Ex Parte Wakayama

Board of Patent Appeals and Interferences

Aug 24, 2012

10533650 (B.P.A.I. Aug. 24, 2012)

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.
10/533,650 11/25/2005 Haruo Wakayama YAMAP0979US 9580
43076 7590 08/24/2012
MARK D. SARALINO (GENERAL)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE, NINETEENTH FLOOR
CLEVELAND, OH 44115-2191
EXAMINER
MICHALSKI, SEAN M
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
08/24/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HARUO WAKAYAMA
____________

Appeal 2009-014036
Application 10/533,650
Technology Center 3700
____________

Before NEAL E. ABRAMS, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Haruo Wakayama (Appellant) seeks our review under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1, 5 and 14-16, which
are all the claims remaining of record. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
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2
THE INVENTION
The claimed invention is directed to a scribe line forming apparatus
and a scribe line forming method for dividing a brittle substrate.
Claims 1 and 14, reproduced below, are illustrative of the subject
matter on appeal.
1. A scribe line forming apparatus comprising:
a vertical crack forming member that has a
blade at a tip thereof and is used for forming a
vertical crack to be an origination point of a scribe
line by pressing the blade against a surface of a
brittle substrate with pressure;
an impact force applying means for applying
an abrupt impact force to the vertical crack
forming member in order to generate the vertical
crack having a predetermined depth at a desired
position in the brittle substrate;
a heating means for forming an area having
a temperature lower than a softening point of the
brittle substrate;
a cooling means for cooling the brittle
substrate;
an arrangement movement means for
arranging the heating means, the vertical crack
forming member, the impact force applying means,
and the cooling means to be positioned so as to
move relative to the brittle substrate at
predetermined intervals along a planned scribe line
that is prearranged on the surface of the brittle
substrate; and
a control unit that controls driving of the
impact force applying means.

14. A scribe line forming method comprising
the steps of:
while making a vertical crack forming
member having a blade at a tip thereof move on a
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brittle substrate, generating a vertical crack having
a predetermined depth at a desired position on a
brittle substrate with an impact force applying
means that applies an abrupt impact force to the
blade;
forming a scribe line by forming, with the
vertical crack, an irradiation area that has a
temperature lower than a softening point of the
brittle substrate along a planned scribe line
arranged on the brittle substrate, and forming a
cooling area in rear of the irradiation area.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Insolio US 3,276,302 Oct. 4, 1966
Hoekstra US 6,489,588 B1 Dec. 3, 2002
Ishikawa US 6,536,121 B1 Mar. 25, 2003

THE REJECTIONS
Claims 1, 5 and 14-16 stand rejected under 35 U.S.C. 103 § 103(a) as
being unpatentable over Hoekstra in view of Ishikawa.
Claims 1, 5 and 14-16 also stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hoekstra in view of Insolio.

OPINION

Claims 1, 5 and 14-16 – Obviousness
Hoekstra in view of Ishikawa

It is the Examiner’s view that all of the subject matter recited in
independent claims 1 and 14 is disclosed in Hoekstra, except for the heating
of the substrate to a temperature “below the softening point,” and an “impact
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force applying means.” As to the temperature requirement, the Examiner
explained that official notice was taken that this feature was known in the
prior art, and that the Appellant had not taken issue with this conclusion.
Ans. 3-4. In this regard, we note that the Appellant has presented no
arguments on this point in the Appeal Brief or the Reply Brief.
With regard to the “impact force applying means,” the Examiner
points out that Ishikawa discloses a scribing tool which “vibrates or
oscillates up and down (see figure 8 and abstract),” and goes on to state that
“[e]ach vibration constitutes an ‘abrupt impact’.” The Examiner then
concludes that it would have been obvious to one of ordinary skill in the art
“to make the scribe wheel of Hoekstra an impact force applying scribe
wheel, since doing so allows for ‘deep vertical cracks’ (Column 2 lines 2-3)
as taught by Ishikawa . . . which means that a thicker substrate may be
snapped without a risk of horizontal cracking.” Ans. 5.
Central to the Appellant’s invention is “an impact force applying
means for applying an abrupt impact force to the vertical crack forming
member” (claim 1), and the step of “generating a vertical crack . . . with an
impact force applying means that applies an abrupt impact force to the
blade” (claim 14). In response to the Appellant’s arguments on this point,
the Examiner has cited to the “online plain text English dictionary” in
interpreting the definition of “impact” to be broad enough to include a “force
communicated,” and on this basis has concluded that it is a “reasonable
interpretation of the term impact” to construe a force communicated “as
impacting the substrate/glass since it will effect (sic) the glass, and will
translate force abruptly.” Ans. 6-8.
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The Appellant’s response to this conclusion is that the Examiner has
“dictionary shopped” by selecting “an online dictionary definition of impact
to suit the rejections, rather than interpreting the claim term in view of its
use in the specification,” which “violates well settled principles of claim
interpretation.” Reply Br. 2. The Appellant argues that in this case the
reasonable and proper definition of “impact” is “the striking of one body
against another” and “abrupt” as “sudden or quick.” Reply Br. 3. In this
regard, the Appellant points out that the explanation of the invention in the
specification is consistent with these definitions in that a spring applies a
downward force to an armature 6, which is an impact applying means, and a
solenoid coil 6a generates a lifting electromagnetic force to counteract the
spring force until the voltage to the solenoid coil is removed, whereupon the
electromagnetic force ceases and the spring causes the armature to abruptly
impact the vertical crack forming member. Reply Br. 3-4, citing to the
specification at page 9, line 20 to page 10, line 10, to page 15, lines 3-19,
and to Figs 3(a) and 3(b). The Appellant then concludes that “[o]nce the
term ‘abrupt impact’ is properly construed, it follows that the references,
whether considered individually or in combination, do not disclose or
suggest the claimed invention.” Reply Brief 4-5.
After consideration of the arguments set forth by the Examiner and
the Appellant, we find ourselves in agreement with the Appellant that in the
present situation, the reasonable and proper definition of “abrupt impact” is
“the sudden striking of one body against another,” and not merely the
communication of a force from one body to another, as is the Examiner’s
contention. It is from this perspective that we have evaluated the teachings
of Ishikawa.
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In the Ishikawa apparatus forces are selectively communicated to
cutter 13 by the vibrating action of members 14. However, these forces are
not produced by the striking of one body by another, but by the application
of in-phase high frequency voltage to vibration members 14, which causes
them to expand or contract in the axial direction, resulting in the attached
holder 12 vibrating and transmitting the vibrations to cutter 13. Col. 5, ll.
14-17; col. 7, ll. 62-67. There is no evidence to support a conclusion that
the vibrations produced by members 14 are “abrupt” (sudden) or apply an
“impact to” (strike) the vertical crack forming member, as is required by
claim 1, or to the blade, as required by claim 14. This being the case even if,
arguendo, sufficient reason were to exist to combine the teachings of these
two references in the manner proposed by the Examiner, the result would not
be the structure required by independent claim 1 or the method set forth in
independent claim 14.
For the reasons expressed above, we reverse the Examiner’s rejection
of independent claims 1 and 14 and, it follows, of dependent claims 5, 15
and 16, as being unpatentable over Hoekstra in view of Ishikawa.

