Ex Parte LAM

Patent Trial and Appeal Board

May 16, 2016

12982858 (P.T.A.B. May. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/982,858 12/30/2010
31366 7590
HORIZON IP PTE LTD
7500A Beach Road
#04-306/308 The Plaza
SINGAPORE 199591,
SINGAPORE
05/18/2016
FIRST NAMED INVENTOR
Wei Chak Joseph LAM
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BCON P 2002 NAT 27 US 9182
4
EXAMINER
QUAST, ELIZABETH A
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
05/18/2016 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):
dexter.chin@horizonip.com.sg
oa.notification@horizonip.com. sg
info@horizonip.com.sg
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEI CHAK JOSEPH LAM
Appeal2014-004604
Application 12/982,858
Technology Center 3600
Before JAMES P. CAL VE, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wei Chak Joseph Lam ("Appellant") 1 appeals under 35 U.S.C. § 134
from the Examiner's final decision rejecting claims 1-20 in this application.
The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Appellant as the real party in interest. Br. 4.
Appeal2014-004604
Application 12/982,858
CLAIMED SUBJECT MATTER
Claims 1, 7, 11, and 16 are independent. Claim 1 illustrates the
subject matter on appeal:
1. A production layout for producing a product comprising:
an enclosed structure containing abutting production area
and non-production areas, wherein
the production area includes
a hub having a first hub portion on an upper level of
the enclosed structure abutting the non-production area,
wherein the first hub portion is physically separated from
a controlled environment of the production area and
provides a direct line of sight to monitor manufacturing
processes in the production area, the hub servmg as a
control area for processing, and
a manufacturing area surrounding a second hub
portion of the hub on a lower level of the enclosed
structure, the manufacturing area enclosed in the
controlled environment, the manufacturing area having a
first inflow manufacturing end and a second outflow
manufacturing end, the manufacturing area performs
processing to form the product, and
the non-production area includes a manufacturing support
area surrounding the manufacturing area to provide access to
the manufacturing area to facilitate manufacturing without
compromising the controlled environment of the manufacturing
area.
Br. 20 (Claims App.).
REJECTIONS ON APPEAL
Claims 1-20 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting, over claims 22-34 in
Application No. 10/248,729.
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Application 12/982,858
Claims 1-20 also stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kudo (US 2002/0193972 Al, pub. Dec. 19, 2002),
Benjaafar, et al., Design of Next Generation Factory Layouts (Regents of the
University of Minnesota© 2001), found at http://www.me.umn.edu/labs/
ngfl/description.htm (hereafter "Next Generation"), and Feld, Lean
Manufacturing: Tools, Techniques, and How to Use Them (St. Lucie Press
© 2001), p. 74 (hereafter "Lean Manufacturing").
ANALYSIS
A. Provisional Double Patenting Rejection
The provisional double patenting rejection of claims 1-20 is based on
Application No. 10/248,729, which was pending when the Final Office
Action was mailed on March 16, 2012, but which has since issued as Patent
No. 8,621,786 B2 on January 7, 2014. Appellant fails to address the double
patenting rejection in the Appeal Brief. See, e.g., Br. 10. We, therefore,
summarily sustain the double patenting rejection of claims 1-20. See MPEP
§ 1215.03 ("An appellant may, of course, choose not to present arguments or
rely upon particular evidence as to certain claim rejections; however, such
arguments and evidence are waived for purposes of the appeal and the Board
may summarily sustain any grounds of rejections not argued.").
B. Obviousness Rejection
Each of independent claims 1, 7, 11, and 16, from which the
remaining claims under appeal depend, recites a "hub" for monitoring
manufacturing processes. See Br. (Claims App.). Appellant argues the
Examiner errs in finding both Next Generation and Lean Manufacturing
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Application 12/982,858
disclose the claimed hub. Id. at 13-15. For the reasons that follow, this
argument is persuasive.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
[U]nder the broadest reasonable interpretation, the Board's
construction "cannot be divorced from the specification and the
record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.
Cir. 2011 ), and "must be consistent with the one that those
skilled in the art would reach," In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is "unreasonably
broad" and which does not "reasonably reflect the plain
language and disclosure" will not pass muster.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
In this case, all four independent claims 1, 7, 11, and 16 recite the hub
"provides a direct line of sight to monitor manufacturing processes" or is
"for monitoring manufacturing," and claims 1 and 11 additionally recite "the
hub serve[s] as a control area for processing." Br. (Claims App.). The
Specification states "the hub serves as a control area or center, enabling the
manufacturing process to be monitored, identified, and verified easily and
efficiently therefrom." Spec. i-f 33. Thus, we understand the claim term
"hub" to refer to some such area.
In the rejection, the Examiner acknowledges these functional
limitations concerning the hub, but does not clearly state how the limitations
are found to be disclosed in Next Generation or in Lean Manufacturing.
Final Act. 4--5, 14--15; Ans. 3--4. The Examiner merely states that an area
between modules or cells "wherein the operators work" teaches the claimed
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Application 12/982,858
"hub." Final Act. 5, 10; Ans. 4. However, we determine neither Next
Generation nor Lean Manufacturing indicates that any workers are in fact
present, or any monitoring or controlling activity takes place, in the areas
identified by the Examiner as hubs. The figures of Next Generation and
Lean Manufacturing upon which the Examiner relies appear to be schematic
rather than physical representations of the production layout. Thus, we are
unable to conclude anything about the empty spaces depicted but not
discussed in those figures. Therefore, the Examiner's findings that each of
these references discloses the claimed "hub" are not supported by a
preponderance of the evidence. See Br. 13-14.
The Examiner further relies on official notice, without supporting
evidence, for much of the subject matter recited in the independent claims,
including the "hub." See Final Act. 4--8 (claims 1 and 7), 9-13 (claims 11
and 16). As Appellant points out (Br. 16-18), official notice is intended to
be used judiciously and only in narrow circumstances, rather than on core
factual findings of a patentability determination. K/S HIMPP v. Hear-Wear
Techs., LLC, 751F.3d1362, 1366 (Fed. Cir. 2014). It is reserved for facts
of a notorious character capable of instant and unquestionable demonstration
as being well-known. MPEP § 2144.03(A). Moreover, certain procedures
associated with the taking of official notice must be followed to provide an
applicant a fair opportunity to traverse and respond. MPEP § 2144.03(C).
Appellant has challenged the official notice, but the Examiner has offered no
supporting evidence, and has not followed the appropriate procedures for
taking official notice. See id.
For the foregoing reasons, we do not sustain the rejection of claims 1-
20 as unpatentable over Kudo, Next Generation, and Lean Manufacturing.
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DECISION
The provisional double patenting rejection of claims 1-20 is affirmed.
The rejection of claims 1-20 as unpatentable over Kudo, Next
Generation, and Lean Manufacturing is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended, under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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