MITUTOYO CORPORATIONDownload PDFPatent Trials and Appeals BoardMay 19, 202014184132 - (D) (P.T.A.B. May. 19, 2020) Copy Citation 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. 14/184,132 02/19/2014 Masaoki YAMAGATA P44922 9943 7055 7590 05/19/2020 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER RAHMAN, MOHAMMAD J ART UNIT PAPER NUMBER 2487 NOTIFICATION DATE DELIVERY MODE 05/19/2020 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): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAOKI YAMAGATA, KENTARO NEMOTO, EISUKE MORIUCHI, and TADASHI IWAMOTO Appeal 2019-002315 Application 14/184,132 Technology Center 2400 Before JAMES B. ARPIN, ADAM J. PYONIN, and AMBER L. HAGY, Administrative Patent Judges. HAGY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–19, which are all of the pending claims. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the applicant, Mitutoyo Corporation. Appeal Br. 3. Appeal 2019-002315 Application 14/184,132 2 CLAIMED SUBJECT MATTER According to Appellant, the claimed invention “relates to a shape measuring apparatus measuring a shape of a measured object by emitting light at the measured object and capturing an image thereof.” Spec. ¶ 2. By way of background, Appellant’s Specification describes a conventional non- contact shape-measuring apparatus in which “the surface shape of the work piece is measured by a scanning probe firing a line laser having a straight line shape onto the surface of the work piece and capturing an image thereof from a predetermined angle with respect to a laser firing direction.” Id. ¶ 4. Appellant’s Specification notes, however, that if the work piece is transparent, “reflected light cannot be adequately received unless the line laser is infrared light.” Id. ¶ 5. Appellant’s Specification further notes that, “when the fired light is infrared light, a user of the apparatus cannot visually confirm a measurement position.” Id. Appellant’s Specification describes a solution in which visible light is fired at the work piece “when deciding the measurement position.” Id. ¶ 24. When the measurement position has been decided, a control circuit causes the laser light generator to stop firing the visible light. Id. ¶ 23. Then, the control circuit causes the laser light generator to fire infrared light at the work piece as the shape measurement of the work piece is performed. Id. Claim 1, reproduced below with the disputed limitation italicized, is the sole independent claim and illustrates the claimed subject matter: 1. A shape measuring apparatus comprising: a first light source configured to emit visible light; a second light source configured to emit measurement light used in a measurement; Appeal 2019-002315 Application 14/184,132 3 an optical system comprising a beam splitter configured to transmit the visible light and reflect the measurement light such that the optical system emits the visible light and the measurement light at the same position on a work piece; an image capturer configured to capture an image of the measurement light reflected by the work piece; and a controller configured to control the emission of the visible light onto the work piece with the first light source when determining a measurement position, and further configured to, after the measurement position has been determined, initiate and control the emission of the measurement light onto the work piece with the second light source, after stopping the emission of the visible light onto the work piece, when making the measurement. REFERENCES2 The prior art relied upon by the Examiner is: Name Reference Date Ito Thurn Corallo Olbrecht US 4,790,660 US 4,859,062 US 6,222,628 B1 EP 2159538 A13 Dec. 13, 1988 Aug. 22, 1989 Apr. 24, 2001 Mar. 3, 2010 REJECTIONS Claims 1–18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Corallo, Olbrecht, and Ito. Final Act. 3–6. 2 All references are identified by the first-named inventor. 3 The Examiner provides and relies upon a machine-generated translation of this German-language reference. Appeal 2019-002315 Application 14/184,132 4 Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Corallo, Olbrecht, Ito, and Thurn. Final Act. 7. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s arguments the Examiner has erred. We concur with Appellant’s contention the Examiner erred in finding the combination of Corallo, Olbrecht, and Ito teaches or suggests a controller configured to control the emission of the visible light onto the work piece with the first light source when determining a measurement position, and further configured to, after the measurement position has been determined, initiate and control the emission of the measurement light onto the work piece with the second light source, after stopping the emission of the visible light onto the work piece, when making the measurement[,] as recited in independent claim 1. See Appeal Br. 14 (Claims App.) (emphasis added); see also id. at 9–12; Reply Br. 6. We first note that the Examiner responds to Appellant’s arguments, in part, by referring to “Crampton, current published application” at paragraphs 5–7. Ans. 4. The Examiner does not, however, make any findings based on Crampton in the Final Action, as Appellant points out. See Reply Br. 5. Appellant notes that the Specification refers to the Crampton reference in the “Description of Related Art” as Japanese Published PCT