Ex Parte Coogan et al

Board of Patent Appeals and Interferences

Apr 21, 2009

09857688 (B.P.A.I. Apr. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN COOGAN, JUSSI HEIKKOLA, and SIMO SANERMA
____________

Appeal 2009-3305
Application 09/857,688
Technology Center 3700
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Decided1: April 21, 2009
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-3305
Application 09/857,688

2
STATEMENT OF THE CASE
John Coogan et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 15-24, 27-31, 33-35, and 37. Claims
25, 26, and 32 were canceled prior to the final rejection. Claim 36 was
canceled after the final rejection. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The claimed invention is to a method and apparatus for correcting
positioning errors in rock drilling. Spec. para. 0001.
Claims 19 and 23, reproduced below, are representative of the subject
matter on appeal.
19. Rock drilling apparatus comprising a carrier, a
boom having a first end attached to the carrier and
turnable about respective joints in relation to the
carrier, a rock drill attached turnable to the other
end of the boom, joint sensors indicating the
positions of the boom joints, and control devices
for controlling the boom for movement to a
drilling position for drilling a hole, the apparatus
further comprising:
a memory device for storing a first set of
deviations obtained by turning the boom through
incremental turning angles about a first joint axis
of the joints from a reference position to
predetermined angularly spaced intervals about
said first joint axis of the joints, and measuring
using a movement sensor for each such interval a
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deviation of the boom position from a desired
position, and
a calculating device operable during a
drilling operation for using the stored first set of
deviations as correction values for locating the
boom in the desired positions corresponding to the
respective intervals about the first joint axis.

23. A method for correcting positioning errors in a
rock drilling rig,
the rock drilling rig comprising:
a boom attached at one end to a carrier and
being rotatable in relation to the carrier about a
plurality of joints;
a rock drill being turnably mounted to the
other end of the boom; and control devices for
controlling the boom through various positions
until the boom is set in a drilling position for
drilling a hole;
wherein a deviation of the boom's drilling
position is measured from a calculated theoretical
position of where the boom should be located for
drilling, and the boom's drilling position is
corrected on the basis of the measured deviation,
the method comprising the steps of:
storing in memory, a set of deviations
obtained by turning the boom through the various
positions and measuring, at predetermined angular
intervals about at least one joint, the deviation of
the boom's position from a calculated theoretical
position at each interval, and
using the set of stored deviations to correct
the drilling position of the boom relative to the at
least one joint.

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Application 09/857,688

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THE REJECTION
The following Examiner’s rejection is before us for review:
Claims 15-24, 27-31, 33-35 and 37 are rejected under 35 U.S.C. §
102(b) as being anticipated by Rinnemaa (U.S. Pat. No. 5,383,524, issued
Jan. 24, 1995).
The Appellants solely argue independent claims 15, 19, 23, and 34.
The Appellants state that these claims are being argued together. App. Br. 7.
Claims 15 and 23 are directed to methods. Claims 19 and 34 are directed to
apparatuses. We select claim 23 as the representative claim for the group of
method claims rejected as being anticipated by Rinnemaa. We select claim
19 as the representative claim for the group of apparatus claims rejected as
being anticipated by Rinnemaa.

ISSUES
The Appellants contend that the Examiner erred in rejecting apparatus
claim 19 because “claim 19 recites a memory device for storing deviations
obtained by turning the boom through incremental [angles], and measuring
the deviations, and a calculating device operable during a drilling operation
for using the stored deviations as correction values.” App. Br. 7-8
(underlining in original).
The Appellants contend that the Examiner erred in rejecting method
claim 23 because claim 23 recites “the steps of storing deviations obtained
by turning the boom and measuring the deviations, and using the stored
deviations to correct the drilling position of the boom.” App. Br. 8.
For both the method and apparatus claims, the Appellants argue that
Rinnemaa’s invention focuses on correcting for geometry and not for the
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irregularities within mechanical components, and that Rinnemaa does not
store nor measure deviations, but calculates the deviations and stores the
carrier’s inclination into a memory. App. Br. 8-10. Replying to the Answer,
the Appellants contend that “the Examiner is relying on ‘inherency’ to show
features of the claimed invention,” and the Appellants have not relied on
specific uses to distinguish the invention from Rinnemaa. Reply Br. 1-5.
The issues before us are as follows:
1) Have the Appellants shown that the Examiner erred in finding that
Rinnemaa discloses: A) a memory device for storing deviations obtained by
turning the boom through incremental angles, and B) a calculating device
operable during a drilling operation for using the stored deviations as
correction values?
2) Have the Appellants shown that the Examiner erred in finding that
Rinnemaa discloses the steps of: A) storing deviations obtained by turning
the boom and measuring the deviations, and B) using the stored deviations to
correct the drilling position of the boom?

FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. Rinnemaa discloses both a method and rock drilling equipment for
measuring the angle of inclination of the feed beam based on reading
from two orthogonally positioned gravity-operated sensors, and
positioning the drill rod into the desired drilling direction by adjusting
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the feed beam’s inclination by the values obtained from the sensors in
order to properly align the drill rod with the hole to be drilled.
Rinnemaa, col. 1, ll. 7-31.
2. Rinnemaa discloses the rock drilling equipment schematically in
figure 5. Rinnemaa discloses that feed beam angle sensors 7x and 7y,
carrier gravity-operated angle sensors 9x and 9y, boom joint sensors
11, and drill rod positional sensors 12 are all connected to a calculator
unit 13. Rinnemaa discloses that the distances between the boom
joints and other geometrical data pertaining to the boom’s
construction “are applied to the calculator unit in advance so that the
calculator unit is able to calculate the required information on the
basis of the position and angle data provided by the sensors....”
Rinnemaa, col. 6, ll. 52-55.
3. In lieu of separate sensors 9x and 9y, Rinnemaa discloses that when
the boom and feed beam are in fixed positions, the inclination of the
carrier can be obtained directly from the feed beam’s inclination
sensors and the values can then be set into the memory of the
calculator unit. As such, the correction calculations to position the
feed beam and boom are made based on the inclination values stored
in memory. Rinnemaa, col. 7, ll. 50-59.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). It is not necessary that the reference teach what the
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subject application teaches, but only that the claim read on something
disclosed in the reference, i.e., that all of the limitations in the claim be
found in or fully met by the reference. Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772 (Fed. Cir. 1983). However, “[i]nherent anticipation
requires that the missing descriptive material is ‘necessarily present,’ not
merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v.
Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)).
It is well settled that apparatus claims must distinguish over a prior art
apparatus by the structure defined by the claims, and not by a process or
function performed by the apparatus. A prior art apparatus having the same
structure as a claimed apparatus renders a claimed apparatus unpatentable
under § 102 as long as it is capable of performing the claimed process or
function. In re Yanush, 477 F.2d 958, 959 (CCPA 1973); Ex Parte Masham,
2 USPQ2d 1647, 1648 (BPAI 1987). As such, “expressions relating the
apparatus to contents thereof during an intended operation are of no
significance in determining patentability of the apparatus claim.” Ex parte
Thibault, 164 USPQ 666, 667 (BPAI 1969). Furthermore, “inclusion of the
material or article worked upon by a structure being claimed does not impart
patentability to the claims.” In re Otto, 312 F.2d 937, 939 (CCPA 1963).

ANALYSIS
Issue (1)
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Rinnemaa discloses both a memory device and a calculator device,
and both are used during drilling operations (Facts 2 and 3). The data that is
stored within the memory device is of no significance in determining
patentability. Accordingly, we sustain the Examiner’s rejection of claim 19
as being anticipated by Rinnemaa.
Issue (2)
We do not sustain the Examiner’s rejection of the method claims
because the Examiner has not provided a sound basis in technical reasoning
or fact to show that the steps of storing deviations obtained by turning the
boom, measuring the deviations, and using the stored deviations to correct
the drilling position of the boom, necessarily flow from the disclosure of
Rinnemaa. Rinnemaa’s operation for correcting the drill rod’s position
could easily be done without storing any deviation valves.

CONCLUSIONS
The Appellants have not shown that the Examiner erred in finding that
Rinnemaa discloses: A) a memory device for storing deviations obtained by
turning the boom through incremental angles, and B) a calculating device
operable during a drilling operation for using the stored deviations as
correction values.
The Appellants have shown that the Examiner erred in finding that
Rinnemaa discloses the steps of: A) storing deviations obtained by turning
the boom and measuring the deviations, and B) using the stored deviations to
correct the drilling position of the boom.

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Application 09/857,688

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DECISION
The Examiner’s decision to reject claims 15-18, 23, 24, 27-31, and 33
as anticipated by Rinnemaa is reversed.
The Examiner’s decision to reject claims 19-22, 34, 35, and 37 as
anticipated by Rinnemaa 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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