YOUNGQUIST, JOHN S.

Patent Trials and Appeals Board

Oct 20, 2020

2019004071 (P.T.A.B. Oct. 20, 2020)

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.
13/838,075 03/15/2013 JOHN S. YOUNGQUIST LSN-1818-19 4935
23117 7590 10/20/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HANSELL JR., RICHARD A
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
10/20/2020 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN S. YOUNGQUIST
Appeal 2019-004071
Application 13/838,075
Technology Center 2400
Before JEAN R. HOMERE, JAMES B. ARPIN, and ADAM J. PYONIN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final rejection of claims 1–24, all of the pending claims. Claims
App. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party-in-interest as the inventor, John
S. Youngquist. Appeal Br. 3.
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Application 13/838,075

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STATEMENT OF THE CASE
Introduction
The Application is directed to the linear/angular correction of pick-
and-place held components and the related optical subsystem. Title.
Claims 1–24 are pending; claims 1, 5, and 8 are independent. Appeal
Br. 21–27. Claims 1 and 8, as presented in the Appeal Brief, are reproduced
below for reference:
1. A method for picking up and placing components on a
substrate with a pick-and-place machine, the pick-and-place
machine including a pickup device to pick up and place the
components and a collimated light source directing collimated
light along a light path toward a component and a downstream
camera while providing to the camera a substantially unlimited
depth of field view without using a telecentric lens, the method
comprising:
picking up and holding a component with the pickup
device;
positioning the held component in a collimated light path
such that collimated light passes around and past the held
component;
projecting a single unobstructed shadow image of the held
component onto a diffuser screen also disposed in the collimated
light path between the held component and the camera thereby
providing to the camera a substantially unlimited depth of field;
and
effecting a linear correction and/or an angular correction
of the held component position, calculated in accordance with
the single unobstructed shadow image, before placing the held
component onto the substrate.

8. An optical subsystem in a pick-and-place machine, the
pick-and-place machine including a pickup device adapted to
pick up a component from a feeder cartridge, hold the component
against the pickup device and place the component onto a
substrate, the optical subsystem comprising:
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a first collimated light source arranged to project
collimated first light along a first light path and past around the
held component;
a second light source arranged to project second light
along a second light path toward the substrate; and
a dual camera assembly including a common camera lens
disposed in both the first and the second light paths, a first beam
splitter disposed to split a portion of the first and second light to
(a) a component camera and (b) a multi-purpose camera, wherein
said component camera is used when said first collimated light
source is active and said multi-purpose camera is used when said
second light source is active.
Appeal Br. 21, 23 (Claims App.) (emphases added).
References and Rejections2
The Examiner relies on the following references:
Name Reference Date
Bartschat US 4,980,971 Jan. 1, 1991
Tesh US 5,096,353 Mar. 17, 1992
Indo US 5,467,186 Nov. 14, 1995
Deley US 5,559,727 Sept. 24, 1996
Riener US 5,637,866 June 10, 1997
Honda US 6,100,922 Aug. 8, 2000
Fishbaine US 6,292,261 B1 Sept. 18, 2001
Duquette US 6,762,847 B2 July 13, 2004
Rudd US 8,068,664 B2 Nov. 29, 2011
Hayashi US 2010/0066998 A1 Mar. 18, 2010
Utsumi US 2010/0101082 A1 Apr. 29, 2010
Kurtz US 2010/0245532 A1 Sept. 30, 2010

