Ex Parte Pettersson

Patent Trial and Appeal BoardMar 28, 2019

12520427 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/520,427 07/16/2009 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 04/01/2019 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Bo Pettersson 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. 1515-1103 9020 EXAMINER MCDONALD, SHANTESE L ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BO PETTERSSON Appeal 2018-005638 Application 12/520,427 1 Technology Center 3700 Before EDWARD A. BROWN, BEYERL Y M. BUNTING, and LEE L. STEPINA, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bo Pettersson ("Appellant") seeks review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 1-3, 5-7, 10-20, and 22-24. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 The Appeal Brief identifies Hexagon Metro logy AB as the real party in interest. Appeal Br. 1. Appeal 2018-005638 Application 12/520,427 CLAIMED SUBJECT MATTER Claims 1, 3, and 17 are independent claims. Illustrative claim 1 reads as follows: 1. A method for the compensation of geometrical errors that arise as a result of externally applied forces or cutting forces in processing machines, comprising: arranging a workpiece holder relative to a fixture in the processing machine to which the workpiece holder is attached; measuring magnitudes and directions of the applied or cutting forces that arise in the processing machine when processing is being carried out; and compensating angular errors caused by forces applied by displacing and rotating the work piece holder, wherein the workpiece holder is arranged such that the workpiece holder is adjustable on a basis of measurement signals from at least one sensor that have been received by the workpiece holder. Appeal Br. 23 (Claims App.). REJECTIONS 2 Claims 1-3 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Spaan (US 5,492,440, issued Feb. 20, 1996). Claims 1-3, 5-7, 10-16, and 24 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Akeel (US 6,425,177 B 1, issued July 30, 2002). Claim 24 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Spaan. 2 The rejection of claims 1-3, 5-7, 10-16, and 24 under 35 U.S.C. Â§ 112, second paragraph, has been withdrawn. Ans. 5; Final Act. 2. 2 Appeal 2018-005638 Application 12/520,427 Claims 3, 5-7, 10-20, 22, and 23 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Spaan and Akeel. Claims 17-20, 22, and 23 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Akeel. ANALYSIS Anticipation by Spaan (Claims 1-3) Appellant argues claims 1-3 together in contesting the rejection. See Appeal Br. 6-11. Accordingly, we decide the appeal of this rejection based on claim 1, with claims 2 and 3 standing or falling with claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (permitting the Board to select a single claim to decide the appeal as to a ground of rejection of a group of claims argued together). The Examiner finds that Spaan discloses all limitations of claim 1. Final Act. 3 ( citing Spaan, col. 2, 11. 47-64, col. 5, 11. 27-33). Appellant contends that Spaan's device lacks "dynamic compensation." Appeal Br. 5. According to Appellant, "the present invention relates to a dynamic compensation of non-alignment of a workpiece during working on the workpiece, wherein the non-alignment is caused by external forces applied to the workpiece during working on the workpiece." Id. (boldface omitted). The Examiner responds that Appellant's Specification does not disclose "dynamic compensation." Ans. 5. The Examiner submits that the Specification discloses "measuring the external forces applied, then compensating for those forces." Id. 3 Appeal 2018-005638 Application 12/520,427 We understand Appellant's position is that "dynamic compensation" means compensation of non-alignment of a workpiece when external forces are being applied to the workpiece. Appeal Br. 8. Claim 1 recites "measuring magnitudes and directions of the applied or cutting forces that arise in the processing machine when processing is being carried out" and "compensating angular errors caused by forces applied by displacing and rotating the work piece holder." Id. at 23 (Claims App.) ( emphasis added). First, claim 1 does not recite the term "dynamic compensation." And, as noted by the Examiner, this term is not found in Appellant's Specification. See Ans. 5. Second, claim 1 recites "compensating angular errors" "by displacing and rotating the work piece holder." Claim 1 does not recite compensating non-alignment of a workpiece. In fact, claim 1 does not even recite the term "workpiece." We also note that Appellant's Specification does not appear to describe that the present invention compensates "non- alignment of a workpiece." Appellant's argument is premised on unclaimed ( and non-disclosed) limitations. However, limitations that do not appear in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellant acknowledges that Spaan's apparatus has three translation axes and two rotation axes, that is, five axes. Appeal Br. 8. The apparatus can be a five-axis milling machine. See Spaan, col. 4, 11. 