Ex Parte Pan et al

Board of Patent Appeals and Interferences

Jan 25, 2012

10976620 (B.P.A.I. Jan. 25, 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.
10/976,620 10/29/2004 Cheng-Min Pan PANC3018/JJC/JS 7842
23364 7590 01/26/2012
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
HEINRICH, SAMUEL M
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
01/26/2012 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 CHENG-MIN PAN, HUA-JEN TSENG, CHUN-CHIEH LEE, and
SHENG-FENG HUNG
____________

Appeal 2009-013999
Application 10/976,620
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/976,620

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STATEMENT OF THE CASE
Cheng-Min Pan et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1-6 and
19-30 as unpatentable over Appellants’ Admitted Prior Art1 (Spec. 1,
BACKGROUND OF THE INVENTION, paras. [02]-[05]), Yu (US
2001/0042427, published Nov. 22, 2001), and Spinner (US 5,808,259,
issued Sep. 15, 1998) and claims 4, 5, 23, 24, 29, and 30 over AAPA, Yu,
Spinner, and Zollman (US 4,944,826, issued Jul. 31, 1990) or Imai (US
6,025,572, issued Feb. 15, 2000). Claims 7-18 have been canceled. We
have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to trimming accessories for trimming a
rubber plate 30 used in an ion implanter including a template 20 having
secondary holes 21 and secondary notches 22, and a cutter 40, i.e. knife 40a
or laser 40b. Spec. 4, para. [24] and figs. 2 and 2a.
Claim 19 is illustrative of the claimed invention and reads as follows:
19. A trimming apparatus for trimming a rubber plate which is
configured to be placed on a platform of an ion implanter, the platform
of the ion implanter including a plurality of primary holes and a
plurality of primary notches, the trimming apparatus comprising:
a template including a plurality of secondary holes
corresponding to the plurality of primary holes of the platform of the
ion implanter and a plurality of secondary notches corresponding to
the plurality of primary notches of the platform of the ion implanter,
the template being configured to guide trimming of the rubber plate to
form a plurality of tertiary holes in the rubber plate corresponding to
the plurality of secondary holes of the template and to form a plurality

1 Hereafter “AAPA.”
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of tertiary notches in the rubber plate corresponding to the plurality of
secondary notches of the template.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The obviousness rejection over AAPA, Yu, and Spinner
Appellants have not presented arguments for the patentability of
independent claim 1 apart from independent claim 19. App. Br. 12 and 16.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim
19 as the representative claim to decide the appeal, with claim 1 standing or
falling with claim 19.
Appellants argue that, (1) “the references relied upon by the Examiner
lie in nonanalogous arts” (App. Br. 12) and (2) “the current obviousness
claim rejections are a product of the exercise of hindsight” (App. Br. 15).

Appellants’ First Argument
At the outset, Appellants note that (1) the template of Yu is for cutting
apertures in a belt material and (2) Spinner’s template is for customizing
printed circuit boards. App. Br. 12-13. Hence, according to Appellants,
both Yu and Spinner “lie well outside the field of Applicant’s endeavor, and
are not reasonably pertinent to [the] problem which Applicant is concerned,
namely, a trimming apparatus for trimming a rubber plate prior to placing
the plate on an ion implanter.” App. Br. 14. Specifically, Appellants argue
that “[t]he template of the Yu Application is used to cut edges, rather than
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holes and notches, while the template of the Spinner patent is not used to
trim or cut altogether.” Reply Br. 2.
We disagree with Appellants’ description. First, we find that
Appellants’ field of endeavor is that of a trimming apparatus including, inter
alia, a trimming template and a cutter. We note that Yu discloses a
trimming template and a laser cutter. Yu, paras. [0039] and [0042]. See
also, Ans. 4. Hence, in contrast to Appellants’ position, we find that Yu is
from Appellants’ field of endeavor and thus is analogous art to Appellants’
invention.
Further, to determine what is analogous prior art for the purpose of
analyzing the obviousness of the subject matter at issue, “any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). Thus, a reference in a field different from that of applicant's
endeavor may be reasonably pertinent if it is one that, because of the matter
with which it deals, would have logically commended itself to an inventor's
attention in considering his or her invention as a whole. In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
In this case, Appellants’ Specification describes the use of a trimming
template plate 20 and a cutter 40 to trim a rubber plate 30. Spec. 2, ll. 6-7
and figs. 2 and 3a. With respect to AAPA, the Examiner found that AAPA
describes trimming a rubber plate using as a template platform 10 having
holes and notches. Ans. 4. See also, Spec. 1, paras. [02]-[05]. The
Examiner further found that AAPA fails to describe a trimming template
having holes and notches. Ans. 4. The Examiner then turned to Yu merely
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for the teaching of a trimming template having notches and to Spinner for
the teaching of a template having alignment holes. Id. See also, Spinner,
col. 8, ll. 25-30 and fig. 4A. Hence, an inventor seeking to cut the rubber
plate of AAPA with holes and notches would look to the laser cutter of Yu
and to a template having notches and holes as taught by Yu and Spinner. As
such, we find that the combination of AAPA, Yu, and Spinner addresses a
problem addressed by Appellants, namely, the ability to trim a rubber plate
having holes and notches and, thus, would have commended itself to an
inventor’s attention in considering this problem. For this reason, both Yu
and Spinner constitute analogous art to Appellants’ invention.

