Ex Parte Lu et al

Patent Trial and Appeal Board

May 10, 2017

13833114 (P.T.A.B. May. 10, 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.
13/833,114 03/15/2013 Roberto Francisco-Yi Lu TY-00224 (958-6023) 2042
75750 7590 05/10/2017
The Whitaker LLC
4550 Linden Hill Road
Suite 140
Wilmington, DE 19808
EXAMINER
GAMINO, CARLOS J
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
05/10/2017 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERTO FRANCISCO-YI LU, QINGLONG ZENG,
CHARLES DAVID FRY, and BICHENG CHEN
____________

Appeal 2016-005896
Application 13/833,114
Technology Center 1700
____________

Before TERRY J. OWENS, JAMES C. HOUSEL, 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.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

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BACKGROUND
The subject matter on appeal relates to a soldering machine that
minimizes or eliminates human operator intervention, and uses data or
images collected via a vision guidance system to change parameters and
control of the soldering machine’s various components. Spec. ¶¶ 2, 4, 15,
and 16.
Sole independent Claim 1 is representative, and is reproduced from
the Claims Appendix of the Appeal Brief:
1. A soldering machine comprising:
a frame;
a fixture held by the frame, the fixture being configured to
support a substrate and a cable with individual wires configured
to be soldered to conductive traces of the substrate;
a guidance system supported by the frame, the guidance
system having a camera viewing the fixture, the camera being
movable relative to the fixture;
a positioning system supported by the frame, the
positioning system having a camera positioner and a soldering
mechanism positioner, the camera being coupled to and movable
by the camera positioner relative to the fixture;
a soldering mechanism coupled to the soldering
mechanism positioner and moved by the soldering mechanism
positioner relative to the fixture, the soldering mechanism being
configured to solder the wires to the conductive traces of the
substrate; and
a controller communicating with the positioning system
and the guidance system, the controller operating the positioning
system to control a position of the camera and a position of the
soldering mechanism relative to the fixture based on an image
obtained by the camera.

Appeal Br. 25.
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REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Todd US 4,844,324 July 4, 1989
Kobayashi, et al. US 5,542,600 Aug. 6, 1996
(hereinafter “Kobayashi”)
Higashi, et al. US 6,354,480 B2 Mar. 12, 2002
(hereinafter “Higashi”)
Van Den Broek, et al. US 7,159,754 B2 Jan. 9, 2007
(hereinafter “Van Den Broek”)
Senba, et al. US 2003/0085256 A1 May 8, 2003
(hereinafter “Senba”)

REJECTIONS ON APPEAL
I. Claims 1–12 are rejected under 35 U.S.C. § 112, ¶ 1 as lacking
enablement (Final Act. 2–4);
II. Claim 8 is rejected under 35 U.S.C. § 112, ¶ 2 as being
indefinite (Final Act. 4);
III. Claims 1–5 and 7–12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kobayashi in view of Van Den Broek,
Senba, and Higashi (Final Act. 5–12); and
IV. Claim 6 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi in view of Van Den Broek, Senba,
Higashi, and Todd (Final Act. 12–13).

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DISCUSSION
Rejection I
We reverse this rejection.
The first paragraph of 35 U.S.C. § 112 requires, inter alia, that
the specification of a patent enable any person skilled in the art
to which it pertains to make and use the claimed invention.
Although the statute does not say so, enablement requires that
the specification teach those in the art to make and use the
invention without ‘undue experimentation.’ In re Wands, 858
F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That
some experimentation may be required is not fatal; the issue is
whether the amount of experimentation required is ‘undue.’
In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991).
In this case, the Examiner concludes that the claims are not enabled
because the disclosure does not fully describe a motion planning algorithm
which, according to the Examiner, is required for developing a motion
profile which is used by the controller to move the various components of
the claimed soldering machine. Final Act. 2–4. We determine, however,
that the Examiner has not established that the state of the art and the level of
ordinary skill in the art, at the time of the invention, were such that one of
ordinary skill would have been required to undertake undue experimentation
to develop such a motion planning algorithm.
Specifically, we observe that Appellants’ disclosure repeatedly sets
forth how the controller obtains the necessary data to develop a motion
profile, i.e., via the camera 102 or sensors, and how such data can be used to
achieve the desired objective of soldering wires to a substrate via an
automated process. See, e.g., Spec. ¶¶ 15, 16, 18, 19, 25–29, 34, and 38–40.
This amount of disclosure runs contrary to the Examiner’s finding that
Appellants did not provide “a sufficient amount of direction/guidance” for
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the skilled artisan to create an algorithm (Ans. 3). We also emphasize that
even the prior art relied upon by the Examiner in Rejections III and IV
appears to disclose various diagrams and descriptions that would have
provided the ordinary skilled artisan some guidance for creating an
algorithm for automating a soldering machine. See, e.g., Kobayashi, Figs. 9,
28, 29, 13:8–52; and 24:31–26:17; Senba ¶ 46.
On this record, the Examiner has not established that, in light of such
disclosure, the level of one of ordinary skill was so low as to have required
an undue amount of experimentation to create a motion planning algorithm.
Thus, the Examiner has not carried the burden of establishing a prima facie
case of nonenablement of the invention set forth in claim 1, and we therefore
do not sustain Rejection I.
Rejection II
Because Appellants fail to address the merits of Rejection II, we
summarily sustain it.
When the appellant fails to contest a ground of rejection to the
Board, . . . the Board may treat any argument with respect to that
ground of rejection as waived. In the event of such a waiver, the
PTO may affirm the rejection of the group of claims that the
examiner rejected on that ground without considering the merits
of those rejections.
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008).
Rejections III and IV
Because Appellants argue these rejections together (Appeal Br. 20–
23), we likewise address them together. We sustain these rejections.
Appellants argue that Kobayashi teaches away from the Examiner’s
proposed modification of adding vision guidance using a camera because
such modification would “change a principal of operation of Kobayashi and
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thus frustrate a fundamental teaching of Kobayashi, namely the use of the
teach-data table 27.” Appeal Br. 23.
This argument is not persuasive of reversible error for several reasons.
Appellants fail to identify any prior art disclosure that discourages the
addition of a vision guidance system using one or more cameras to
Kobayashi’s soldering device.
Moreover, Appellants fail to elaborate why the described combination
would have so changed Kobayashi’s principal of operation so as to render
the modified device incapable of achieving Kobayashi’s overall purpose of
performing and correcting automatic solders. See, Kobayashi, 1:11–23.
Such explanation is particularly necessary here because Kobayashi, like
Appellants, contemplates the use of a moveable image sensing device (i.e., a
camera) connected to a controller. Id. at 14:65–15:13, 16:4–10. We further
emphasize that Kobayashi’s use of the teach-data table 27 is not its purpose,
but is merely one step in Kobayashi’s process to achieve the overall
objective of performing acceptable automatic solders. Id. at 1:11–23.
Furthermore, we observe that Appellants fail to challenge the
Examiner’s well-reasoned determination (Ans. 7) that the ordinary skilled
artisan would have had a reason to add a vision guidance system to
Kobayashi’s soldering machine, i.e., no Reply Brief has been filed.
Hence, we sustain Rejections III and IV.

SUMMARY
The Examiner’s final decision to reject claims 1–12 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)(1)(iv).

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AFFIRMED