Ex Parte Gross et al

Patent Trial and Appeal Board

Mar 16, 2017

13399131 (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.
13/399,131 02/17/2012 Charles M. Gross 003A.0109.U1(US) 9587
23628 7590 03/20/2017
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
SAAD, ERIN BARRY
ART UNIT PAPER NUMBER
1735
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):
Patents_eOfficeAction@WolfGreenfield.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES M. GROSS and JOSHUA A. GARMAN
Appeal 2016-003333
Application 13/399,1311
Technology Center 1700
Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—12 and 17.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 FCI Americas Technology, Inc. is stated to be the real party in interest (App.
Br. 1).
Appeal 2016-003333
Application 13/399,131
SUBJECT MATTER
Claim 1 is illustrative of the appealed subject matter (emphasis
added):
1. An apparatus, comprising:
a solder tip defined by a bottom end, where the bottom end
includes a concave channel between an open front side of the
bottom end and an open back side of the bottom end, a surface
defining the concave channel comprising a heat transfer surface,
where the concave channel comprises a substantially uniform
cross-sectional shape and size along a length of the concave
channel from the open front side to the open back side, where
defining edges of the concave channel at the bottom end are
uninterrupted from the front side to the back side, the heat
transfer surface having a top surface configured to continuously
engage a top side of a wire in the concave channel, and surfaces
defining the bottom end being configured to be positioned distal
from a contact area against which the wire is to be soldered to
allow for solder reflow.
App. Br. 26 (Claims Appendix).
Independent claim 8 is also drawn to an apparatus comprising a solder
tip containing a concave channel between and open to front and rear sides of
the bottom surface of the solder tip, “where defining edges of the concave
channel at the bottom surface are uninterrupted from the front and rear
sides.” Id. at 28.
The Examiner rejects claims 1—6 and 8—12 under 35 U.S.C. § 102(b)
as being anticipated by Interrante et al. (US 5,288,007, issued Feb. 22, 1994;
hereinafter “Interrante”) (Final Act. 2—6; Ans. 2—6). The Examiner also
rejects claim 7 under 35 U.S.C. § 103(a) as being unpatentable over
Interrante in view of Hoggatt et al. (US 5,142,117, issued Aug. 25, 1992;
hereinafter “Hoggatt”) (Final Act. 7; Ans. 7). The Examiner also rejects
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Application 13/399,131
claim 17 under 35 U.S.C. § 103(a) as being unpatentable over Interrante in
view of Ando (JP 2009-166067A, published July 30, 2009) (Final Act. 7—8;
Ans. 7—8).
PRINCIPLES OF LAW
[U]nless a reference discloses within the four comers of the
document not only ah of the limitations claimed but also ah of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
“[D]tiring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. ofSci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable constmction in
light of the specification as it would be interpreted by one of ordinary skill in
the art) (citations omitted).
ANALYSIS
In support of each rejection before us (Final Act. 2—8; Ans. 2—8), the
Examiner finds that Interrante discloses the limitations of claim 1, including
“a concave 52 channel between an open front side of the bottom end and an
open back side of the bottom end . . . where defining edges of the concave
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Application 13/399,131
channel at the bottom end are uninterrupted from the front side to the back
side.” Final Act. 2; Ans. 2.
Appellants contend that Interrante does not teach the limitation that
requires the “defining edges of the concave channel at the bottom end are
uninterrupted from the front side to the back side.” Appeal Br. 8—10.
Appellants urge that “[t]he defining edges [of Interrante] are those edges
where the flat bottom surface of the bond tip 50 meets the respective
channels” and
[i]f one of those defining edges is followed from . . . the front
surface of the bond tip 50, it cannot be followed completely to
the opposing back surface of the bond tip 50 in an uninterrupted
manner because the defining edge ends and either the curve of
the perpendicular channel or the defining edge of the
perpendicular channel must then be followed.
Id. at 9—10.
Appellants’ argument is persuasive of reversible error. In the
rejection, the Examiner finds that Interrante’s concave channel 52 has
“defining edges [that] are uninterrupted from the front side to the back side”
as claimed, but does not explain with sufficient specificity how concave
channel 52 meets this limitation. Final Act. 2, Ans. 2. Rather, the Examiner
simply points to Figs. 2A and 2B, as well as col. 10, of Interrante to support
this finding.
