Ex Parte Saho

Board of Patent Appeals and Interferences

Jun 24, 2009

10705344 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte HIDEHIRO SAHO 8
____________________ 9
10
Appeal 2008-003474 11
Application 10/705,344 12
Technology Center 3700 13
____________________ 14
15
Decided:1 June 24, 2009 16
____________________ 17
18
Before JENNIFER D. BAHR, LINDA E. HORNER, and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
21
SILVERBERG, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE 1
Hidehiro Saho (Appellant) seeks our review under 35 U.S.C. § 134 of 2
the final rejection of claims 3, 7 and 10-13. We have jurisdiction under 35 3
U.S.C. § 6(b) (2002). 4
5
SUMMARY OF DECISION 6
We AFFIRM. 7
8
THE INVENTION 9
The Appellant’s claimed invention is directed to a tape member 10
attachment 24, 25 for an electronic part supplying tape (carrier tape) 7 used 11
in a tape feeder 4 (Spec. 1:7-10 and Spec. 16:2-23). 12
The invention is readily understood by reference to Figure 5A and 13
Claim 3. 14
Figure 5A is reproduced below: 15
16
Figure 5A shows the carrier tape 7 and tape member attachments 24, 17
25 (Spec. 16:7-23). 18
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Claim 3, reproduced below, is representative of the claimed subject 1
matter: 2
3. An electronic part supplying tape, used in a 3
tape feeder arranged in a part supplying portion of 4
an electronic part mounting apparatus, for holding 5
electronic parts on a tape member at a constant 6
pitch and for supplying the electronic parts, 7
comprising: 8
a first tape member with a first end portion 9
and a second end portion, and a second tape 10
member with a first end portion and a second end 11
portion; 12
a first connecting portion formed on the 13
second end portion of the first tape member; 14
a second connecting portion formed on the 15
first end portion of the second tape member, to be 16
connected to the first connecting portion formed 17
on the first tape member; 18
an alignment means for positioning the first 19
connecting portion and the second connecting 20
portion in a longitudinal direction, a width 21
direction and a thickness direction of the tape 22
members, and 23
a holding means for holding the first 24
connecting portion and the second connecting 25
portion to each other, 26
wherein the first tape member and the 27
second tape member are connectable by 28
connecting the first connecting portion of the first 29
tape member and the second connecting portion of 30
the second tape member, 31
wherein the first connecting portion of the 32
first tape member comprises a locking member 33
attachment coupled to the second end portion of 34
the first tape member, and the second connecting 35
portion of the second tape member comprises a 36
locked member attachment coupled to the first end 37
portion of the second tape member, and 38
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wherein the locking member attachment and 1
the locked member attachment constitute the 2
alignment means. 3
4
THE REJECTIONS 5
The Examiner relies upon the following as evidence of 6
unpatentability: 7
Busler US 3,431,548 Mar. 4, 1969 8
Hamano (as translated) JP 7165260 A Jun. 27, 1995 9
Ishii US 6,389,672 B1 May 21, 2002 10
11
The following rejections2 by the Examiner are before us: 12
1. Claims 3, 7, 10 and 11 are rejected under 35 U.S.C. § 103(a) as being 13
unpatentable over Ishii in view of Busler. 14
2. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being 15
unpatentable over Hamano in view of Busler. 16
17
ISSUE 18
The issue before us is whether the Examiner has articulated a reason 19
with rational underpinning to combine the teachings of Ishii and Busler, and 20
the teachings of Hamano and Busler in the manner claimed (App. Br. 6-7). 21
22
FINDINGS OF FACT 23
We find that the following enumerated findings are supported by at 24
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 25

2 The rejection of claims 12 and 13 under 35 U.S.C. § 112, as set forth in the
Final Rejection mailed June 9, 2006 (Final Rejection 2), has been withdrawn
(App. Br. 2 and Ans. 2).
