Ex parte Mallard

Board of Patent Appeals and Interferences

Jan 28, 2000

08124332 (B.P.A.I. Jan. 28, 2000)

The application was filed on September 21, 1993.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD L. MALLARD
____________
Appeal No. 1997-4043
Application No. 08/124,3321
____________
HEARD: January 13, 2000
____________
Before KRASS, BARRETT, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1-12. We reverse.
Appeal No. 1997-4043
Application No. 08/124,332
Appeal No. 1997-4043 Page 3
Application No. 08/124,332
BACKGROUND
The invention at issue in this appeal comprises a method
of, and a cover plate used in, ultrasonic testing (UT).
Immersion UT is a known technique for detecting internal flaws
in machined parts or materials. A piece to be tested is
immersed in a fluid, and an ultrasonic transducer sends
ultrasonic waves through the fluid and into the part. The
ultrasonic fluid enhances the coupling of ultrasonic waves to
the piece. Voids, inclusions, cracks, or other defects in the
piece reflect the ultrasonic waves passing through the
component. The reflected ultrasonic waves are analyzed to
detect such defects.
Immersion UT cannot be used to test materials that might
react with an immersion fluid, thereby damaging the material.
Specifically, targets used for semiconductor manufacturing
often include a sputtering surface of a porous material such
as tungsten, titanium, iron, terbium, cobalt or copper, which
are likely to be damaged by immersion and thus rendered
worthless.
Appeal No. 1997-4043 Page 4
Application No. 08/124,332
The invention enables immersion UT to be used on pieces
having surfaces that may be damaged by immersion. Initially,
a cover plate is placed face-to-face with the processing
surface of a piece. The perimeter of the processing surface
is then sealed to the cover plate to form an acoustically
reflective cavity therebetween. Because the perimeter of the
cover plate is sealed to the processing surface, the component
can be immersed for testing, without the processing surface
contacting and being damaged by the immersion fluid. During
testing, ultrasonic waves enter the component, are reflected
from the acoustically reflective cavity, and are collected to
generate an ultrasonic image of the component.
Claim 7, which is representative for our purposes,
follows:
7. A cover plate for attachment to a
processing component for protecting a processing
surface thereof during immersion ultrasonic testing,
comprising
a front face,
a back face, and
Appeal No. 1997-4043 Page 5
Application No. 08/124,332
a sealing rim at a perimeter of said cover plate
for engaging said cover plate to said component with
said front face opposite said processing surface,
said cover establishing an acoustically
reflective volume adjacent to said processing
surface between said front face and said processing
surface, said reflective volume reflecting
ultrasonic waves entering said processing component
and impinging on said processing surface from within
said processing component.
The reference relied on in rejecting the claims follows:
C.E. Lautzenheiser et al. (Lautzenheiser), “Ultrasonic
Inspection” pp. 161-163, 173-174, 181 and 387.
Claims 1-12 stand rejected under 35 U.S.C. § 103 as
obvious over Lautzenheiser. Rather than repeat the arguments
of the appellant or examiner in toto, we refer the reader to
the briefs and answers for the respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejection advanced by
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellant and examiner. After considering
Appeal No. 1997-4043 Page 6
Application No. 08/124,332
the totality of the record, we are persuaded that the examiner
erred in rejecting claims 1-12. Accordingly, we reverse.
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103,
the examiner bears the initial burden of presenting
a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Only if that burden is met, does the burden
of coming forward with evidence or argument shift
to the applicant. Id. "A prima facie case of
obviousness is established when the teachings from
the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary
skill in the art." In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976)). If the examiner fails to establish a
prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these in mind, we analyze the appellant’s argument.
The appellant makes the following argument.
The Examiner asserts that a person of ordinary
skill would be motivated to maximize back
reflections. Applicant submits ... that the opposite
is clearly the case. Firstly, a person of ordinary
skill, viewing Figs. 10 and 11 of "Ultrasonic
Appeal No. 1997-4043 Page 7
Application No. 08/124,332
Inspection", would recognize that couplant fluid
which fills the area underneath the inspected
object, had been chosen to minimize the acoustic
