Ex Parte Mueller

Patent Trial and Appeal Board

May 14, 2013

10529161 (P.T.A.B. May. 14, 2013)

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.
10/529,161 02/27/2006 Christian Mueller ITC-331US 2080
23122 7590 05/15/2013
RATNERPRESTIA
P.O. BOX 980
VALLEY FORGE, PA 19482-0980
EXAMINER
LOPEZ, FRANK D
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
05/15/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN MUELLER
____________

Appeal 2011-003771
Application 10/529,161
Technology Center 3700
____________

Before JAMES P. CALVE, WILLIAM A. CAPP and JILL D. HILL,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 4-17 and 19-21as unpatentable under 35 U.S.C.
§ 103(a) over Slocum (US 5,931,048, iss. Aug. 3, 1999). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2011-003771
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THE INVENTION
Appellant’s invention relates to positioning systems for test heads for
testing electronic components. Spec. 1, ll. 4-5. Claim 1, reproduced below
with paragraph indentations added, is illustrative of the subject matter on
appeal.
1. A positioning apparatus for positioning a test head for
testing electronic components, said positioning apparatus
comprising:
a first member;
a support coupled to said first member for supporting the
test head;
a second member arranged relative to said first member
so that said first member is at least partially above and moves
relative to said second member, an interior of said first member
and a top of said second member defining a variable size fluid
compartment within said first member;
a pressure regulator for maintaining a pressure within
said fluid compartment by allowing feeding or allowing
removal of fluid from said fluid compartment responsive to a
change of said pressure in order to increase or decrease size of
said fluid compartment, respectively;
a lifting device for raising and lowering said second
member in order to raise and lower said first member;
wherein said fluid compartment allows said first member
to be moved independently of said lifting device.
OPINION
Appellant argues claims1, 2, 4-17 and 19-21 as a group. App. Br. 13-
21. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
The Examiner finds that the embodiment depicted and described with
respect to Figure 4B of Slocum discloses all of the limitations of claim 1,
Appeal 2011-003771
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except that the mechanical screw lifting device is situated above, rather than
below, the pneumatic lifting device, which is comprised of the first and
second members defining a fluid compartment. Ans. 6-7. Otherwise, the
Examiner finds, and Appellant does not dispute, that both Slocum and
Appellant’s application disclose a lifting apparatus comprised of a
mechanical screw lifting device and a pneumatic lifting device arranged in
axial alignment to provide a lifting force in a vertical direction in a manner
such that the mechanical and pneumatic devices act independently of each
other. Id.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to rearrange the
respective mechanical and pneumatic lifting devices of Slocum so that the
pneumatic device was positioned above, rather than below, the mechanical
screw device. Ans. 7. According to the Examiner, a person of ordinary skill
in the art would have realized that the pneumatic and mechanical screw lifts
could be transposed and yet would still work in the same, predictable
manner. Id.1

1 The Examiner entered two separate grounds of rejection over
Slocum, focusing on different embodiments disclosed by Slocum and how a
person of ordinary skill in the art would have reacted to Slocum’s different
embodiments vis-à-vis the Appellant’s claimed invention. Ans. 3-7.
Our analysis and opinion will focus on the second of the Examiner’s
two grounds for rejection. Inasmuch as we affirm the Examiner’s decision
to reject all pending claims under the second stated grounds of rejection, we
do not reach the question of whether the claims are also unpatentable over
the first stated grounds of rejection. Nevertheless, we have taken the
Examiner’s reasoning into account with respect to the first grounds of
rejection in evaluating the ability of the person of ordinary skill in the art to
modify the prior art.
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Appellant traverses the Examiner’s rejection by arguing that
transposing the mechanical screw and pneumatic lifts would destroy the
functionality of the device. App. Br. 9. Appellant argues that Slocum’s
pneumatic device is secured to the base plate 404 and that it would no longer
be secured to the base plate if it was transposed with the mechanical screw
lift. App. Br. 9-10.
Appellant’s argument is unpersuasive. A person of ordinary skill in
the art is a person of ordinary creativity, not an automaton. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007).2 Appellant’s argument does not
convince us that a person of ordinary skill in the art would have difficulty in
attaching the vertical lifting device to the remainder of the test head
positioning apparatus structure after reorienting it. See Young Dental Mfg.
Co., Inc. v. Q3 Special Products, Inc., 112 F.3d 1137, 1144 (Fed. Cir. 1997)
(routine details are apparent to one of ordinary skill). In particular, we note
that Appellant has presented neither evidence nor argument detailing any
unexpected results obtained by the claimed invention nor describing any
particular problems that needed to be overcome in creating a lift apparatus
where the pneumatic element was positioned vertically above the
mechanical screw element.
Appellant next challenges the Examiner’s rejection by arguing that the
rejection lacks articulated reasoning with rational underpinning and,
therefore, is deficient under KSR, supra. We do not agree. As we
understand the Examiner’s rejection, the articulated reasoning for the

