Siemens Aktiengesellschaft

Patent Trials and Appeals Board

Mar 13, 2020

14732202 - (D) (P.T.A.B. Mar. 13, 2020)

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.
14/732,202 06/05/2015 Jochen Bretschneider BRETSCHNEIDER-11 1426
20151 7590 03/13/2020
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
35 WEST 35TH STREET
SUITE 900
NEW YORK, NY 10001
EXAMINER
DANG, HUNG H
ART UNIT PAPER NUMBER
2117
NOTIFICATION DATE DELIVERY MODE
03/13/2020 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):
INFO@FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOCHEN BRETSCHNEIDER and THOMAS PITZ
Appeal 2018-008425
Application 14/732,202
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, 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 and 3–9, all of the pending claims.2
We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were heard on
February 26, 2020. A transcript of that hearing will be added to the record
in due time.
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as SIEMENS
AKTIENGESELLSCHAFT. Appeal Br. 2.
2 Claim 2 is cancelled. Appeal Br. 2.
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Application 14/732,202

2
CLAIMED SUBJECT MATTER
Appellant’s “invention relates to a method for controlling a metal-
cutting machine tool by providing a parts program for controlling the metal-
cutting machine tool, wherein the parts program describes a number of
cutting path sections running next to one another for producing a 3D
contour.” Spec. ¶ 2.3
Claims 1 and 9 are independent. Claim 1, reproduced below,
exemplifies the claimed subject matter:
1. A method for controlling a metal-cutting machine
tool with a parts program integrated on a Computer Aided
Design/Computer Aided Manufacturing/Post Processor
(CAD/CAM/PP) system, comprising:
describing with the parts program a path composed
of a plurality of adjacent cutting path sections
representing a 3D contour; with each cutting path section
comprising a series of path elements composed of
support points and line elements connecting respective
pairs of the support points;
defining a tolerance value;
analyzing at least a part of a first of the cutting
path sections as to whether the defined tolerance value is
satisfied in relation to at least one path element of at least
one second cutting path section adjacent to the first
cutting path section;
separately examining a plurality or each of the
support points of the first cutting path section by taking
into account all support points located in a predefined
spatial region around the support point to be examined,

3 Throughout this Decision we refer to: (1) Appellant’s Specification filed
June 5, 2015 (“Spec.”); (2) the Final Office Action mailed October 18, 2017
(“Final Act.”); (3) the Appeal Brief filed March 27, 2018 (“Appeal Br.”);
and (4) the Examiner’s Answer mailed June 27, 2018 (“Ans.”).
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Application 14/732,202

3
wherein the predefined spatial region is a sphere having a
center point located at the support point to be examined;
optimizing a course of the path by modifying,
adding to or removing from the first cutting path section
at least one path element so that the defined tolerance
value is satisfied; and
simultaneously controlling the metal-cutting
machine in accordance with the optimized course of the
path in real-time operation during a workpiece
processing.
Appeal Br. 8 (Claims Appendix).

REFERENCES
The references4 relied upon by the Examiner are:
Name Reference Date
Kimura US 3,619,581 Nov. 9, 1971
Higasayama US 5,923,561 July 13, 1999
Roders WO 2016/078781 A1 May 26, 2016

REJECTIONS
The Examiner rejects claims 1, 3–5, and 7–9 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Roders and Higasayama. Final
Act. 3–10.
The Examiner rejects claim 6 under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Roders, Higasayama, and Kimura. Id. at
10–11.