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1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 1
proceedings before the Office). 2
The Appellant’s Invention 3
1. The Appellant’s Specification describes that the tail connecting 4
end portion 7E′ (first connecting portion) and the head connecting 5
end portion 7S′ (second connecting portion) are formed by 6
coupling the attachments 24, 25, which are a locking member and 7
a locked member, respectively. The attachments 24, 25 with the 8
positional relationship between the pin 24b and the engaging hole 9
25b comprise alignment means and also holding means (Spec. 10
20:15-Spec. 21:2 and fig. 5A). 11
The Examiner’s Findings 12
Claims 3, 7, 10 and 11 13
2. The Examiner found that Ishii describes an electronic part 14
supplying tape having a first connecting portion 10, a second 15
connecting portion 10, alignment means 8a, 8b, and holding means 16
8a, 8b (Ans. 3). 17
3. The Examiner found implicitly, by combining the teachings of 18
Ishii and Busler, that Ishii does not describe the particular 19
connecting, aligning and holding structure as called for in claim 3 20
(Ans. 4). 21
4. The Examiner found that Busler describes a first connecting 22
portion 44; a second connecting portion 46; alignment means 43, 23
44, 48; holding means 44, 46; a locking member 43; and a locked 24
member 44 (Ans. 3-4). 25
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5. The Examiner found that combining the teachings of Ishii and 1
Busler by replacing the connecting, aligning and holding structure 2
in Ishii with the connecting, aligning and holding structure as 3
taught by Busler would provide Ishii with the advantages of 4
connecting and aligning as taught by Busler (Ans. 4). 5
Claims 12 and 13 6
6. The Examiner found that Hamano (denoted by the Examiner as EP 7
07165260) describes an electronic part supplying tape having a 8
first connecting portion (one end of the tape piece), a second 9
connecting portion (the other end of the described tape piece), 10
alignment means K, K, holding means (portions received in K, 11
K), and a plurality of feed holes 6 (Ans. 4-5). 12
7. The Examiner found implicitly, by combining the teachings of 13
Hamano and Busler, that Hamano does not describe the particular 14
connecting, aligning and holding structure as called for in claims 15
12 and 13 (Ans. 5). 16
8. The Examiner found that combining the teachings of Hamano and 17
Busler by replacing the connecting, aligning and holding structure 18
K, K in Hamano with the connecting, aligning and holding 19
structure as taught by Busler at 43, 44 would provide Hamano with 20
the advantages of a connecting, aligning and holding structure as 21
taught by Busler (Ans. 5). 22
This Board’s Findings 23
9. Ishii describes a component assembling apparatus having a tape-24
like member 1, and a supply reel 3. Ishii’s tape-like member 1 25
includes a succession of holder units 10 joined to each other by 26
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couplers 8a, 8b at either end to form a tape-like train (col. 4, ll. 27-1
45 and figs. 2 and 5(a)). 2
10. Ishii’s couplers 8a, 8b hold the holder units 10 in a particular 3
arrangement, which thereby aligns the holder units 10. 4
11. Busler describes a carrier strip 41 having a snap member 43 at one 5
end, a hole 44 and a channel 48 at the other end (col. 2, ll. 28-61 6
and fig. 1), and slots 49 for engagement by feed fingers (col. 2, l. 7
62-col. 3, l. 3 and fig. 1). Busler’s snap member 43 has a collar 46 8
(col. 2, ll. 38-40 and fig. 3). Busler’s snap member 43 includes an 9
inclined surface 47 to facilitate the connection between the snap 10
member 43 and hole 44 (col. 2, ll. 40-41 and 59-61; and fig. 2). 11
The one end having the snap member 43 cooperates with the other 12
end having the hole 44 to form a flat bottom (col. 2, ll. 33-36 and 13
figs. 2-4). Busler’s snap member 43 is pushed through the hole 44 14
to interlock two carrier strips (col. 2, ll. 52-56 and figs. 2-4). 15
12. Hamano describes forming a carrier tape by connecting multiple 16
carrier tape pieces, wherein the complementary shaped ends K, K 17
of the carrier tape pieces are fitted together (translation, p. 9, ll. 12-18
16 and p. 10, ll. 8-15; and figs. 1, 2 and 4). 19
13. Hamano’s complementary shaped ends K, K of the carrier tape 20
pieces hold the carrier tape pieces in a particular arrangement, 21
which thereby aligns the carrier tape pieces. 22
14. Appellant has not contested the Examiner’s findings as to the 23
teachings of Ishii, Busler or Hamano (App. Br. 6-7). 24
15. Additional findings as necessary appear in the Analysis portion of 25
this opinion. 26
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1
PRINCIPLES OF LAW 2
Appellant’s Burden 3
Appellant has the burden on appeal to the Board to demonstrate error 4
in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d 1606, 5
1614 (BPAI 2008) [burden on appeal] (on appeal, applicant must show 6
examiner erred); Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex 7
parte Catan, 83 USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 8
USPQ2d 1509, 1519 (BPAI 2007). See also In re Kahn, 441 F.3d 977, 985-9
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a 10
rejection [under § 103] by showing insufficient evidence of prima facie 11
