJO
Appeal 2016-000318
Application 13/224,0631
Technology Center 1700
Before JAMES C. HOUSEL, BRIAN D. RANGE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This decision responds to Appellants’ April 13, 2017, Request for
Rehearing (hereinafter, the “Request”) of our Decision mailed February 14,
2017 (hereinafter, the “Decision”). The relevant portion of the Decision
sustains the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Kimura in view of Kitada, Nishikubo, Von Hofe, and
Bjork. Decision 3—7.
1 According to the Appellants, the real party in interest is NITTO DENKO
CORPORATION. Appeal Br. 2.
Appeal 2016-000318
Application 13/224,063
As a threshold matter, we note that Appellants purport to incorporate
by reference all arguments made in the Appeal Brief and Reply Brief.
Request 2. This portion of the Request fails to “state with particularity the
points believed to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52 (2013). We deny the Request for Rehearing to the extent
it relies on incorporation by reference rather than responding to the Decision
in accordance with 37 C.F.R. § 41.52.
With respect to the substantive portion of the Request, Appellants
argue that the Examiner’s rejection cannot be properly sustained because the
Examiner conceded that Kimura, Kitada, Nisikubo, Van Hofe, and Bjork
“fail to teach or suggest the recited claim language” of claim 1 “determining
which of the cut laminate strips has the defect, and, with respect to a specific
laminate strip which is determined to have the defect.” Request 2.
We agree with the Examiner’s statement, emphasized by Appellants,
that the references “as combined fail to specifically teach or disclose that the
inspection step occurs prior to forming individual strip webs from the wide
web of material.” Ans. 5 (emphasis added). Nonetheless, as explained
below, inspecting prior to cutting would have been obvious because “the
selection of any order of performing process steps is prima facie obvious in
the absence of new or unexpected results.” Id. (citing In re Burhans, 154
F.2d 690 (CCPA 1946). Once established that inspecting before cutting
would have been obvious, a person having ordinary skill in the art following
the teachings of the combined references necessarily would have practiced
claim 1 ’s recited “determining which of the cut laminate strips has the
defect, and, with respect to a specific laminate strip which is determined to
have the defect.”
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Application 13/224,063
With respect to inspecting before cutting, the Examiner states that the
rejection is based on “movement of the inspection step upstream to a
location wherein the optical film strips of a desired dimension are made
from a wide web of material, which is not disclosed by Kimura.” Ans. 12.
The obviousness of moving the inspection step upstream is based upon the
principle stated in In re Burhans that an argument that references “taken
singly or together” do not teach the order of a claim’s recited steps lacks
merit “in the absence of any proof in the record that the order of performing
the steps produces any new or unexpected results.” In re Burhans, 154 F.2d
at 692. The reordering of steps here is merely “predictable use of prior art
elements according to their established functions.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398,417 (2007).
Appellants do not present any persuasive argument as to why the
detecting before cutting modification would not be expected to work.
Rather, Appellants argue that the above-quoted language of In re Burhans is
merely dicta because that case was decided based on the references “clearly
suggesting] doing the thing that appellant has done.” Request 4 (quoting In
re Burhans, 154 F.2d at 692). This argument is not persuasive.
The In re Burhaus appellant argued that order was important, and the
court disagreed absent “new or unexpected results.” In particular, appellant
asserted that his method comprised four steps “in the order stated.'” 154
F.2d at 691 (emphasis added). The court explains that none of the five
references individually taught all four steps of appellant’s method in the
order claimed by appellant. Id. at 692 (comparing teachings of Donk,
Willinghoff, Dietz, Byrne, and Currie to appellant’s method). The court
then states, “Appellant contends that the references taken singly or together
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Application 13/224,063
do not teach his characteristic four steps which are new in the art and which
are necessary to obtain the desired result.” Id. (emphasis added). The
“characteristic four steps” that the court refers to are the four steps “in order”
that the court previously referenced. In other words, appellant argued that
order of steps was important to patentability, and the court disagreed absent
“new and unexpected results.”
The reasoning of In re Burhans is consistent with other decisions that
similarly hold that rearranging the order of known steps does not lead to
patentability absent new and unexpected results. See, e.g., In re Lang, 97
F.2d 626, 628 (CCPA 1938) (holding that a process was obvious while all
steps were taught by prior art even though “no reference shows the steps in
the exact order named”); In re McKee, 83 F.2d 819, 820—21 (CCPA 1936)
(affirming Board of Appeal’s decision that freezing meat before wrapping
instead of after wrapping did not involve invention); In re Gibson, 39 F.2d
975, 976 (CCPA 1930) (agreeing with Board of Appeals that “[w]e think the
proper sequence of adding the three ingredients to obtain the most
satisfactory mixture of three constituents is within the expected skill and
judgment of a mechanic and such choice of sequence does not involve
invention. . . .”). Appellants make no argument that more recent law has
undermined the holding of In re Burhans. See also KSR Int'l Co., 550 U.S.
at 401 (“combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Here, we apply the reasoning of In re Burhans, and the similar cases,
while keeping the principles of KSR in mind. Here, just as in In re Bauhans,
the Examiner’s rejection is based upon a combination of references.
Appellants here, as in In re Burhans, argue that none of the references taught
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Application 13/224,063
the precise steps of their claim in order but do not establish new or
unexpected results based on order. Meanwhile, as further explained below,
moving the inspection step prior to cutting would lead to predictable results.
We therefore adhere to the holding of In re Burhans by determining that
Appellants’ argument regarding order of known steps fails to establish
reversible error absent known or unexpected results.
Once the obviousness of inspecting before cutting (as explained
above) is established, claim 1 ’s recitation of “determining which of the cut
laminate strips has the defect, and, with respect to a specific laminate strip
which is determined to have the defect” would necessarily and predictably
result from a person of skill in the art following the teachings of the prior art.
As the Examiner finds, “the expected result [of the combined references]
would be to find and record the position of defects in the web of material,
and thereby record the position in strips as required by Kimura et al.” Ans.
10—11; see also Decision 5. The Examiner’s explanation of “the expected
result” is equivalent to the Examiner finding that this result is predictable.
Furthermore, as we explained in the decision, a person of ordinary
skill in the art would recognize that combining Bjork’s width wise
determination into Kimura would be within a person of ordinary skill in the
art’s technical grasp and would have the advantage of more accurately
locating a defect’s location. Id. at 10; Decision 6. Once Kimura is moved
upstream of cutting, Bjork’s determination of x and y defect location would
be particularly advantageous because it would have provided information as
to which strip has a defect. Decision 6. As the Examiner finds, “[t]he
method of the above references as combined determines both the X and Y
coordinate of the defect prior to strip formation, therefore the process tracks
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which strips have a defect since the said defects are tracked throughout the
process.” Ans. 11. It is this detection and tracking of X and Y defect
location prior to cutting that is indistinguishable from claim 1 ’s recitation of
“determining which of the cut laminate strips has the defect, and, with
respect to a specific laminate strip which is determined to have the defect.”
DECISION
For the above reasons, we adhere to our decision. We deny
Appellants’ Request for Rehearing to the extent it relies on incorporation by
reference rather than stating with particularity points believed to have been
misapprehended or overlooked by the Board. Insofar as Appellants state
such points, we grant the Request to the extent we have considered
Appellants’ arguments, but the request is denied in that the Decision will not
be modified.
DENIED
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