Ex Parte Sonner et al

Patent Trial and Appeal Board

Aug 30, 2016

12787625 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121787,625 05/26/2010
26875 7590 09/01/2016
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Christian Sonner
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.
KUKAR-34 4979
EXAMINER
TRIVEDI, ATUL
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN SONNER and GUNTHER WIEDEMANN
Appeal2014-007806
Application 12/787,625 1
Technology Center 3600
Before EDWARD A. BROWN, FREDERICK C. LANEY, and
SEAN P. O'HANLON, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christian Sonner and Gunther Wiedemann (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 16-26
under 35 U.S.C. § 103(a) as unpatentable over Hamaguchi (US
2008/0035619 Al, pub. Feb. 14, 2008) and Hunter (US 2002/0125231 Al,
pub. Sept. 12, 2002).2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b ).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellant, the real party in interest is KUKA Roboter
GmbH. Appeal Br. 3 (filed March 14, 2014).
2 Claims 1-15 have been canceled. Appeal Br. 12 (Claims App.).
Appeal2014-007806
Application 12/787,625
INVENTION
Appellants' invention "relates to a method and a device for operating
an additional tool axis of a tool which is guided by a manipulator, in
particular a robot." Spec. 1 :4--5.
Claims 16 and 26 are independent claims. Claim 16, reproduced
below, is illustrative of the claimed subject matter:
16. A method of operating an independently actuable axis of
a tool supported on a robotic manipulator having a plurality of
drive axes controlled by a computer control, the method
compnsmg:
defining a position and/or orientation of the tool in space
in terms of the translational or angular positions of the drive axes
of the robotic manipulator;
defining a process-based position value of a target along
the tool axis; and
determining a tool drive axis position that results in the
process-based position value using the computer control.
Appeal Br. 12 (Claims App.).
ANALYSIS
Appellants challenge the Examiner's rationale explaining why a
skilled artisan, at the time of the invention, would have been prompted to
modify the methods of Hamaguchi with the teachings of Hunter in the
manner claimed. Appeal Br. 7. More specifically, Appellants assert the
Examiner's obviousness rationale is conclusory and lacks a rational
underpinning. Id. We, therefore, must decide whether a rational connection
exists between the factual findings and the Examiner's reason for modifying
Hamaguchi with Hunter in the manner claimed. In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
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Application 12/787,625
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness."). For the following reasons, the Examiner's
analysis does not properly establish such a connection.
The Examiner finds Hamaguchi discloses the recited elements of
independent claims 16 and 26, except: (1) "defining a process-based position
value of a target along the tool axis" (claims 16 and 26); (2) "determining a
tool drive axis position that results in the process-based position value using
the computer control" (claims 16 and 26); and (3) "operating the tool drive
axis independently of the drive axes of the robotic manipulator to translate a
component of the tool toward or away from the target" (claim 26). Final
Act. 3--4. The Examiner finds Hunter discloses each of the above elements
missing from Hamaguchi. Id. The Examiner concludes, "[i]t would have
been obvious to a person of skill in the art, at the time of the invention was
made, to operate the robotic manipulator of Hamaguchi according to the
position values that Hunter teaches, in order to account for microstructures
that may exist on the surface of the etched substrate." Id. at 3, 5.
The Examiner's rationale for why a skilled artisan would have
modified Hamaguchi with Hunter in the manner claimed, however, lacks a
rational underpinning. The laser emitting apparatus of Hamaguchi is part of
a "laser welding system." See Hamaguchi i-fi-15, 12, 28-31, 106-107. The
Examiner fails to identify any evidence supporting a skilled artisan would
have considered operating the Hamaguchi apparatus so that it accounts for
microstructures. Nor does the Examiner explain why a skilled artisan would
have known (or had a reason) to apply the laser emitting apparatus of
Hamaguchi to processing microstructures. In other words, the Examiner's
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Appeal2014-007806
Application 12/787,625
analysis presupposes, without any factual support, a skilled artisan would
even want to modify the laser emitting apparatus of Hamaguchi to account
for microstructures that may or may not exist on a substrate, which amounts
to merely a conclusory statement and, as such, provides an insufficient basis
to sustain the rejection.
The Examiner also points to the similarities between the dimensions
Hamaguchi teaches for an exemplary weld pattern (i.e., measured in
millimeters) and the range of motion of the optical element in the Z-axis
(i.e., about 3 millimeters) Hunter teaches. Final Act. 2; Ans. 2. According
to the Examiner, "[g]iven these similarities in dimension, a person of skill in
the art might well decide to use data or commands as taught by Hunter to
move the laser tool of Hamaguchi." Final Act. 2 (emphasis added). Stated
slightly different in the Answer, the Examiner determines, "[g]iven the
similarities in distances over which the laser tool may be guided in
Hamaguchi and Hunter, it would have been obvious to a person of skill in
the art to guide the laser tool of Hamaguchi with algorithms and programs
that Hunter teaches." Ans. 2.
Appellants argue that the Examiner's reliance on "similarities in
dimensions" is inapt and "does not provide a reason why persons skilled in
the art would combine [Hamaguchi and Hunter in the manner claimed]."
Appeal Br. 9. Appellants correctly assert, "[t]he Examiner is improperly
trying to equate the dimensions of the welding pattern ofHamaguchi '619 in
the plane of a workpiece with the resolution of the beam [focus] in the
direction normal to a workpiece." Reply Br. 3. Based on the record before
us, it is unclear what it is about the correlation between the dimensions
Hamaguchi teaches for an exemplary welding pattern and the lens or optical
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Application 12/787,625
element movement that Hunter teaches along the Z-axis to adjust a beam
focus that would have caused an ordinarily skilled artisan to modify
Hamaguchi as the Examiner suggests.
Hamaguchi teaches the weld can actually "have any shape of any
size" and that the disclosed device has the ability to position the laser beam
at a proper height. Hamaguchi i-fi-144--45. Hunter, on the other hand, teaches
that it is necessary, for processing microstructures that have gotten
increasingly smaller (Hunter i1 4), to have a highly precise ("on the order of
1 micron or finer") positioning system to direct a laser beam at a target
location on a semiconductor in a manner that avoids damaging the adjacent
microstructures. Id. i-fi-f 126, 129. The Examiner has not established a
rational connection between the "precision positioning system" of Hunter
and the dimensions for the welds created by the device of Hamaguchi. Nor
does the Examiner explain what, if any, benefits the welding operations of
Hamaguchi would realize from the addition of Hunter's precision
positioning system, which a skilled artisan would have recognized. "The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis." In re Warner, 379 F.2d 1011, 1017
(CCP A 1967) (emphasis added).
Because the above deficiencies apply to the Examiner's obviousness
analysis for both independent claims 16 and 26, and the Examiner's analysis
of the dependent claims fails to cure the deficiencies (see Final Act. 3--4), we
do not sustain the Examiner's rejection of claims 16-26.
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Application 12/787,625
DECISION
We reverse the Examiner's decision to reject claims 16-26.
REVERSED
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