4--9. Spaan discloses that workpiece table 22 is rotatable around axis B. See id. at col. 4, 11. 4--9, Fig. 1. Spaan also describes "geometric errors" including "[g]eometric errors due to finite stiffness of the elements of the apparatus. In the case of heavy workpieces or large forces between workpiece and tool a deviation of the position between the tool and the workpiece will result[.]" 4 Appeal 2018-005638 Application 12/520,427 See id. at col. 4, 11. 32-35. Spaan describes that the apparatus compensates for geometric errors. See id. Abstract. Spaan also describes real-time error correction in a milling machine. See id. at col. 5, 11. 33-36. Appellant does not provide any persuasive argument in the Appeal Brief why Spaan does not disclose each of the limitations recited in claim 1. Appellant also discusses the terms "adapted to" and "configured to." Appeal Br. 8-9. However, neither one of these terms is recited in claim 1. Appellant also discusses the use of functional limitations in claims. Id. at 9- 10. But then Appellant explains, "the claims were amended in the last Amendment to remove terms such as 'configured' and 'arranged[."'] However, even if still present they would have patentable weight." Id. at 10 ( emphasis added). Appellant then discusses the use of "intended use" language. Id. at 10-11. To the extent Appellant is contending that Spaan does not meet the limitation "compensating angular errors" recited in claim 1 (id.), Appellant provides no persuasive argument in the Appeal Brief to support this contention. In the Reply Brief, Appellant presents separate argument for patentability for claims 1 and 3. Reply Br. As noted above, however, in the Appeal Brief, Appellant argues claims 1-3 as a group. And, we have selected claim 1 as the representative claim to decide this rejection. 37 C.F.R. Â§ 41.41(b)(2) states: Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Accordingly, we will not consider Appellant's untimely argument as to claim 3 in this appeal. 5 Appeal 2018-005638 Application 12/520,427 Also in the Reply Brief, Appellant contends that Spaan discloses "the compensation of 'errors' in the driving mechanism" and not "compensation of an error arising from 'external forces' or 'cutting forces' as claimed." Reply Br. 3. However, this argument is not made in the Appeal Brief, and it does not seem to be responsive to any argument raised in the Examiner's Answer. For this situation, 37 C.F.R. Â§ 4I.41(b)(2) states: Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown. (Emphasis added). As Appellant has not shown good cause, we will not consider this untimely argument in this appeal. For the foregoing reasons, we sustain the rejection of claim 1 as anticipated by Spaan. Claims 2 and 3 fall with claim 1. Anticipation by Akeel (Claims 1-3, 5-7, 10-16, and 24) Appellant argues claims 1-3, 5-7, 10-16, and 24 together in contesting the rejection. See Appeal Br. 11-17. Accordingly, we decide the appeal of this rejection based on claim 1, with claims 2, 3, 5-7, 10-16, and 24 standing or falling with claim 1. The Examiner finds that Akeel discloses measuring processing forces with sensors, and compensating geometrical errors ( angular errors) and applied forces caused by the processing forces with an adjustable workpiece holder. Final Act. 3; Ans. 6. Appellant contends that Akeel discloses changing the applied force on a locator plate, whereas "the object of the present invention is to compensate for the forces applied by displacing and rotating a workpiece holder so that 6 Appeal 2018-005638 Application 12/520,427 the forces applied do not influence the resulting form and dimensions of the product being processed." Appeal Br. 12 (underlining added). As discussed above, claim 1 does not recite a product or a workpiece, and thus, does not recite processing the same. Accordingly, claim 1 also does not recite that the compensating step has any effect on the "resulting form and dimensions" of a product. Appellant also contends that "errors occurring due to the limited stiffness of the product may be compensated for, whereas in Akeel it is only the amount of the clamping force that is changed." Id. As claim 1 does not recite a product, it also does not recite any limitation relating to the stiffness of any product, much less recite that the compensating step compensates for "error occurring due to the limited stiffness." As such, Appellant's contentions are premised on unclaimed limitations, and thus, are unpersuasive. In re Self, 671 F.2d at 1348. Appellant also contends that Akeel's hexagonal-shaped locator plates 43 "have the sole purpose of supporting the joints of the actuators." Appeal Br. 13. We disagree. Akeel discloses that the locator plates can be used to mount an object, such as a clamp or tool. See, e.g., Akeel, col. 3, 11. 