Ex Parte Cookson et alDownload PDFPatent Trial and Appeal BoardOct 6, 201612429450 (P.T.A.B. Oct. 6, 2016) Copy Citation 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). 2 Appeal2014-008197 Application 12/429,450 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: 3 Appeal2014-008197 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 4 Appeal2014-008197 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 5 Appeal2014-008197 Application 12/429,450 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 6 Appeal2014-008197 Application 12/429,450 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. 7 Appeal2014-008197 Application 12/429,450 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. 8 Appeal2014-008197 Application 12/429,450 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 9 Appeal2014-008197 Application 12/429,450 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 10 Appeal2014-008197 Application 12/429,450 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 11 Appeal2014-008197 Application 12/429,450 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. 12 Appeal2014-008197 Application 12/429,450 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) 13 Copy with citationCopy as parenthetical citation