Ex Parte Gaukroger

Patent Trial and Appeal Board

Mar 16, 2017

10561495 (P.T.A.B. Mar. 16, 2017)

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.
10/561,495 06/16/2006 David Alexander Gaukroger FRYHP0137US 9316
23908 7590 03/20/2017
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
RUSH, ERIC
ART UNIT PAPER NUMBER
2667
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ALEXANDER GAUKROGER
Appeal 2016-002774
Application 10/561,495
Technology Center 2600
Before BRUCE R. WINSOR, DAVID C. McKONE, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1—7, 9-30, and 32—45. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 8 and 31 have been indicated to be directed to allowable
subject matter. Final Act. 32.
We reverse.
1 The real party in interest identified by Appellant is ASM Assembly
Systems Switzerland GmbH. App. Br. 1.
Appeal 2016-002774
Application 10/561,495
RELATED PROCEEDINGS
The instant application was the subject of previous Appeal 2010-
010095, decided July 23, 2013, affirming the Examiner. See App. Br. 2;
Ex parte Gaukroger, Appeal 2010-010095, 2013 WL 3873059 (PTAB July
23, 2013)) (non-precedential). The instant appeal comes to us after further
prosecution of the application, including amendment of the claims.
Compare, e.g., App. Br. 22 Claim App’x), with, Gaukroger, 2013 WL
3873059 at *1.
STATEMENT OF THE CASE
“[Appellant’s] invention relates to . . . inspecting deposits printed on
workpieces, typically substrates, such as circuit boards.” Spec. 1. Claim 1,
which is illustrative of the invention, reads as follows:
1. An inspection system for inspecting deposits printed on
workpieces through a printing screen, the system comprising:
a camera unit movable relative to a printing screen, where
comprising a body including a plurality of apertures, and a workpiece
on which deposits are printed through the apertures of the printing
screen; wherein the camera unit captures images of at least one pair of
corresponding regions of a lower surface of the printing screen and an
upper surface of the workpiece; and
a processor configured to process the images to determine, in
turn, for each of a plurality of points defining the image of the printing
screen, the image of the printing screen comprising both the body of
the printing screen and apertures within the printing screen, whether
the point is of aperture, and, only where the point is determined to be
of aperture, determine whether the corresponding point of the
corresponding image of the workpiece, as defined by a corresponding
plurality of points, is of deposit, thereby enabling a determination of a
print characteristic of deposits printed on the workpiece from a
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Appeal 2016-002774
Application 10/561,495
relationship of the points determined to be of deposit to the points
determined to be of aperture.
Claims 1, 2, 6, 9, 10, 14, 15, 23, 24, 29, 32, 33, 37, and 38 stand
rejected under 35 U.S.C. § 103(a)2 as unpatentable over Schanz (US
6,810,138 Bl; Oct. 26, 2004) and Taycher et al. (US 6,687,402 Bl; Feb. 3,
2004). See Final Act. 9—20.
Claims 3, 5, 26, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schanz, Taycher, and Official Notice.3 See Final Act. IS­
IS.
Claims 4, 7, 11—13, 16—22, 27, 30, 34—36, and 39-45 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Schanz, Taycher, and
MacFarlane et al. (US 4,578,810; Mar. 28, 1986). See Final Act. 20-32.
Rather than repeat the arguments here, we refer to the Briefs
(“App. Br.” filed June 22, 2015; “Reply Br.” filed Jan. 19, 2016) and the
Specification (“Spec.” filed Dec. 19, 2005) for the positions of Appellant;
the Final Office Action (“Final Act.” mailed July 22, 2014) and Answer
(“Ans.” mailed Nov. 19, 2015) for the reasoning, findings, and conclusions
of the Examiner; and the Decision in the previous appeal identified supra.
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011. Final Act 2.
3 Although listed in the summary ground of rejection as unpatentable over
Schanz and Taycher (Final Act. 9), the detailed rejections of claims 3, 5, 26,
and 28 articulated by the Examiner (id. at 13—15) include Official Notice
taken by the Examiner.
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Appeal 2016-002774
Application 10/561,495
ISSUE
The dispositive issue4 raised by Appellant’s arguments is as follows:
Does the Examiner err in finding the combination of Schanz and Taycher
teaches or suggests “only where the point [of the image of the printing
screen] is determined to be of aperture, determine whether the corresponding
point of the corresponding image of the workpiece, as defined by a
corresponding plurality of points, is of deposit” (hereinafter the “disputed
limitation”), as recited in claim 1 ?
ANALYSIS
The Examiner relies on Taycher, when combined with Schanz, to
teach the disputed limitation. Final Act. 10—13 (citing Taycher col. 1,11. 21—
35, col. 3,1. 60-col. 4,1. 25, col. 4,11. 8—48, col. 4,1.65—col. 5,1. 4, col. 5,
11. 30-40, col. 6,11. 8-29, col. 7,1. 60-col. 8,1.17, col. 9,11. 1-23, col. 9,
1. 60—col. 10,1. 9, Fig. 1 (item 22). The Examiner concludes “instant claim[]
1 . . . recite[s] the transitional phrase ‘comprising’ which is inclusive or
open-ended and does not exclude additional, unrecited elements or method
steps, see MPEP § 2111.03.” Ans. 32. The Examiner further explains as
follows:
. . . Taycher et al. only evaluate points in the boundary pattern
(the second image) that correspond to boundary points that have