57-59. Appellant also contends that the locator plates cannot perform the function of being a vise or a worktable. Appeal Br. 13. Even assuming this contention is correct, claim 1 does not recite a vise or worktable. 3 Appellant also contends that Akeel's locator plate "cannot directly act on the 3 We note claim 24, which depends on claim 1, recites a worktable. Id. at 28 (Claims App.). We construe claim 1 not to require the limitation of claim 24; otherwise, claim 24 would not further limit claim 1. AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003) ("Under the doctrine of claim differentiation, dependent claims are presumed to be of narrower scope than the independent claims from which they depend."). 7 Appeal 2018-005638 Application 12/520,427 workpiece, as can the workpiece holder of the present invention." Id. This argument is premised on unclaimed limitations, and thus, is unpersuasive. Appellant also contends that Akeel' s control cannot address "the dynamic forces generating while working on the workpiece." Id. at 14. Again, Appellant contends that, in contrast to Akeel, the present invention relates to compensating non-alignment of a workpiece during working on the workpiece. Id. at 15. However, claim 1 does not recite "working on the workpiece," much less "a cutting tool being forced against a rotating workpiece in a turning machine, or on a stationary workpiece in a milling machine," as discussed by Appellant. Id. Appellant contends that a skilled artisan would understand that "during processing" "is about a continuous monitoring and compensation, as it is referred to being used for monitoring and compensating externally applied forces such as cutting forces in processing machines." Id. at 15-16. The Examiner submits that "during processing" means "anytime during the manufacturing of the workpiece. That includes from the time work has started on the workpiece until the workpiece is finished." Final Act. 6. The measuring step in claim 1 recites "measuring magnitudes and directions of the applied or cutting forces that arise in the processing machine when processing is being carried out." Appeal Br. 23 (Claims App.) (emphasis added). The compensating step does not recite when the compensating is performed. Claim 1 also does not recite that either the measuring step or the compensating step is performed continuously. Accordingly, Appellant's contentions regarding "during processing" are premised on unclaimed limitations. Further, Appellant provides no 8 Appeal 2018-005638 Application 12/520,427 persuasive evidence to show how a skilled artisan would understand the meaning of "during processing," as recited in claim 1. Accordingly, Appellant does not apprise us of any error in the Examiner's rejection of claim 1. We sustain the rejection of claim 1 as anticipated by Akeel. Claims 2, 3, 5-7, 10-16, and 24 fall with claim 1. Obviousness over Spaan (Claim 24) Claim 24 depends from claim 1 and recites, "the workpiece holder is generally round and is a worktable, and the fixture is generally round." Appeal Br. 28 (Claims App.). The Examiner finds that Spaan discloses a round worktable, but does not disclose a round fixture. Final Act. 4. The Examiner reasons, however, that it would have been an obvious matter of design choice to modify Spaan's apparatus to make the fixture supporting the worktable round because Appellant has not disclosed that a round fixture provides an advantage, is used for a particular purpose, or solves a stated problem. Id. Appellant quotes the description that is found at page 4, lines 7-19 of the Specification and which pertains to Figure 2. Appeal Br. 18. Appellant asserts that this description notes that "the generally round workpiece holder permits assembly of the device without requiring an additional plate or two pivot joints placed perpendicularly," and thus, "the generally round worktable is not design choice." Id. Appellant's contention is not persuasive. We understand Appellant's essential contention is that the recited generally round workpiece holder provides an advantage, that is, "[it does not require] an additional plate or two pivot joints placed perpendicularly." First, the Examiner finds that 9 Appeal 2018-005638 Application 12/520,427 Spaan discloses a round worktable, and Appellant does apprise us of any error in this finding. Second, Appellant does not address the Examiner's proposed modification of Spaan'sfixture. Third, the description at page 4, lines 7-9 of the Specification does not disclose or imply that a "generally round" worktable shape, in particular, provides the purported advantage, but other shapes would not have this purported advantage. In other words, this description does not explicitly link the shape of workpiece holder 10 to the purported advantage. As Appellant's contentions do not apprise us of any error in the Examiner's findings or reasoning, we sustain the rejection of claim 24 as unpatentable over Spaan. Obviousness over Spaan and Akeel (Claims 3, 5-7, 10-20, 22, and 23) Appellant argues claims 3, 5-7, 10-20, 22, and 23 together in contesting the rejection. See Appeal Br. 19-20. Accordingly, we decide the appeal of this rejection based on claim 3, with claims 5-7, 10-20, 22, and 23 standing or falling with claim 3. The Examiner finds that Spaan discloses the claimed invention except for "actuators that change length." Final Act. 4. The Examiner finds that Akeel discloses six extendable actuators with individual sensors. Id. ( citing Akeel, Fig. 5). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to use the active error compensation of Spaan with Akeel' s workpiece holder "to compensate for errors that could arise during processing." Id. Appellant reproduces Figure 5 of Akeel, and contends that Akeel' s actuators are locked together in pairs, thereby having the effect that each pair 10 Appeal 2018-005638 Application 12/520,427 of actuators works as a single unit. Appeal Br. 20. Thus, Appellant contends, there is no ability in Akeel for "the workpiece holder compensating angular errors caused by forces displacing and rotating the work piece holder during processing," as recited in claim 3. Id. Appellant asserts there are simply insufficient degrees of freedom in the technology of Akeel. Id. The Examiner responds that Akeel can adjust to compensate angular errors caused by forces. Ans. 7 (citing Akeel, col. 9, 11. 8--42). Even if Akeel's actuators 34, 35, 39, 40, 41, and 42 shown in Figure 8 are "locked together in pairs," Appellant does not explain persuasively why this arrangement of the actuators would prevent Akeel' s "workpiece holder compensating angular errors caused by forces displacing and rotating the work piece holder during processing." For example, Appellant does not explain why Akeel' s apparatus is not capable of displacing or rotating the locator plate. We also note that Akeel describes that "if fewer than six degrees of freedom are required, by mechanically coupling the actuators to move in dependent groups, the number of degrees of freedom can be reduced." See Akeel, col. 12, 11. 10-13. This description implies that, in other embodiments, the actuators are not required to be mechanically coupled. Appellant also contends that Akeel does not compensate for the failure of Spaan to teach "dynamic compensation" of non-alignment of a workpiece. Id. However, claim 3 does not recite "dynamic compensation," a "workpiece," or "non-alignment of a workpiece." Accordingly, Appellant's contentions are premised on unclaimed limitations. Accordingly, Appellant does not apprise us of any error in the Examiner's findings or reasoning in rejecting claim 3. We sustain the 11 Appeal 2018-005638 Application 12/520,427 rejection of claim 3 as unpatentable over Spaan and Akeel. Claims 5-7, 10- 20, 22, and 23 fall with claim 3. Obviousness over Akeel (Claims 17-20, 22, and 23) Appellant argues claims 17-20, 22, and 23 together in contesting the rejection. See Appeal Br. 20-21. Accordingly, we decide the appeal of this rejection based on claim 17, with claims 18-20, 22, and 23 standing or falling with claim 1 7. Claim 17 recites, in part, "a generally round workpiece holder" and "generally round fixture." Appeal Br. 26 (Claims App.). The Examiner finds that Akeel discloses the claimed arrangement except for a round work holder and a round fixture. Final Act. 5. The Examiner determines that the claimed invention and Akeel both connect to the fixture and holder in the same, offset triangular pattern, as shown in Figure 8 of Akeel. Id. The Examiner concludes that it would have been an obvious matter of design choice "to shape the holder and fixture as necessary for the work being held, as the connection points of the actuators are the same in both instances." Id. Appellant contends that the Examiner's obvious design choice position is in error for the same reasons as those presented for the rejection of claim 24 over Spaan, as discussed above. Appeal Br. 21. This argument is unpersuasive for the same reasons discussed above for the rejection of claim 24 over Spaan. Accordingly, we sustain the rejection of claim 17, and of claims 18-20, 22, and 23 depending therefrom, as unpatentable over Akeel. 12 Appeal 2018-005638 Application 12/520,427 DECISION We AFFIRM the rejections of claims 1-3, 5-7, 10-20, and 22-24. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13