2 The Examiner has withdrawn the written description rejection in the Final
Office Action. See Ans. 11.
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Case US 2010/0295935 A1 Nov. 25, 2010
D. Lanman, et al.; Shield Fields: Modeling and Capturing 3D Occluders;
ACM Transactions on Graphics (Proc. SIGGRAPH Asia); 2008; Vol. 27,
No. 5 (“Lanman”)
Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Rudd, Reiner, Lanman, and Case. Final
Act. 9.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Rudd, Reiner, Lanman, Case, and Indo. Id.
at 14.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Indo, Reiner, Lanman, and Case. Id. at 16.
Claims 8 and 14 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Fishbaine, Duquette, Hayashi, and Kurtz.
Id. at 20.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Fishbaine, Duquette, Hayashi, Kurtz, and
Reiner. Id. at 24.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Fishbaine, Duquette, Hayashi, Kurtz, Reiner, and
Honda. Id. at 25.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Fishbaine, Duquette, Hayashi, Kurtz, and, Honda. Id.
at 26.
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Fishbaine, Duquette, Hayashi, Kurtz, Reiner,
Honda, and Deley. Id. at 27.
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Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Fishbaine, Duquette, Hayashi, Kurtz, and
Bartschat. Id. at 30.
Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Fishbaine, Duquette, Hayashi, Kurtz, and
Utsumi. Id. at 27.
Claims 19 stands rejected under 35 U.S.C. § 103(a) obvious over the
combined teachings of Fishbaine, Duquette, Hayashi, Kurtz, Reiner, and
Tesh. Id. at 35.
Claims 21–24 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combined teachings of Fishbaine, Duquette, Hayashi, Kurtz, Reiner, and
Indo. Id. at 35.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We discuss each of the independent claims, below.
Independent Claim 1
Appellant argues the Examiner’s rejection of independent claim 1 is in
error, because “the proposed combination of Rudd, Reiner, Lanman and
Case does not teach or suggest the step of projecting a single unobstructed
shadow image of a held component onto a diffuser screen disposed between
the held component and a camera, as recited in pending claim 1.” Appeal
Br. 12. According to Appellant, “the Reiner device is completely unrelated
to the Rudd pick and place machine,” and “[t]he Examiner . . . has not even
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attempted to articulate a rationale for [the proposed] modification” of Rudd.
Id. at 10, 11.
We are persuaded the Examiner errs. “[A] patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Establishing obviousness requires
“determin[ing] whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue,” and “in many cases,
this analysis should be made explicit.” Id.
Here, the Examiner finds “Rudd evidently teaches the majority of the
claimed elements in the context of a pick and place machine.” Ans. 4; Rudd,
Fig. 2; see Final Act. 10. The Examiner finds “it would have been obvious
[to] one of ordinary skill in the art, to modify the pick and place system
disclosed by Rudd to add the teachings of Reiner” which include projecting
“a single shadow image . . . formed on a screen,” as “Reiner’s configuration
permits determining the position of a projectile in the target plane which can
further enable ensuing analysis of the projectile’s hit location in the target.”
Final Act. 11; Reiner Fig. 3. We find the Examiner’s obviousness rejection
to be in error, as the analysis appears to essentially just state the individual
teachings of the cited references. See Final Act. 11; Ans. 7.
To the extent the Examiner’s analysis identifies a reason to combine,
we find such rationale insufficient to support the conclusion of obviousness:
as explained by the Examiner, Rudd is directed to a pick and place machine
(see Final Act. 9; Rudd, Fig. 1), and the Examiner has not explained why a
pick and place machine would benefit from knowing a “projectile’s hit
location in the target” (Final Act. 11). The Examiner does not rely on the
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other cited references for the single unobstructed shadow image limitation.
See Ans. 6. Accordingly, we find the Examiner has not shown one of
ordinary skill would combine the cited references in the manner claimed.3
We are persuaded the Examiner has not established claim 1 is obvious
in view of the combined teachings of Rudd, Reiner, Lanman, and Case. See
Final Act. 9, 10. Accordingly, we do not sustain the Examiner’s
obviousness rejection of independent claim 1, or the rejections of the claims
dependent thereon.
Independent Claim 5
Independent claim 5 recites, inter alia, “causing a single unobstructed
shadow image of the held component to be projected onto the diffuser screen
for image capture.” The Examiner finds one of ordinary skill would have
had reason to modify known pick and place machines, as taught by Indo,
with the shadow teachings of Reiner, for the same reasons provided in the
rejection of independent claim 1. See Final Act. 17, 18; Ans. 8; Indo,
Figs. 1–4; Reiner, 1:8–14.
For reasons similar to those discussed above regarding claim 1, we
find the Examiner has not shown one of ordinary skill would have had

