Ex Parte Garcia

Board of Patent Appeals and Interferences

Mar 17, 2011

10977606 (B.P.A.I. Mar. 17, 2011)

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.
10/977,606 10/29/2004 Eric Daniel Jeronne Garcia HSJ920040217US1 1149
45552 7590 03/17/2011
HITACHI C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
COZART, JERMIE E
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
03/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC DANIEL JERONNE GARCIA
____________

Appeal 2009-012340
Application 10/977,606
Technology Center 3700
____________

Before: WILLIAM F. PATE III, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012340
Application 10/977,606

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STATEMENT OF THE CASE
Eric Daniel Jeronne Garcia (Appellant) seeks our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-9 and 16-24,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
THE INVENTION
Appellant’s claimed invention “relates to the manufacture and
handling of magnetic read-write work pieces.” Spec. 1:4-5. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. An apparatus for handling a work piece comprising:
a rigid frame comprising an interior perimeter and an
exterior perimeter, said interior perimeter comprising a plurality
of mounts;
a plurality of retention springs coupled to said plurality of
mounts, said retention springs for applying a retention force on
said work piece to prevent movement between said work piece
and said interior perimeter of said rigid frame, such that said
retention springs secure said work piece flush with a topside of
said rigid frame and reduce flaking of photoresist; and
an actuating mechanism for simultaneously actuating each
of said plurality of retention springs from an open position to a
closed position.
THE REJECTION
Appellant seeks review of the Examiner’s rejection of claims 1-9 and
16-24 under 35 U.S.C. § 103(a) as being unpatentable over Karmaniolas
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Application 10/977,606

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(US 6,553,644 B2; issued April 29, 2003) and Obayashi (JP 07-097040;
published April 11, 1995).2
CONTENTIONS AND ISSUES
The Examiner interpreted the recitation of claim 1 that the work piece
be secured “flush with a topside” of the rigid frame to call for the work piece
to be directly abutting or immediately adjacent to the topside of the rigid
frame. Ans. 3. Using this definition of “flush”, the Examiner found that
Karmaniolas’s work piece (41) is flush even though a portion of the work
piece is elevated slightly above the upper surface (15) of the frame (11).
The Examiner further found, using the appellant’s definition of “flush” to
mean “level”, that Karmaniolas’s apparatus is inherently capable of securing
a work piece level with the topside of the rigid frame (11).3 Ans. 4.
Appellant argues claims 1-9 and 16-24 as a group. Br. 8-14. We
select claim 1 as the representative claim, and claims 2-9 and 16-24 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant contends the
Examiner’s interpretation of “flush” to encompass Karmaniolas’s work
piece 41, which is secured so that it is elevated slightly above the upper
surface 15 of frame 11, is contrary to the plain meaning of the term “flush”.

2 The Examiner’s Answer and Appellant’s Brief refer to Karamaniolas and
Kobayashi; however, the correct spellings of the references are Karmaniolas
and Obayashi. All references to Obayashi refer to the English-language
translation provided by the Examiner on June 2, 2009 (PTO 09-5500;
translated by FLS, Inc.).
3 Though Karmaniolas refers to element 41 as a “workpiece,” we use the
phrase “work piece” throughout for consistency with Appellant’s
Specification. See, e.g., Karmaniolas, col. 3, l. 22; Spec. 1:6.
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Application 10/977,606

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Br. 10-11. Further, Appellant contends that Karmaniolas teaches away from
the embodiment of claim 1. Ans. 11-13. The issues presented by this appeal
are:
Does Karmaniolas disclose an apparatus that is capable of securing a
work piece flush with a topside of a rigid frame as called for in independent
claim 1?
Does Karmaniolas teach away from the subject matter of independent
claim 1?
ANALYSIS
Independent claim 1 is directed to an apparatus “for handling a work
piece” that includes a rigid frame having retention springs that “secure said
work piece flush with a topside of said rigid frame.” Thus, independent
claim 1 does not positively recite a work piece, but rather calls for an
apparatus capable of securing a work piece “flush with the topside” of the
rigid frame.
Claim 1 requires that the topside surface of the rigid frame must have
a specified spatial relationship (flush) to the work piece. This limitation is
not a comparison of the overall position of the work piece with respect to the
rigid frame; rather, we find that a person having ordinary skill in the art
would understand flush within the context of the claim language to refer to a
comparison between surfaces of the frame and workpiece, i.e., the topside of
the rigid frame and the corresponding surface of the work piece.
Consequently, a person of ordinary skill in the art, in light of Appellant’s
Specification, would understand that claim 1 calls for an apparatus capable
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Application 10/977,606

