Ex Parte Seto et al

Patent Trial and Appeal Board

Jan 30, 2018

14345629 (P.T.A.B. Jan. 30, 2018)

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.
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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.
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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
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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-
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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.
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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
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