4 All citations to the references use the first-named inventor only.
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner rejects independent claims 1 and 9 under 35 U.S.C.
§ 103 as unpatentable over the combined teachings of Roders and
Higasayama. Final Act. 2–5. Of particular relevance, the Examiner relies
on Roders to teach “analyzing at least a part of a first of the cutting path
sections” and “optimizing a course of the path by modifying, adding to or
removing from the first cutting path section at least one path element so that
the defined tolerance value is satisfied,” as recited in claim 1. Id. at 4 (citing
Roders ¶ 9).
Appellant argues claims 1 and 9 together. Appeal Br. 4. As such, we
select claim 1 as representative of the independent claims. See 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant argues Roders fails to teach “optimizing a
course of the path by modifying, adding to or removing from the first cutting
path section,” as recited in claim 1, because “Roders only teaches insertion
or addition” (i.e., adding to the first cutting path), but not “modifying or
removing from the first cutting path.” Appeal Br. 4.
The Examiner responds, “since the claims use the conjunction ‘or’ in
‘modifying, adding to or removing’, Examiner needed to map only one of
the three possible changes, which is ‘adding’.” Ans. 3.
Appellant’s argument is unpersuasive. Based on the disjunctive
language recited in the disputed limitation, we determine the claim only
requires optimizing a course of the path by one of (a) modifying, (b) adding
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to or (c) removing from the first cutting path section. See Brown v. 3M, 265
F.3d 1349, 1351 (Fed. Cir. 2001) (When a claim contains alternatives, the
claim is met if any of the alternatives is known in the prior art.) Moreover,
Appellant fails to show error in the Examiner’s finding (Final Act. 4) that
Roders’ inserting of an auxiliary line teaches adding to the first cutting path
section. Final Act. 4 (citing Roders ¶ 9); Ans. 3.
Next, Appellant argues “[t]he present invention also differs from
Roders with respect to the steps of optimizing and analyzing” because
Roders “teaches that analyzing and optimizing may only be performed on
the controller itself during machining” but “[t]he present invention allows
for the option of performing the steps of analyzing and optimizing both
beforehand as well as on a different machine, a PC.” Appeal Br. 5 (citing
Roders ¶¶ 12, 31).
This argument is unpersuasive because we agree with the Examiner
that “the current claims do not disclose the concept of analyzing and
optimizing beforehand on a PC.” Ans. 3. Appellant, therefore, argues for
patentability on the basis of a limitation that is not recited in the claim.
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 1 further recites
separately examining a plurality or [sic] each of the support
points of the first cutting path section by taking into account all
support points located in a predefined spatial region around the
support point to be examined, wherein the predefined spatial
region is a sphere having a center point located at the support
point to be examined.
Appeal Br. 8.
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The Examiner finds “Roders teaches separately examine a plurality
[of] each of the support points of the first cutting path section by taking into
account all support points located in a predefined spatial region around the
support point to be examined.” Ans. 5; Final Act. 4 (citing Roders ¶ 34).
The Examiner finds “Roders does not teach that the predefined spatial region
is a sphere having a center point located at the support point to be examined.
However, Higasayama teaches such spatial region.” Ans. 5; Final Act. 5
(citing Higasayama 16:35–60). The Examiner determines that motivation
existed “to modify Roders by implementing the limitations as taught by
Higasayama because that would make the definition points (support points)
spaced apart by an optimal distance.” Final Act. 5.
Appellant argues
Though both the present invention and that of Higasayama
teach the use of a sphere, they differ in what entities are to be
considered within that sphere. The present invention teaches
that optimization is based upon support points other than the
point at the center of the sphere and based on other courses of
paths: “taking into account all support points located in a
predefined spatial region around the support point to be
examined, wherein the predefined spatial region is a sphere
having a center point located at the support point to be
examined” (see paragraph [0054] and Figure 8). The size of this
sphere can also be changed in order to increase or decrease the
number of support points to be considered. On the other hand,
Higasayama (column 16, lines 40-60, Figure 16) only teaches
the use of two points (the center of the sphere and the
intersection of the sphere with the path), only teaches
consideration of the single path, and does not change the size of
the sphere. Thus, the present invention and Higasayama base
their optimization on different factors.
Appeal Br. 5.
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In response to Appellant’s argument that Higasayama “does not
change the size of the sphere,” (id.) the Examiner explains that the claimed
limitation “has nothing about the size of the sphere, much less changing the
size of the sphere” (Ans. 5). We agree with the Examiner and find this
argument unpersuasive because Appellant argues for patentability on the
basis of a limitation that is not recited in the claim. In re Self, 671 F.2d at
1348.
In response to Appellant’s arguments that Higasayama “only teaches
the use of two points (the center of the sphere and the intersection of the
sphere with the path), [and] only teaches consideration of the single path”
(Appeal Br. 5), the Examiner finds “Roders teaches separately examin[ing] a
plurality of each of the support points of the first cutting path section by
taking into account all support points located in a predefined spatial region
around the support point to be examined.” Ans. 5.
Appellant’s arguments are unpersuasive, then, because the Examiner
relies on Roders rather than Higasayama to teach multiple paths and “taking
into account all support points,” as claimed, and therefore the arguments are
not responsive to the rejection. See Nat’l Steel Car, Ltd. v. Canadian Pac.
Ry., Ltd., 357 F.3d 1319, 1336–37 (Fed. Cir. 2004) (rejecting argument
directed at the wrong reference). Thus, we determine the Examiner has
shown that all elements of the limitation at issue here are taught by the
combination of Roders and Higasayama, and that Appellant has not
demonstrated error in the Examiner’s findings.
Appellant presents several other arguments at the oral hearing in
addition to the arguments discussed above. To the extent any of these
arguments do not appear in the Appeal Brief, we decline to consider such
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arguments raised for the first time in the oral hearing. This is because these
arguments are deemed waived in the absence of a showing of good cause by
Appellant, because the Examiner has not been provided a chance to respond.
See 37 C.F.R. §§ 41.41(b)(2), 41.47(e)(1); In re Hyatt, 211 F.3d 1367, 1373
(Fed. Cir. 2000) (noting that an argument not first raised in the brief to the
Board is waived on appeal). Appellant has provided this record with no
such showing of good cause.
For the reasons discussed, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of independent claim 1. Accordingly,
we sustain the Examiner’s rejection of that claim, as well as independent
claim 9, which recites similar claim language and for which Appellant
presents similar arguments. Appeal Br. 4–6. We likewise sustain the
obviousness rejections of dependent claims 3–8, which Appellant does not
argue separately. Id. at 6–7.

CONCLUSION
We affirm the Examiner’s rejection of claims 1, 3–5, and 7–9 under
35 U.S.C. § 103 as unpatentable over the combined teachings of Roders and
Higasayama.
We affirm the Examiner’s rejection of claim 6 under 35 U.S.C. § 103
as unpatentable over the combined teachings of Roders, Higasayama, and
Kimura.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 3–5, 7–9 103 Roders, Higasayama 1, 3–5, 7–9
6 103 Roders, Higasayama,
Kimura
6
Overall
Outcome
1, 3–9

TIME PERIOD FOR RESPONSE
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).
AFFIRMED