Ex Parte Kim et al

Board of Patent Appeals and Interferences

Jun 25, 2012

11465769 (B.P.A.I. Jun. 25, 2012)

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

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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).
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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
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Application 11/465,769

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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
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Application 11/465,769

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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
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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.
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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