Appellants’ Second Argument
Appellants argue that the “art relied upon by the Examiner fails to
provide any suggestion to motivate its combination in order to reject the
pending claims.” App. Br. 16. We find Appellants’ argument unpersuasive
because it appears to hold the Examiner to the old rigid TSM standard; such
a standard is not required. While the requirement of demonstrating a
teaching, suggestion, or motivation (the TSM test established by the Court of
Customs and Patent Appeals) to combine known elements in order to show
that the combination is obvious may be “a helpful insight,” it cannot be used
as a rigid and mandatory formula. KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 418-419 (2007).
In this case, we agree with the Examiner that although AAPA
describes trimming a rubber plate using a platform having notches and holes,
AAPA fails to describe trimming a rubber plate using a trimming template
having notches and holes. Ans. 4. However, the Examiner further found
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that Yu describes trimming a belt material using a laser and a trimming
template having notches, while Spinner describes a template having
alignment holes. Id. Hence, Appellants’ claimed trimming apparatus is
nothing more than a template having notches and holes as described by Yu
and Spinner that align with the notches and holes of AAPA’s platform.
Using the template of AAPA, Yu, and Spinner to trim the rubber plate of
AAPA would involve only ordinary creativity, and would not have been
uniquely challenging to a person of ordinary skill in the art. See, e.g., KSR
Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("a person of ordinary
skill has good reason to pursue the known options within his or her technical
grasp"). Moreover, given the similarity between platform 10 of AAPA and
the template of AAPA, Yu, and Spinner the Examiner has a sound basis for
finding that the template of AAPA, Yu, and Spinner would have been a
suitable substitute for platform 10 of AAPA to trim the rubber plate of
AAPA. Appellants provide no persuasive reason why one of ordinary skill
in the art could not have implemented such a substitution. Neither do
Appellants provide any persuasive reason why the results of the substitution
would have been unpredictable. The Examiner is correct in concluding that
such a substitution would have been obvious. See Ans. 4. As such, we
agree with the Examiner that using a template having notches and holes to
trim the rubber plate of AAPA for an ion implanter would have been
obvious to a person of ordinary skill in the art because it would prevent
damage to the platform. Ans. 5. See also, AAPA, Spec. 1, para. [05], l. 23.
In conclusion, for the foregoing reasons, the rejection of claim 19 and
claim 1, standing or falling with claim 19, over the combined teachings of
AAPA, Yu, and Spinner is sustained.
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With respect to claims 2-6 and 20-30, Appellants do not present any
additional substantive arguments. App. Br. 16. Accordingly, we shall also
sustain the rejection of claims 2-6 and 20-30 over the combined teachings of
AAPA, Yu, and Spinner.

The obviousness rejection over AAPA, Yu, Spinner, and Zollman or Imai
With respect to the rejection of claims 4, 5, 23, 24, 29, and 30 over
AAPA, Yu, Spinner, and Zollman or Imai, Appellants argue that there is no
teaching or suggestion in either Zollman or Imai that would motivate a
person of ordinary skill in the art to combine either reference with AAPA,
Yu, and Spinner. App. Br. 17. We are not persuaded because such an
argument appears once more to be holding the Examiner to the old TSM
standard; such a standard is not required. KSR 550 U.S. at 415. ("We begin
by rejecting [TSM]"). Accordingly, the rejection of claims 4, 5, 23, 24, 29,
and 30 over the combined teachings of AAPA, Yu, Spinner, and Zollman or
Imai is likewise sustained.

SUMMARY
The decision of the Examiner to reject claims 1-6 and 19-30 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

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