Ex Parte Cookson et al

Patent Trial and Appeal Board

Oct 6, 2016

12429450 (P.T.A.B. Oct. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/429,450 0412412009 Douglas E. Cookson
22500 7590 10/06/2016
BAE SYSTEMS
PO BOX 868
NHQl-719
NASHUA, NH 03061-0868
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.
BAEP-1052 1037
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
10/06/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS E. COOKSON and JONATHAN D. KERVIN
Appeal2014-008197
Application 12/429,450
Technology Center 3700
Before JILL D. HLL, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Douglas E. Cookson and Jonathan D. Kervin (Appellants) 1 seek our
review under 35 U.S.C. § 134 of the Examiner's final rejection of claims
1-17 and 21.2 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is BAE Systems
Information & Electronic Systems Integration, Inc. Appeal Br. 6.
2 Claims 18-20 were canceled. See Appeal Br. 9.
Appeal2014-008197
Application 12/429,450
CLAIMED SUBJECT MATTER
Claims 1 and 11 are reproduced below and illustrate the claimed
subject matter, with disputed limitations emphasized.
1. A method for repairing cracks in soldered connections, the
method comprising the steps of:
discovering a crack between a connector and a housing
that are joined with solder; and
heating solder within the crack using a laser to heat an
area local to the crack to a heated temperature at least
approximately equal to a reflow temperature of the solder to
hermetically seal the crack.
11. A system for repairing cracks in soldered connections,
the system comprising:
a laser beam source;
a work piece having a soldered joint;
a work piece holder, wherein the work piece holder holds
a workpiece at an angle relative to the laser beam source;
a crack in a soldered joint of the work piece, wherein the
laser beam source is positioned approximately centered on the
crack; and
at least one temperature sensitive electronic element
within the work piece.
REJECTIONS
The following Examiner's rejections are before us for review.
1. Claim 1 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the
invention.
2. Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by
Tsuchida (US 2005/0195529 Al, pub. Sept. 8, 2005).
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3. Claims 1-3, 6, 8, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Waitl (US 2004/0082113 Al, pub. Apr.
29, 2004), Volek (WO 2007 /060230 Al, pub. May 31, 2007),
and Glauser (US 2004/0016725 Al, pub. Jan. 29, 2004).
4. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Waitl, Volek, Glauser, and Spletter '718 (US 5,049,718,
iss. Sept. 17, 1991).
5. Claims 5 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Waitl, Volek, Glauser, and Liu (US
2004/0245228 Al, pub. Dec. 9, 2004).
6. Claims 7 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Waitl, Volek, Glauser, and Spletter '566 (US
5, 164,566, iss. Nov. 17, 1992).
7. Claims 11, 12, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Liu and Volek.
8. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Liu, Volek, and Spletter '566.
9. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Liu, Volek, and Spletter '718.
10. Claims 15 and 16 are rejected under§ 103(a) as unpatentable
over Liu, Volek, and Glauser.
ANALYSIS
NEW GROUNDS OF REJECTION
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter the
following new grounds of rejection:
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Application 12/429,450
First New Ground: Written Description
Claims 1-10 and 21 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
The purpose of the written description requirement in 35 U.S.C. § 112, first
paragraph, is to "'clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.'" Ariad Pharm., Inc.
v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (quoting
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)).
The limitation "to hermetically seal the crack" as recited by claim 1
lacks sufficient support in the Specification to satisfy the written description
requirement. In mapping independent claim 1, Appellants fail to point to
any portion of the Specification that contains sufficient explanation to
demonstrate to one of ordinary skill in this art that the inventor was, as of the
filing date, in possession of the limitation: "to hermetically seal the crack."
See Appeal Br. 10; also Ans. 3.
The title, field, and summary of the invention are stated as a
"SYSTEM AND METHOD FOR REP AIRING HERMETIC SOLDER
SEALS ... ,"which indicates repair of a hermetic seal, rather than creation
thereof. Spec. 1, 2. Prior to repair via the claimed invention, a "crack 12 is
formed in an area that had been hermetically sealed with solder 18." Spec. 2
(referring to Figure 1). While discussing that "[c]entering the output of the
laser beam source 22 on the housing 16 or the connector 14 may result in
solder 18 reflowing away from the joint, frustrating the purpose of
hermetically sealing the joint," Appellants thereafter only suggest "reflowing
the solder 18 to repair the hermetic solder seal." Spec. 5. At best, a skilled
artisan would understand that the inventors had possession of repairing a
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Application 12/429,450
hermetic seal by re-flowing the solder of an original weld. Appellants fail to
set forth how and in what circumstances such repair re-flow would act to
hermetically seal the crack.
For the foregoing reason, the Specification fails to reasonably convey
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.
Second New Ground: Indefiniteness
Claims 11-17 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failure to particularly point out and distinctly claim
the subject matter which Appellants regard as the invention. A claim fails to
comply with 35 U.S.C. § 112, second paragraph, "when it contains words or
phrases whose meaning is unclear." In re Packard, 751F.3d1307, 1310
(Fed. Cir. 2014) (approving, for pre-issuance claims, the standard from
MPEP § 2173.05(e)).
A claim that recites both a system (or apparatus) and a method of
using that system (or apparatus) does not apprise one of ordinary skill in the
art of its scope, and thus, is invalid under 35 U.S.C. § 112, second
paragraph. See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377,
1383-84 (Fed. Cir. 2005) (holding that a claim that recites both a system and
the method for using that system does not apprise a person of ordinary skill
in the art of its scope); see also MPEP § 2173.05(p)(II) ("A single claim
which claims both an apparatus and the method steps of using the apparatus
is indefinite .... "). Claim 11 recites both various structures and a method
of using those structures. The claim recites, inter alia, "a laser beam
source," "a work piece holder," and "a work piece" with "a crack in a
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soldered joint of a work piece," wherein "the laser beam source is positioned
approximately centered on the crack." Appeal Br. 37, Claims App.
(emphasis added).
We find, based on this claim language, that one of ordinary skill in the
art at the time of the invention would not understand the scope of the
invention recited in claim 11 because it is unclear whether infringing the
claim requires merely a laser beam source capable of being positioned in the
recited initial condition or requires a user to actually position the laser beam
source in the recited initial condition. See IPXL, 430 F.3d at 1384. Stated
differently, one of ordinary skill in the art could reasonably consider the
"positioned approximately centered on the crack" limitation as "directed to
user actions, not system capabilities." In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011), quoted in Ultimate
Pointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 827 (Fed. Cir. 2016). Thus,
we reject claim 11 as invalid under 35 U.S.C. § 112, second paragraph. We
also reject claims 12-17 based on their dependence from claim 11.
For the foregoing reasons, we find that claims 11-17 do not apprise a
person of ordinary skill in the art of their scope, and thus, fail to comply with
35 U.S.C. § 112, second paragraph, in failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Packard, 751 F.3d at 1313 ("It is the claims that notify the public of what is
within the protections of the patent, and what is not.").
First Ground of Rejection: Indefiniteness of Claim 1
We are persuaded by Appellants' arguments that the Examiner erred
in rejecting claim 1under35 U.S.C. § 112, second paragraph, as being
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indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regards as the invention. See Final Act. 2. The
Examiner attempts to clarify the final rejection in observing that claim 1
"omits the particular step of how in fact the solder [hermetically seals] the
crack," because "[h]ermetically sealing is a specific method[] known in the
art to be done in a controlled atmosphere [that] is omitted from the
specification." Ans. 3.
While the Examiner is correct that the specification does not contain a
disclosure of creating a hermetic seal, the situation as described by the
Examiner could have been the subject of a§ 112, first paragraph rejection
for lack of enablement. See MPEP 2172.01 (Unclaimed Essential Matter).
