Ex Parte MAURER et al

Patent Trials and Appeals BoardMar 29, 2019

12968729 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/968,729 12/15/2010 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 04/02/2019 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Walter MAURER 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. 5010-1026 2911 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WALTER MAURER and FRANZ HELMHAR T Appeal2017-006047 Application 12/968,729 Technology Center 3700 Before BENJAMIN D. M. WOOD, ANNETTE R. REIMERS, and SEAN P. O'HANLON, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 Walter Maurer and Franz Helmhart ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject under 35 U.S.C. Â§ 102(b) claims 13, 14, and 16 as anticipated by Mitsuishi (US 6,955,585 B2, issued Oct. 18, 2005) and under 35 U.S.C. Â§ 103(a): (1) claim 15 as unpatentable over Mitsuishi and Nedo (US 5,349,788, issued Sept. 27, 1 The Examiner indicates that "[c]laims 19 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims." Non-Final Office Action 5 ("Non-Final Act."), dated Mar. 18, 2016. Appeal2017-006047 Application 12/968,729 1994); and (2) claims 17 and 18 as unpatentable over Mitsuishi. Claims 1- 12 and 21-25 have been canceled. An Oral Hearing in accordance with 37 C.F .R. Â§ 41.4 7 was held on March 7, 2019. We have jurisdiction under 3 5 U.S.C. Â§ 6(b ). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to "a machining device that allows an accurate machining of workpieces." Spec. 2:13-15, Figs. 1, 2. Claim 13, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 13. A machining device for machining a workpiece by means of at least one fluid jet, comprising a workpiece support for supporting the workpiece, and a catch basin for dissipating the energy of the at least one fluid jet after its penetration of the workpiece, wherein the catch basin is arranged in a self-supporting manner in relation to the workpiece support in order to avoid the transmission of vibrations from the catch basin to the workpiece support, and wherein the catch basin includes side walls, which extend vertically from a bottom of the catch basin beyond a level at which the workpiece support is located such that the workpiece is located within the catch basin, below an uppermost surface of said side walls, thereby allowing the catch basin to be filled with water up to the workpiece. 2 Appeal2017-006047 Application 12/968,729 Claims 13, 14, and 16 ANALYSIS Anticipation by Mitsuishi Independent claim 13 is directed to a machining device including a catch basin that "is arranged in a self-supporting manner in relation to the workpiece support in order to avoid the transmission of vibrations from the catch basin to the workpiece support." Appeal Br., 5 Claims App. 2 The Examiner finds that "guide (8b) [ of Mitsuishi] is mounted away from the table 9 because the table 9 moves relative to the spindle (8a) in the X-Y direction." Ans. 7; 3 see also id. ("[T]he spindle (8a) is connected to the guide (8b ). The guide (8b) in tum is mounted away from the table 9 because the table 9 moves relative to the spindle (8a) in the X-Y direction."), both citing Mitsuishi 6:63---67; Ans. 8. The Examiner concludes "[b]ecause the guide (8b) [ofMitsuishi] is mounted away from the table 9, there [are] no vibrations from the water tank 6 transmitted to the spindle (8a)." Ans. 7-8. Column 6 lines 63 through 67 of Mitsuishi describes movement of table 9 and nozzle 5 relative to a specified position of workpiece 7; see also Reply Br. 1. 4 This portion of Mitsuishi is silent as to the mounting of guide 8b in relation to table 9, and it is not clear from Figure 1 of Mitsuishi how guide 8b is mounted in relation to table 9. Thus, the Examiner's finding that guide (8b) of Mitsuishi is mounted away from table 9 is based on speculation and is not supported by a preponderance of the evidence. 2 Appeal Brief ("Appeal Br.") Claims Appendix ("Claims App."), filed Sept. 19, 2016. 3 Examiner's Answer ("Ans."), dated Dec. 28, 2016. 4 Reply Brief ("Reply Br."), filed Feb. 28, 2017. 3 Appeal2017-006047 Application 12/968,729 The Examiner also finds that "there is an opening in the catch basin 6 and the opening has a diameter greater than a diameter of the workpiece support (8a) to facilitate the vertical B-direction movement of the workpiece support (8a) and the X-Y direction movement of the catch basin." Ans. 5; see also id. at 6, the Examiner's annotated version of Figure 1 of Mitsuishi. However, the Examiner does not direct us to any discussion in Mitsuishi about an "opening" in catch basin 6, and it is unclear from Figure 1 of Mitsuishi what the unlabeled bars along the side wall of water tank ( catch basin) 6 and at either side of spindle (workpiece support) 8a represent. See Reply Br. 1-2. In this case, we agree with Appellants that the Examiner's "contention is entirely speculative, and does not find support in the disclosure of the reference." See id.; see also Hockerson-Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951,956 (Fed. Cir. 2000) ("[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue."). The Examiner finds "[f]or the sake of argument that the guide (8b) is connected to the table 9, there is no vibrations from the water tank 6 transmitted to the spindle (8a) either because the spindle (8a) does not directly contact with [(sic.)] the water tank." Ans. 8. First, the Examiner does not direct us to any discussion in Mitsuishi about spindle 8a not directly contacting water tank 6. See id. In this case, we agree with Appellants that based on Figure 1 of Mitsuishi "spindle 8a appears to pass through the side wall of the water tank 6." Reply Br. 1. Second, given the Examiner acknowledges that "guide (8b) is connected to [] table 9," that the base section of spindle (workpiece support) 8a "moves 4 Appeal2017-006047 Application 12/968,729 on [] guide Sb," and that water tank ( catch basin) 6 "is mounted on [] table 9," it would appear that water tank (catch basin) 6 is arranged in a fixed manner in relation to spindle (workpiece support) 8a rather than being "arranged in a self-supporting manner" in relation to spindle (workpiece support) 8a, as required by claim 13. See Ans. 8; see also Mitsuishi 4:42- 46, 51-56; Appeal Br., 5 Claims App. Lastly, the Examiner finds that "table 9 [of Mitsuishi] is equivalent to the ground in the invention where the water tank and the workpiece support rest on." Ans. 8; see also id. at 9, the Examiner's annotated version of Figure 1 of Mitsuishi and Figure 3 of the subject invention. Here, we agree with Appellants that the Examiner provides "no basis to regard the ground in the disclosed embodiments [ of the subject invention] as 'equivalent' to the movable X-Y table 9 ofMitsuishi." Reply Br. 2-3; see also Hockerson, 222 F.3d at 956. For these reasons, we do not sustain the Examiner's rejection of claims 13, 14, and 16 as anticipated by Mitsuishi. Obviousness over Mitsuishi and Neda or Mitsuishi Claims 15, 17, and 18 The Examiner's rejections of claim 15 as unpatentable over Mitsuishi and Nedo and of claims 17 and 18 as unpatentable over Mitsuishi are each based on the same unsupported findings with respect to independent claim 13. See Non-Final Act. 4--5. The Examiner does not rely on Nedo or on proposed modifications to Mitsuishi to remedy the deficiencies discussed above. Accordingly, for reasons similar to those discussed for claim 13, we 5 Appeal2017-006047 Application 12/968,729 do not sustain the Examiner's obviousness rejections of claims 15, 17, and 18. DECISION We REVERSE the decision of the Examiner to reject claims 13, 14, and 16 as anticipated by Mitsuishi. We REVERSE the decision of the Examiner to reject claim 15 as unpatentable over Mitsuishi and Nedo. We REVERSE the decision of the Examiner to reject claims 17 and 18 as unpatentable over Mitsuishi. REVERSED 6