Ex Parte Seto et alDownload PDFPatent Trial and Appeal BoardJan 30, 201814345629 (P.T.A.B. Jan. 30, 2018) Copy Citation 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. 14/345,629 03/18/2014 Yoshiki Seto 61551 3768 513 7590 02/01/2018 WENDEROTH, LIND & PONACK, L.L.P. 1030 15th Street, N.W., Suite 400 East Washington, DC 20005-1503 EXAMINER GRAYBILL, DAVID E ART UNIT PAPER NUMBER 2894 NOTIFICATION DATE DELIVERY MODE 02/01/2018 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): ddalecki@wenderoth.com eoa@ wenderoth. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHIKI SETO, KUNIHIRO KOBAYASHI, NOBUMOTO ISHIKI, and HISAAKI WATANABE1 Appeal 2017-003260 Application 14/345,629 Technology Center 2800 Before MARKNAGUMO, GEORGE C. BEST, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. 1 Appellant is the Applicant, Neturen Co., Ltd., which, according to the Appeal Brief, is the real party in interest. App. Br. 3. Appeal 2017-003260 Application 14/345,629 DECISION ON APPEAL2 STATEMENT OF THE CASE Appellant appeals the Examiner’s decision to finally reject claims 5-7 and 9.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Invention Appellant’s disclosure relates to an apparatus for manufacturing a lead wire for a solar cell. Abstract; Spec. 1. Claim 5 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (Appeal Br. 21) (key disputed claim language italicized and bolded): 5. An apparatus for manufacturing a lead wire for a solar cell, the apparatus comprising: a plating bath configured to contain a molten plating solution; a conveyor mechanism configured to convey a wire material along a conveying path, the conveyor mechanism comprising a turning conveyor roll disposed inside the plating bath, a feeding conveyor roll disposed upstream of the plating bath, and a pulling-up conveyor roll disposed downstream of the plating bath; 2 In our Decision, we refer to the Specification filed March 18, 2014 (“Spec.”); Final Office Action dated November 25, 2015 (“Final Act.”); Advisory Action dated March 4, 2016 (“Adv. Act.”); Appeal Brief dated May 25, 2016 (“App. Br.”); Examiner’s Answer to the Appeal Brief dated November 7, 2016 (“Ans.”); and Reply Brief dated January 9, 2017 (“Reply Br.”). 3 Pending claims and 8 are withdrawn. App. Br. 5; Final Act. 1. 2 Appeal 2017-003260 Application 14/345,629 a heater configured to heat, by a direct resistance heating or by an induction heating, a portion of the wire material that is being conveyed by the conveyor mechanism between the feeding conveyor roll and the turning conveyor roll; and a controller configured to control the conveyor mechanism and the heater, wherein the controller controls a conveying speed of the wire material by the conveyor mechanism and an amount of power supply to the heater such that the wire material is heated to reduce a 0.2% proof stress of the wire material while conveying the wire material and such that the wire material, that is in a heated condition obtained by the direct resistance heating or by the induction heating, is dipped and plated in the plating solution while further conveying the wire material, and wherein the plating bath and the heater are arranged such that the wire material is plated directly after being heated by the heater. The References The Examiner relies on the following references as evidence in rejecting the claims on appeal: Poucke Araki et al., (hereinafter “Araki”) Hirano Kojima US 3,728,144 US 5,821,500 JP356150172A JP405070850A Apr. 17, 1973 Oct. 13, 1988 Nov. 20, 1981 Mar. 23, 1993 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 5 and 9 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Poucke (“Rejection 1”). Ans. 2. 2. Claims 5 and 9 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Poucke (“Rejection 2”). Ans. 11. 3 Appeal 2017-003260 Application 14/345,629 3. Claims 5 and 9 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Poucke as applied to claim 5 and further in combination with Kojima (“Rejection 3”). Ans. 12. 4. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Poucke, or the combination of Poucke and Kojima, as applied to claim 5 and further in combination with Hirano (“Rejection 4”). Ans. 14. 5. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Poucke, or the combination of Poucke and Kojima, in combination with Hirano as applied to claim 6, and further in combination with Araki (“Rejection 5”). Ans. 15. OPINION Rejection 1 The Examiner determines that Poucke discloses an apparatus satisfying all of the limitations of claim 5 and thus, anticipates the claim. Ans. 2-11 (citing Poucke, col. 2,11. 43-67, col. 3,11. 24-26, col. 4,11. 