However, as determined supra, we find that the correct rejection of claim 1
is under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement, in failing to disclose an essential step.
Therefore, we do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention.
Second Ground of Rejection: Anticipation of Claim 1 by Tsuchida
We are persuaded by Appellants' arguments that the Examiner fails to
establish anticipation of claim 1 by Tsuchida. See Appeal Br. 14--19 and
Reply Br. 4, 5.
The Examiner finds that Tsuchida anticipates claim 1 by disclosing
solder ball 15 used to fuse a joint (fixture 23) between a slider pad 13 and a
lead wire 21. See Final Act. 5.
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In response, Appellants explain that because "Tsuchida teaches
soldering two structures together, not repairing a crack within a soldered
joint between two structures," that "Tsuchida provides no disclosure of a
crack within a soldered joint that joins the slider 11 and the lead wire 21."
Appeal Br. 1 7.
The Examiner responds that Tsuchida "teaches of soldering two
structures together, which can include repairing a crack since a crack is just
spacing between two structures," and that "[s]pace 25 (sic) of [Tsuchida] can
be considered a crack since is basically a vacant space between two elements
being soldered." Ans. 3. In determining the ordinary and customary
meaning of a claim term as viewed by a person of ordinary skill in the art, "it
is appropriate to consult a general dictionary definition of the word for
guidance." Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1348 (Fed. Cir.
2010) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1322-23 (Fed. Cir.
2005) (en bane)). We find that the only definition of"crack" as a noun that
is consistent with Appellants' Specification is "a break without complete
separation of parts, fissure." Dictionary.com, available at
http://www.dictionary.com/browse/crack (definition 24).
Thus, we agree with Appellants that "Tsuchida does not disclose
[that] the two structures are already joined with solder [in which the crack
has formed]." Reply Br. 5. We are persuaded that the position taken by the
Examiner is unsupported by the evidence of record.
[U]nless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
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Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
For the foregoing reasons, we do not sustain the Examiner's decision
rejecting claim 1 as anticipated by Tsuchida.
Third Ground of Rejection: Obviousness of Claims 1-3, 6, 8, and 21
over Wait!, Volek, and Glauser
Claim 1
In rejecting claim 1 over Waitl, Volek, and Glauser, the Examiner first
determines that Waitl discloses, inter alia, a housing 2 having terminals 3
soldered to a printed circuit board 5 and that "a visual inspection can
determine whether a crack is present." Final Act. 4. While explaining that
Waitl "does disclose heating the solder within the crack using a laser to heat
an area local to the crack to a heated temperature at least approximately
equal to a reflow temperature," the Examiner looks to Volek for disclosing
"a method for repairing cracks in components ... with solder material using
a laser 9 (laser, paragraph 0064, lines 4-6) supplying enough heat [for]
solder material 7 to melt the solder (reflow temperature, paragraph 0064,
lines 4---6)," while "[ d]discovering the crack can implicitly be performed by
a human since the crack 3 has to be located in order to add solder material 7
for repair." Id. at 5. The Examiner reasons that "[i]t would have been
obvious ... to provide a method of repairing a soldered crack with a
constant temperature gradient which promotes great quality. Id.
The Examiner then looks to Glauser for teaching a welding chamber
100 [that] can be filled with [an] inert gas mixture of argon, nitrogen and
helium ... which can guarantee a hermetic seal," and reasons that "['i]t
would have been obvious ... to modify [Waitl and Volek with Glauser] to
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provide a controlled atmosphere with a high dielectric inert binary gas."
Final Act. 6.
In response, Appellants contend that "Waitl is simply silent with
regards to cracks in soldered joints, or discovering, preventing, or repairing
any soldered joint having a crack," and that "Volek's [teaching is] limited to
repairing a crack in a non-junction, single area of a single structure." Appeal
Br. 25. While acknowledging that "Glauser does disclose a variable
environment laser weld system," Appellants also assert that Glauser "is
silent as to any soldered structure, soldered joint, or crack within any
solder." Id.
Thus, Appellants are simply attacking the references in isolation for
lacking support for findings not relied upon by the Examiner, rather than
addressing the Examiner's combination ofWaitl, Volek, and Glauser.
Nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As the
Examiner explains, "the references [Waitl in view of Volek] were combined
to show a structure with a soldered connection can be repaired by using a
laser to cause solder to reflow," while "Glauser introduced a controlled
atmosphere where laser working could be done." Ans. 4.
Without responding to the Examiner's findings, Appellants contend
that "the inventors, who are skilled in the art, identified in the Background
that they were familiar with soldering in an inert environment and using gold
solder," and allege that "they were throwing away assemblies because they
did not know how to repair them and could not find anyone who believed
the joints could be repaired," while further contending that "[ n ]othing in the
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references cited suggests a method for soldering a cracked solder joint
without damaging the seal due to reflow of the existing solder throughout
the joint." Reply Br. 5---6.
However, we find these arguments to be conclusory and unsupported
by objective evidence (e.g., declaration by one skilled in the art). Argument
of counsel cannot take the place of evidence lacking in the record. Meitzner
v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984) (holding that arguments and conclusions unsupported by factual
evidence carry no evidentiary weight).
Furthermore, the claim is not limited to soldering without damaging a
seal. See Appeal Br. 35, Claims App. As we are instructed by our
reviewing court, "limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Accordingly, we sustain the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Waitl, Volek, and Glauser.
Claims 2, 3, 6, 8, and 21
Appellants do not present separate arguments for the patentability of
claims 2, 3, 6, 8, and 21 which depend from claim 1. See Appeal Br. 28.
Therefore, for the reasons above, we also sustain the rejection of claims 2, 3,
6, 8, and 21 over Waitl, Volek, and Glauser.
Fourth, Fifth and Sixth Grounds of Rejection: Obviousness of Claim 4
over Wait!, Volek, Glauser, and Spletter '718; of Claims 5 and 10 over
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Wait!, Volek, Glauser, and Liu; and of Claims 7 and 9 over Wait!, Volek,
Glauser, and Spletter '566
We understand Appellants' appeal of the rejection of claims 4---6, 9,
and 10 to rest on the same arguments presented against the proposed
combination ofWaitl, Volek, and Glauser, which we found not
demonstrative of error in the Examiner's rejection of claim 1, as set forth
supra. See Appeal Br. 28-30. Accordingly, we sustain the rejection of
claims 4---6, 9, and 10 as being obvious over the cited references, for the
same reasons stated above with respect to the rejection of claim 1 over
Waitl, Volek, and Glauser.
Seventh, Eighth, Ninth, and Tenth Grounds of Rejection: Obviousness
of Claims 11, 12, and 17 over Liu and Volek; of Claim 13 over Liu, Volek,
and Spletter '566; of Claim 14 over Liu, Volek, and Spletter '718; and of
Claims 15 and 16 over Liu, Volek, and Glauser
For reasons discussed above, we find that claims 11-1 7 do not satisfy
the requirements of 35 U.S.C. § 112, second paragraph. The prior art
rejections of those claims must fall, proforma, because those rejections are
based on speculative assumptions as to the meaning of the claims. See In re
Steele, 305 F .2d 859, 862---63 (CCP A 1962); Ex parte Miyazaki, 89 USPQ2d
1207, 1221 (BP AI 2008) (precedential).
It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter and does not
reflect on the adequacy of the prior art evidence applied in support of the
Examiner's rejections.
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DECISION
We AFFIRM the Examiner's rejections of claims 1-10 and 21.
We REVERSE, proforma, the Examiner's rejections of claims 11-17.
We enter new grounds of rejection of claims 1-10 and 21 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement and of claims 11-17 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failure to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a) (l)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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