Claims 1, 5 and 14-16 – Obviousness
Hoekstra in view of Insolio

In this rejection the Examiner once again acknowledges the
shortcomings of Hoekstra, and looks to Insolio for the teaching of applying
an “abrupt impact force to the vertical crack forming member” (claim 1) and
“to the blade” (claim 14). According to the Examiner, Insolio discloses a
scribing tool that has a cutting member 14 actuated by a solenoid 20 which
can control the “pressure/force of the cutting tool throughout different
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operations” in such a manner as to allow the cutting wheel to be placed upon
a substrate gently, and then “instantly applying full cutting voltage.” Ans. 6-
7. The Examiner goes on to conclude “it can be seen that an abrupt impact
force is used to engage the cutter with the substrate,” and it would have been
obvious to “use the impact force applying means disclosed by Insolio in the
device of Hoekstra, since doing so avoids the problem of ‘impact…that is
often injurious to the glass’ (column 3 lines 1-5) since it is controlled after
the glass has been contacted.” Ans. 7. In the response to the Appellant’s
arguments, the Examiner adds “Insolio uses what could be termed two
impacts, a gentle contacting impact, and an abrupt full voltage impact.”
Ans. 10. The Appellant argues that the Examiner’s definition of “abrupt
impact” is “contrary to the usage of the term impact in the specification,”
Reply Br. 6, and that in Insolio a solenoid is used to apply a low voltage
force to move the cutter into position whereupon the full voltage is applied
to initiate the cutting process, however, “nothing strikes the cutter . . . which
differs from the claimed invention.” Reply Br. 8.
As we stated above with regard to the other rejection of the claims, we
are not persuaded that the Examiner’s interpretation of “abrupt impact” as
being broad enough to include a “force communicated” is proper. We
therefore shall evaluate the teachings of Insolio on the basis of “abrupt
impact” means the striking of one body against another.
In the Insolio apparatus actuation of solenoid 20 causes a force to be
applied to cutter 14 through pillar post 18, causing cutter 14 to contact and
score the glass surface. Col. 6, ll. 21-25. In order not to damage the glass
by impact of the cutter, this contact is provided in two stages. In the first
stage sufficient voltage is provided to the solenoid to cause the cutter to
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extend, and the second stage is to “instantly” apply full cutting voltage to the
solenoid. Col. 3, ll. 1-7. The Examiner considers the second stage to be an
abrupt application of force. Be that as it may, in both stages a force is
provided to a cutter wheel by the application of voltage to a solenoid that is
directly attached to the cutter by a mechanical linkage. Col. 6, ll. 21-25. It is
our view that in neither stage is there an “impact,” that is, a striking of one
body against another body, as is required by the language recited in claims 1
and 14. As was the case with the other rejection of the claims, even if
sufficient reason were to exist to combine the teachings of these two
references in the manner proposed by the Examiner, the result would not be
the structure required by independent claim 1 or the method set forth in
independent claim 14. We therefore will reverse the Examiner’s rejection of
claims 1, 5, and 14-16 as being unpatentable over Hoekstra in view of
Ishikawa.

DECISION
The rejection of claims 1, 5 and 14-16 as being unpatentable over
Hoekstra in view of Ishikawa is reversed.
The rejection of claims 1, 5 and 14-16 as being unpatentable over
Hoekstra in view of Insolio is reversed.

REVERSED

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