Ex Parte Sonner et al

Patent Trial and Appeal BoardAug 30, 2016

12787625 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121787,625 05/26/2010 26875 7590 09/01/2016 WOOD, HERRON & EV ANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 FIRST NAMED INVENTOR Christian Sonner 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. KUKAR-34 4979 EXAMINER TRIVEDI, ATUL ART UNIT PAPER NUMBER 3667 NOTIFICATION DATE DELIVERY MODE 09/01/2016 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): usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN SONNER and GUNTHER WIEDEMANN Appeal2014-007806 Application 12/787,625 1 Technology Center 3600 Before EDWARD A. BROWN, FREDERICK C. LANEY, and SEAN P. O'HANLON, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christian Sonner and Gunther Wiedemann (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 16-26 under 35 U.S.C. Â§ 103(a) as unpatentable over Hamaguchi (US 2008/0035619 Al, pub. Feb. 14, 2008) and Hunter (US 2002/0125231 Al, pub. Sept. 12, 2002).2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). SUMMARY OF DECISION We REVERSE. 1 According to Appellant, the real party in interest is KUKA Roboter GmbH. Appeal Br. 3 (filed March 14, 2014). 2 Claims 1-15 have been canceled. Appeal Br. 12 (Claims App.). Appeal2014-007806 Application 12/787,625 INVENTION Appellants' invention "relates to a method and a device for operating an additional tool axis of a tool which is guided by a manipulator, in particular a robot." Spec. 1 :4--5. Claims 16 and 26 are independent claims. Claim 16, reproduced below, is illustrative of the claimed subject matter: 16. A method of operating an independently actuable axis of a tool supported on a robotic manipulator having a plurality of drive axes controlled by a computer control, the method compnsmg: defining a position and/or orientation of the tool in space in terms of the translational or angular positions of the drive axes of the robotic manipulator; defining a process-based position value of a target along the tool axis; and determining a tool drive axis position that results in the process-based position value using the computer control. Appeal Br. 12 (Claims App.). ANALYSIS Appellants challenge the Examiner's rationale explaining why a skilled artisan, at the time of the invention, would have been prompted to modify the methods of Hamaguchi with the teachings of Hunter in the manner claimed. Appeal Br. 7. More specifically, Appellants assert the Examiner's obviousness rationale is conclusory and lacks a rational underpinning. Id. We, therefore, must decide whether a rational connection exists between the factual findings and the Examiner's reason for modifying Hamaguchi with Hunter in the manner claimed. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be 2 Appeal2014-007806 Application 12/787,625 sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). For the following reasons, the Examiner's analysis does not properly establish such a connection. The Examiner finds Hamaguchi discloses the recited elements of independent claims 16 and 26, except: (1) "defining a process-based position value of a target along the tool axis" (claims 16 and 26); (2) "determining a tool drive axis position that results in the process-based position value using the computer control" (claims 16 and 26); and (3) "operating the tool drive axis independently of the drive axes of the robotic manipulator to translate a component of the tool toward or away from the target" (claim 26). Final Act. 3--4. The Examiner finds Hunter discloses each of the above elements missing from Hamaguchi. Id. The Examiner concludes, "[i]t would have been obvious to a person of skill in the art, at the time of the invention was made, to operate the robotic manipulator of Hamaguchi according to the position values that Hunter teaches, in order to account for microstructures that may exist on the surface of the etched substrate." Id. at 3, 5. The Examiner's rationale for why a skilled artisan would have modified Hamaguchi with Hunter in the manner claimed, however, lacks a rational underpinning. The laser emitting apparatus of Hamaguchi is part of a "laser welding system." See Hamaguchi i-fi-15, 12, 28-31, 106-107. The Examiner fails to identify any evidence supporting a skilled artisan would have considered operating the Hamaguchi apparatus so that it accounts for microstructures. Nor does the Examiner explain why a skilled artisan would have known (or had a reason) to apply the laser emitting apparatus of Hamaguchi to processing microstructures. In other words, the Examiner's 3 Appeal2014-007806 Application 12/787,625 analysis presupposes, without any factual support, a skilled artisan would even want to modify the laser emitting apparatus of Hamaguchi to account for microstructures that may or may not exist on a substrate, which amounts to merely a conclusory statement and, as such, provides an insufficient basis to sustain the rejection. The Examiner also points to the similarities between the dimensions Hamaguchi teaches for an exemplary weld pattern (i.e., measured in millimeters) and the range of motion of the optical element in the Z-axis (i.e., about 3 millimeters) Hunter teaches. Final Act. 2; Ans. 2. According to the Examiner, "[g]iven these similarities in dimension, a person of skill in the art might well decide to use data or commands as taught by Hunter to move the laser tool of Hamaguchi." Final Act. 2 (emphasis added). Stated slightly different in the Answer, the Examiner determines, "[g]iven the similarities in distances over which the laser tool may be guided in Hamaguchi and Hunter, it would have been obvious to a person of skill in the art to guide the laser tool of Hamaguchi with algorithms and programs that Hunter teaches." Ans. 2. Appellants argue that the Examiner's reliance on "similarities in dimensions" is inapt and "does not provide a reason why persons skilled in the art would combine [Hamaguchi and Hunter in the manner claimed]." Appeal Br. 9. Appellants correctly assert, "[t]he Examiner is improperly trying to equate the dimensions of the welding pattern ofHamaguchi '619 in the plane of a workpiece with the resolution of the beam [focus] in the direction normal to a workpiece." Reply Br. 3. Based on the record before us, it is unclear what it is about the correlation between the dimensions Hamaguchi teaches for an exemplary welding pattern and the lens or optical 4 Appeal2014-007806 Application 12/787,625 element movement that Hunter teaches along the Z-axis to adjust a beam focus that would have caused an ordinarily skilled artisan to modify Hamaguchi as the Examiner suggests. Hamaguchi teaches the weld can actually "have any shape of any size" and that the disclosed device has the ability to position the laser beam at a proper height. Hamaguchi i-fi-144--45. Hunter, on the other hand, teaches that it is necessary, for processing microstructures that have gotten increasingly smaller (Hunter i1 4), to have a highly precise ("on the order of 1 micron or finer") positioning system to direct a laser beam at a target location on a semiconductor in a manner that avoids damaging the adjacent microstructures. Id. i-fi-f 126, 129. The Examiner has not established a rational connection between the "precision positioning system" of Hunter and the dimensions for the welds created by the device of Hamaguchi. Nor does the Examiner explain what, if any, benefits the welding operations of Hamaguchi would realize from the addition of Hunter's precision positioning system, which a skilled artisan would have recognized. "The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis." In re Warner, 379 F.2d 1011, 1017 (CCP A 1967) (emphasis added). Because the above deficiencies apply to the Examiner's obviousness analysis for both independent claims 16 and 26, and the Examiner's analysis of the dependent claims fails to cure the deficiencies (see Final Act. 3--4), we do not sustain the Examiner's rejection of claims 16-26. 5 Appeal2014-007806 Application 12/787,625 DECISION We reverse the Examiner's decision to reject claims 16-26. REVERSED 6