Ex Parte Crowther

Patent Trial and Appeal Board

Jan 13, 2017

12571836 (P.T.A.B. Jan. 13, 2017)

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.
12/571,836 10/01/2009 David Crowther GINS0135PUS1 2739
22045 7590 01/18/2017
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
BRYANT, REBECCA CAROLE
ART UNIT PAPER NUMBER
2877
NOTIFICATION DATE DELIVERY MODE
01/18/2017 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 @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CROWTHER
Appeal 2015-007838
Application 12/571,836
Technology Center 2800
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
1 In the Opinion below, we refer to the Specification filed October 1, 2009
(“Spec.”); the Final Action mailed January 21, 2015 (“Final Act.”); the
Appeal Brief filed March 20, 2015 (“App. Br.”); the Examiner’s Answer
mailed June 23, 2015 (“Ans.”); the Corrected Appeal Brief filed August 13,
2015 (“Corrected App. Br.”); and the Reply Brief filed August 24, 2015
(“Reply Br.”).
Appeal 2015-007838
Application 12/571,836
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1, 2, 4, 7—13, 15, 18—22, 34—36, and 38—63. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The claims3 are directed to systems and methods for inspecting a
threaded fastener. Claims 1, 12, 34, 44, and 50. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A profile inspection system for a threaded fastener
having a length, a width, and an axis defined as being central to
the fastener and upper and lower surfaces and side surfaces
angularly spaced about the axis, the system comprising:
a rotatable fixture including upper and lower members to
hold the fastener in a generally vertical orientation at the upper
and lower surfaces, respectively, and to rotate the held
component through a predetermined angle about the axis during
a rotational scan of a scanning process wherein the fixture
allows the side surfaces of the fastener to be scanned during the
rotational scan and along the entire length of the fastener
between the upper and lower members at known linear
lengthwise increments of movement during a linear scan of the
scanning process;
a light source supported on a linear translator on one side
of the fixture to project a plane of light having a width wider
than the width of the component onto the held fastener to obtain
left and right portions of the plane of light passing by and not
2 Appellant identifies GII Acquisition, LLC, d/b/a/ “General Inspection,
LLC” as the real party in interest. App. Br. 3.
3 The claims filed with the Appeal Brief did not reflect amendments to the
claims made on December 29, 2014. Corrected App. Br. 1. Appellant
acknowledges that the Examiner considered the amended claims in the
Answer. Id.
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Application 12/571,836
blocked by the held fastener wherein the axis is substantially
perpendicular to the plane of light throughout the entire
scanning process;
a line scanned camera including at least one row of pixel
elements wherein distance moved during each increment of
movement is calibrated to the at least one row of pixel elements
wherein a given number of rows of pixel elements is utilized to
detect a line image during each movement, the camera being
supported on the linear translator on a second side opposite the
one side of the fixture, the camera having a field of view wider
than the width of the fastener to detect the left and right
portions, thereby enabling the camera to image left and right
portions of the outer edges of the fastener at a plurality of
angular orientations of the held fastener and provide
corresponding electrical signals; and
a processor coupled to the at least one row of pixel
elements and being operative to perform the following
functions:
a) receive the electrical signals representative of left and
right outer profiles imaged by the at least one row of pixel
elements during each incremental movement during the linear
scan and during the rotational scan,
b) control the rotational and linear scans,
c) record the left and right outer profiles imaged by the
camera based on the electrical signals, the recorded left and
right outer profiles representing composite profiles taken at the
plurality of angular orientations wherein the side surfaces of the
held component which extend completely around the fastener
between the upper and lower members are inspected without a
need to detect a portion of the plane of light blocked by the
fastener,
d) assemble the composite profiles of the fastener taken
at the plurality of angular orientations, and
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e) calculate at least one geometric parameter associated
with a thread of the fastener as a function of the assembled
composite profiles;
wherein the linear translator is fixed to translate along a
fixed one-dimensional linear path, wherein the light source and
the camera are supported on the linear translator with a fixed
distance therebetween such that the light source and the camera
are moved along the fixed one-dimensional linear path in
unison along the length of the component during the linear scan
while maintaining the fixed distance therebetween, and wherein
the rotation of the component and fixed one-dimensional
movement of the linear translator enables the fastener to be
scanned during the scanning process.