obviousness or by rebutting the prima facie case with evidence of secondary 12
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 13
(Fed. Cir. 1998)). 14
15
Obviousness 16
“Section 103 forbids issuance of a patent when ‘the differences 17
between the subject matter sought to be patented and the prior art are such 18
that the subject matter as a whole would have been obvious at the time the 19
invention was made to a person having ordinary skill in the art to which said 20
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 21
(2007). The question of obviousness is resolved on the basis of underlying 22
factual determinations including (1) the scope and content of the prior art, 23
(2) any differences between the claimed subject matter and the prior art, (3) 24
the level of skill in the art, and (4) where in evidence, so-called secondary 25
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 26
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also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 1
might be reordered in any particular case, the [Graham] factors continue to 2
define the inquiry that controls.”). 3
In KSR, the Supreme Court stated that “when a patent claims a 4
structure already known in the prior art that is altered by the mere 5
substitution of one element for another known in the field, the combination 6
must do more than yield a predictable result.” Id. at 416 (citing United 7
States v. Adams, 383 U.S. 39, 50-51 (1966)). 8
In KSR, the Supreme Court stated that: 9
[o]ften, it will be necessary for a court to look to 10
interrelated teachings of multiple patents; the 11
effects of demands known to the design 12
community or present in the marketplace; and the 13
background knowledge possessed by a person 14
having ordinary skill in the art, all in order to 15
determine whether there was an apparent reason to 16
combine the known elements in the fashion 17
claimed by the patent at issue. 18
KSR, 550 U.S. at 418. The Court noted that “[t]o facilitate review, this 19
analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 20
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained 21
by mere conclusory statements; instead, there must be some articulated 22
reasoning with some rational underpinning to support the legal conclusion of 23
obviousness.”)). However, “the analysis need not seek out precise teachings 24
directed to the specific subject matter of the challenged claim, for a court 25
can take account of the inferences and creative steps that a person of 26
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. 27
In KSR, the Supreme Court stated that: 28
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Helpful insights, however, need not become rigid 1
and mandatory formulas; and when it is so applied, 2
the TSM test is incompatible with our precedents. 3
… There is no necessary inconsistency between 4
the idea underlying the TSM test and the Graham 5
analysis. But when a court transforms the general 6
principle into a rigid rule that limits the 7
obviousness inquiry, as the Court of Appeals did 8
here, it errs 9
10
Id. at 419. 11
12
ANALYSIS 13
Appellant argues claims 3, 7, 10 and 11 as a group. As such, we 14
select claim 3 as representative of the group, and claims 7, 10 and 11 will 15
stand or fall with claim 3. Appellant argues claims 12 and 13 as a group. As 16
such, we select claim 13 as representative of the group, and claim 12 will 17
stand or fall with claim 13. 37 C.F.R. § 41.37(c)(1)(vii) (2007). 18
19
Rejection of claims 3, 7, 10 and 11 under 35 U.S.C. § 103(a) as being 20
unpatentable over Ishii in view of Busler 21
22
Ishii describes the basic invention as called for in claim 3 (Facts 2 and 23
9), but does not describe the particular connecting, aligning and holding 24
structure as called for in claim 3 (Fact 3). The Examiner found that Busler 25
describes a first connecting portion 44; a second connecting portion 46; 26
alignment means 43, 44, 48; holding means 44, 46; a locking member 43; 27
and a locked member 44 (Fact 4). In particular, Busler describes a carrier 28
strip 41 having a snap member 43 at one end, and a hole 44 and a channel 48 29
at the other end. Busler’s snap member 43 includes an inclined surface 47 30
that facilitates the connection between the snap member 43 and the hole 44 31
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as the snap member is pushed through the hole 44 to interlock two carrier 1
strips (Fact 11). 2
Appellant has not contested the Examiner’s findings as to teachings of 3
Ishii or Busler (Fact 14). 4
Appellant contends that “there is no advantage in substituting the 5
couplers 8a, 8b [of Ishii] for a different connecting structure that would also 6
merely connect, align, and hold the holder units.” Appellant further 7
contends that neither Ishii nor Busler “even remotely suggest[s] the 8
desirability of such a modification.” (App. Br. 6). The Appellant’s latter 9
argument is unavailing, because the Court in KSR held that it is error to limit 10
the obviousness inquiry to a rigid application of the teaching, suggestion, 11
motivation (TSM) test. 550 U.S. at 419. 12
We see no error in the Examiner’s finding that combining the 13
teachings of Ishii and Busler would yield in Ishii the advantages as taught by 14
