David Crowther

Patent Trials and Appeals Board

Aug 1, 2019

14697760 - (D) (P.T.A.B. Aug. 1, 2019)

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.
14/697,760 04/28/2015 David Crowther GINS 0135 PUS2 5477
22045 7590 08/01/2019
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
BRYANT, REBECCA CAROLE
ART UNIT PAPER NUMBER
2877
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID CROWTHER
____________________

Appeal 2018-007510
Application 14/697,760
Technology Center 2800
____________________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 34–60 and 65–77.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In our Decision, we refer to Application No. 14/697760 (the “’760 App.”)
and its Specification (“Spec.”) filed April 28, 2015; the Final Office Action
dated October 23, 2017 (“Final Act.”); the Advisory Action dated January
25, 2018 (“Adv. Act.”); the Appeal Brief filed May 24, 2018 (“App. Br.”);
the Examiner’s Answer dated June 29, 2018 (“Ans.”); and the Reply Brief
filed July 18, 2018 (“Reply Br.”).
2 Appellant is the Applicant, GII Acquisition, LLC d/b/a General
Inspection, LLC, identified as the real party in interest. App. Br. 1.
3 Applicant canceled claims 61–64 after the Final Action.
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The invention relates to systems and methods for inspecting the
profile of threaded and cylindrical components. Spec. 1, ll. 7–9. Claim 34,
reproduced below from the Claims Appendix of the Appeal Brief, illustrates
the claimed subject matter:
34. A system for inspecting an externally threaded fastener
having a length, a width and an axis, the system comprising:
a rotatable fixture to hold the fastener in a generally
vertical orientation at its upper and lower ends, and permit
rotation of the held fastener about its axis through an angular
range;
a translator that moves linearly along the vertical
dimension of the held fastener;
a light source supported on the translator and positioned
on one side of the fixture to project a plane of light
perpendicular to the fastener axis and of width greater than the
width of the fastener onto external threads of the held fastener;
and
an optical detector supported on the translator and
positioned on a side of the fixture counter-posed relative to the
light source, that moves in unison with the light source, the
optical detector having a field of view greater than the width of
the fastener, to detect projected light not occluded by the
fastener and produce one or more signals representative of at
least one physical property of the external threads based on the
detected light.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Reeves US 4,644,394 Feb. 17, 1987
Mufti US 6,055,329 Apr. 25, 2000
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REJECTIONS4
The Examiner rejects claims 34–60 and 65–77 under 35 U.S.C.
§ 103(a) as obvious5 over Reeves in view of Mufti. Final Act. 8–24.
OPINION
Appellant argues the independent claims separately. App. Br. 1.
Claim 34
Claim 34 recites a system for inspecting an externally threaded
fastener having a length, a width and an axis, the system comprising a
rotatable fixture, a translator, a light source, and an optical detector, each
having specific functionality. Claims App. 1 (App. Br.). The Examiner
finds that Reeves discloses the claim limitations with the exception:
holding the fastener in a generally vertical orientation, the
rotatable fixture to permit rotation of the held fastener about its
axis through an angular range, and the optical detector and light
source with light plane and field of view greater than the width
of the fastener.

Final Act. 10–11. The Examiner finds that Mufti discloses, inter alia:
Rotating the fixture to cause the held fastener to rotate about an
axis during the rotational scan . . .

4 The Examiner’s rejection in the Final Office Action of claims 61–64 under
35 U.S.C. § 112 was rendered moot by Applicant’s subsequent cancellation
of these claims in the Response after the Final Office Action was filed on
December 27, 2017.
5 In the second paragraph of the rejection the Examiner misstates that claims
34–60 and 65–77 are anticipated by Reeves in view of Mufti. Final Act. 10.
Elsewhere in the rejection, the Examiner finds that the claims are obvious
over the combined references. See id. at 12. The Examiner’s earlier
misstatement is harmless error, as Appellant argued against obviousness,
rather than anticipation, of the claims.
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The fastener is held in a generally vertical orientation . . .