Corrected App. Br. 3-4 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Reeves US 4,644,394 Feb. 17, 1987
Castore et al. US 5,521,707 May 28, 1996
(“Castore”)
Migdal et al. US 6,044,170 Mar. 28, 2000
(“Migdal”)
Mufti et al. (“Mufti”) US 6,055,329 Apr. 25, 2000
REJECTIONS
The Examiner rejected the claims as obvious under 35 U.S.C. § 103(a)
as follows: (1) claims 1, 2, 4, 7, 8, 10—13, 15, 18, 19, 21, 22, 34—36, 39, 41—
44, 46—50, and 52—63 over Reeves in view of Mufti; (2) claims 9, 20, 38, 45,
and 51 over Reeves in view of Mufti and further in view of Migdal; and (3)
claim 40 over Reeves in view of Mufti and further in view of Castore. Final
Act. 3, 19, and 20.
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Application 12/571,836
OPINION
Appellant groups the claims into five groups. App. Br. 6—7.
However, Appellant argues the nonobviousness of claim 1, and submits that
all other pending claims are nonobvious on the same grounds as for claim 1.
Id. at 15, 19, and 20. We select claim 1 as representative of the group.
Combining Reeves and Mufti
Appellant argues that the foundational issue on appeal is whether
Reeves, as a primary reference, may be combined with Mufti as a secondary
reference, without resort to hindsight. Id. at 8.
According to the Examiner, Reeves teaches holding a component
(object) stationary while moving linearly and rotationally a light source and
camera, while Mufti teaches rotating and translating the component while
holding the light source stationary. Final Act. 2. The Examiner finds that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to combine the teachings of Reeves and Mufti for multiple
reasons. First, the Examiner finds that although Reeves teaches horizontal
orientation of the object (pipe) and Mufti teaches vertical orientation of the
object, it would have been obvious that the orientation of the objects serves
no particular purpose and is a matter of perspective. Id. at 8. Second, the
Examiner finds that, although Reeves teaches rotating the translation stage to
which the light and camera are attached, it would have been obvious
maintain the light and camera in a stationary position and rotate the object,
as taught by Mufti, where the object is small and requires less energy to be
rotated than does the light and camera, and there is less chance of damage to
the light and camera. Id. Third, the Examiner finds that it would have been
obvious to use an inspection field wider than the fastener, as taught in Mufti,
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to detect both left and right profiles of the fastener at the same time for
multiple reasons, including better precision and faster evaluation. Id. at 8—9.
The Examiner additionally finds that it would have been obvious to
use a line scan camera in place of the video camera disclosed in Reeves,
since they are art-recognized equivalents. Id. at 9. Finally, the Examiner
finds that it would have been obvious to use an LED as a light source, as
LEDs are art-recognized equivalents to the general light source used in
Reeves. Id.
Appellant rejects the Examiner’s reasons for combining Reeves and
Mufti. See App. Br. 11. Appellant argues the Examiner impermissibly
“picks and chooses” parts of the references, while excluding other parts, or
alternatively, selectively chooses elements based on hindsight, because
Reeves and Mufti disclose thread inspection systems that are different in
their physical structure and principles of operation from each other and from
the claims. App. Br. 11—12. Appellant also argues that the proposed
combination would change the principle of operation of the prior art
invention. Id. at 13; see also Reply Br. 2—\. Appellant further argues that
the combination of references is based on improper use of hindsight. Id. at
14.
Appellant argues that consideration of the entirety of the references
would have taught away from the combination. Id. at 12. For this argument,
Appellant points to the statement in Reeves that “[[t]here is no necessity to
rotate the pipe being inspected. . . .” and in Mufti that “system accuracy is
highly dependent upon the rotation drive means and the ability to accurately
position the part. ...” Id. at 12—13 (emphasis in original).
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Addressing the last issue first, “teaching away” requires more than the
mere expression of a general preference. Galderma Labs., L.P., v. Tolmar,
Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). It requires that a reference
discourages one of ordinary skill in the art from following the path set out in
the reference, or leads that person in a direction divergent from the path
taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). On
the record before us, the references do not teach away from each other or the
claimed invention.