3-10, 41-66, Figs. 1,2). Appellant argues that the Examiner’s rejection of claim 5 should be reversed because Poucke does not disclose or suggest the limitation “wherein the plating bath and the heater are arranged such that the wire material is plated directly after being heated by the heater,” as recited in the claim. App. Br. 9, 11; Reply Br. 6-7. In particular, Appellant argues that, as opposed to disclosing an apparatus wherein the plating bath and the heater are arranged such that the wire material is plated directly after being heated by the heater, Poucke discloses an apparatus having a “cooling apparatus 11 4 Appeal 2017-003260 Application 14/345,629 between the plating bath 7 and the heater 10.” App. Br. 9 (citing Poucke, Fig. 1). Appellant further argues that because Poucke discloses a cooling apparatus 11 and explicitly teaches that the “temperature wire 1 when it enters the metallizing bath is of great importance” to Poucke’s system (see Poucke, col. 3,11. 42-56), it would not have been obvious to one of ordinary skill in the art at the time of the invention to remove the cooling apparatus 11 from the system. App. Br. 12. We agree with Appellant’s argument in this regard. To serve as an anticipatory reference, “the reference must disclose each and every element of the claimed invention.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). On the record before us, we are not persuaded that the Examiner has established by a preponderance of the evidence that Poucke discloses or suggest the limitation “wherein the plating bath and the heater are arranged such that the wire material is plated directly after being heated by the heater,” as required by claim 5. Poucke describes an apparatus for continuous heat treatment and subsequent metallizing, i.e., plating, of a wire 1. Poucke, col. 2,11. 42 45; Fig. 1. In particular, Poucke discloses that the metal wire 1 is fed from supply spool 2 and via guide rollers 3, 4 and 5 to a capstan 6; guide roller 4 is mounted in an immersion bath 7 containing a molten coating metal; and a heater 10 is provided to heat wire 1. Id. at col. 2,11. 48-52, 63-67, Fig. 1. As Appellant correctly points out (App. Br. 9), Poucke further discloses a “cooling apparatus 11” located between the heater 10 and the metallizing bath 7 and states that the temperature of the wire 1 when it enters the metallizing bath is of “great importance.” Poucke, Fig.l, col. 3,11. 42- 5 Appeal 2017-003260 Application 14/345,629 43, 57-59. Poucke teaches that after being heated, wire 1 is passed through cooling apparatus 11, “which cools the temperature of wire 1 to the proper level.” Poucke, col. 3,11. 57-59. Poucke also teaches that if the temperature of the wire 1 entering the bath 7 is too high, “the danger exists that a reaction layer may be formed between the metal base of the wire 1 and the coating metal which is undesirably thick” (Poucke, col 3,11. 41^19) and “if the temperature is too low the adhesion between the wire 1 and the coating metal will be inadequate” {id. at col. 3,11. 52-56). There is no teaching or suggestion in Poucke of a system wherein the cooling apparatus 11 is omitted or removed, and the plating bath 7 and the heater 10 are arranged such that the wire 1 is plated directly after being heated by the heater 10. The Examiner also does not identify or provide an adequate technical explanation explaining why one of ordinary skill would have had reason to modify Poucke’s system to remove or omit cooling apparatus 11. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “reasoning with some rational underpinning to support the legal conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s comments at pages 8, 11, and 20-21 in the Answer are not supported by sufficient evidence in the record and do not meaningfully address Appellant’s principal argument that Poucke does not disclose or suggest the limitation “wherein the plating bath and the heater are arranged such that the wire material is plated directly after being heated by the heater” or explain why one of ordinary skill would have had reason to modify Poucke’s system in the manner claimed. 6 Appeal 2017-003260 Application 14/345,629 For example, the Examiner’s assertions that “merely omitting a cooling step satisfies the claim 5 limitation” (Ans. 8) and “it would have been obvious to omit any element of the apparatus” {id. at 11) are conclusory and, without more, insufficient to sustain the Examiner’s rejection. Kahn, 441 F.3d at 988 (holding “rejections . . . cannot be sustained by mere conclusory statements”). We, therefore, cannot sustain the Examiner’s determination that Poucke discloses an apparatus satisfying all of the limitations of claim 5 and anticipates the claim. Because claim 9 depends from claim 5, we also cannot sustain the Examiner’s rejection of claim 9. Accordingly, we reverse the Examiner’s rejection of claims 5 and 9 under 35 U.S.C. § 102(b) as being anticipated by Poucke. Rejections 2, 3, 4, and 5 The foregoing deficiencies in the Examiner’s findings and conclusions regarding the Poucke reference are not remedied by the Examiner’s findings and obviousness analysis regarding the Poucke reference in support of the second ground of rejection, and the additional references or combination of references cited in support of the third, fourth, and fifth grounds of rejection. Accordingly, we also reverse Rejections 2, 3, 4, and 5. DECISION The Examiner’s rejections of claims 5-9 are reversed. ft is ordered that the Examiner’s decision is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation