Ex Parte Kim et alDownload PDFBoard of Patent Appeals and InterferencesJun 25, 201211465769 (B.P.A.I. Jun. 25, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/465,769 08/18/2006 Hyunjoo Kim 27-286 1830 22898 7590 06/26/2012 ISHIMARU & ASSOCIATES LLP 2055 GATEWAY PLACE SUITE 700 SAN JOSE, CA 95110 EXAMINER KRAMER, DEAN J ART UNIT PAPER NUMBER 3652 MAIL DATE DELIVERY MODE 06/26/2012 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 HYUNJOO KIM, HUNKI LEE, CHANGYONG LEE, JONG WOOK JU and SANG-HO LEE ________________ Appeal 2010-004635 Application 11/465,769 Technology Center 3600 ________________ Before EDWARD A. BROWN, MICHAEL L. HOELTER and, BENJAMIN D. M. WOOD, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004635 Application 11/465,769 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-20 (App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The Claimed Subject Matter The claimed subject matter is directed to a method and apparatus for supplying a negative pressure through a conduit, a recess port, a channel and a force distribution member inserted into the recess port, the conduit being configured such that its major axis intersects the recess port and the channel. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A method of operation of a workpiece displacement system comprising: providing a head including a conduit, a recess port, and a channel, the conduit configured such that its major axis intersects the recess port and the channel; inserting a force distribution member into the recess port; and supplying a negative pressure state through the head and the force distribution member. References Relied on by the Examiner Su US 6,135,522 Oct. 24, 2000 Quick US 6,364,386 B1 Apr. 2, 2002 The Rejections on Appeal 1. Claims 1-8, 10-12, 14-16 and 18-20 are rejected as being anticipated under 35 U.S.C. § 102(b) by Su (Ans. 3). 2. Claims 1-9, 11-17 and 20 are rejected under 35 U.S.C. § 102(b) as being anticipated by Quick (Ans. 3). Appeal 2010-004635 Application 11/465,769 3 ANALYSIS The rejection of claims 1-8, 10-12, 14-16 and 18-20 as being anticipated by Su Appellants argue independent claims 1, 6 and 11 together (App. Br. 10). We select claim 1 for review with claims 6 and 11 standing or falling with claim 1 (see 37 C.F.R. § 41.37(c)(1)(vii) (2011)). The Examiner relies on Figures 9 and 10 of Su for the rejection of claim 1 and particularly Su’s conduit 701, channel 711 and recess port 712 (Ans. 3). Appellants contend that Su fails to disclose the limitation of the conduit being “configured such that its major axis intersects the recess port and the channel” because Su’s “axially aligned channels do not intersect” (App. Br. 11). There is no express definition of “intersect” in Appellants’ Specification but Appellants contend that a common definition of “intersect” is “to pierce or divide by passing through or across, e.g., one line intersecting another” and consequently, because “the axially aligned channels (elements 701 and 711) of Su do not cross,” claim 1 is allowable (App. Br. 11). We agree with the Examiner that “the two dimensional imaginary axis of the conduit (701) clearly passes through the center of the three dimensional space (see Fig. 9) that defines both the channel (711) and port (712) thereby intersecting these spaces” (Ans. 4). Even employing Appellants’ definition of “intersect,” we agree with the Examiner that Su’s “conduit axis is deemed to pierce the channel and port by passing through the centers thereof” (Ans. 4). In Appellants’ Reply Brief, additional arguments are presented which we will address. The first is directed to Appellants’ embodiments which “utilize an improved structural combination that provides a cooperative Appeal 2010-004635 Application 11/465,769 4 interconnection between the conduit, the channels and the openings for minimizing air leakage” (Reply Br. 3). While the term “cooperative interconnection” is defined in Appellants’ Specification, it is not recited in claim 1 or any other independent claim (Spec 6:11-21). The second argument is that elements “701 and 711 are the exact same structure merely formed in different parts of Su’s sucker” (Reply Br. 4). We disagree as Su discloses that they are separate structures, one inserted into the other (Su 1:66-67 and Fig. 9). The third argument is that the Examiner’s “interpretation of the claim term ‘channel’ is overly broad” and the fourth is that Su’s elements are not arranged or combined in the same way as recited in the claims (Reply Br. 5). Appellants refer to a passage in the Specification describing