Busler (Fact 5). The Appellant’s Specification describes that the connecting 15
structure comprises the alignment means and the holding means (Fact 1). 16
We find that Ishii’s connecting structure, couplers 8a, 8b, similarly 17
comprises an alignment and a holding means (Fact 10). We find that 18
combining the teachings of Ishii and Busler by replacing the connecting, 19
aligning and holding structure, couplers 8a, 8b in Ishii with the connecting, 20
aligning and holding structure as taught by Busler at 43, 44 would provide 21
Ishii’s holder units 10 with an inclined surface 47 to facilitate the connection 22
between the snap member 43 and hole 44, and also provide a connecting, 23
aligning and holding structure that interlocks the holder units 10. 24
The modification proposed by the Examiner is the simple substitution 25
of one known connecting, aligning and holding structure for another to 26
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perform the same function of connecting, aligning and holding two objects, 1
and thereby yield predictable results. See KSR, 550 U.S. at 416 (the claimed 2
combination of known structure altered by the mere substitution of one 3
element for another known structure must do more than yield a predictable 4
result). 5
Therefore, we conclude that the Appellant has not demonstrated that 6
the Examiner erred in rejecting claim 3 over Ishii in view of Busler. The 7
Appellant has likewise not demonstrated error in the Examiner’s rejection of 8
claims 7, 10 and 11, which fall with claim 3. 9
10
Rejection of claims 12 and 13 as being unpatentable over Hamano in view of 11
Busler 12
13
Hamano describes the basic invention as called for in claim 13 (Facts 14
6 and 12), but does not describe the particular connecting, aligning and 15
holding structure as called for in claim 13 (Fact 7). The Examiner found that 16
Busler describes a first connecting portion 44; a second connecting portion 17
46; alignment means 43, 44, 48; holding means 44, 46; a locking member 18
43; and a locked member 44 (Fact 4). In particular, Busler describes a 19
carrier strip 41 having a snap member 43 at one end, and a hole 44 and a 20
channel 48 at the other end. Busler’s snap member 43 includes an inclined 21
surface 47 that facilitates the connection between the snap member 43 and 22
the hole 44 as the snap member is pushed through the hole 44 to interlock 23
two carrier strips (Fact 11). 24
Appellant has not contested the Examiner’s findings as to teachings of 25
Hamano or Busler (Fact 14). 26
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Appellant contends that Hamano does not suggest a motivation or 1
desirability to modify its connecting structure by making a substitution with 2
Busler’s snap member 43 and receptacle (hole) 44 (App. Br. 7). For the 3
same reasons discussed above, the Appellant’s argument of error based on a 4
rigid application of the TSM test is unavailing. See KSR, 550 U.S. at 419 5
(holding that it is error to apply the TSM test as a rigid formula to limit the 6
obviousness inquiry). 7
We see no error in the Examiner’s finding that combining the 8
teachings of Hamano and Busler would yield in Hamano the advantages as 9
taught by Busler (Fact 8). The Appellants’ Specification describes that the 10
connecting structure comprises the alignment means and the holding means 11
(Fact 1). We find that Hamano’s connecting structure, complementary 12
shaped ends K, K of the carrier tape pieces, similarly comprises an 13
alignment and a holding means (Fact 13). We find that combining the 14
teachings of Hamano and Busler by replacing the connecting, aligning and 15
holding structure K, K in Hamano with the connecting, aligning and holding 16
structures as taught by Busler at 43, 44 would provide Hamano’s carrier tape 17
pieces with an inclined surface 47 to facilitate the connection between the 18
snap member 43 and hole 44, and also provide a connecting, aligning and 19
holding structure that interlocks the carrier tape pieces. 20
The modification proposed by the Examiner is the simple substitution 21
of one known connecting, aligning and holding structure for another to 22
perform the same function of connecting, aligning and holding two objects, 23
and thereby yield predictable results. See KSR, 550 U.S. at 416. 24
Therefore, we conclude that the Appellant has not demonstrated that 25
the Examiner erred in rejecting claim 13 over Hamano in view of Busler. 26
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The Appellant has likewise not demonstrated error in the Examiner’s 1
rejection of claim 12, which falls with claim 13. 2
3
CONCLUSIONS OF LAW 4
Appellant has not established that the Examiner erred in articulating a 5
reason with rational underpinning that would have led a person of ordinary 6
skill in the art to modify the tape members of Ishii or Hamano to use the 7
connecting structure of Busler in the manner claimed. 8
9
DECISION 10
The decision of the Examiner to reject claims 3, 7, 10 and 11 over 11
Ishii in view of Busler, and claims 12 and 13 over Hamano in view of Busler 12
is affirmed. 13
No time period for taking any subsequent action in connection with 14
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 15
16
AFFIRMED 17
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mls 21
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