Ex parte Cheesebrow et al.

Board of Patent Appeals and Interferences

Mar 29, 1999

08225228 (B.P.A.I. Mar. 29, 1999)

Application for patent filed April 8, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte NICHOLAS T. CHEESEBROW,
SHAWN D. EGGUM, ROBERT D. KOS
and RANDY S. WILLIAMS
_____________
Appeal No. 96-3964
Application 08/225,2281
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 10-20, which constituted all the claims remaining in
the application. Claims 1-9 were canceled earlier in the
Appeal No. 96-3964
Application No. 08/225,228
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prosecution. An amendment after final rejection was filed on
February 1, 1996 which was entered by the Examiner. This
amendment canceled claims 17-20. Accordingly, this appeal now
involves only claims 10-16.
The claimed invention relates to a disk carrier having a
molded body with two pairs of opposing walls for carrying a
plurality of wafers. A wall portion of one of the walls
includes a recess extending from an edge into the wall portion
into which a radio frequency transponder having a readable
identification code is inserted. The recess is positioned
intermediate the interiorly facing surface and the exteriorly
facing surface of the wall portion.
Representative claim 10 is reproduced as follows:
10. A disk carrier for carrying a plurality of wafers, the
carrier comprising:
a molded body having two pairs of opposing walls, the
pairs of opposing walls joined together to form a generally
rectangular body defining an interior, the body having a
plurality of interiorly facing channels for receiving wafers
in the interior, one of the walls having an integral wall
portion with an inwardly facing surface, an opposite
exteriorly facing surface, and an edge extending from the
interiorly facing surface to the exteriorly facing surface,
the wall portion further having a recess extending from the
edge into the wall portion, the recess positioned intermediate
the interiorly facing surface and the exteriorly facing
surface;
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Application No. 08/225,228
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a radio frequency transponder inserted in the elongate
recess, the transponder having a unique identification code
readable with an external reader unit; and
a cover inserted in the recess for sealably enclosing the
transponder within said recess the cover meeting the wall
portion at a junction, the recess being elongate into the wall
portion whereby the size of the junction is minimized.
The Examiner relies on the following references:
Olsen 1,372,036 Mar. 22,
1921
Hesser 4,588,880 May 13,
1986
Rossi et al. (Rossi) 4,888,473 Dec. 19,
1989
Claims 10-13, 15, and 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the teachings of Rossi in
view of Olsen. Claim 14 stands rejected under 35 U.S.C. § 103
as being unpatentable over the teachings of Rossi in view of
Olsen and Hesser.
We note that the Examiner has included claim 17 in the
statement of the grounds of rejection on page 3 of the Answer.
From the record before us, however, claim 17 was canceled in
an amendment after final rejection as noted above.
Rather than reiterate the arguments of Appellants and the
Appeal No. 96-3964
Application No. 08/225,228
The (revised) Appeal Brief was filed May 13, 1996. In2
response to the Examiner's Answer dated June 11, 1996, a Reply
Brief was filed August 7, 1996 which was acknowledged and
entered by the Examiner without further comment on September
4, 1996.
4
Examiner, reference is made to the Briefs and Answer for the 2
respective details thereof.
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OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
evidence
of obviousness relied upon by the Examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’
arguments set forth in the Briefs along with the Examiner's
rationale in support of the rejections and arguments in
rebuttal
set forth in the Examiner's Answer. It is our view, after
consideration of the record before us, that the collective
evidence relied upon and the level of skill in the particular
art would not have suggested to one of ordinary skill in the
art the obviousness of the invention as set forth in claims
10-16. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so
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doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
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Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
Appellants, at page 3 of the Brief, have identified two
sets of claims (i.e. claims 10-16 directed to a disk carrier
and claims 17-20 directed to a system for monitoring batches
of disks) which do not stand or fall together. Implicit in
Appellants' statement of the grouping of claims is that the
claims within each set do stand or fall together. As pointed
out previously, however, claims 17-20 have been canceled
leaving only the set of claims 10-16 directed to the disk
carrier on appeal. Consistent with this indication,
Appellants have made no separate arguments with respect to any
of the claims on appeal. Accordingly, all the claims before
us will stand or fall together. Note In re King, 801 F.2d
1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
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Application No. 08/225,228
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Therefore, we will consider the rejection against independent
claim 10 as representative of all the claims on appeal.
With respect to the rejection of representative claim 10
as unpatentable over the combination of Rossi and Olsen,
Appellants assert (Brief, pages 4 and 5) a lack of suggestion
or motivation in the references for combining or modifying
teachings to establish a prima facie case of obviousness. The
Examiner has responded (Answer, pages 4 and 8) with a
reference to column 4, lines 50-55 of Rossi which states:
Thus, when the transponder tag
is described herein as "attached"
to the carrier, it is meant to
include any method of attachment
which will allow the transponder
tag to be securely associated with
a particular carrier so that it may
be used in this manner.
The Examiner asserts the obviousness of the combination of
Rossi and Olsen at page 5 of the Answer which states:
It will be apparent that some methods
of attachment would not be obvious
under 35 U.S.C. § 103, despite Rossi's
stated intention to "include any method
of attachment", but the structural
attachment of the instant claims is
sufficiently close to Rossi's
alternatives and Olsen's disclosure
to be considered obvious to one of
ordinary skill in the art.
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After careful review of the Rossi and Olsen references,
we are in agreement with Appellants' stated position in the
Brief. The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F. 2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). In the
present instance, although Olsen does teach a device with an
elongated recess extending from an edge into a wall portion,
the invention is for use in identifying stolen automobiles.
We fail to see how the Olsen device which is designed for
paper identification tag insertion would have relevance to the
radio frequency tracking system for wafer carriers of Rossi.
None of the problems sought to be overcome by Olsen would be
expected to exist in the wafer carrier system of Rossi. We
are left to speculate why the skilled artisan would employ the
elongated recess feature of Olsen in the recited position in
Rossi. The only reason we can discern is improper hindsight
reconstruction of Appellants' claimed invention. As to the
"sufficiently close" argument articulated by the Examiner, we
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are unaware of any such legal
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standard of obviousness and the Examiner has provided no
support for such position.
For the reasons discussed above, the rejection of claims
10-13, 15, and 16 as unpatentable over Rossi and Olsen is not
sustained.
With respect to the rejection of claim 14 as unpatentable
over the combination of Rossi, Olsen, and Hesser, we note that
claim 14 is dependent on independent claim 10 and incorporates
all the limitations of claim 10 just discussed. Hesser was
cited solely to meet the programmable feature of the claimed
transponder but does not overcome the innate deficiencies of
the combination of Rossi and Olsen. Therefor, we do not
sustain the rejection of claim 14 for the reasons discussed
above.
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In summary, the decision of the Examiner rejecting
claims 10-16 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR:svt
Appeal No. 96-3964
Application No. 08/225,228
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Douglas J. Christensen
Palmatier, Sjoquist, Helget & Voight, P.A.
6600 France Avenue South
Suite 501
Minneapolis, MN 55435