3 Our holding is limited to the facts and arguments before us. Although we
find the Examiner has not presented a prima facie case of obviousness, our
decision should not be taken to imply one of ordinary skill would not have
found the limitations of claim 1 to be obvious in view of the cited art. See
MPEP § 1213.02 (“The Board's primary role is to review the adverse
decision as presented by the Examiner, and not to conduct its own separate
examination of the claims.”); Ex Parte Shen, No. 2008-00418, 2008 WL
4105791 at * 9 (BPAI Sept. 4, 2008) (“Similarly, it is not the function of this
Board to examine claims in greater detail than argued by an appellant,
looking for distinctions over the prior art.”).
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reason to combine the cited references in the manner claimed. See Appeal
Br. 14. Accordingly, we do not sustain the Examiner’s obviousness
rejection of independent claim 5, or the rejections of the claims dependent
thereon.
Independent Claim 8
Appellant argues the Examiner errs in rejecting independent claim 8,
because the cited art does not teach a second light source “arranged to
project second light along a second light path toward the substrate” as
claimed. Appeal Br. 14 (emphasis omitted). Appellant contends the
Examiner “relies on the two light sources 74 in Fig. 7D of Fishbaine” for
this limitation, but “the light from both light sources 74 in Fig. 7D is
directed toward the detectors 46, 54 not the” substrate. Id. at 14, 15.
We are persuaded the Examiner errs. The Examiner finds Fishbaine
teaches or suggests the disputed limitation, because “placement of a light
source(s) for illumination purposes in any given application is certainly
within the level of ordinary skill in the art,” and “it is plausible that in
addition to illuminating the component as shown, emitted light from one or
more of [Fishbaine’s] sources could also illuminate the [substrate].” Ans. 9
(emphases added); Fishbaine Fig. 3B, 1:39–50. We agree with Appellant
that the Examiner’s reasoning “presents only hindsight speculation without
proper factual support in the record.” Reply Br. 15.
In formulating the rejection, the Examiner finds it is possible to
illuminate a substrate with a light. See Ans. 9. We agree. That one of
ordinary skill could illuminate the substrate, however, does not establish that
one of ordinary skill would do so. See, e.g., MPEP § 2143.01(III) (“The
mere fact that references can be combined or modified does not render the
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resultant combination obvious unless the results would have been
predictable to one of ordinary skill in the art.”); MPEP § 2144 (“Simply
stating the principle (e.g., ‘art recognized equivalent,’ ‘structural similarity’)
without providing an explanation of its applicability to the facts of the case
at hand is generally not sufficient to establish a prima facie case of
obviousness.”). The Examiner has not presented a sufficient explanation of
an obviousness rationale with respect to the facts of the case; thus, we are
persuaded the Examiner has not shown claim 8 is rendered obvious by the
cited references.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of independent claim 8, or the rejections of the claims dependent thereon.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 7 103 Rudd, Reiner,
Lanman, Case
1, 4, 7
2, 3 103 Rudd, Reiner,
Lanman, Case,
Indo
2, 3
5, 6 103 Indo, Reiner,
Lanman, Case
5, 6
8, 14 103 Fishbaine,
Duquette, Hayashi,
Kurtz
8, 14
9, 10 103 Fishbaine,
Duquette, Hayashi,
Kurtz, Reiner
9, 10
11 103 Fishbaine,
Duquette, Hayashi,
11
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Kurtz, Reiner,
Honda
15 103 Fishbaine,
Duquette, Hayashi,
Kurtz, Honda
15
12, 13 103 Fishbaine,
Duquette, Hayashi,
Kurtz, Reiner,
Honda, Deley
12, 13
16, 17 103 Fishbaine,
Duquette, Hayashi,
Kurtz, Bartschat
16, 17
18, 20 103 Fishbaine,
Duquette, Hayashi,
Kurtz, Utsumi
18, 20
19 103 Fishbaine,
Duquette, Hayashi,
Kurtz, Reiner,
Tesch
19
21–24 103 Fishbaine,
Duquette, Hayashi,
Kurtz, Reiner, Indo
21–24
Overall
Outcome
1–24

REVERSED