Ex Parte Hauser

Board of Patent Appeals and Interferences

Sep 30, 2002

08873250 (B.P.A.I. Sep. 30, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES HAUSER
____________
Appeal No. 2001-0158
Application No. 08/873,250
____________
ON BRIEF
____________
Before STAAB, MCQUADE, and CRAWFORD, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 15 to 26,
29, 30 and 32 which are all of the claims pending in this application. Claims 1 to 14, 27,
28, 31, 33 and 34 have been canceled.
The appellant's invention relates to a slicing center adapted to produce slices
from ingots to be sliced (specification, p. 1). A copy of the claims under appeal is set
forth in the appendix to the appellant's brief.
Appeal No. 2001-0158
Application No. 08/873,250
Page 2
The prior art
The prior art reference of record relied upon by the examiner in rejecting the
appealed claims is:
Iwakiri et al. (Iwakiri) 5,537,325 Jul. 16, 1996

The rejection
Claims 15 to 26, 29, 30 and 32 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Iwakiri.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the final rejection
(Paper No. 15, mailed September 9, 1999) and answer (Paper No. 18, mailed February
29, 2000) for the examiner's complete reasoning in support of the rejections, and to the
brief (Paper No. 17, filed December 30, 1999) and reply brief (Paper No. 19, filed April
24, 2000) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art reference, and to the
Appeal No. 2001-0158
Application No. 08/873,250
Page 3
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
The appellant’s invention is a slicing center which includes a positioning subgroup
unit, a slicing subgroup unit and a processing subgroup unit. Each of the subgroups
includes a “first means” for carrying out the function of the subgroup, and a “second
means” for interconnecting the first means in a physically operative manner so as to
form a subgroup unit. The slicing center also includes an additional “interconnecting
means for interconnecting” the positioning, slicing and processing subgroup units in a
physically operative hierarchically organized assembly. This additional interconnecting
means includes means for storing, means for manipulating, and means for transporting
the slices.
The examiner has rejected the claims under 35 U.S.C. § 103. We initially note
that in rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed
subject matter is prima facie obvious must be supported by evidence, as shown by some
Appeal No. 2001-0158
Application No. 08/873,250
Page 4
objective teaching in the prior art or by knowledge generally available to one of ordinary
skill in the art that would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103 must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or hindsight reconstruction to
supply deficiencies in the factual basis for the rejection. See In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Our
reviewing court has repeatedly cautioned against employing hindsight by using the
appellant's disclosure as a blueprint to reconstruct the claimed invention from the
isolated teachings of the prior art. See, e.g., Grain Processing Corp. v. American
Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
With this as background, we analyze the prior art applied by the examiner in the
rejection of the claims on appeal. In support of the rejection, the examiner states:
Iwakiri discloses the claimed invention except for the multiple
positioning units, slicing units, processing units and final
treatment units being integrated together and controlled by a
computer . . . . It would have been obvious to one having
ordinary skill in the art at the time the invention was made to
provide multiple units for increasing productivity, since it has
been held that the mere duplication of the essential working
parts of a system device involves only routine skill in the art
[final rejection at page 2].
Appeal No. 2001-0158
Application No. 08/873,250
Page 5
Iwakiri discloses an apparatus for manufacturing semiconductor wafers which
includes means for identifying each wafer and storing the identification information. The
history of each wafer, such as how the wafer was transferred and how the wafer was
processed, is stored. Iwakiri discloses that the various steps in the wafer processing
operation are controlled by a computer and that the various computers are connected to
a host computer through a computer network. A correspondence between the quality
information reported on the wafer basis and associated wafers is made and put into the
database of the host computer.
Iwakiri does not disclose or suggest the claimed “second means” for
interconnecting a first means in a physically operative manner so as to form the
respective subgroup units. In addition, Iwakiri does not disclose or suggest the claimed
additional “interconnecting means for interconnecting” the various subgroups, which
additional means includes means for storing the slices, means for manipulating the
slices and means for transporting the slices. This additional “interconnecting means for
interconnecting” provides the means for integrating the various subgroup operations of
the slicing center.
The examiner has not shown that these two claimed means, namely, the “second
means” and the additional “interconnecting means for interconnecting” are disclosed or
suggested in the prior art. As such, the examiner has failed to establish a prima facie
case of obviousness.
Appeal No. 2001-0158
Application No. 08/873,250
Page 6
In view of the foregoing, we will not sustain the examiner’s rejection. The
decision of the examiner is reversed.
Appeal No. 2001-0158
Application No. 08/873,250
Page 7
CONCLUSION
To summarize, the decision of the examiner to reject claims 15 to 26, 29, 30 and
32 under 35 U.S.C. § 103 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 2001-0158
Application No. 08/873,250
Page 8
Young & Thompson
745 South 23rd Street
Second Floor
Arlington, VA 22202
MEC/tdl
TINA D. LEE
APPEAL NO. 2001-0158 - JUDGE
CRAWFORD
APPLICATION NO. 08/873,250
APJ CRAWFORD
APJ STAAB
APJ MCQUADE
DECISION: REVERSED
PREPARED: Jun 19, 2003
OB/HD
PALM
ACTS 2

DISK (FOIA)
REPORT