Ex Parte Dickinson

Patent Trial and Appeal Board

Jan 29, 2019

13537245 (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/537,245 06/29/2012 Brian Ray Dickinson
63796 7590 01/31/2019
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
TROY, MI 48084
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.
TTI11-34202/08 4974
EXAMINER
VON BUHR, MARIAN
ART UNIT PAPER NUMBER
2117
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
MichiganPatTM@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN RAY DICKINSON
Appeal2017-002433
Application 13/537,245
Technology Center 2100
Before JEREMY J. CURCURI, JUSTIN BUSCH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-17. Final Act. 1. We heard the appeal on January
9, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over
Dickinson (US 7,500,318 B2; iss. Mar. 10, 2009). Final Act. 2-3.
Claims 2, 4, and 5 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Dickinson and Ogawa '976 (JP 2002-263976 A; publ. Sept. 17,
2002). Final Act. 3--4.
1 According to the Appellant, the real parties in interest are Toyota Motor
Engineering & Manufacturing North America, Inc. and Toyota Motor
Corporation. App. Br. 1.
Appeal2017-002433
Application 13/537,245
Claim 3 is rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over
Dickinson and Rudolf (US 5,850,789; iss. Dec. 22, 1998). Final Act. 4.
Claims 6, 7, and 12 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Dickinson and Matsumoto (US 5,983,166; iss. Nov. 9, 1999).
Final Act. 4--5.
Claims 8, 10, 11, 13, 15, and 16 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Dickinson, Matsumoto, and Ogawa '976. Final
Act. 5.
Claims 9, 14, and 17 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Dickinson, Matsumoto, and Rudolf. Final Act. 5.
We affirm.
STATEMENT OF THE CASE
Appellant's invention relates to "a contrast target tool having a marker
end that can be tracked by a digital imaging system and used to place a
visible mark on a surface at a desired location." Spec. ,r 1. Claim 1 is
illustrative and reproduced below:
1. A contrast target tool for locating and marking a
desired location on a three-dimensional object, said
contrast target tool comprising:
a target flange having a plurality of contrast targets
thereon; and
a marker rigidly attached to and extending from said target
flange, said marker having a marker end operable to produce a
mark on the three-dimensional object;
said target flange with said marker operable to be viewed
by a digital imaging system such that a present location of said
marker end is determined, tracked in real time and provided to
an operator in order to allow the operator to grasp said target
flange and locate and place said marker end at the desired
2
Appeal2017-002433
Application 13/537,245
location on the three-dimensional object and produce a mark
thereon.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, 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 his or her skill. Sakraida [ v. Ag Pro, Inc.,
425 U.S. 273 (1976)] and Anderson's-Black Rock[, Inc. v.
Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative-a
court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,417 (2007).
ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIM 1 OVER DICKINSON
Contentions
The Examiner concludes claim 1 is obvious over Dickinson. Final
Act. 2-3. The Examiner finds "Dickinson does not specify that the
disclosed tool adaptor is a marker, as instantly claimed, to produce a mark
on the three-dimensional object." Final Act. 2. The Examiner takes Official
3
Appeal2017-002433
Application 13/537,245
Notice "as to the well-known nature of marking type tools in the
manufacturing/machining arts." Final Act. 2. The Examiner reasons
[i]t would have been obvious, to one having ordinary skill in the
art, at the time the instant invention was made, to utilize any well-
known such marking tool in the manufacturing environment of
Dickinson, dependent upon the application of such
manufacturing, since it has been held to be within the general
skill of a worker in the art to select a known material on the basis
of its suitability for the intended use as a matter of obvious design
choice.
Final Act. 2 (citing In re Leshin, 277 F.2d 197 (CCPA 1960)); see also Adv.
Act. 2 ("it would have been obvious to add a marker to the tool/target
member of Dickinson").
