Ex Parte Jung et al

Patent Trial and Appeal BoardOct 31, 2012

11418466 (P.T.A.B. Oct. 31, 2012)

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. 11/418,466 05/05/2006 Yun Gi Jung K-0805 5579 34610 7590 10/31/2012 KED & ASSOCIATES, LLP P.O. Box 8638 Reston, VA 20195 EXAMINER WEST, JEFFREY R ART UNIT PAPER NUMBER 2857 MAIL DATE DELIVERY MODE 10/31/2012 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 YUN GI JUNG, YOUNG JOO KIM, and HEUNG SEON HWANG ________________ Appeal 2010-003096 Application 11/418,466 Technology Center 2800 ________________ Before JOHN A. JEFFERY, ERIC B. CHEN, and STANLEY M. WEINBERG, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. §134(a) from the Examiner’s final rejection of claims 20-44. Claims 1-19 have been canceled. Appeal 2010-003096 Application 11/418,466 2 Claims 20-24, 29, 33, 34, 37-39, 42, and 43 stand rejected under 35 U.S.C. § 103(a) as obvious over Daniel (US 2002/0022984 A1; Feb. 21, 2002) in view of Ido (JP 2005-101644 A; Apr. 14, 2005). Ans. 3-9. 1 Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as obvious over Daniel and Ido in view of Yoriki (JP 2000-244193 A; Sept. 8, 2000). Ans. 9-10. Claims 27, 28, 32, 35, 36, 41, and 44 stand rejected under 35 U.S.C. § 103(a) as obvious over Daniel and Ido in view of Terada (US 5,581,486; Dec. 3, 1996). Ans. 10-11. Claim 30, 31, and 40 stand rejected under 35 U.S.C. § 103(a) as obvious over Daniel and Ido in view of Suzuki (US 6,607,041 B2; Aug. 19, 2003). Ans. 11-12. We affirm. STATEMENT OF CASE Appellants’ invention relates to a mounter system. A mounter is equipment that automatically mounts parts, such as chips, resistors, etc. on a circuit board. The system controls a mounter and performs animations and simulations for maintenance and repair procedures of its assemblies through virtual models. An operator computer controls the mounter, searches stored virtual mounter models related to maintenance and repair of the mounter and its assemblies, and displays the maintenance and repair procedures. See generally Abstract; Spec. ¶¶ 0003, 0015-16, 0024. 1 Throughout this opinion, we refer to (1) the Appeal Brief filed May 19, 2009; and (2) the Examiner’s Answer mailed August 11, 2009. Appeal 2010-003096 Application 11/418,466 3 Independent claim 20 is illustrative with key disputed limitations emphasized: 20. A mounting system having a virtual preventive inspection system, comprising: a mounter including a plurality of assemblies; and a single operator computer that controls and monitors operation of the mounter and its plurality of assemblies based on an operation program stored therein, identifies required maintenance and repair based on the monitoring, searches a plurality of virtual models previously stored in the operator computer to identify virtual models of maintenance and repair procedures related to the identified maintenance and repair of the mounter based on a maintenance program stored therein, and displays the required maintenance and repair procedures as dynamic virtual simulations based on the identified virtual models. ISSUE Under § 103(a), has the Examiner erred by finding that the combination of Daniel and Ido teaches a single operator computer for a mounting system that controls and monitors the operation of the mounter as well as identifies required maintenance and repair, searches stored virtual models of maintenance and repair procedures, and displays the required maintenance and repair procedures? FINDINGS OF FACT 1. Appellants’ system includes a mounter 200 composed of a plurality of assemblies, an operator computer 100, and a monitor 300. Spec. ¶¶ 0044, 0048; Fig. 2. An operation program 110 controls the mounter. There is also a maintenance program 120 and a database 130. Spec. ¶¶ 0046, 0050-51. When a malfunction occurs in the mounter 200, the operator computer 100 displays symptoms of the malfunction through a virtual model stored in Appeal 2010-003096 Application 11/418,466 4 database 130 and performs animation or simulation of maintenance and repair procedures to deal with identified malfunctions for mounter assemblies. Spec. ¶¶ 0052-53, 0059. Appellants’ monitor 300 displays information according to the programs stored on in the operation computer. Spec. ¶ 0047. 2. Daniel teaches a system for servicing equipment such as a fleet of mobile assets, for example, a fleet of locomotives, trucks, or airplanes. Daniel, ¶¶ 0002, 0028:5-7; Fig. 1. Its computer 14 provides information regarding the operating status of each asset. Daniel, ¶ 0028:5-10. Its server 28 generates a set of trouble-shooting instructions 50 to determine if any system of an asset is defective and generates corrective action including images and instructions in response to selected hyperlinks. Daniel, ¶ 0032:1-6, 10-21; Figs. 1, 4. 3. Daniel’s data center 18 receives operating parameters of various assets and is linked to various work sites by server 28. Daniel, ¶¶ 0028:36- 38; 0031:1-5. Its database/server 30 is coupled to server 28. Daniel, ¶ 0031:5-6. Information is sent from unit 14 to data center 18 regarding diagnostic information, video clips, and photographs. Daniel, ¶ 0043:1-4. Data center 18 provides to display unit 14 recommended repairs and relevant technical documentation needed to perform repairs, including video clips. Daniel, ¶ 0043:7-22. 