Ex Parte GaukrogerDownload PDFPatent Trial and Appeal BoardMar 16, 201710561495 (P.T.A.B. Mar. 16, 2017) Copy Citation 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 Br. 2; Ex parte Gaukroger, Appeal 2010-010095, 2013 WL 3873059 (PTAB July 23, 2013)) (non-precedential).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 2 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. 3 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. 4 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. 5 Appeal 2016-002774 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 6 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 7 Copy with citationCopy as parenthetical citation