International Application No. 2009-534969. Id. This application corresponds to published U.S. Patent Application No. 2009/0205088 A1. We have reviewed the portion of this published application cited by the Examiner in the Answer (¶¶ 5–7), and find that this disclosure is not material to the issues Appeal 2019-002315 Application 14/184,132 5 addressed herein. Rather, as also confirmed by the Examiner’s findings, this disclosure aligns with the description of the prior art in the Specification, see Spec. ¶ 2, and is at most cumulative of the cited disclosures of the other cited references. See Ans. 4. The Examiner finds “Corallo discloses a surface measuring device . . . when a light source 13 (second light source or measurement light) is applied to the surface 9 (work piece) and a sensor 5 . . . (image capturer) used for the measurement,” and also discloses “that a visual light source (first light source) can be applied on the measurement surface to visually show the positioning and once the positioning is proper, a laser or the measurement light or the second light source can be activated.” Ans. 4 (citing Corallo, Fig. 2, 2:37–44, 7:25–45, 9:23–45). The Examiner then finds “it is understood that the visible light is applied before the laser light, similar to turning on the light in a dark room before finding an object.” Id. (emphasis omitted). The Examiner also finds Olbrecht teaches “using a beam splitter to guide two light sources or various light sources to a common monitored area,” including an infrared light and a visible light. Id. (citing Olbrecht ¶¶ 12, 35–36). The Examiner also finds Ito discloses “using the invisible ray of light for the shape measurement and provides the solution . . . , surface measuring by projecting light source on an object, and . . . providing a visible ray ahead of the invisible ray of light.” Id. (citing Ito, 2:15–35, 12:61–13:2). Appellant acknowledges that “CORALLO discloses a secondary light source that emits a visual light beam on a surface,” but argues that “CORALLO (as is the case with OLBRECHT and ITO) does not disclose at least that the measurement light is emitted onto the work piece with the Appeal 2019-002315 Application 14/184,132 6 second light source, after stopping the emission of the visible light onto the work piece, when making the measurement, as generally recited in claim 1.” Reply Br. 6. On this record, we are persuaded of Examiner error. Although the Examiner correctly finds Corallo discloses using a visible light source to determine a measurement position, and then using a second light source to make the measurement (Corallo, 9:36–45), the Examiner has not cited to any portion of Corallo (or any other reference) that teaches or suggests that the measurement is made “after stopping the emission of the visible light onto the work piece,” as required by claim 1 (emphasis added). In the Final Action, the Examiner concedes “Corallo in view of Olbrecht . . . do not appear to explicitly disclose” this limitation. Final Act. 3. The Examiner then turns to Ito, finding Ito discloses “providing a visible ray ahead of the invisible ray of light.” Ans. 4 (emphasis added); see also Final Act. 4. As Appellant persuasively argues, however, Ito’s disclosure “of providing a means for emitting a visible light ray ‘ahead of’ the signal light, is not related to the timing of the emission of two different light sources,” but is instead related to the positional relationship of the two light sources. Appeal Br. 9–10 (italicized emphasis added). This is confirmed by Ito’s disclosure, which describes that the visible ray of light is “right ahead of” the “measuring head 100,” and is “in addition to the signal light,” implying that both lights are used simultaneously, not sequentially. See Ito 12:67– 13:2 (emphasis added). We agree, therefore, with Appellant’s contention that the Examiner has not adequately explained how Ito’s disclosure of positioning a visible light source “ahead of” a measuring head that also contains a signal light teaches or suggests that Ito’s signal light is emitted Appeal 2019-002315 Application 14/184,132 7 after emission of the visible light ray is stopped and after the measurement position has been determined. See Appeal Br. 10. In short, for essentially the same reasons argued by Appellant (Appeal Br. 9–12; Reply Br. 6), and as further addressed herein, we are persuaded of Examiner error in finding the prior art teaches or suggests a controller configured to control the emission of the visible light onto the work piece with the first light source when determining a measurement position, and further configured to, after the measurement position has been determined, initiate and control the emission of the measurement light onto the work piece with the second light source, after stopping the emission of the visible light onto the work piece, when making the measurement[,] as recited in independent claim 1 (emphasis added). Accordingly, on this record, we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1. Dependent claims 2–19 stand with claim 1. CONCLUSION The Examiner’s decision rejecting claims 1–19 as unpatentable under 35 U.S.C. § 103(a) is reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–18 103(a) Corallo, Olbrecht, Ito 1–18 19 103(a) Corallo, Olbrecht, Ito, Thurn 19 Overall Outcome 1–19 REVERSED Copy with citationCopy as parenthetical citation