4. Ido teaches an operation section 3 that operates an electronic- mounting device 1 to mount electronic components in chip form on a printed circuit board. Ido, ¶¶ 0010-11; Fig. 1. It has a disk drive 5 that is controlled by controller 23 and contains written information and animated images regarding operation, maintenance, and repair of the various components of Appeal 2010-003096 Application 11/418,466 5 the mounter. Ido, ¶¶ 0012-14. The information and images are displayed on display 18 responsive to operation section 20 and controller 23. Ido, ¶¶ 0017, 0020, 0023-27. The information on Ido’s operation section 3 can also cause the information on the disk drive 5 to be displayed on display 4. Ido, ¶ 0021. ANALYSIS Claims 20-24, 29, 33, 34, 37-39, 42, and 43 THE DANIEL REFERENCE The Examiner interprets claim 20’s recitation of a virtual preventive system used as part of a mounter system with mounter assemblies as an intended use. Therefore, the Examiner concludes, Daniel meets the claim because Daniel is capable of inspecting any of a plurality of systems, including a mounter system. Ans. 8:17–9:3; 33:12-21. We disagree because claim 20 recites not only “[a] mounting system” in the preamble, but also affirmatively recites the structural mounter and assemblies in the body of the claim. Nevertheless, the Examiner finds that Daniel teaches a single operator computer performs four of the recited five functions: monitors operation of its system and its plurality of assemblies; identifies required maintenance and repair based on the monitoring; searches a plurality of virtual models of maintenance and repair procedures related to the identified maintenance and repair of the system based on a maintenance program stored therein; and displays the required maintenance and repair procedures as dynamic virtual simulations based on the identified virtual models. Ans. 3-4. See FF 1-3. Appeal 2010-003096 Application 11/418,466 6 Appellants impliedly agree that Daniel teaches monitoring (Br. 17:16 (referring to onboard diagnostics)); identifying required maintenance and repair (Br. 17:17 (referring to monitoring an asset’s fault state)); searching stored virtual models to identify maintenance and repair procedures (Br. 17:20–18:1 (referring to accessing corrective action)); and displaying maintenance and repair procedures (Br. 18:1-2 (referring to transmittal of corrective action to unit 14)). But, Appellants contend, Daniel does not teach a single operator computer that performs all of the recited functions, including controlling the operation of a mounter and its plurality of assemblies based on an operation program stored therein. Br. 18:2-10. More specifically, Appellants contend that Daniel’s server 28 is not comparable to the claimed single operator computer because it has nothing to do with the operation of any of Daniel’s subsystems, including Daniel’s assets 12 (Br. 18:11-14) and because server 28 relies on its connection to various other elements of Daniel’s system such as Daniel’s onboard diagnostics systems, portable units 14, data center 18, and database 30. That is, they contend, none of Daniel’s computer elements “function in a singular, individual fashion to control operation” and perform all of the other recited functions. Br. 18:18–19:9. The Examiner agrees that Daniel does not disclose an operation computer that controls a mounter. Ans. 7:19-22; 14:13-16. For these features, the Examiner relies upon Ido, which we discuss below. But, the Examiner finds that Daniel teaches the claimed single operator computer that performs the other recited functions. The Examiner concludes, for example, that Appellants’ claimed single operator computer does not preclude a connection to other elements and Appeal 2010-003096 Application 11/418,466 7 does not include any limitations indicating that other devices cannot be connected to Daniel’s computer 28. Ans. 16:3-8. More specifically, the Examiner concludes that Appellants’ claimed single operator computer “must inherently rely on a connection to various other elements,” such as a controller, a sensing device/input device for monitoring, and an output device for displaying maintenance and repair procedures. Ans. 16:13-15. While we agree that claim 20 does not preclude a connection between the claimed single operator computer and other elements, we disagree with the Examiner’s inherency conclusion. The fact that Appellants’ computer is connected to other elements (which the Examiner does not find are other computers) does not mean that Daniel discloses a single operator computer because its server 28 is also connected to other elements. Alternatively, the Examiner contends that Daniel’s server 28 is a single operator computer that performs all of the recited functions (except the control function) by virtue of its connections to other elements, finding that Daniel’s stand-alone server 28 performs the following claimed functions: (1) monitors the operation of the system and its plurality of assemblies based on an operation program stored therein (Ans. 17:11– 18:30); (2) identifies required maintenance and repair based on the monitoring (Ans. 18:31–20:2); (3) searches