With respect to the other issues raised by Appellant, “[a]ny judgment
on obviousness is in a sense necessarily a reconstruction based upon
hindsight reasoning, but so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the claimed invention
was made and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). In the Final Action and Answer, the Examiner
sufficiently explains why one of ordinary skill in the art would have made
the combination of which Appellant complains. Final Act. 8—9; Ans. 8—9.
“If a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond that person’s skill.” KSR Int’l v. Teleflex Inc., 550
U.S. 398, 401 (2007). KSR applies here. Although the apparatus disclosed
in Reeves applies to devices, such as oil and gas well pipes, that are
substantially larger than the threaded screws or bolts to which Mufti is
drawn, the concept of inspecting the threads by use of rotation, a light
source, a camera, and a processor is similar, and the principle of operation is
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similar. We are not persuaded by Appellant’s arguments that the Examiner
indulged in hindsight reconstruction such that Reeves and Mufti cannot be
combined.
Obviousness of Claim 1 in View of Alleged
Factual Errors Made by the Examiner
Appellant also argues that claim 1 is not obvious because the
Examiner made factual errors in rejecting claim 1. App. Br. 15. We address
each of the purported errors below.
First, Appellant disputes the Examiner’s finding that Reeves discloses
“a rotatable fixture . . . to rotate the held fastener relative to a light source
and camera”. Id. (emphasis in original). Appellant contends that Reeves
discloses a pipe, not a fastener, and lauds not rotating the pipe. Id. The
Examiner responds that a threaded pipe is a fastener, which is hardware that
joins two components. Ans. 22. We agree. The Examiner also points out
that the pipe (fastener) rotates with respect to the light source and camera,
which we find to be factually accurate. See id. In addition, Mufti discloses
a fastener that rotates. Mufti col. 4,11. 64—67.
Appellant next argues that Reeves does not disclose “a light
source. . . to project a plane of light having a width wider than the width of
the fastener.” App. Br. 16 (emphasis in original). In the Final Action, the
Examiner found that “Reeves fails to disclose . . . rotating the fastener via
the rotating fixture” and correctly identified Mufti as teaching this limitation
(Final Act. 7). In the Answer, the Examiner agreed that this limitation is
missing from Reeves. Ans. 22—23. As Mufti teaches the limitation, and
Appellant does not dispute this, it is not reversible error that Reeves fails to
disclose this limitation. .
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Appellant contends that the Examiner erred in finding that Reeves
teaches the processor of the claims and in identifying it as “processor 21” of
Reeves. App. Br. 17. Appellant is correct that element 21 in Reeves is a
video camera, not a processor. However, in the Answer, the Examiner
identifies the processor shown in Figure 11, and that it is in communication
with both the translation stage and the detector. Ans. 23. Figure 11 of
Reeves supports the Examiner’s finding.
Appellant then contends that the Examiner erred in finding that Mufti
discloses “rotating the fixture to cause the held fastener to rotate about an
axis” because Mufti does not disclose a fixture that rotates. App. Br. 17—18.
The Examiner responds that Mufti discloses a vacuum chuck that rotates.
Ans. 23. The portions of Mufti cited in support state that “the workpiece . . .
is rotated in successive positions by the positioning system 22,” which is
also identified as a vacuum chuck. Mufti col. 7,11. 62—645, col. 8,11. 16—19.
It is reasonable to conclude that some part of the positioning system must
rotate if it is to rotate the workpiece. We do not find Appellant’s argument
to the contrary persuasive.
Appellant finally argues that Mufti does not disclose a camera. App.
Br. 18. The Examiner responds that Mufti discloses an imaging array,
“which is by definition a camera (visual image recorder).” Ans. 23. Mufti
teaches “a video imaging method and device” (column 3, lines 48—49),
“video image collection and analysis” (column 4, lines 3—4), and use of “a
two dimensional solid state detector array such as the kind used in CCD or
CID cameras” (column 4, lines 19—20). Mufti sufficiently discloses a
camera.