Appellant presents the following principal arguments:
1. "[T]he Examiner provides no prior art that teaches or fairly
suggests a marker rigidly attached to and extending from a target flange of a
contrast target tool." App. Br. 5; see also Reply Br. 2 ("Dickinson is
directed to the opposite of the current application as recited in the claims,
i.e., Dickinson teaches away from the pending claims ... the teachings of
Dick[in]son and the current application are directed to two very different
purposes").
11.
[T]he claims do not recite a target flange made from a known
material, but that a combination of a target flange and a marker
allows an operator to grasp the target flange, locate and place the
marker end at the desired location on a three-dimensional object
and produce a mark thereon.
App. Br. 8 ( citing Leshin ); see also Reply Br. 3 ("[T]he pending claims do
not recite a target flange made from a known material.").
4
Appeal2017-002433
Application 13/537,245
111. "Replacing the threaded rod with a marker would prevent
secure attachment of the target flange to a component and render the
invention of Dickinson unsatisfactory for its intended use." App. Br. 8.
IV.
[A]dding a marker to the adapter 20 shown above would have no
purpose except to mark a position next to items such as "as holes
and studs within or on components, frame, tooling, etc." that
have been accurately located. Such a modification does not make
sense and such a tool would not be useful.
App. Br. 9-10; see also Reply Br. 4.
In response, in the Examiner's Answer, the Examiner further reasons
further accuracy [ of placement of manufacturing operations]
would [have been] attainable either by marking first and then
performing attachment/cutting, etc., and/or by attachment of the
adapter of Dickinson to a surface and further marking of
additional manufacturing locations. In other words, all the
claimed elements were known in the prior art and one skilled in
the art could have combined the elements as claimed by known
methods ( attaching) with no change in their respective functions,
and the combination would have yielded nothing more than
predictable results to one of ordinary skill in the art at the time of
the invention, i.e., one skilled in the art would have recognized
that adding a marker to the adapter of Dickinson would have
allowed for accurately marking surfaces during manufacturing.
Ans. 5.
The Examiner further reasons
it would have been obvious to one having ordinary skill in the
art, at the time the instant invention was made, to utilize such
well-known materials (markers of various known types) with the
adapter of Dickinson for its intended purpose of accurately
identifying locations on a surface upon which manufacturing
operations are to take place.
Ans. 5.
5
Appeal2017-002433
Application 13/537,245
The Examiner further reasons
The teaching of Dickinson that "allows a user to secure a contrast
or reflective target relative to a desired location and yet provide
freedom of movement such that the target location can be
positioned as desired" allows for "locating and placing" the
target member, and when modified by adding a marker tool, as
would have been obvious to one having ordinary skill in the art,
as addressed above, would result in a mark being placed where
desired. Such functionality is "read-on" by the instant claim
language.
Ans. 6.
The Examiner further reasons
the purpose of markers of various types ( as shown at least by
Ogawa and Rudolf, as detailed above) is to make marks at points
on a manufactured surface, and the purpose of Dickinson is to
accurately locate points on a manufactured surface. Therefore,
modifying the adapter of Dickinson to accurately locate, and
mark, points on a manufactured surface would have been obvious
to one having ordinary skill in the art.
Ans. 6.
Our Review
We do not see any error in the Examiner's findings. We concur with
the Examiner's conclusion of obviousness.
Dickinson discloses a "threaded attachment position adapter used for
aiding in the accurate location measurement of items such as holes and studs
within or on components, frames, tooling, etc." Dickinson Abstract.
Dickinson discloses the adapter including a "target arm with a contrast or
reflective target set thereon" to "aid in determining [an item's] accurate
location." Dickinson Abstract. Put another way, Dickinson's adaptor
6
Appeal2017-002433
Application 13/537,245
performs the function of accurate location measurement of an item with
respect to the contrast target set.
The Examiner has taken Official Notice of a marker for marking
locations. Final Act. 2; see also Ans. 5 (citing Ogawa '976 Abstract, Figs.
1-2, marking punch 4; Rudolf Abstract, Fig. 3, pen 92). The marker
performs the function of marking a location.
The marker for marking locations is readily-applicable to Dickinson's
adaptor because Dickinson's contrast target set performs the function of
accurate location measurement for any element fixedly or rigidly attached to
the contrast target set, such as Dickinson's "fixedly attached [] sleeve."
Dickinson Abstract. A skilled artisan would have understood that
Dickinson's contrast target set would perform this same function for any
other fixedly or rigidly attached item, such as the marker. At the same time,
the marker still performs its same function of marking the location. In short,
adding the marker to Dickinson's adapter would have been a predictable use
of prior art elements according to their established functions-an obvious
improvement. See KSR, 550 U.S. at 417; see also Ans. 5, 6.
Regarding Appellant's argument (i), this argument does not show any
error in the Examiner's findings and conclusions because, as explained
above, Dickinson combined with the Official Notice teaches the claimed
subject matter. See Ans. 5. Further, although an alternative may be inferior
to or less desirable than another, that alone is insufficient to teach away from
the inferior alternative unless the disclosure criticizes, discredits, or
otherwise discourages that alternative. In re Fulton, 391 F.3d 1195, 1200-
01 (Fed. Cir. 2004). Here, to the extent accurate locating of a marker fixedly
or rigidly attached to Dickinson's adaptor is inferior to or less desirable than
7
Appeal2017-002433
Application 13/537,245
accurately locating the sleeve disclosed in Dickinson, we do not see where
Dickinson criticizes, discredits, or otherwise discourages such an
arrangement.
Regarding Appellant's argument (ii), this argument does not show any
error in the Examiner's findings and conclusions because adding the marker
to Dickinson's adapter would have been a predictable use of prior art
elements according to their established functions-an obvious improvement.
See KSR, 550 U.S. at 417; see also Ans. 5, 6.
Regarding Appellant's argument (iii), this argument does not show
any error in the Examiner's findings and conclusions because Dickinson
combined with Official Notice teaches adding the marker to Dickinson's
adaptor and the proposed combination does not replace the sleeve and rod in
Dickinson. See Adv. Act. 2; see also Ans. 6.
Regarding Appellant's argument (iv), this argument does not show
any error in the Examiner's findings and conclusions because adding the
marker to Dickinson's adaptor allows Dickinson's contrast target set to
perform this same function for the sleeve or for the marker. Further, the
sleeve and the marker may each be used individually such that the marker
may mark any location and is not limited to marking locations near items
accurately located by the sleeve.
We, therefore, sustain the rejection of claim 1.
THE REMAINING REJECTIONS
Appellant does not present separate arguments for the rejection of
claims 2, 4, and 5 as obvious over Dickinson and Ogawa '976; the rejection
of claim 3 as obvious over Dickinson and Rudolf; the rejection of claims 6,
8
Appeal2017-002433
Application 13/537,245
7, and 12 as obvious over Dickinson and Matsumoto; the rejection of claims
8, 10, 11, 13, 15, and 16 as obvious over Dickinson, Matsumoto, and Ogawa
'976; or the rejection of claims 9, 14, and 17 as obvious over Dickinson,
Matsumoto, and Rudolf.
Accordingly, for reasons discussed above when addressing claim 1,
we also sustain the rejection of claims 2, 4, and 5 as obvious over Dickinson
and Ogawa '976; the rejection of claim 3 as obvious over Dickinson and
Rudolf; the rejection of claims 6, 7, and 12 as obvious over Dickinson and
Matsumoto; the rejection of claims 8, 10, 11, 13, 15, and 16 as obvious over
Dickinson, Matsumoto, and Ogawa '976; and the rejection of claims 9, 14,
and 17 as obvious over Dickinson, Matsumoto, and Rudolf.
ORDER
The Examiner's decision rejecting claims 1-17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
9