Ex Parte Nally et al

Patent Trial and Appeal Board

Jun 26, 2018

13845978 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/845,978 03/18/2013 Andrew John Nally
5409 7590 06/28/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PRECISI.6969DIV-NY 5369
EXAMINER
BRADFORD, ELIZABETH
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
AZ5409@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW JOHN NALLY,
JEFFREY JAMES VanNORDEN,
and JONATHAN NEAL URQUHART
Appeal2017-008308
Application 13/845,978
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and JEFFREY R. SNAY,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a robotic placement machine. Claim 1 is
illustrative:
1. A robotic placement machine configured to attach to a
Y axis actuator for moving along a Y axis and a X axis actuator
for moving along an X axis, the robotic placement machine
compnsmg:
Appeal2017-008308
Application 13/845,978
Lu
a base operably connectable to at least one of the Y-axis
actuator and the X-axis actuator, the base having a first end and
a second end;
a first Z-axis actuator coupled to the first end of the base,
the first Z-axis actuator capable of moving up and down a first
Z-axis;
a second Z axis actuator coupled to the second end of the
base, the second Z axis actuator capable of moving up and
down a second Z axis; and
a pick and place plate operably connected to the first
Z axis actuator and the second Z axis actuator;
wherein the first Z-axis actuator and the second Z-axis
actuator are each capable of moving independently of each
other to tilt the pick and place plate.
The References1
US 5,827,394 Oct. 27, 1998
Inoue
Mori
Sakata
Tanaka
US 5,852,484 Dec. 22, 1998
US 2003/0011205 Al Jan. 16, 2003
US 2006/0216137 Al Sept. 28, 2006
US 2008/0213077 Al Sept. 4, 2008
Hashimoto US 8,855,818 B2 Oct. 7, 2014
(§ 371 (c)(l), (2), (4) date Mar. 4, 2011)
Sato JP 2002-126965 A May 8, 2002
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
6-8, 13 and 14 over Inoue in view of Mori, Hashimoto and Tanaka,
claims 2--4 and 9--11 over Inoue in view of Mori, Hashimoto, Tanaka and
1 We do not consider additional references relied upon by the Examiner
(Ans. 8, 9) because they are not included in a rejection statement and
therefore are not properly before us. See In re Hoch, 428 F.2d 1341, 1342
n.3 (CCPA 1970).
2
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Application 13/845,978
Sato, and claims 5 and 12 over Inoue in view of Mori, Hashimoto, Tanaka,
Sakata and Lu.
OPINION
We reverse the rejections. We need address only the broadest
independent claim, i.e., claim 1.
Inoue makes a liquid crystal display panel by placing a mixture of
liquid crystals on a first glass substrate (1 b ), contacting an edge of a second
glass substrate (1 a) against an edge of the first glass substrate (1 b ), and
gradually rotating the second glass substrate ( 1 a) about the contacted edges
toward the first glass substrate (1 b) such that as the angle between the glass
substrates (1 a, 1 b) decreases, the mixture flows until the glass substrates (1 a,
1 b) are pressed together, resulting in bubbles being squeezed from the
mixture (col. 4, 11. 13-17; col. 6, 11. 29-40; Fig. 2C).
Mori discloses "a suction nozzle [ (21)] for holding a component by
suction used in a component mounting apparatus [(100)] for mounting a
component such as an electronic component [(B)] on a circuit formation
object such as a circuit board [(A)]" (i-fi-f l, 62-70; Figs. 1, 2).
Hashimoto discloses an apparatus "for monitoring a condition of an
end-effector [ (3)] of a transfer robot [ ( 1)] which is used for transferring a
large size glass substrate used for a solar panel" (col. 1, 11. 9-12). The end
effector [(3)] has an array of vacuum pads [(4)], the inside of which is
exhausted by a vacuum ejector (not shown) to provide suction for holding
the glass substrate against the vacuum pads [(4)] (col. 4, 11. 28--40; Figs. 1,
2).
Tanaka discloses "an articulated robot [(10)] which is capable of
moving a workpiece [ (W)] over a long distance, is less liable to flex under
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Application 13/845,978
its own weight and the weight of the workpiece [(W)] carried thereby, and is
capable of conveying the workpiece [(W)] with high accuracy" (i-f 12). "The
articulated robot 10 comprises a pair of parallel lifting and lowering
devices 16a, 16b, a support plate (support member) 18 which can be lifted
and lowered by the lifting and lowering devices 16a, 16b, an arm
assembly 20 connected to the support plate 18, and an end effector 59
mounted on the distal end of the arm assembly 20" (i-f 49; Fig. 1). "[T]he
lifting and lowering devices 16a, 16b jointly compensate for all the weights
of the arm assembly 20 and the support plate 18. Accordingly, the power
required to lift and lower the arm assembly 20 and the support plate 18 is
reduced" (i-f 52).
The Examiner concludes: 1) "[I]t would have been obvious to one of
ordinary skill in the art at the time of the invention to include the
components of the robotic placement of Mori in the placement mechanism
of Inoue" (Ans. 3) because "to include such components predictably results
in the ability to successfully pick and place components for assembly
(abstract), where the desire for such a means of assembly is disclosed by the
teaching of Inoue (col. 4, line[s] 13-17; col. 6, line[s] 35-40" (id.); 2) "It
would have been obvious to one of ordinary skill in the art at the time of the
invention to use a vacuum plate as in the teaching of Hashimoto as the
vacuum pick and place mechanism of Inoue in view of Mori" (Ans. 3--4)
because "to use a vacuum plate as the vacuum pick and place mechanism
predictably results in the ability to transport substrates beyond small and
light weight articles (col. 1, line[s] 22-24), including flat substrates such as
glass (col. 1, line[s] 9-12), the substrate desirably transferred in the teaching
of Inoue" (Ans. 4); and 3) "It would have been obvious to one of ordinary
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Application 13/845,978
skill in the art at the time of the invention to use the two Z-actuators of
Tanaka [(lifting and lowering devices 16a, 16b)] to secure the plate of Inoue
in view of Mori and Hashimoto" (id.) because "to use two actuators
predictably results in a joint compensation for the supported weight,
resulting in a reduced power required for lifting and lowering the plate
(paragraph 52)" (id.).
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner does not address the differences among the references
and establish that, regardless of those differences, the references would have
provided one of ordinary skill in the art with an apparent reason to combine
their disclosures to arrive at the Appellants' claimed robotic placement
machine. The Examiner's mere assertions that a benefit disclosed regarding
one apparatus predictably would result in that benefit in a different apparatus
are insufficient to provide the required apparent reason.
Thus, the record indicates that the rejections are based upon
impermissible hindsight in view of the Appellants' disclosure. Accordingly,
we reverse the rejections. See In re Warner, 379 F .2d 1011, 1017 (CCP A
1967) ("A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art").
DECISION
The rejections under 35 U.S.C. § 103 of claims 1, 6-8, 13, and 14
over Inoue in view of Mori, Hashimoto and Tanaka, claims 2--4 and 9-11
over Inoue in view of Mori, Hashimoto, Tanaka and Sato, and claims 5 and
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12 over Inoue in view of Mori, Hashimoto, Tanaka, Sakata and Lu are
reversed.
The Examiner's decision is reversed.
REVERSED
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