Ex Parte Bolotin

Board of Patent Appeals and Interferences

Oct 31, 2003

09471667 (B.P.A.I. Oct. 31, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LEV M. BOLOTIN
____________
Appeal No. 2002-1219
Application No. 09/471,667
____________
ON BRIEF
____________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims 1 through 10, all of the claims
remaining in the application.
Appellant’s invention pertains to a micro device processing
system useable with a micro device using assembly system having a
control system and a robotic handling system. A basic
understanding of the invention can be derived from a reading of
exemplary claim 1, a copy of which appears in “Appendix A” of the
main brief (Paper No. 13).
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Application No. 09/471,667
2
As evidence of anticipation, the examiner has relied upon
the following:
PRIOR ART FIG. 1 AND PRIOR ART FIG. 2 in appellant’s
application.
The following rejections are before us for review.
1. Claims 1 through 10 stand rejected under 35 U.S.C. § 112
as being incorrect in not reading on the disclosure.
2. Claims 1 through 8 and 10 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by PRIOR ART FIGURES 1 AND 2.
The full text of the examiner’s rejections and response to
the argument presented by appellant appears in the answer (Paper
No. 14), while the complete statement of appellant’s argument can
be found in the Appeal Brief and Reply Brief (Paper Nos. 13 and
15).

Appeal No. 2002-1219
Application No. 09/471,667
1 Considering the language in claim 1 of “the input feeder
responsive to communication with the control system to feed the
micro devices”, and “the robotic handling system responsive to
communication of the processing system with the control system to
take micro devices and place the micro devices on the assembly
system”, we don’t necessarily agree with appellant’s analysis as
to what is or is not part of the claimed invention (main brief,
pages 5 and 6).
2 In our evaluation of the applied prior art, we have
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
3
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims, 1 the applied teachings,2
and the respective viewpoints of appellant and the examiner. As
a consequence of our review, we make the determinations which
follow.
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Application No. 09/471,667
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The first rejection
We do not sustain the rejection of claims 1 through 10
under 35 U.S.C. § 112 (second paragraph) as being incorrect in
not reading on the disclosure.
In order to satisfy the requirements of the second paragraph
of § 112, a claim must accurately define the invention in the
technical sense. See In re Knowlton, 481 F.2d 1357, 1366, 178
USPQ 486, 492-93 (CCPA 1973).
We certainly understand the examiner’s point of view as to
the claim language in question. However, we do not share the
perception that the specified instances in the rejection (page 2
of Paper No. 9 and page 3 of the answer) address incorrect claim
recitations relative to the original disclosure, as follows.
First, on page 4 of the specification, the input feeder is
clearly indicated to be “operatively associated” with a
processing system. Thus, it is not incorrect to claim the input
feeder separate from the processing system. Second, while the
robotic handling system is clearly part of the micro device using
Appeal No. 2002-1219
Application No. 09/471,667
5
assembly system, it is not incorrect to set forth that the
robotic handling system takes micro devices and places them on
the assembly system since clearly the assembly system is not
recited as consisting of the robotic handling system alone.
The second rejection
We do not sustain the rejection of claims 1 through 8 and 10
under 35 U.S.C. § 102(a) as being anticipated by PRIOR ART
FIGURES 1 AND 2.
Anticipation under 35 U.S.C. § 102 is established only when
a single prior art reference discloses, either expressly or under
principles of inherency, each and every element of a claimed
invention. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997); In re Paulsen, 30 F.3d 1475, 1478-
79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994); In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); and RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). However, the law of anticipation does
not require that the reference teach specifically what an
Appeal No. 2002-1219
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appellant has disclosed and is claiming but only that the claims
on appeal "read on" something disclosed in the reference, i.e.,
all limitations of the claim are found in the reference. See
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781,
789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Claim 1, the sole independent claim in the application, sets
forth a micro device processing system useable with a micro
device using assembly system having a control system and a
robotic handling system, comprising, inter alia, an input feeder,
a processing system, with the input feeder and the processing
system being capable of communication with the control system,
the input feeder being responsive to communication with the
control system to feed micro devices, the processing system being
capable of processing the micro devices and communicating to the
control system, and the robotic handling system being responsive
to communication of the processing system with the control system
to take micro devices and place them on the assembly system.
The examiner concludes that the claimed invention is
anticipated on the basis of an acknowledged prior art processing
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system (appellant’s Fig. 1), an acknowledged prior art micro
device using assembly system (appellant’s figure 2), and the
disclosure in the specification (page 6, lines 18 through 20)
that
...[w]here programmed devices are involved,
the output media from the output mechanism 24
form FIG. 1 (PRIOR ART) would be used as the
input media in the input feeder 34.
We disagree with the examiner’s conclusion that the applied
evidence supports a conclusion of anticipation.
Like appellant (main brief, pages 8 and 10) we readily
perceive that the acknowledged prior art teaches two stand alone,
independent systems 10 and 30 wherein the output mechanism 24 of
the programming system (Fig. 1) can act as the input feeder 34
for the production assembly 30 (Fig. 2). We can perceive no
disclosure whatsoever in the prior art of the features of claim 1
of the input feeder and processing system being capable of
communicating with the control system, of the input feeder being
responsive to communication with the control system to feed micro
devices, of the processing system being capable of processing the
micro devices and communicating to the control system, and of the
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robotic handling system being responsive to communication of the
processing system with the control system to take micro devices
and place them on the assembly system. Thus, the anticipation
rejection is not sound.
In summary, this panel of the board has not sustained the
rejections on appeal.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
ICC/dpv
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Application No. 09/471,667
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