2 An artisan is presumed to know something about the art apart from
what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA
1962).
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rejection is that the proposed modification is a mere rearrangement of
components, which is something that requires no more than ordinary skill.
In re Einstein, 46 F.2d 373, 374 (CCPA 1931) (mere reversal of the essential
working parts of a previously patented device does not constitute invention).
The Examiner’s underlying reasoning to support the rejection is adequately
stated. Ans. 7, 10-11. With respect to Appellant’s question as to why an
engineer would undertake to modify Slocum (App. Br. 12), we think the
Examiner adequately answered this question by pointing out, in essence, that
the orientation of the lifting devices is a matter of design choice and a skilled
artisan would understand that either lifting device orientation is equivalent to
the other orientation based on Slocum’s disclosure. See In re Kuhle, 526
F.2d 553, 555 (CCPA 1975). Ans. 7-11.
Appellant argues that the invention was claimed with a variable size
fluid compartment within the first member, that the first member is above
and moves relative to the second member, and that the synergy of these
features provides fine tuning adjustment of the vertical position of a test
head in a simple manner without excessive force. App. Br. 12. Appellant
argues that the first member can be raised without moving the second
member to fine tune the position of the test head. Id. Appellant argues that
Slocum cannot function in the manner that Appellant’s claimed invention
functions. Id.
Both Slocum and Appellant disclose lifting devices with axially
aligned mechanical screw and pneumatic lifts that are capable of operating
independently of each other. There is no limitation in claim 1 directed to a
fine tuning capability. Thus, Appellant’s argument is not commensurate
with the scope of claim 1.
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Finally, Appellant challenges the Examiner’s finding that reorienting
Slocum’s lifting device would work in a predictable manner. App. Br. 10-
11. Appellant argues that they have no basis to determine whether the
proposed modification of Slocum would work in a predictable manner. App.
Br. 11. However, as persons of scientific competence in the fields in which
they work, examiners are responsible for making findings, informed by their
scientific knowledge, as to the meaning of prior art references to persons of
ordinary skill in the art and the motivation those references would provide to
such persons. Absent legal error or contrary factual evidence, those findings
can establish a prima facie case of obviousness. In re Berg, 320 F.3d 1310,
1315 (Fed. Cir. 2003). Here, the Examiner’s rationale and technical
reasoning for rearranging Slocum’s lifting device are sound. The Examiner
is not required to establish beyond all doubt that the proposed modification
would be successful. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
(“Obviousness does not require absolute predictability of success”). It is
sufficient that a person of ordinary skill in the art would have made the
modification with a reasonable expectation of success. In re Droge, 695
F.3d 1334, 1338 (Fed. Cir. 2012). The Examiner’s findings and conclusions
are adequately supported and Appellant has not shown error in either the
Examiner’s fact findings or legal conclusion of obviousness.3,4 We sustain
the Examiner’s rejection of claims 1, 2, 4-17 and 19-21.

3 Our supervising court maintains that, in appropriate circumstances, a
single prior art reference can render a claim obvious. Sibia Neurosciences,
Inc. v. Cadus Pharms. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000).
4 In the Reply Brief, Appellant asserts that the Examiner changed the
basis of the rejection, thereby entering a new rejection. Reply Br. 2-3.
However, the proper mechanism for Appellant to challenge an alleged new
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DECISION
The decision of the Examiner to reject claims 1, 2, 4-17 and 19-21 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)(1)(iv).
AFFIRMED

mls

ground of rejection in the Answer is through a petition to the Director under
37 C.F.R. § 1.181(a) within two months from the mailing of the examiner's
answer. See MPEP § 1207. 03(IV). As Appellants elected not to petition,
but rather to proceed with the appeal by filing a Reply Brief, Appellant has
waived any allegation that the Examiner's answer contained a new ground of
rejection.