Ex Parte Wagner et alDownload PDFPatent Trial and Appeal BoardJan 8, 201812603575 (P.T.A.B. Jan. 8, 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. 12/603,575 10/21/2009 Randall M. Wagner 055113-0026 6763 20572 7590 01/10/2018 rTnnFRFY & KAHN N C EXAMINER 833 East Michigan Street, Suite 1800 Milwaukee, WI53202-5615 MAYE, AYUB A ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 01/10/2018 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): docketing @ gklaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RANDALL M. WAGNER and KURT P. SCHOECKERT Appeal 2017-004845 Application 12/603,575 Technology Center 3700 Before HUBERT C. LORIN, BRUCE T. WIEDER, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—3 and 6—20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants’ Appeal Brief (“Br.,” filed April 7, 2016) and Supplemental Appeal Brief (“Supp. Br.,” filed August 11, 2016), the Examiner’s Answer (“Ans.,” mailed December 1, 2016), and Final Office Action (“Final Act.,” mailed May 7, 2015). 2 Appellants identify GemEx Systems, Inc. as the real party in interest. Br. 2. Appeal 2017-004845 Application 12/603,575 THE INVENTION Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. A gemstone positioning fixture for use in connection with a work surface of a plurality of gems, comprising: a base, having a top surface and a bottom surface, and a plurality of plunger holes formed therein; a plurality of biasing members, each biasing member positioned within a respective one of the plurality of plunger holes; a plurality of plungers, each plunger positioned atop a respective one of the plurality of biasing members within the respective one of the plurality of plunger holes, each plunger having a top surface adapted to receive and support a respective one of the plurality of gems in a position so that the work surface of the respective gem faces away from the respective plunger; an assembly applied to the bottom surface of the base, the assembly forcing the biasing members, the plungers, and the gems upward through the plunger holes in the base; a cover plate formed of a material that conducts electricity and applied to the top surface of the base, the cover plate having a plurality of apertures matching in position and number the plurality of plunger holes in the base, each of the plurality of apertures being of a size sufficiently small that the cover plate is capable of conducting away any electrical charge that may build up on the work surfaces of the gems without a separate discharge structure to discharge any ion buildup on the work surfaces. Supp. Br. 2 (Claims Appendix). 2 Appeal 2017-004845 Application 12/603,575 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Zasio US 4,189,230 Leb. 19, 1980 Beshke et al. (“Beshke”) US 4,629,384 Dec. 16, 1986 Tessmer et al. (“Tessmer”) US 5,458,733 Oct. 17, 1995 Rosenwasser et al. (“Rosenwasser”) US 5,760,367 June 2, 1998 Larson et al. (“Larson”) US 6,035,522 Mar. 14, 2000 Karmaniolas et al. (“Karmaniolas et al.”) US 6,553,644 B2 Apr. 29, 2003 Wang US 2006/0144821 Al July 6, 2006 Rosario et al. (“Rosario et al.”) US 2008/0006615 Al Jan. 10, 2008 Sasian et al. (“Sasian et al.”) US 7,336,347 B2 Leb. 26, 2008 The following rejections are before us for review: I. Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, and Larson. II. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, Larson, and Beshke. III. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, Larson, Beshke, and Wang. IV. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, Larson, Beshke, Wang, and Tessmer. 3 Appeal 2017-004845 Application 12/603,575 V. Claims 9 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, Larson, and Rosario. VI. Claims 10 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, Larson, Beshke, and Rosario. VII. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, Larson, and Wang. VIII. Claims 14, 15, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, Larson, Wang, and Tessmer. IX. Claims 16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, Larson, Wang, Tessmer, and Rosenwasser. X. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Zasio, Sasian, Karmaniolas, Larson, Wang, Tessmer, Rosario, and Rosenwasser. ANALYSIS Rejection I Independent claim 1 Independent claim 1 requires a cover plate having a plurality of apertures, each of the apertures being of a size sufficiently small that the cover plate is capable of conducting away any electrical charge that may build up on the work surfaces of the gems. See Supp. Br. 2—7 (Claims Appendix). The Examiner finds that flange 7 disclosed in Zasio meets the claimed cover plate, and that the flange is capable of conducting away any electrical charge that may build up on the work surface of a wafer (Final Act. 3; see 4 Appeal 2017-004845 Application 12/603,575 also, Ans. 3). The Examiner acknowledges that Zasio does not disclose a plurality of apertures in the flange, and relies on Karmaniolas at Figures 5 and 6 and col. 3,11. 38-41, specifically openings 59, to cure this deficiency. According to the Examiner, “Karmaniolas [teaches] the cover plate (lid 55) having a number of apertures (59) matching in position and number the at least one plunger hole in the base (53) (FIG. 5, 6, col 3, In 38-41), the apertures (59) of a size sufficiently small.” (Final Act. 4; see also Ans. 4). Appellants argue, inter alia, that the Examiner has taken the aperture size limitation out of context and that the openings in Karmaniolas “are not related to conducting away electrical charges” (Br. 12). We are persuaded by Appellants’ arguments, and we find that the Examiner’s reliance on Karmaniolas fails to cure the deficiency in Zasio. A rejection based on § 103 clearly must rest on a factual basis. The Examiner has the initial duty of supplying the factual basis for the rejection and may not resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in its factual basis. The Examiner has not directly addressed the claimed relationship between the apertures and the conductive property of the cover plate. The Examiner’s finding that Karmaniolas discloses apertures “of a size sufficiently small” is divorced from the context of the claim and does not address the above limitation in a meaningful way. The Examiner has not made a finding that Karmaniolas discloses — either expressly or inherently — that openings 59 in lid 55 are involved in conducting an electrical charge away from a workpiece. We fail to see and the Examiner does not adequately explain how Karmaniolas discloses “each of the plurality of apertures being of a size 5 Appeal 2017-004845 Application 12/603,575 sufficiently small that the cover plate is capable of conducting away any electrical charge that may build up on the work surfaces” as required by claim 1. Accordingly, we do not sustain the Examiner’s rejections of independent claim 1 under 35 U.S.C. § 103(a). Claim 2 Although Appellants do not argue the rejection of dependent claim 2, claim 2 is also nonobvious because independent claim 1 from which it depends is nonobvious. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious.”). Thus, we do not sustain the rejection of claim 2. Rejections II—X Claims 3 and 6—20 Independent claims 6, 9, 11, and 13 recite a similar aperture size limitation as independent claim 1, and are rejected based on the same erroneous finding discussed above. See Final Act. 9, 13, 15, and 19. The Examiner does not rely on Sasian, Farson, Beshke, Wang, or Rosario to cure the deficiencies in Zasio and Karmaniolas. See id. Thus, we do not sustain the rejections of independent claims 6, 9, 11, and 13. Although Appellants do not argue the rejections of claims 3, 7, 8, 10, 12, and 14—20, these claims are also nonobvious because the respective independent claims from which they depend are nonobvious and the Examiner does not rely on Sasian, Farson, Beshke, Wang, Rosario, Tessmer, or Rosenwasser to cure the deficiencies regarding the disclosure of Zasio 6 Appeal 2017-004845 Application 12/603,575 and Karmaniolas. See Final Act. 6—27. Thus, we do not sustain the rejections of claims 3, 7, 8, 10, 12, and 14—20. DECISION The Examiner’s rejections under 35 U.S.C. § 103(a) are reversed. REVERSED 7 Copy with citationCopy as parenthetical citation