reflection at the couplant/object boundary, rather
than to maximize such reflections. Furthermore, a
person of ordinary skill, viewing Fig. 10 and the
accompanying text, would recognize that back
reflections are typically eliminated from the
display due to their large size and potential for
generating confusion and error. Accordingly, a
person of ordinary skill would view back reflections
as something to be minimized in order to improve
imaging, rather than maximized as the Examiner has
asserted.
Of course, absent a motivation to maximize back
reflection, there is no motivation to form a gas
bubble against the back surface of the tested
object, and thus no motivation to form a seal with a
perimeter of the inspected object so as to prevent
the immersion fluid from invading this area, and
thus, nothing leading to the "sealing rim" or
“sealing" step recited in the present claims.
(Reply Br. at 8.)
The examiner’s reply follows.
[T]he issue at hand is ... the object/reflective
material boundary that the ultrasonic waves come
into contact with after already passing through the
object to be tested. Thus, by maximizing the
reflection of the ultrasonic waves after passing
through the test object, the test object can be
"tested" again since the ultrasonic waves must
travel through the object for a second time.
(Supplemental Examiner’s Answer at 4.)
We agree with the appellants.
Appeal No. 1997-4043 Page 8
Application No. 08/124,332
Claims 1-6 each specifies in pertinent part the following
limitations: “sealing a perimeter of said processing surface
to said plate to form an acoustically reflective volume
therebetween ....” Similarly, claims 7-12 each specifies in
pertinent part the following limitations: “a sealing rim at a
perimeter of said cover plate for engaging said cover plate to
said component with said front face opposite said processing
surface ... establishing an acoustically reflective volume
adjacent to said processing surface between said front face
and said processing surface ....” In summary, the limitations
recite sealing the perimeter of a processing surface to a
cover plate to form an acoustically reflective cavity
therebetween.
The examiner fails to show a teaching or suggestion of
these limitations in the prior art. “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995) (citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
Appeal No. 1997-4043 Page 9
Application No. 08/124,332
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)). The
mere fact that prior art may be modified as proposed by an
examiner does not make the modification obvious unless the
prior art suggested the desirability thereof. In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992); In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984).
Here, the examiner admits that Lautzenheiser fails “to
explicitly teach the sealing of a perimeter of said processing
surface in order to form an acoustically reflective volume
therebetween ....” (Examiner’s Answer at 4.) The admission,
albeit correct, is an understatement. Although the reference
shows positioning a “test piece” on two triangular objects,
Fig. 10, the examiner has not identified anything in
Lautzenheiser that would have suggested sealing the test piece
to the objects. Neither has he provided any evidence to
support his allegation that such sealing would have permitted
the test piece to be “‘tested’ again,” (Examiner’s Answer at
4), or that such testing (again) would have been desirable.
In addition, the examiner has not contested the appellant’s
Appeal No. 1997-4043 Page 10
Application No. 08/124,332
To the contrary, the “Examiner agrees with Applicant's2
desire to minimize ultrasonic reflection at a couplant/object
boundary ....” (Supplemental Examiner’s Answer at 4.)
assertion that “a person of ordinary skill would view back
reflections as something to be minimized in order to improve
imaging, rather than maximized,” (Reply Br. at 8), which2
militates against the modification proposed by the examiner.
In view of these omissions, the examiner’s allegation amount
to impermissible reliance on the appellant’s teachings or
suggestions.
For the foregoing reasons, we are not persuaded that the
prior art would have suggested sealing the perimeter of a
processing surface to a cover plate to form an acoustically
reflective cavity therebetween as claimed. The examiner has
not established a prima facie case of obviousness. Therefore,
we reverse the rejection of claims 1-12 under 35 U.S.C. § 103.
CONCLUSION
Appeal No. 1997-4043 Page 11
Application No. 08/124,332
To summarize, the examiner’s rejection of claims 1-12
under 35 U.S.C. § 103 is reversed.

REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1997-4043 Page 12
Application No. 08/124,332
LLB/kis
Appeal No. 1997-4043 Page 13
Application No. 08/124,332
WOOD, HERRON & EVANS
2700 CAREW TOWER
CINCINNATI, OH 45202