Ex Parte Holt et al

Patent Trial and Appeal Board

Jan 25, 2019

14131778 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/131,778 04/04/2014
3000 7590 01/29/2019
CAESAR RIVISE, PC
7 Penn Center, 12th Floor
1635 Market Street
Philadelphia, PA 19103-2212
FIRST NAMED INVENTOR
AlynR. Holt
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.
Il 110/20137 1451
EXAMINER
FRANK, RODNEY T
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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):
patents@crbcp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL YN R. HOLT and BRIAN R. MOORE
Appeal2018-005316
Application 14/131,778
Technology Center 2800
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER,
and ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-13, which constitute all the pending claims in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify inTEST Corporation as the real party in interest (App.
Br. 2).
Appeal2018-005316
Application 14/131,778
THE INVENTION
Appellants' claimed invention is directed to "docking an electronic
test head with a peripheral" in which "[ e ]xact-constraint alignment features
... are incorporated to provide repeatable positioning of the test head in
three degrees of freedom with respect to the docking plane of the peripheral"
(Abstract).
Independent claims 1 and 7, reproduced below, are representative of
the subject matter on appeal:
1. A method of docking a test head to a peripheral, the test
head having a test head docking plane, at least one component
of an alignment feature and at least one component of a
position-constraining feature, and the peripheral having a
peripheral docking plane, at least one complimentary
component of the alignment feature and at least one
complimentary component of the position-constraining feature,
the method comprising the steps of:
positioning the test head relative to the peripheral in a
first position with the test head docking plane spaced from the
peripheral docking plane;
moving the test head toward the peripheral, to a second
position wherein the complimentary components of the
position-constraining feature engage one another in a given
relative positional relationship wherein the test head and
peripheral are restrained from motion relative to one another in
a direction parallel to the planes; and
moving the test head toward the peripheral, with the
planes substantially parallel, to a third position wherein the
complementary components of the alignment feature engage to
maintain the planes at a docked distance from one another, the
complementary components of the position-constraining feature
maintaining the given relative positional relationship during
such further movement;
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Application 14/131,778
wherein one of the components of the position-
constraining features defines at least one contact surface and the
complementary component of the position-constraining feature
defines a mating surface that makes contact with the at least one
contact surface at either point or line contact such that a
reaction force between the at least one contact surface and the
mating surface upon making contact is not parallel or
perpendicular to the docking planes when the test head and
device handler are docked.
7. An apparatus for docking a test head having a test head
docking plane to a peripheral having a peripheral docking
plane, the apparatus comprising:
at least one alignment feature including complimentary
alignment components, one associated with the test head and
the other associated with the peripheral device, the alignment
components configured such that engagement therebetween
controls the distance and the planar orientation of the docking
planes relative to one another; and
at least one position-constraining feature including
complementary constraining components, one associated with
the test head and the other associated with the peripheral, one of
the constraining components being compliant in a direction
perpendicular to the docking planes,
wherein the constraining components are configured to
engage one another in a given relative positional relationship
when the docking planes are at a first relative position to one
another wherein electrical contacts on the test head are
separated from electrical contacts on the peripheral, the
engaged constraining components restraining the test head and
peripheral from motion relative to one another in a direction
parallel to the docking planes, and
wherein the constraining components remain engaged,
without moving relative to one another, while the test head is
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Appeal2018-005316
Application 14/131,778
moved to a docked position wherein the electrical contacts on
the test head and the peripheral are conjoined.
App. Br. 12, 13-14 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Montoya et al.
("Montoya")
Slocum et al.
(''Slocum")
us 5,656,943
us 5,678,944
REJECTION
The Examiner made the following rejection:
Aug. 12, 1997
Oct. 21, 1997
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Montoya in view of Slocum. Final Act. 2.
ISSUES
The issues are whether the Examiner erred in:
1. finding motivation to combine Montoya and Slocum in the rejection
of independent claim 1;
2. finding the combination of Montoya and Slocum teaches or suggests
the limitation of "one of the constraining components being compliant
in a direction perpendicular to the docking plane," as recited in
independent claim 7.
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Appeal2018-005316
Application 14/131,778
ANALYSIS
We adopt the Examiner's findings in the Answer and Final Office
Action and we add the following primarily for emphasis. We note that if
Appellants failed to present arguments on a particular rejection, we will not
unilaterally review those uncontested aspects of the rejection. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas,