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Based on this record, Appellant has not established that the Examiner
erred in finding claim 1 obvious over Reeves in view of Mufti.
Obviousness of Claims 2, 4, 7, 8, 10—13, 15, 18,
19, 21, 22, 34-36, 39, 41-44, 46-50, and 52-63
Appellant argues that claims 2, 4, 7, 8, 10-13, 15, 18, 19, 21, 22, 34—
36, 39, 41—44, 46—50, and 52—63 are not obvious over Reeves in view of
Mufti for the same reasons as argued for claim 1. App. Br. 19. For the
reasons provided above, Appellant has not established that the Examiner
erred in rejecting these claims as obvious.
Obviousness of Claims 9, 20, 38, 45, and 51 over
the Combination of Reeves, Mufti, and Migdal
Appellant contends that claims 9, 20, 38, 45, and 51 are patentable
over Reeves in combination with Mufti and Migdal. App. Br. 19—20.
Appellant describes Migdal’s teaching, but makes no argument that Migdal
is not combinable with Reeves and Mufti. Id. Appellant relies on his
arguments regarding patentability of claim 1 to support patentability of
claims 9, 20, 38, 45, and 51. Appellant fails to establish that the Examiner
erred in rejecting these claims for the reasons provided above.
Arguments in the Reply Brief
Appellant raises two arguments in the Reply Brief. The first, that the
Examiner’s proposed combination changes the principle of operation of
Reeves, was previously raised by Appellant in the Appeal Brief at page 13.
Reply Br. 2. Appellant does not purport to be responding to a new issue
raised by the Examiner in the Answer. Any new arguments and new facts
relied upon in the Reply Brief which were not raised or relied upon in the
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Appeal Brief will not be considered by the Board unless good cause is
shown. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41,
41.47 and 41.52, any arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal.”); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010).
We addressed the issue of the principle of operation of the prior art above
and decline to respond to new arguments made for the first time in the Reply
Brief.
The second argument in Appellant’s Reply Brief, that “the prior art
fails to teach a fixed one-dimensional linear path movement of the camera
and light source,” Appellant raises for the first time, allegedly in response to
the Examiner’s Answer. Id. at 4. However, the portion of the Answer that
Appellant identifies in asserting this new argument (pages 6—7 of the
Answer) is identical to the Final Action at page 6. Therefore, Appellant
again raises new arguments in the Reply Brief which were not raised or
relied upon in the Appeal Brief. We decline to consider the new arguments.
See 37 C.F.R. § 41.37(c)(l)(iv).
In the Answer, the Examiner raises a new point that Appellant
responded to in the Reply Brief. Specifically, the Examiner found that
“[rotation of one part or another to cause them to rotate in relation to one
another has a finite number of solutions,” and concluded that it “would have
been within the ordinary skill in the art to try.” Ans. 8. Appellant responds
that there are numerous parameters that can vary in order to inspect a part
and the prior art provides no indication of which parameters are critical and
no direction as to which of many possible choices is likely to be successful.
Reply Br. 4—5 (citing In re Kubin, 561 F.3d 1351, 1358 (Fed. Cir. 2009). In
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Kubin, the Federal Circuit explained that “where a defendant merely throws
metaphorical darts at a board filled with combinatorial prior art possibilities,
courts should not succumb to hindsight claims of obviousness.” Kubin, 561
F.3dat 1359. The Federal Circuit also cited KSR for the Supreme Court’s
statement “that where a skilled artisan merely pursues ‘known options’ from
a ‘finite number of identified, predictable solutions,’ obviousness under
§103 arises.” Id. (citing KSR, 550 U.S. at 421. In the instant case, the
combination of Reeves and Mufti would have provided a skilled artisan with
known options from a finite number of identified, predictable solutions,
rendering the claims obvious.
On the record before us, Appellant has not identified a reversible error
in the Examiner’s conclusion that the system of claim 1 would have been
obvious over the teachings of Reeves in view of Mufti. For the same
reasons, Appellants have not identified a reversible error in the Examiner’s
rejection of claims 2, 4, 7—13, 15, 18—22, 34—36, and 38—63.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 4,
7—13, 15, 18—22, 34—36, and 38—63 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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