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of securing a work piece so that the topside of the work piece is flush with
the topside of the rigid frame.
We agree with the Examiner’s finding (Ans. 4) that depending on the
thickness of the work piece used in Karmaniolas’s rigid frame, the prior art
apparatus is inherently capable of securing a work piece flush, or level, with
the topside of the rigid frame (11). This finding shifted the burden to
Appellant to show Karmaniolas’s apparatus is not capable of such use. See
In re Schreiber, 128 F.3d 1474, 1478 (Fed. Cir. 1997) (once the Examiner
finds that the prior art structure would be capable of performing all of the
functions claimed, the burden shifts to the applicant to show that this is not
the case). Appellant’s argument (Br. 10-11) that the rejection is in error
because Karmaniolas’s work piece 41 is elevated slightly above the upper
surface 15 of frame 11 does not refute the Examiner’s finding that
Karmaniolas’s apparatus is inherently capable of such use.
Appellant also makes two teaching away arguments. Br. 11-13.
Independent claim 1 is rejected under 35 U.S.C. § 103(a) as obvious over
Karmaniolas and Obayashi. However, the Examiner’s rejection of
independent claim 1 does not rely on Obayashi to modify Karmaniolas, nor
does the rejection otherwise modify Karmaniolas. In other words, the
Examiner found that Karmaniolas alone discloses the apparatus of
independent claim 1. Ans. 3-4. Consequently, this finding is the equivalent
of a determination that independent claim 1 is anticipated by Karmaniolas so
that Appellant’s teaching away arguments are not relevant. See Seachange
Int’l, Inc. v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005). Appellant’s
Appeal 2009-012340
Application 10/977,606

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teaching away arguments are unpersuasive for more specific, independent
reasons as well.
Appellant argues that Karmaniolas teaches away from the subject
matter of independent claim 1 because Karmaniolas discloses a work piece
secured so that its topside is elevated from, rather than flush with, the
topside of the rigid frame. Br. 13. While Karmaniolas discloses an
apparatus that secures the upper surface 47 of the work piece 41 so that it is
elevated slightly above the upper surface 15 of frame 11 (Karmaniolas, col.
3, ll. 31-34; fig. 3), Karmaniolas is silent regarding securing the work piece
41 so that it is flush with frame 11 (Id., passim). We fail to see, and
Appellant has failed to persuasively articulate, how such silence can be said
to lead a person of ordinary skill in the art in a direction divergent from that
chosen by Appellant. See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001) (“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference would be led in a direction divergent from
the path that was taken by the applicant.” (citation omitted)).
Appellant further argues that Karmaniolas teaches away from the
subject matter of independent claim 1 because Karmaniolas discloses that
“any excess resist may be trimmed along slits 19 (FIG. 1) on frame 11” and
“not as in Appellant’s claimed embodiment that does ‘reduce flaking of
photoresist’.” Br. 13. First, we fail to see, and Appellant has failed to
convincingly articulate, how Karmaniolas’s disclosure that photoresist may
be trimmed along the slits 19 of frame 11 (Karmaniolas, col. 4, ll. 38-41;
figs. 1, 3) would lead a person of ordinary skill in the art in a direction
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Application 10/977,606

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divergent from that chosen by Appellant of securing the work piece flush
with the upper surface of the rigid frame as called for in independent
claim 1. Second, Appellant’s argument can be read to suggest that
Karmaniolas’s disclosure that excess resist may be trimmed would lead a
person of ordinary skill away from the path chosen by Appellant to secure
the work piece so as to reduce flaking. Such an argument mischaracterizes
the claimed device and the reference. Appellant’s Specification describes
that securing, i.e., preventing movement of, the work piece reduces flaking,
not positioning the work piece so that it is flush with the topside of the rigid
frame. See, e.g., Spec. 2:4-6; 6:2-4, 14-17. Further, similar to Appellant’s
claimed apparatus, Karmaniolas discloses that frame 11 securely retains
work piece 41, thus reducing the risk of damage during processing.
Karmaniolas, col. 4, ll. 34-38. A person of ordinary skill in the art, knowing
Karmaniolas’s disclosure that excess resist may be trimmed along slits 19
and that the work piece should be secured to reduce damage during
processing, would not be led away from the path chosen by Appellant to
prevent movement of the work piece so as to reduce flaking of the
photoresist.
As such, we sustain the rejection of claim 1, and claims 2-9 and 16-24
fall with claim 1.4

4 Appellant also contends that Obayashi does not overcome the
shortcomings of Karmaniolas. Br. 13-14. This argument is irrelevant
because the rejection of claim 1 does not rely upon any teaching from
Obayashi. See Ans. 3-4.
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Application 10/977,606

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CONCLUSION
Karmaniolas discloses an apparatus that is capable of securing a work
piece flush with a topside of the rigid frame as called for in independent
claim 1.
Karmaniolas does not teach away from the subject matter of
independent claim 1.
DECISION
The decision of the Examiner to reject claims 1-9 and 16-24 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

nlk

HITACHI C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE CA 95076