551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (theBoardmaytreatarguments
Appellants failed to make for a given ground of rejection as waived).
Claim 1
Appellants argue that Slocum's "Kinematics would not be used when
a repeatability of 20 microns is sufficient" because Kinematics is "expensive
to implement, and a company in the ATE industry would not create the
additional expense and complexity of Kinematics when such repeatability is
not necessary" in the system of Montoya (App. Br. 6). In support of their
argument Appellants proffer the Declaration of Mr. Roy Green, Director of
Engineering of in TEST Corporation ( the "Declaration").
The Declaration states that "[ o ]ne of ordinary skill in the art would
understand" that the docking pins used in Montoya "would be accomplished
with a repeatability between 50 and 7 5 microns" (Declaration 1) whereas
"[k ]inematic couplers are understood by one of ordinary skill in the art as
providing repeatability of less than one micron" and "one of ordinary skill in
the art would not use kinematic couplings in an application where 50 micron
repeatability is required" because "[ o ]ne of ordinary skill in the art would
not incur the expense" (Declaration 2).
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Appeal2018-005316
Application 14/131,778
We are not persuaded by Appellants' arguments, when considered
with review of the Declaration for any supporting objective evidence of non-
obviousness:
Once a prima facie case of obviousness was established below,
the burden shifted to appellant to rebut it, if he could, with
objective evidence of non-obviousness .... [T]he PTO must
give full consideration to that evidence and render a decision
based on the relative strength of appellant's showing and the
prima facie case established by the references."
In re Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted).
Here, the Declaration primarily asserts increased "expense" when
combining the teachings of Montoya and Slocum as the objective evidence
of non-obviousness. But our reviewing court has determined expense is
insufficient:
the fact that the two disclosed apparatus would not be combined
by businessmen for economic reasons is not the same as saying
that it could not be done because skilled persons in the art felt
that there was some technological incompatibility that
prevented their combination. Only the latter fact is telling on
the issue of nonobviousness.
Orthopedic Equip. Co., Inc. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir. 1983).
Appellants supply no objective evidence of "some technological
incompatibility" that prevents the combination of teachings of Montoya and
Slocum. Id. The Examiner finds, and we agree, that in combination of the
teachings of the references:
a sub-micron repeatability would be more desirable than a 20
micron repeatability as the submicron repeatability would be
less likely to damage the pins. The problem to be solved is to
ensure the most accurate mating means possible, which the
combination of references seems to solve.
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Application 14/131,778
(Ans. 7). Furthermore, the test for obviousness is not whether the features of
a second reference may be bodily incorporated into the structure of the
primary reference. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d at 425 (citations omitted). We agree with the Examiner that
"arguing that the combination is 'too accurate' or 'too precise' still does not
negate that the combination not only solves the problem, but would actually
provide a better solution ... [than] what the appellant is claiming." (Ans. 5).
Accordingly, we affirm the Examiner's rejection of independent claim
1, and dependent claims 2---6 not separately argued. See App. Br. 7-11.
Claim 7
With respect to the claimed "one of the constraining components
being compliant in a direction perpendicular to the docking planes,"
Appellants argue the rejection provides "no information ... regarding
exactly where this disclosure allegedly may be found" (App. Br. 10).
Particularly, Appellants argue that "Applicant's representative has reviewed
the reference and ... [has] not found Applicant's claimed 'compliant'
feature" (App. Br. 10). Appellants offer no additional arguments regarding
the patentability of claim 7. See App. Br. 10.
We are not persuaded by Appellants' argument. The rejection relies
on both Montoya and Slocum; regarding the meaning of the term
"compliance," Appellants' disclosure states that:
[c]ompliance is provided in step 1750, which specifies that at
least one surface of a pair of contactable contact and mating
surfaces has the ability to move in a direction that is
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Application 14/131,778
substantially perpendicular to the docking plane .... US patent
6,678,944 [Slocum] also teaches providing this capability by
way of a movable piston within a cylinder. This patent further
teaches fabricating one of the surfaces in a spring-like fashion
to provide this capability. The teachings of the '944 patent may
therefore also be used in fulfilling this step.
(Spec. 47:26-35, emphasis added). Because Appellants' disclosure admits
Slocum teaches the disputed limitation, we affirm the Examiner's rejection
of independent claim 7, and dependent claims 8-13 not separate I y argued.
See App. Br. 7-11.
CONCLUSION
The Examiner did not err in:
1. finding motivation to combine Montoya and Slocum in the rejection
of independent claim 1;
2. finding the combination of Montoya and Slocum teaches or suggests
the limitation of "one of the constraining components being compliant
in a direction perpendicular to the docking plane," as recited in
independent claim 7.
DECISION
The Examiner's decision rejecting claims 1-13 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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