Ex Parte Mathis

Patent Trial and Appeal Board

Oct 3, 2017

13168852 (P.T.A.B. Oct. 3, 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.
13/168,852 06/24/2011 Jerry MATHIS 1705-15 1851
616 7590
THE MAXHAM FIRM
11682 EL CAMINO REAL, SUITE 100
SAN DIEGO, CA 92130
EXAMINER
QUIGLEY, KYLE ROBERT
ART UNIT PAPER NUMBER
2865
MAIL DATE DELIVERY MODE
10/03/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY MATHIS
Appeal 2017-003065
Application 13/168,852
Technology Center 2800
Before BRADLEY R. GARRIS, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1—21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims a linear measurement device for determining the
circumference and diameter of objects, and a method for determining the
circumference and diameter of objects using a linear measurement device
1 Appellant identifies the real party in interest as Pi Tape Texas, LLC.
Appeal Brief filed August 8, 2016 (“App. Br.”), 3.
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Application 13/168,852
App. Br. 4—6. Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1. A linear measurement device for determining circumference
and diameter measurements of objects, the device comprising:
a tape having a surface with non-alpha-numeric machine readable
increments thereon and having a first end and a second end:
a unit mounted adjacent to and spaced from and in fixed relationship
with said first end of said tape through which unit said second end with
said machine readable increments passes, said second end being a free end:
an electronic reader element in said unit, said reader element
detecting the machine readable increments on said tape; and
computation means coupled to said electronic reader element to
selectively provide digital outputs of diameter and circumference in selected
measurement units based on linear positions of said machine readable
increments on said free end of said tape in said unit.
App. Br. 26 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered November 24, 2015 (“Final Act.”), and maintains the
rejections in the Answer entered November 29, 2016 (“Ans.”):
I. Claims 1—20 under 35 U.S.C. § 103(a) as unpatentable over
Alfred J. Zerfas, The Insertion Tape: A New Circumference Tape For Use
In Nutritional Assessment, 28 Am. J. Clin. Nutr. 782—87 (1975) in view of
Yamamoto et al. (US 4,611,402, issued September 16, 1986) and Ford (US
2010/0275456 Al, published November 4, 2010); and
II. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Zerfas
in view of Yamamoto, Ford, and Hayashi (US 6,388, 733 Bl, issued May 14,
2002).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
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claims 1—21 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Action, the Answer, and below.
Rejection I
Claims 1—10 and 12—20
Appellant, in essence, argues claims 1—10 and 12—20 as a group on the
basis of claim 1. Although Appellant separately addresses independent
claim 17, Appellant relies on the arguments provided for claim 1 and does
not present additional substantive arguments specifically directed to the
subject matter of claim 17. App. Br. 10-20. In addition, although Appellant
also separately addresses dependent claims 3, 4, 7, 10, 12—15, and 20,
Appellant’s statements do not constitute substantive arguments as to the
separate patentability of these claims because Appellant merely asserts,
without further explanation, that the applied prior art does not disclose the
claimed subject matter. App. Br. 21—24. In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art. Because Lovin did not provide such arguments,
the Board did not err in refusing to separately address claims 2—15, 17—24,
and 31—34.”). Therefore, we select claim 1 as representative, and decide the
appeal as to claims 1—10 and 12—20 based on claim 1 alone. 37 C.F.R.
§ 41.37(c)(l)(iv).
Zerfas discloses a device for measuring circumference that includes a
widened origin and a tape extending at its first end from the widened origin
to a distal (second) end. Zerfas Abstract; Figure pg. 785. Zerfas further
discloses that numerical markings span the length of the tape. Zerfas Figure
pg. 785. Zerfas discloses that the widened origin includes a narrow slot and
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an open window or slot (reader element) near the narrow slot. Zerfas
Abstract; Figure pg. 785. The Examiner finds that the widened origin of
Zerfas’ device, referred to by the Examiner as “the handle portion,” reads on
the unit recited in claim 1, and further finds that the window of Zerfas’
device corresponds to the reader element recited in claim 1. Final Act. 4;
Ans. 8. Zerfas discloses using the device—referred to as an “insertion
tape”—to measure the circumference of an upper arm by encircling the
upper arm with the device, threading the end of the tape distal to the
widened origin (second end) past the window (reader element) and through
the narrow slot, drawing the tape to a required tension around the arm, and
reading the numerical markings on the tape through the window. Zerfas
Figure pg. 783, pg. 784 (“the insertion tape”). Zerfas discloses a
modification of the insertion tape, referred to as a “diameter tape,” having
essentially the same structure as the insertion tape, but including numerical
markings on the tape calibrated for “direct arm diameter estimate,” rather
than measurement of circumference. Zerfas pg. 784, Figure pg. 785.
The Examiner finds that Zerfas does not disclose that the window
(reader element) of Zerfas’ devices is electronic and detects machine
readable increments on the tape, and also does not disclose computation
means coupled to the reader element that provide digital output of diameter
and circumference based on the linear position of the surface of the tape in
the unit. Final Act. 4. To address these features, the Examiner relies on
Yamamoto and Lord. Final Act. 4—5. Yamamoto discloses a digital tape
measure comprising tape 6 having detection marks 7 and case body 1 that
includes two detachably connected housings: tape storing housing 2 and
housing 3 comprising detecting means (electronic reader), computing means,
and displaying means 4. Yamamoto Abstract; col. 3,11. 22—38; Figs. 1, 2.
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Yamamoto discloses that housing 3 is separable from tape storing housing 2
for slidable movement along tape 6. Yamamoto col. 3,11. 50-53.
Yamamoto discloses that a user operates the digital tape measure by
drawing tape 6 out of case body 1 through aperture 10 in housing 3, and
detecting means detects detection marks 7 on the tape at the location of
aperture 10 corresponding to the amount of movement of the tape and
outputs a signal to the computing means. Yamamoto col. 2,11. 12—22; Fig.
2. Yamamoto discloses that the computing means converts the signal output
from the detection means to an electric signal and displaying means digitally
displays the electric signal. Yamamoto col. 1,11. 14—17; col. 2,11. 19-24;
Fig. 2.
The Examiner relies on Lord’s disclosure of a digital measuring
device that measures circumference directly and calculates diameter based
on the circumference measured. Final Act. 5; Lord 2, 44.
The Examiner takes official notice that it was well-known at the time
of Appellant’s invention that digital devices are more accurate and reliable at
taking measurements than are devices that require a user to visually
approximate a measurement, such as the device disclosed in Zerfas. Final
Act. 4. Because this finding is reasonable and Appellant does not challenge
it, we accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA
1964). The Examiner finds that one of ordinary skill in the art would have
been led at the time of Appellant’s invention to modify the device disclosed
in Zerfas to include a digital measurement device having detecting means
(an electronic reader element) and computation means, such as a device as
disclosed in Yamamoto, to improve the measurement accuracy of Zerfas’
device. Final Act. 5; Ans. 5.
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Appellant argues that one of ordinary skill in the art would not have
had a reason to “apply freely slidable linear reading unit 3 of Yamamoto to
the Zerfas tape” because “Zerfas already visually, directly shows diameter in
the slot/window.” App. Br. 15.
However, because it was known in the art at the time of Appellant’s
invention that digital devices provide more accurate and reliable
measurements than devices such as Zerfas’ that require a user’s visual
reading to make a measurement, the weight of the evidence relied upon in
this appeal supports the Examiner’s finding that one of ordinary skill in the
art would have been led to modify Zerfas’ device to include a digital
measurement device having detecting means (an electronic reader element)
and computation means, such as a device disclosed in Yamamoto, to
improve the accuracy of Zerfas’ device. Therefore, Appellant’s argument is
unpersuasive of reversible error in the Examiner’s basis for combining the
relied-upon disclosures in Zerfas and Yamamoto.
Appellant further argues that Zerfas and Yamamoto “are so
nonanalogous that they cannot conceptually, logically, mechanically, or
properly be combined.” App. Br. 19.
For a prior art reference to be analogous art, the reference must either
be in the field of the inventor’s (Appellant’s) endeavor, or it must be
reasonably pertinent to the particular problem with which the inventor
(Appellant) was concerned, from the viewpoint of one of ordinary skill in
the art. See, e.g., In re Kahn, 441 F.3d 977, 986—87 (Fed. Cir. 2006) (stating
that the analogous art test requires that “a reference is either in the field of
the applicant’s endeavor or is reasonably pertinent to the problem with
which the inventor was concerned . . . based on the judgment of a person
having ordinary skill in the art.”).
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In the present case, one of ordinary skill in the art reasonably would
have understood that Zerfas and Yamamoto are within Appellant’s field of
measurement devices. Even if Zerfas and Yamamoto were not considered to
be within the field of Appellant’s endeavor, one of ordinary skill in the art
seeking to develop a device for measuring circumference and diameter
reasonably would have looked to Zerfas’ disclosure of devices that measure
circumference and diameter, and reasonably also would have looked to
Yamamoto’s disclosure of a digital measurement device. Accordingly, one
of ordinary skill in the art would have understood Zerfas and Yamamoto to
both be reasonably pertinent to the particular problem with which Appellant
was concerned—development of a linear measurement device for
determining circumference and diameter—and the references are, therefore,
properly combinable in the sense that they are analogous art. Appellant’s
argument is therefore unpersuasive of reversible error.
Appellant further argues that Yamamoto’s reader is free running and
is not fixed on a tape, and Appellant contends that “Yamamoto cannot
possibly have a tape free end passing through an electronic reader element
that is fixed in relation to the non-free end of the same tape.” App. Br. 19.
However, the proposed modification of Zerfas’ device would not
include a “free running” measurement unit. Final Act. 4—5; Ans. 7. Rather,
as discussed above, the Examiner finds that the combined disclosures of
Zerfas and Yamamoto would have suggested incorporating a digital
measurement device having detecting means (electronic reader element) and
computation means into Zerfas’ device. Final Act. 4—5; Ans. 8. As the
Examiner correctly finds, one of ordinary skill in the art would have
incorporated such a digital measurement device into the widened origin
(unit) of Zerfas’ device so as to replace the window (reader element) of
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Zerfas’ device. Ans. 7—8. In so doing, the skilled artisan reasonably would
have mounted—or fixed—the digital measurement device to the widened
origin at the location of the window, and the incorporated measurement
device would therefore not be “free running.” Id. In addition, Zerfas’
modified device would continue to operate by threading the distal (second)
end of the tape past (or through) the reader element (now detecting means
rather than a window) to allow the detecting means (electronic reader
element) to read markings on the tape. Final Act. 14. It follows that
Appellant’s arguments are unpersuasive of reversible error in the Examiner’s
proposed combination.
Appellant also argues that the Examiner improperly interprets the
slot/window of the device disclosed in Zerfas as corresponding to the unit
recited in claim 1. App. Br. 20. Appellant contends that claim 1 requires a
unit fixed to one end of a tape and requires the other end of the tape to pass
through the unit. App. Br. 19. Appellant argues that neither Zerfas nor
Yamamoto disclose or suggest these limitations. Id.
However, the Examiner finds in the Answer that “the handle portion
of Zerfas in its entirety reads on the recited ‘unit’” (as discussed above).
Ans. 8. The disclosures of Zerfas discussed above support the Examiner’s
finding because the widened origin of Zerfas’ device—or the handle
portion—appears to be adjacent to, spaced from, and in a fixed relationship
with the first end of Zerfas’ tape. In addition, operation of Zerfas’ device
involves threading the distal (second) end of Zerfas’ tape past the window
(reader element) and through the narrow slot in the widened origin, as
recited in claim 1.
In response to the Examiner’s clarification in the Answer that “the
handle of Zerfas in its entirety reads on the recited ‘unit,’” Appellant argues
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that the Examiner’s finding is a “fictional conclusion” because the unit of
claim 1 includes an electronic reader element. Reply Br. 3. Appellant
further argues that Zerfas does not disclose that the “reader element” is in
the unit. App. Br. 19.
We begin by interpreting “an electronic reader element in said unit”
recited in claim 1 giving terms their broadest reasonable interpretation
consistent with the Specification as it would be interpreted by one of
ordinary skill in the art. In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications, “the
PTO must give claims their broadest reasonable construction consistent with
the specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.”). Appellant’s Specification discloses, in the context of
describing the measurement device of Appellant’s invention, that “[a] tape is
formed with a machine readable side commencing from near the tail end and
extending over a significant length of the tape toward the head end.” Spec.
1,11. 26—27. Appellant’s Specification further discloses that “[a]t the head
end is a unit incorporating a reader by which the machine readable tail end
passes.” Spec. 1,11. 27—29 (emphasis added). Under a broadest reasonable
interpretation consistent with Appellant’s Specification, “an electronic
reader element in said unit,” therefore, refers to a unit at the first end of a
measuring tape incorporating, or including2, a reader by which the second
end of the tape passes. Accordingly, “an electronic reader element in said
unit” as recited in claim 1 reasonably corresponds to the widened origin or
2 “Incorporating” means “to take in or include as a part or parts.” Available
at http://www.dictionary.com/browse/incorporating.
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handle portion (unit) of Zerfas’ device (from which the first end of the tape
extends) incorporating (or including) a digital measurement device having
detecting means (electronic reader element) and computation means—such
as the device (housing 3) disclosed in Yamamoto comprising a detecting
means, computing means, and displaying means—by which the distal
(second) end of Zerfas’ tape passes. Therefore, the device resulting from
combination of the relied-upon features of Zerfas and Yamamoto includes a
structure corresponding to the unit recited in claim 1. It follows that
Appellant’s arguments are unpersuasive of reversible error.
Appellant further argues that the proposed “combination [of Zerfas
and Yamamoto] is not practically possible and would provide no useful
result.” App. Br. 15. Appellant contends that “[o]ne cannot simply take the
concept of a diameter reading tape (Zerfas) and conceptually engraft upon it
a digital tape reader (Yamamoto), and arrive at a useful, functional result.”
App. Br. 15, 20.
However, the Examiner’s rejection is not based on a literal
combination of Zerfas’ diameter tape and Yamamoto’s housing 3
comprising a detecting means, computing means, and displaying means.
Rather, as discussed above, the rejection is based on the suggestion
stemming from the combined disclosures of Zerfas and Yamamoto of
incorporating a digital measurement device having detecting means
(electronic reader element) and computation means into the widened origin
(unit) of Zerfas’ device to improve the measurement accuracy of Zerfas’
device. In re Keller, 642 F.2d 413, 425 (CCPA) (“The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of a primary reference . . . Rather, the test is
what the combined teachings of the references would have suggested to
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those of ordinary skill in the art.”).
Appellant’s arguments do not take into consideration the level of
ordinary skill in the art at the time of Appellant’s invention, and fail to “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ” to overcome any difficulties in making the proposed
combination to arrive at the claimed invention. KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). To the extent that Appellant asserts that one
of ordinary skill in the art would not have had sufficient skill to
appropriately adapt the structure of Zerfas’ diameter tape to incorporate a
digital measurement device having detecting means (electronic reader
element) and computation means, Appellant’s argument does not
demonstrate that the proposed modification would have been “uniquely
challenging or difficult for one of ordinary skill in the art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418-19).
Accordingly, the preponderance of the evidence relied upon in this
appeal supports the Examiner’s de facto position that one of ordinary skill in
the art reasonably would have expected that a digital measurement device
having detecting means (electronic reader element) and computation means
could be successfully incorporated into the widened origin (handle portion)
of Zerfas’ device to yield a fully functional measurement device. In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require
absolute predictability of success ... all that is required is a reasonable
expectation of success.”) (emphasis omitted, citing In re O’Farrell, 853 F.2d
894, 903-04 (Fed. Cir. 1988)).
Appellant further argues that the proposed combination of Zerfas and
Yamamoto would destroy the structure and purpose of Zerfas because it
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could “only read a linear position by Yamamoto’s digital reader 3.” App.
Br. 16. Appellant also contends that in the proposed combination, Zerfas’
tape would need to be discarded and replaced with a non-alpha-numeric
tape, and the window in the widened origin would need to be dispensed with
because it would have no use with Yamamoto’s digital reader. Id.
However, consistent with the Examiner’s factual findings, one of
ordinary skill in the art reasonably would have expected that incorporating a
digital measurement device having detecting means (electronic reader
element) and computation means, such as a device as disclosed in
Yamamoto, into the widened origin (unit) of Zerfas’ device at the location of
the window (reader element) (Ans. 7), and replacing the numerical markings
on Zerfas’ diameter tape with markings readable by the detecting means
(electronic reader element) (Final Act. 5), would successfully improve the
accuracy of Zerfas’ device for measuring circumference and diameter.
Kubin, 561 F.3d at 1360. Final Act. 4—5. Therefore, contrary to Appellant’s
arguments, regardless of whether the proposed combination would involve
replacing the numbers on Zerfas’ tape with non-alpha-numeric markings and
dispensing with Zerfas’ window, one of ordinary skill in the art reasonably
would have expected that the proposed modification of Zerfas’ device would
not destroy the purpose of Zerfas’ device of measuring circumference and
diameter.
Appellant further argues in essence that Ford does not remedy the
deficiencies of Zerfas and Yamamoto, stating that “Ford provides nothing
related to the structural limitations of claim 1 [,] which are nowhere even
suggested in Zerfas and Yamamoto.” App. Br. 17. However, Appellant’s
argument is unpersuasive of reversible error in the Examiner’s rejection
because, as discussed above, the Examiner relies on Ford only for its
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disclosure of a digital measuring device that measures circumference
directly and calculates diameter based on the circumference measured. Final
Act. 5; Lord H 2, 44.
Appellant further asserts that a Declaration of Paul Dennies submitted
to the Patent and Trademark Office on October 29, 2015 provides an
analysis of Appellant’s inventive process “by a person well skilled in this
technical field, to show from a practical, real world point of view, what
difficulties Mathis [Appellant] faced in proceeding to the claimed
functionally practical and useful device.” App. Br. 10.
However, Appellant does not explain how the Dennies Declaration
demonstrates reversible error in the Examiner’s rejection. App. Br. 9—23. In
addition, the Dennies Declaration does not provide a sufficient factual basis
to support the opinion provided in the Declaration regarding the legal
conclusion of obviousness because, similar to Appellant’s arguments
discussed above, the Declaration does not take into consideration the level of
ordinary skill in the art at the time of Appellant’s invention. See generally
Dennies Declaration. Accordingly, we give the Denies Declaration little to
no weight. Velanderv. Gamer, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In
giving more weight to prior publications than to subsequent conclusory
statements by experts, the Board acted well within [its] discretion.”)
Appellant’s arguments and the Dennies Declaration are therefore
unpersuasive of reversible error in the Examiner’s rejection of claims 1—10
and 12—20 under 35 U.S.C. § 103(a), and we accordingly sustain the
rejection.
Claim 11
Claim 11 depends from claim 4 and recites that the device comprises a
guide plate on the mounting element recited in claim 4. Appellant argues
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that Zerfas and Yamamoto do not disclose the “purpose or structure” of the
guide plate recited in claim 11, which Appellant contends forces the tape to
lie flat. App. Br. 22.
As discussed above, the Examiner finds that one of ordinary skill in
the art would have incorporated a digital measurement device as disclosed in
Yamamoto into the widened origin (unit) of Zerfas’ device by mounting the
digital measurement device at the location of the window (reader element),
and the Examiner further finds that this location therefore constitutes a
mounting element as recited in claim 4. Final Act. 7. The Examiner further
finds that the flat surface in Zerfas’ device past the narrow slot over which
the tape passes corresponds to the guide plate recited in claim 11. Final Act.
9. Appellant’s conclusory arguments do not explain with any sort of
specificity why the relied-upon portion of Zerfas’ tape does not reasonably
correspond to a guide plate as recited in claim 11. Accordingly, Appellant’s
arguments are unpersuasive of reversible error in the Examiner’s rejection of
claim 11, which we therefore sustain. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“ft is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”).
Rejection 11
Claim 21 depends from claim 1 and recites that the tolerances for the
claimed measurement device range from about 0.03 to about 0.13
millimeters.
The Examiner finds that Zerfas, Yamamoto, and Lord do not
explicitly disclose that the measuring devices described in the references
have tolerances as recited in claim 21, but the Examiner finds that
Yamamoto discloses that the detecting means in the digital tape measure
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described in the reference detects marks on a measuring tape through use of
a photoelectric sensor. Final Act. 15; Yamamoto col. 1,11. 14—20. The
Examiner further finds that Hayashi discloses a displacement sensor
comprising a photoelectric linear encoder having a resolution of about 0.1
mm, which the Examiner finds evidences that sensors comprising
photoelectric linear encoders were available at the time of Appellant’s
invention that were capable of achieving a resolution within the range
recited in claim 21. Final Act. 16; Hayashi col. 7,11. 58—65. The Examiner
finds that one of ordinary skill in the art would have been led at the time of
Appellant’s invention to use a sensor comprising a photoelectric encoder
having a resolution as disclosed in Hayashi as the detecting means
(electronic reader element) of Yamamoto’s digital measurement device, and
would have been led to incorporate such a digital measurement device into
Zerfas’ device (as discussed above), to obtain a degree of measurement
accuracy as disclosed in Hayashi and recited in claim 21. Final Act. 16.
The Examiner further finds that, “regardless of the Hayashi reference, it
would have been obvious to improve measurement resolution of a
measurement system in order to obtain more accurate measurement results.”
Id.
Appellant argues that Hayashi is not in the same field of endeavor as
Appellant’s claimed invention, and Appellant contends that “no one in
Applicant’s field of endeavor would look to Hayashi for a tolerance
standard” because Hayashi “is directed to exposure apparatus in relating
photo pattern printing.” App. Br. 23.
However, even if Hayashi is not in the field of Appellant’s endeavor,
one of ordinary skill in the art would have considered the reference to be
reasonably pertinent to the development of a linear measurement device for
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determining circumference and diameter—the problem with which the
inventor was concerned—because Hayashi discloses a sensor comprising a
photoelectric encoder that provides highly accurate measurement of
distance, as discussed above. Accordingly, Hayashi is analogous art, and the
ordinarily skilled artisan seeking to develop an accurate device for
measuring circumference and diameter reasonably would have look to
Hayashi’s disclosures.
Moreover, even if one of ordinary skill in the art would not have
looked to Hayashi, one of ordinary skill in the art seeking to produce a
device for measuring circumference and diameter would have been led to
design the device to have a tolerance level suited to the intended purpose of
the device—such as a tolerance as recited in claim 21. Therefore,
Appellant’s arguments are unpersuasive of reversible error in the Examiner’s
rejection of claim 21 under 35 U.S.C. § 103(a), and we accordingly sustain
this rejection.
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s rejections of claims 1—21 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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