been identified in the runtime image (the first image).
. . . Taycher et al. disclose “referencing points in a second image
only where the corresponding points in a first image are
determined to have a certain condition”.
4 Appellant’s arguments raise additional issues. Because the identified issue
is dispositive of the Appeal, we do not reach the additional issues.
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Appeal 2016-002774
Application 10/561,495
Ans. 34.
Appellant contends as follows:
[W]ith regard to Taycher, the Examiner misinterprets the
disclosed process. In particular, the Examiner maintains that the
reference discloses referencing points in a second image (of the
workpiece) only where corresponding points in a first image (of
the printing screen) are determined to have a first condition (to
be of aperture). But this is incorrect. In Taycher, every point in
the second image (of the workpiece) is referenced, regardless of
the condition of the corresponding points in the first image (of
the printing screen).
. . . [I]n Taycher, a pattern or template is first acquired to
provide a “boundary pattern” in step 30. Taycher, 4:30-57. This
“boundary pattern” would be the “first image” discussed above.
Subsequently, a “runtime” image is acquired (step 34) and a
“boundary image” is provided from this “runtime” image (steps
36 and 38). Taycher, 4:65—5:6 and 5:12—13. This “boundary
image” is the “second image” discussed above. The “boundary
pattern” is then registered with the “boundary image” (step 40)
and a process loop is employed (step 42) in order to identify
boundary points from the boundary image that are “matches” and
“extras.” A boundary point from the boundary image is selected
for comparison with the boundary pattern. If there is a boundary
point in the pattern that corresponds with the boundary point
from the image, then the boundary point is a match. If there is
no corresponding boundary point in the boundary pattern, then
the boundary point is an “extra.”
The key here is that every point in the boundary image
(i.e., the second image (of the workpiece)) is assessed for
determination of whether it is a “match” or an “extra,” regardless
of the condition of the corresponding points in the boundary
pattern (i.e., the first image (of the printing screen)). This is
entirely different from the inspection system and method of
claims 1 and 24.
Reply Br. 4—5. We agree with Appellant.
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Application 10/561,495
The Examiner is correct that an open-ended claim employing the
transitional term “comprising” is presumed not to preclude additional
elements or steps. Ans. 32; accord Gaukroger, 2013 WL 3873059 at *4,
citing Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
(“‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” (citation omitted)); Gillette
Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005) (“The
word ‘comprising’ transitioning from the preamble to the body signals that
the entire claim is presumptively open-ended.” (citations omitted)). Here,
however, the claim expressly recites that the comparison of the points of the
screen image and workpiece image is “only” (claim 1) performed for points
of the screen image that are “of aperture” (id.). It is well settled that “[a]ll
words in a claim must be considered in judging the patentability of that
claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970). Therefore, unlike the claim at issue in Gaukroger, claim 1 here, by
its language, precludes making the comparison when the points of the screen
image are determined not to be “of aperture” (claim 1).
The disputed limitation recites comparing the workpiece image points
to the screen image points only when the screen image points meet a certain
condition (i.e., are “of aperture” (claim 1)) whereas Taycher teaches
comparing the workpiece image points to the screen image points only
when the workpiece image points meet a certain condition (i.e., are boundary
points). See Taycher Fig. 2A (item 44). The Examiner makes no finding
explaining why one of ordinary skill in the art would have found it obvious
to make point-to-point comparisons of corresponding points in the screen
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Appeal 2016-002774
Application 10/561,495
image and workpiece image only when the points in the screen image meet a
certain condition based on Taycher’s teaching of doing so when points in the
workpiece image meet a certain condition. For emphasis, we also note that
the Examiner makes no findings explaining why one of ordinary skill in the
art would have found it obvious to make point-to-point comparisons of
corresponding points in the screen image and workpiece image only when
the points in one of the compared images are “of aperture” (claim 1) based
on Taycher’s teaching of doing so when points in one of the compared
images are boundary points.
Appellant has persuaded us of error in the rejection of claim 1.
Accordingly, we do not sustain the rejections of (1) claim 1; (2) independent
claim 24, which includes a limitation substantially similar to the disputed
limitation (compare App. Br. 25 (Claims App’x), with id. at 22) and was
rejected on substantially the same bases as claim 1 (see Final Act. 9—13);
and (3) claims 2—7, 9-23, 25—30, and 32-45, which variously depend from
claims 1 and 24.
DECISION
The decision of the Examiner to reject claims 1—7, 9—30, and 32-45 is
reversed.
REVERSED
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