NTN CORPORATION

Patent Trials and Appeals Board

Feb 28, 2022

2021001556 (P.T.A.B. Feb. 28, 2022)

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. 15/775,289 05/10/2018 Hiroaki OHBA 070456-0451 1057 20277 7590 02/28/2022 MCDERMOTT WILL & EMERY LLP THE MCDERMOTT BUILDING 500 NORTH CAPITOL STREET, N.W. WASHINGTON, DC 20001 EXAMINER PENCE, JETHRO M ART UNIT PAPER NUMBER 1717 NOTIFICATION DATE DELIVERY MODE 02/28/2022 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): ipdocketmwe@mwe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROAKI OHBA Appeal 2021-001556 Application 15/775,289 Technology Center 1700 Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and N. WHITNEY WILSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 8, 9, and 11-13.3 Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 This Decision includes citations to the following documents: Specification filed May 10, 2018 (“Spec.”); Non-Final Office Action entered March 18, 2020 (“Non-Final Act.”); Appeal Brief filed August 24, 2020 (“Appeal Br.”); Examiner’s Answer entered October 29, 2020 (“Ans.”); and Reply Brief filed December 28, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies NTN CORPORATION as the real party in interest. Appeal Br. 2. 3 Claims 1-7, 10, and 14-16 have been withdrawn from consideration. Non- Final Act. 1. Appeal 2021-001556 Application 15/775,289 2 CLAIMED SUBJECT MATTER Appellant states the invention relates to a height detection apparatus and a coating apparatus equipped with a height detection apparatus that detects the height of a target object. Spec. 1, ll. 6-8. Claim 8, the only independent claim on appeal, is reproduced below and is illustrative of the claimed subject matter (Appeal Br. 13-14, Claims App., emphasis added to identify disputed claim limitations): 8. A coating apparatus configured to apply a liquid material on a surface of a target object, the coating apparatus comprising: a coating unit having a coating needle to apply the liquid material adhering to a tip end of the coating needle to a surface of the target object; a head including a light source configured to emit white light, a two-beam interference objective lens configured to divide white light emitted from the light source into two light beams, apply one of the light beams to the target object and the other beam light to a reference surface, and cause interference between reflected light from a surface of the target object and reflected light from the reference surface to obtain interference light, an observation optical system comprising at least one optical element configured to receive and direct interference light obtained by the two-beam interference objective lens, and a camera configured to capture an image of an interference pattern produced by the interference light Appeal 2021-001556 Application 15/775,289 3 received and directed through the observation optical system; a Z stage configured to move the two-beam interference objective lens 4 relative to the target object in an optical axis direction; a positioning device comprising a movable table having the head mounted thereon and configured to move the head and the target object relative to each other to position the head to a desired position above a surface of the target object; and a control computer configured to control the light source, the camera, and the Z stage to obtain a height of the target object, wherein: the coating unit includes a tank configured to store the liquid material, the control computer is configured to adjust a standby time in which a coating operation is on standby with the coating needle protruding from a hole at a bottom of the tank and a portion of the liquid material on the coating needle moving away from the tip end of the coating needle, and the control computer is configured to increase the standby time to reduce the amount of coating and reduce the standby time to increase the amount of coating. Appeal 2021-001556 Application 15/775,289 4 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Tomota JP 2006072307 A, English translation of record Mar. 16, 2006 Koike JP 2012124381 A, English translation of record June 28, 2012 Oba JP 2015007564 A, English translation of record Jan. 15, 2015 REJECTIONS 1. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Oba and Koike. Non-Final Act. 3-6. 