the channels and seek to import non-recited structure from the embodiment into the claims (Reply Br. 5). We decline to do so (see Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment"). We also note that Su’s elements are arranged or combined so that air is withdrawn from the recess port through the channel and then through the conduit, the same as Appellants’ device. Accordingly, we sustain the Examiner’s rejection of claims 1, 6 and 11. Regarding dependent claims 2-5, 7, 8, 10, 12, 14-16 and 18-20, Appellants contend that “the Office has summarily rejected these claims without providing citations” or that they “claim additional unanticipated combinations” (App. Br. 11-12). Our reviewing court has recently stated that “all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference Appeal 2010-004635 Application 11/465,769 5 or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132” (In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011)). Appellants do not explain why Figures 9 and 10 of Su, identified by the Examiner, do not teach these claim limitations or why the Examiner’s findings are incorrect. Further, we cannot discern separate persuasive arguments for the patentability of any one of these dependent claims. Accordingly, we sustain the rejection of dependent claims 2-5, 7, 8, 10, 12, 14-16 and 18-20. The rejection of claims 1-9, 11-17 and 20 as being anticipated by Quick Addressing the independent claims, Appellants object to the Examiner’s finding that Quick’s elements 106, 109 and 113 together form the claimed force distribution member since Appellants assert that this claim term “is singular and implies a unitary element” (Ans. 3; App. Br. 14). The Examiner acknowledges Quick’s three-part force distribution member but states that this member “is not limited to an integrally formed element of a singular material” and that these three parts “can be considered as ‘a force distribution member’ as broadly [] recited in the claims of the instant application” (Ans. 5). We agree with the Examiner and are not persuaded by Appellants’ contention. Furthermore, Quick discloses that these three elements are “adhesively attached” to each other and hence function as a unitary structure. (Quick 3:19-27). Appellants further contend that these three elements (i.e., 106, 109 and 113) “define the outer boundary of vacuum chamber 105” and thus, it is axiomatic that these three elements “are not inserted into or within a recess port (Quick’s vacuum chamber 105)” (App. Br. 13). We disagree with Appeal 2010-004635 Application 11/465,769 6 Appellants’ contention because Quick discusses how these three adhesively attached elements are inserted into an opening in support bracket 103 (Quick 3:19-27, see also Figs. 1 and 2). This bracket opening is that which forms Quick’s vacuum chamber 105 and consequently, we do not find fault with the Examiner’s finding that Quick’s “force distribution assembly (106, 109, 113) [is] disposed within the recess port” (i.e. within Quick’s vacuum chamber 105) (Ans. 3). Appellants also contend that Quick is not “enabling for configuring the conduit such that its major axis intersects the recess port and the channel because Quick’s disclosure would not place Appellants’ claimed combination within the possession of the public” (App. Br. 15). We disagree and instead deem the Examiner’s reference to Quick’s Figures 1 and 2 to be evidence of this claim limitation in a manner similar to that discussed supra with respect to Su (Ans. 5). With respect to dependent claims 3 and 14, Appellants contend that Quick’s Figures 1 and 2 do not disclose “configuring the force distribution member to prevent wire touch failure or damage” as claimed because Quick’s edges 133 come into contact with Quick’s leads 163 (App. Br. 16). Quick discloses wire touching, but there is no indication that Quick’s touching causes “failure or damage” nor do Appellants identify where Quick’s wire touching causes “failure or damage” which needs to be prevented (Quick 4:16-25). Accordingly, Appellants’ contention is not persuasive. Regarding dependent claims 2, 4, 5, 7-9, 12, 13, 15-17 and 20, Appellants reiterate arguments similar to those presented above with respect to Su (App. Br 16-17). We again do not find these arguments persuasive. Appeal 2010-004635 Application 11/465,769 7 In view of the record presented, we sustain the Examiner’s rejection of claims 1-9, 11-17 and 20. DECISION The rejection of claims 1-20 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). AFFIRMED MP Copy with citationCopy as parenthetical citation