Illinois Tool Works Inc.

Patent Trials and Appeals Board

Jan 12, 2022

2021000632 (P.T.A.B. Jan. 12, 2022)

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. 16/044,104 07/24/2018 Scott A. Reid C2013-732819(67776) 6282 118121 7590 01/12/2022 Lando & Anastasi, LLP ITW 60 STATE STREET, 23RD FLOOR BOSTON, MA 02109 EXAMINER TALBOT, BRIAN K ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 01/12/2022 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): ckent@lalaw.com docketing@lalaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SCOTT A. REID, MARZUKI LEONARDO, HUGH R. READ, and SUNNY AGARWAL1 ____________ Appeal 2021-000632 Application 16/044,104 Technology Center 1700 ____________ Before CHRISTOPHER C. KENNEDY, DEBRA L. DENNETT, and MERRELL C. CASHION, JR., Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to methods of dispensing material. E.g., Spec. 1:5-10; Claim 1. Claim 1 is reproduced below from page 8 (Claims Appendix) of the Appeal Brief: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Illinois Tool Works Inc. Appeal Br. 3. Appeal 2021-000632 Application 16/044,104 2 1. A method of dispensing material comprising: delivering an electronic substrate to a dispense position, the electronic substrate having at least two identical patterns; acquiring data relative to the at least two patterns; determining whether the at least two patterns are properly suited for simultaneous dispensing; and if properly suited for simultaneous dispensing, performing simultaneous dispense operations on the at least two patterns based on the acquired data in a synchronous mode of operation, and if not properly suited for simultaneous dispensing, asynchronously performing one of (1) a first dispense operation on a first pattern of the at least two patterns and a second dispense operation on a second pattern of the at least two patterns, (2) a single dispense operation on one of the first pattern and the second pattern, and (3) no dispense operation. REJECTIONS ON APPEAL The claims stand rejected under 35 U.S.C. § 102(a)(1)/(2) as follows: 1. Claims 1, 6, 11, and 16 as anticipated by Read (US 2008/0296311 A1, published Dec. 4, 2008). 2. Claims 1-20 as anticipated by Prentice (US 6,007,631, issued Dec. 28, 1999). ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner’s rejections. Accordingly, we affirm the rejections for reasons set forth below, in the Final Action dated March 9, 2020, and in the Examiner’s Answer. We add the following primarily for emphasis. Appeal 2021-000632 Application 16/044,104 3 We begin with a discussion of two issues of claim construction that are applicable to both grounds of rejection and are dispositive of the issues on appeal. First, we agree with the Examiner, see Ans. 4-5, that the “if” and “if not” language in the final paragraph of claim 1 create contingencies, and that, if the first “if” is satisfied, a disclosed method falls within the scope of claim 1 even if the “if not” language is not satisfied. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) (precedential). Second, we also agree with the Examiner that, in order to anticipate, a disclosure need not teach all three options following the “asynchronously performing one of” language in the final paragraph of claim 1. That is so at least because the claim specifies that only “one of” the options needs to be performed. Thus, a method falls within the scope of claim 1 as long as it performs “one of” the three recited options; it is immaterial whether the reference also discloses the other two options.2 Those determinations concerning claim construction are dispositive of the issues on appeal. As to both rejections, the Appellant argues that the prior art does not teach all three of the options following the “asynchronously performing one of” language in the final paragraph of claim 1. E.g., Appeal Br. 6 (“[T]he references fail to teach three separate options if synchronous dispensing is not possible.”). Those arguments are unpersuasive in view of our claim construction above. 2 In the Reply Brief, the Appellant states that the Appellant is, if necessary, willing to amend claim 1 to clarify the Appellant’s intended meaning. Reply Br. 2. Appeal 2021-000632 Application 16/044,104 4 Additionally, we note that there does not appear to be any meaningful dispute that both Read and Prentice teach each limitation prior to the contingent “if not” language in the final paragraph of claim 1. Accordingly, we affirm Rejections 1 and 2 for reasons stated by the Examiner in the Answer. See Ans. 4-5. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference Affirmed Reversed 1, 6, 11, 16 102(a)(1)/(2) Read 1, 6, 11, 16 1-20 102(a)(1)/(2) Prentice 1-20 Overall Outcome 1-20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED