Ex Parte Pettersson

Patent Trial and Appeal Board

Mar 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. § 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. § 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. § 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.
§ 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. § 103(a) as unpatentable
over Spaan.
2 The rejection of claims 1-3, 5-7, 10-16, and 24 under 35 U.S.C. § 112,
second paragraph, has been withdrawn. Ans. 5; Final Act. 2.
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Claims 3, 5-7, 10-20, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Spaan and Akeel.
Claims 17-20, 22, and 23 stand rejected under 35 U.S.C. § 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. § 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.
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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[.]"
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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. § 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.
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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. § 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
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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.").
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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
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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
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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
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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
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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.
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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. § 1.136(a)(l )(iv).
AFFIRMED
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