In the Answer, the Examiner fails to explain how Interrante’s concave
channel 52 meets the disputed limitation, but instead changes the focus of
the rejection to find that Interrante’s “work groove 54 is taken to be two
separate grooves / concave channels separated by the gap 52” and then finds
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Application 13/399,131
that “each channel [54] (separated by gap 52) is uninterrupted” thus meeting
the claimed limitation. Ans. 9.
The Examiner’s response in the Answer is problematic for several
reasons. First, the Examiner does not fully address Appellants’ argument
regarding how Interrante’s concave channel 52 fails to meet the disputed
claim limitation (Appeal Br. 9—10), particularly when the Examiner
specifically relied on concave channel 52—not channel 54—in the final
rejection. Final Act. 2.
Further, we are not persuaded that the Examiner’s finding that
Interrante’s “work groove 54 is taken to be two separate grooves/concave
channels separated by the gap 52” (Ans. 9) is well-founded. Specifically,
reading Interrante’s work groove 54 as two separate grooves or concave
channels is not consistent with Interrante’s repeated references in columns 9
and 10 to “work groove 54” in the singular. See, Interrante, 9:61, 10:1, 7,
and 46.
Moreover, even if we were convinced that Interrante’s work groove
54 could reasonably be construed as two separate concave channels, we are
not persuaded that such a reading of Interrante necessitates an anticipatory
disclosure of independent claim 1 or 8. Specifically, we note that
independent claim 1 requires “a concave channel between an open front side
of the bottom end and an open back side of the bottom end (emphasis
added).” Claim 8 contains a similar limitation requiring “a concave channel
between and open to front and rear sides of the bottom surface (emphasis
added).” The Examiner contends that concave channels 54 of Interrante
meet this limitation because “the tip has two front sides (outer portion of the
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Application 13/399,131
tip) and two back sides (inner portion that opens to a larger channel[52]).”
Final Act. 3. See also, Final Act. 8; Ans. 9—10.
We agree with Appellants, however, that such an interpretation of
Interrante requires an unreasonably broad interpretation of the terms “open
back side” and “open . . . rear side[]” as recited in independent claims 1 and
8, respectively. Appeal Br. 12—13, 16—17; Reply Br. 4—7. While we
recognize and agree with the Examiner that “[t]he open front side and the
open back side are not defined” (Ans. 9), we disagree that “[a]ny opening
formed in the channel can be taken to be the front side and an opening
opposite the front opening can be considered the back side.” Id.
Rather, we determine that the Examiner’s construction, which requires
“two channels [54 to] open to an interior portion [52] somewhere away from
the open front and back sides of the bottom end,” as correctly argued by
Appellants (Reply Br. 6), is not reasonable when read in light of the
Specification. Notably, the Specification indicates that “Fig. 3 shows an
enlarged view at the front side 20 of the bottom end 18 of the tip 10. The
bottom end 18 has a bottom surface 22 comprising a concave channel 24.
The channel 24 extends between the front side 20 and the opposite back side
26.” Spec. 116 (emphasis added). Fig. 2 of the Specification further
indicates that there is only one “front side” 20 and one “back side” 26, each
of which is planar and not part of the interior concave channel 24. We see
no other disclosure contained in the Specification, and the Examiner directs
us to no such disclosure, that reasonably supports a reading of the claim to
include multiple front or back/rear sides, or a back/rear side that is part of an
interior channel. Therefore, we agree with Appellants that the Examiner has
taken an unreasonably broad interpretation of the aforementioned claim
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Application 13/399,131
limitation when considered in light of the Specification for the reasons
explained in the Appeal and Reply Briefs, and, in doing so, reversibly erred
in finding that Interrante discloses the claimed subject matter.
Thus, on this record, we are constrained to reverse the Examiner’s
rejection of claims 1—6 and 8—12 under 35 U.S.C. § 102(b).
Remaining claims 7 and 17 each depend from claim 1 and are rejected
under 35 U.S.C. § 103(a) over Interrante and other cited references. Final
Act. 7—8; Ans. 7—8. In these rejections under 35 U.S.C. § 103(a), the
Examiner relies on Interrante “as applied to claim 1”. Final Act. 7; Ans. 7.
Thus, for the reasons outlined above with respect to claim 1, we also reverse
the rejections of dependent claims 7 and 17 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejections of claims 1—12 and 17.
REVERSED
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