Ex Parte Lu et alDownload PDFPatent Trial and Appeal BoardMay 10, 201713833114 (P.T.A.B. May. 10, 2017) Copy Citation 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. 13/833,114 03/15/2013 Roberto Francisco-Yi Lu TY-00224 (958-6023) 2042 75750 7590 05/10/2017 The Whitaker LLC 4550 Linden Hill Road Suite 140 Wilmington, DE 19808 EXAMINER GAMINO, CARLOS J ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 05/10/2017 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 ROBERTO FRANCISCO-YI LU, QINGLONG ZENG, CHARLES DAVID FRY, and BICHENG CHEN ____________ Appeal 2016-005896 Application 13/833,114 Technology Center 1700 ____________ Before TERRY J. OWENS, JAMES C. HOUSEL, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1–12. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-005896 Application 13/833,114 2 BACKGROUND The subject matter on appeal relates to a soldering machine that minimizes or eliminates human operator intervention, and uses data or images collected via a vision guidance system to change parameters and control of the soldering machine’s various components. Spec. ¶¶ 2, 4, 15, and 16. Sole independent Claim 1 is representative, and is reproduced from the Claims Appendix of the Appeal Brief: 1. A soldering machine comprising: a frame; a fixture held by the frame, the fixture being configured to support a substrate and a cable with individual wires configured to be soldered to conductive traces of the substrate; a guidance system supported by the frame, the guidance system having a camera viewing the fixture, the camera being movable relative to the fixture; a positioning system supported by the frame, the positioning system having a camera positioner and a soldering mechanism positioner, the camera being coupled to and movable by the camera positioner relative to the fixture; a soldering mechanism coupled to the soldering mechanism positioner and moved by the soldering mechanism positioner relative to the fixture, the soldering mechanism being configured to solder the wires to the conductive traces of the substrate; and a controller communicating with the positioning system and the guidance system, the controller operating the positioning system to control a position of the camera and a position of the soldering mechanism relative to the fixture based on an image obtained by the camera. Appeal Br. 25. Appeal 2016-005896 Application 13/833,114 3 REFERENCES The Examiner relies on the following references as evidence of unpatentability: Todd US 4,844,324 July 4, 1989 Kobayashi, et al. US 5,542,600 Aug. 6, 1996 (hereinafter “Kobayashi”) Higashi, et al. US 6,354,480 B2 Mar. 12, 2002 (hereinafter “Higashi”) Van Den Broek, et al. US 7,159,754 B2 Jan. 9, 2007 (hereinafter “Van Den Broek”) Senba, et al. US 2003/0085256 A1 May 8, 2003 (hereinafter “Senba”) REJECTIONS ON APPEAL I. Claims 1–12 are rejected under 35 U.S.C. § 112, ¶ 1 as lacking enablement (Final Act. 2–4); II. Claim 8 is rejected under 35 U.S.C. § 112, ¶ 2 as being indefinite (Final Act. 4); III. Claims 1–5 and 7–12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi in view of Van Den Broek, Senba, and Higashi (Final Act. 5–12); and IV. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi in view of Van Den Broek, Senba, Higashi, and Todd (Final Act. 12–13). Appeal 2016-005896 Application 13/833,114 4 DISCUSSION Rejection I We reverse this rejection. The first paragraph of 35 U.S.C. § 112 requires, inter alia, that the specification of a patent enable any person skilled in the art to which it pertains to make and use the claimed invention. Although the statute does not say so, enablement requires that the specification teach those in the art to make and use the invention without ‘undue experimentation.’ In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That some experimentation may be required is not fatal; the issue is whether the amount of experimentation required is ‘undue.’ In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). In this case, the Examiner concludes that the claims are not enabled because the disclosure does not fully describe a motion planning algorithm which, according to the Examiner, is required for developing a motion profile which is used by the controller to move the various components of the claimed soldering machine. Final Act. 2–4. We determine, however, that the Examiner has not established that the state of the art and the level of ordinary skill in the art, at the time of the invention, were such that one of ordinary skill would have been required to undertake undue experimentation to develop such a motion planning algorithm. Specifically, we observe that Appellants’ disclosure repeatedly sets forth how the controller obtains the necessary data to develop a motion profile, i.e., via the camera 102 or sensors, and how such data can be used to achieve the desired objective of soldering wires to a substrate via an automated process. See, e.g., Spec. ¶¶ 15, 16, 18, 19, 25–29, 34, and 38–40. This amount of disclosure runs contrary to the Examiner’s finding that Appellants did not provide “a sufficient amount of direction/guidance” for Appeal 2016-005896 Application 13/833,114 5 the skilled artisan to create an algorithm (Ans. 3). We also emphasize that even the prior art relied upon by the Examiner in Rejections III and IV appears to disclose various diagrams and descriptions that would have provided the ordinary skilled artisan some guidance for creating an algorithm for automating a soldering machine. See, e.g., Kobayashi, Figs. 9, 28, 29, 13:8–52; and 24:31–26:17; Senba ¶ 46. On this record, the Examiner has not established that, in light of such disclosure, the level of one of ordinary skill was so low as to have required an undue amount of experimentation to create a motion planning algorithm. Thus, the Examiner has not carried the burden of establishing a prima facie case of nonenablement of the invention set forth in claim 1, and we therefore do not sustain Rejection I. Rejection II Because Appellants fail to address the merits of Rejection II, we summarily sustain it. When the appellant fails to contest a ground of rejection to the Board, . . . the Board may treat any argument with respect to that ground of rejection as waived. In the event of such a waiver, the PTO may affirm the rejection of the group of claims that the examiner rejected on that ground without considering the merits of those rejections. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008). Rejections III and IV Because Appellants argue these rejections together (Appeal Br. 20– 23), we likewise address them together. We sustain these rejections. Appellants argue that Kobayashi teaches away from the Examiner’s proposed modification of adding vision guidance using a camera because such modification would “change a principal of operation of Kobayashi and Appeal 2016-005896 Application 13/833,114 6 thus frustrate a fundamental teaching of Kobayashi, namely the use of the teach-data table 27.” Appeal Br. 23. This argument is not persuasive of reversible error for several reasons. Appellants fail to identify any prior art disclosure that discourages the addition of a vision guidance system using one or more cameras to Kobayashi’s soldering device. Moreover, Appellants fail to elaborate why the described combination would have so changed Kobayashi’s principal of operation so as to render the modified device incapable of achieving Kobayashi’s overall purpose of performing and correcting automatic solders. See, Kobayashi, 1:11–23. Such explanation is particularly necessary here because Kobayashi, like Appellants, contemplates the use of a moveable image sensing device (i.e., a camera) connected to a controller. Id. at 14:65–15:13, 16:4–10. We further emphasize that Kobayashi’s use of the teach-data table 27 is not its purpose, but is merely one step in Kobayashi’s process to achieve the overall objective of performing acceptable automatic solders. Id. at 1:11–23. Furthermore, we observe that Appellants fail to challenge the Examiner’s well-reasoned determination (Ans. 7) that the ordinary skilled artisan would have had a reason to add a vision guidance system to Kobayashi’s soldering machine, i.e., no Reply Brief has been filed. Hence, we sustain Rejections III and IV. SUMMARY The Examiner’s final decision to reject claims 1–12 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)(iv). Appeal 2016-005896 Application 13/833,114 7 AFFIRMED Copy with citationCopy as parenthetical citation