2. Claims 9 and 11-13 are rejected under 35 U.S.C. § 103 as being unpatentable over Oba, Koike, and Tomota. Non-Final Act. 6-12. OPINION We confine our discussion to claim 8, which is sufficient to dispose of the rejections on appeal.4 4 In addition, we find it unnecessary to address the Examiner’s position, disputed by Appellant, that the term “optical element” in claim 8 invokes 35 U.S.C. § 112(f) (Non-Final Act. 13-14; Appeal Br. 8-9; Ans. 20-21) in order to decide this appeal. Appeal 2021-001556 Application 15/775,289 5 Rejection 1 The Examiner’s Rejection In rejecting claim 8 as unpatentable over Oba and Koike, the Examiner found Oba discloses the recited coating apparatus including a computer that is configured to control coating operations, with the exception that Oba does not disclose the control computer is configured to adjust standby time in the manner recited in claim 8. Non-Final Act. 3-5. The Examiner found Koike discloses a coating device configured to apply liquid material on a surface of a substrate where a coating parameter includes a standby time between an application needle and a substrate. Id. at 5. The Examiner found Koike discloses a control device, which implicitly would be configured to adjust the standby time, and would result in the movement of ink recited in claim 8 in relation to the amount of time spent in standby mode. Id. In view of this disclosure in Koike, the Examiner determined it would have been obvious to have included the capability of adjusting standby time in the coating applicator of Oba. Id. at 5-6. Appellant’s Arguments Appellant argues Koike does not disclose that the control computer is configured to increase standby time to reduce the amount of coating and reduce the standby time to increase the amount of coating as recited in claim 8. Appeal Br. 5. Appellant contends there is insufficient evidentiary support for the Examiner’s position that adjusting the standby time in the manner recited in claim 8 is implicit in Koike. Id. at 6-7. Appeal 2021-001556 Application 15/775,289 6 Discussion We are persuaded by Appellant’s arguments. At the outset, we observe that claim 8 recites “the control computer is configured to adjust a standby time” and in particular “to increase the standby time to reduce the amount of coating and reduce the standby time to increase the amount of coating.” Thus, claim 8 requires a control computer that is programmed to perform such functions. See Typhoon Touch Techs, Inc. v. Dell, Inc., 659 F.3d 1376, 1380-81 (Fed. Cir. 2011) (upholding the district court’s holding that a claim reciting “a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen” required the memory to perform the recited function, rather than simply having a capability of carrying out such function should further modification or programming be made). The Examiner’s position is that Koike discloses a portion of the ink 2 on application needle 4 moves away from the tip 4a of the application needle 4 toward the substrate 7 “implicitly by the force of gravity” meets the recited limitation that the liquid material on the coating needle moves away from tip end of the coating needle in claim 8. Non-Final Act. 5, citing Koike, Fig. 1B. The Examiner found that Koike discloses that by not applying ink 3 to the substrate during standby time, reducing standby time would increase the amount of coating as the application needle 4 is applying ink to the substrate when not in standby mode. Id. In other words, the Examiner’s position appears to be that Koike meets the standby time requirements in claim 8, because the combined standby time and coating time (Figs. 1B + 1C) is constant, such that increasing the standby time (Fig. 1B) would result in less coating time (Fig. Appeal 2021-001556 Application 15/775,289 7 1C) and therefore less coating being applied to substrate 7, whereas reducing the standby time would result in more coating time and therefore more coating applied to the substrate. We do not find adequate support in Koike (¶¶ 26-42; Fig. 1; claim 1) for the Examiner’s position. Koike is silent as to any relationship between the stages depicted in Figures 1B and 1C. Koike ¶¶ 30, 31. Koike merely discloses that in Figure 1B, “the applying member 4 projects under the container 2” and that in Figure 1C “the coater 1 is dropped by a Z stage (not shown), the tip part 4a of the applying member 4 is contacted on the surface of the substrate 7, and the ink 3 is applied to the substrate 7.” Id. Koike provides no disclosure that the time in Figure 1B is in any way related or influences the coating time in Figure 1C. Thus, there is insufficient support for the Examiner’s position that Koike discloses the relationship between standby time and coating amounts recited in claim 8. Accordingly, we reverse the Examiner’s rejection of claim 8. Rejection 2 Claims 9 and 11-13, the subject of Rejection 2, depend either directly or indirectly from claim 8. The Examiner’s additional citation to Tomota does not remedy the deficiency identified for claim 8. Accordingly, we reverse Rejection 2 for similar reasons as discussed above for Rejection 1. Appeal 2021-001556 Application 15/775,289 8 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8 103 Oba, Koike 8 9, 11-13 103 Oba, Koike, Tomota 9, 11-13 Overall Outcome 8, 9, 11-13 REVERSED