a plurality of virtual models previously stored in the operator computer to identify virtual models of maintenance and repair procedures related to the identified maintenance and repair of the system based on a maintenance program stored therein (Ans. 20:3–21:20); and Appeal 2010-003096 Application 11/418,466 8 (4) displays the required maintenance and repair procedures as dynamic virtual simulations based on the identified virtual models (Ans. 21:21-26). See FF 2-3. Appellants have not explained why these specific findings are incorrect. We agree with the Examiner’s findings because they have a rational underpinning. The Examiner also finds that Daniel has a second embodiment that uses a single operator computer 140 to perform the same four claimed functions. Ans. 23:4–27:11. Again, Appellants have not explained why these specific findings are incorrect. We also agree with these findings because they have a rational underpinning. The Examiner further finds that Daniel discloses carrying out either embodiment using a single general-purpose computer. Ans. 27:12–28:9. Yet again, Appellants have not explained why the Examiner’s specific findings are incorrect and we agree with the Examiner’s findings because they have a rational underpinning. The Examiner also concludes that it would have been an obvious engineering choice to carry out Daniel’s system using a single computer. Ans. 28:10-17. We are not convinced of error in this analysis that multiple computers can be combined into one computer. We also conclude as a matter of law that claim 20’s recitation of “a single operator computer” does not preclude reliance on a reference that teaches multiple computers. It is well settled that the indefinite article “a” or “an” means “one or more” in open-ended claims containing the transitional phrase “comprising.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). It is appropriate to construe “a” as meaning one and Appeal 2010-003096 Application 11/418,466 9 only one only when the claim language and the specification indicate that “a” means one and only one. Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011). Here, there is no statement in Appellants’ Specification that “a single operator computer” is intended to be one and only one computer. Therefore, we conclude as a matter of law that the Examiner properly relied on Daniel’s multiple computers, processors, and databases as a basis to find that Daniel has “a single operator computer.” THE COMBINATION OF DANIEL AND IDO The Examiner finds that Daniel does not apply its inspection system for use in a mounter system (Ans. 7:19-22), including control of a mounter. Ans. 14:13-16. The Examiner finds that Ido teaches a virtual preventive inspection mounter system comprising a mounter composed of a plurality of assemblies for installing parts in a circuit board and a single operator computer with an operation program for controlling the mounter and having a maintenance program which executes animation for maintenance and repair procedures of the mounter through an animation model which is virtually formed. Ans. 8:1-9; 28:19–29:2. See FF 4. The Examiner concludes that it would have been obvious to use Daniel’s inspection system in a mounter system because Daniel indicates that its inspection system can be used in any system and Ido suggests Daniel’s apparatus could be implemented in a mounter system, thereby expanding the environments in which Daniel’s system can be used. Ans. 8:10-16. Appellants agree that Ido teaches a mounter controlled by a control unit 3 and provides information related to the operation, maintenance and repair of the mounter on a display 18, which may be either a static or a Appeal 2010-003096 Application 11/418,466 10 dynamic image. Br. 19:15-18; 19:20–20:4. Appellants contend that Ido does not use a single computer to control operation of its equipment, to control its display 18, and to perform all of the functions recited in claim 20. Br. 20:5-12. But the Examiner relies upon Ido to apply Daniel’s inspection system in a mounter system (Ans. 28:18-19; 30:13-14), not to teach the claimed monitoring, identifying, searching, and displaying functions. Ans. 30:3-9. We agree with the Examiner’s combining the teachings of Daniel and Ido because both devices have troubleshooting functions and displays using computers and both deal with problems that can be solved by reasonably pertinent maintenance procedures. Obviousness may be shown where work in one field of endeavor may prompt variations of it for use in a different field if the variations are predictable. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The Examiner also points out that Ido has at least one maintenance program which executes animation for maintenance and repair procedures through an animation model. Ans. 31:19–33:2. We also find that Ido, like Daniel, uses “a single operator computer” in that “a single operator computer” can include multiple computers. See Harari, supra; KCJ Corp., supra. Appellants also contend that it would not have been obvious to combine Daniel and Ido 2 because, according to Appellants, (1) Ido’s 2 Both the Examiner and Appellants variously refer to adding Daniel’s teachings to Ido or alternatively adding Ido’s teachings to Daniel. Compare, for example, Ans. 8:10-12; 14:14-16; 35:11-15 with Ans. 29:2-5; compare Br. 20:11-13 with Br. 21:4, 14-15. But, “[i]t is well established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements. In re Mouttet, Appeal 2010-003096 Application 11/418,466 11 mounter is likely to be positioned within a facility that houses other mounters which may be movable within the facility; and (2) combining Ido and Daniel would add undue cost and complexity to the mounter, and would present other problems resulting from the combination. Br. 20:13–21:9. As correctly stated by the Examiner, however, Appellants have not provided any evidence regarding purported added undue cost and complexity. Ans. 36:1-3. We also find that Appellants have not provided any evidence in support of their other assertions. Appellants further contend that combining the teachings of Daniel and Ido would not result in a computer that identifies when maintenance and repairs are required based on information collected by the computer as it monitors the mounter because Daniel requires the active intervention of maintenance personnel to identify when maintenance and repairs are required. Br. 21:10-18. As correctly noted by the Examiner, however, claim 20 does not preclude the coordination of multiple processors and databases or the active intervention of maintenance personnel. Ans. 36-39. We are therefore, not persuaded that the Examiner erred in rejecting (1) representative claim 20; (2) independent claims 34, 42, and 43 for similar reasons: they have similar recitations and Appellants have presented similar arguments; and (3) dependent claims 21-24, 29, 33, and 37-39, not separately argued with particularity in that the arguments merely recite claim language. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (An argument that merely points out what a claim recites is unpersuasive.); 37 686 F.3d 1322, 1332 (Fed. Cir. 2012). “[W]here the relevant factual inquiries underlying an obviousness determination are otherwise clear, characterization by the examiner of prior art as ‘primary’ and ‘secondary’ is merely a matter of presentation with no legal significance.” Id. at 1333. Appeal 2010-003096 Application 11/418,466 12 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Claims 25 and 26 We also sustain the rejection of claim 25 further reciting a measurement system that performs electrical and mechanical measurements on at least some of the plurality of assemblies of the mounter. The Examiner finds that although Daniel teaches determining the occurrence of electrical and/or mechanical malfunctions, Daniel does not teach installing such measurement apparatus on each assembly of a mounter. Ans. 9:7-15. Consequently, the Examiner cites Yoriki, a mounter device (¶ 0004:5), as teaching measurement sensors being attached on an assembly of a mounter and concludes that it would have been obvious to include sensors on each Daniel assembly. Ans. 9-10; 54:23–55:2. Appellants do not contest the Examiner’s finding that Daniel teaches determining the occurrence of electrical and/or mechanical malfunctions. Instead, they contend that Yoriki’s measuring means does not disclose or suggest either the features of claim 25 or a sensor that performs electrical and mechanical measurement. Br. 31:13–32:2. But Yoriki is not relied upon for performing electrical and mechanical measurement. Ans. 52:10-11. Instead, the Examiner relies upon Yoriki to modify the Daniel and Ido combination by placing measurement means on each assembly of a mounter so that measurements are carried out using sensors on individual assemblies of the mounter. Ans. 52:10-16. Appellants do not contend that this specific reason to apply Yoriki is incorrect. Appeal 2010-003096 Application 11/418,466 13 We are therefore, not persuaded that the Examiner erred in rejecting (1) claim 25 nor (2) claim 26 which depends from claim 25 and was not separately argued with particularity. Claims 27, 28, 32, 35, 36, 41, and 44 We also sustain the rejection of claim 27, 28, 32, 35, 36, 41, and 44 3 because Appellants attack Terada individually and do not address the Examiner’s reasons for applying the teachings of Terada to the Daniel/Ido combination. Compare Ans. 10-11, 56-63 with Br. 33-40. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (One cannot show nonobviousness by attacking references individually where the rejection is based on combinations of references.). Claims 30, 31, and 40 We also sustain the rejection of claim 30, 31, and 40. Appellants contention that Suzuki fails to cure the deficiencies of the other cited references (Br. 40-43) does not persuasively rebut the Examiner’s position for the reasons indicated above . . CONCLUSION Under § 103, the Examiner did not err in rejecting claims 20-44. 3 In the middle of Appellants’ argument regarding claim 44, Appellants refer to claim 34 as allowable. Br. 34:5, 8. We assume that this is a typographical error and was intended to refer to claim 44 because of its context and because Appellants discussed claim 34 separately. Br. 25-26. Appeal 2010-003096 Application 11/418,466 14 DECISION The Examiner’s decision rejecting claims 20-44 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED babc