Id. at 11–12.
Appellant’s arguments focus on two points: (1) one of ordinary skill in
the art at the time of the invention would not have been motivated to combine
Reeves and Mufti; and (2) the cited art does not disclose a rotatable fixture.
See App. Br. 10–18.
Appellant supports the first argument by reference to the May 12, 2017
Declaration of Harold Josephs, Ph.D. (“2017 Josephs Decl.”), made in
Application 12/571,836 and filed in the instant application. App. Br. 9–11.
The 2017 Josephs Declaration addresses claim 1 of Application 12/571,836,
which differs substantially from the instant claims. However, we consider the
2017 Josephs Declaration to the extent it addresses combining Reeves and
Mufti.
Appellant argues that the principles of operation of Reeves and Mufti
fundamentally differ. App. Br. 10 (citing 2017 Josephs Decl. ¶ 51). The 2017
Josephs Declaration states:
I find no motivation a person of skill in the art of fastener
inspection would have had to pick-and-choose from Reeves and
Mufti to realize the profile inspection system of claim 1.
Reeves’s light-and-camera system that orbits a threaded pipe
clamped on its circumferential surfaces would not provide a
starting point. Mufti's relatively complex system of inspecting
fasteners that translate laterally into an inspection position
between (i) a stationary laser and lens set-up, on one side, and
(ii) a stationary imaging array, on the other side, similarly does
not provide a starting point.
¶ 51 (emphasis added). The declaration only addresses combining Reeves
and Mufti to “to realize the profile inspection system” of a different claim in
a different application. See id. The declaration merely states, without
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support, that neither Reeves’s nor Mufti’s system would “provide a starting
point.” Id. Combinations of prior art that change the “basic principles under
which the . . . [prior art] was designed to operate” may not support a
conclusion of obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959).
However, “[i]t is well-established that a determination of obviousness based
on teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012)
(citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Appellant
fails to explain adequately how the principles of operation of the two
references “fundamentally differ.” See App. Br. 10.
The Examiner finds that the orientation of objects is a matter of
perspective, and determines that the orientation serves no particular purpose
in the claimed invention. Final Act. 12. The orientation of the systems in
Reeves and Mufti do not make their principles of operation fundamentally
different. Reeves is drawn to analysis of the threaded surface of an object
such as a pipe (Reeves, Abstract), while Mufti relates to fasteners
comprising threaded screws or bolts (Mufti, column 4, lines 3–5). “[T]he
size of the article under consideration . . . is not ordinarily a matter of
invention.” In re Rose, 220 F.2d 459, 463 (CCPA 1955); see also In re
Rinehart, 531 F.2d 1048, 1053 (CCPA 1976) (“Mere scaling up of a prior art
process capable of being scaled up, if such were the case, would not
establish patentability in a claim to an old process so scaled.”), and In re
Dailey, 357 F.2d 669, 672–73 (CCPA 1966) (Change of shape does not
make a product nonobvious where the claimed shape is not of functional
significance and accomplishes the same purpose as the prior art shape.). In
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addition, in both Reeves and Mufti a fastener (pipe in Reeves, bolt in Mufti)
is moved with respect to a translational stage. See Final Act. 12.
Appellant argues that turning Reeves’s apparatus on its side would be
a practical impossibility, and Reeves cannot operate with the pipe held in a
vertical position. Reply Br. 5. We direct Appellant to In re Ratti cited
above for the principle that obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements, and
to In re Rose cited above for the principle that the size of the article under
construction is not a matter of invention. We do not find support for
Appellant’s contention that Reeves and Mufti have fundamentally different
principles of operation.
Appellant’s second argument is that neither Reeves nor Mufti
discloses the “rotatable fixture” of claim 34. App. Br. 11; Reply Br. 2. As
to Reeves, Appellant quotes the Examiner’s statement that “Reeves fails to
disclose a rotation mechanism for rotating the workpiece about its axis
through an annular range,” and contrasts the statement with the Examiner’s
finding that Reeves discloses “a rotatable fixture to hold the fastener at its
upper and lower ends . . . (pipe claim + translational frame = fixture, pipe =
fastener).” App. Br. 11–12 (emphasis omitted). Appellant contends that
Figure 5 of Reeves shows the pipe is held in a horizontal position over the
axial dimension of the pipe, and is not held in a generally vertical
orientation. Id. at 12. However, consideration of Figures 5 and 7 of Reeves
shows that the reference teaches holding—or “fixing”—the pipe along the
entirety of its length. Thus, Reeves discloses holding a fastener (pipe) at
opposing ends as well as at all points in between, satisfying the requirement
of holding a fastener at its upper and lower ends. See Ans. 4.
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Appellant contends that there is no rotation of the pipe about its axis
in Reeves. App. Br. 13 (citing January 10, 2018 Declaration of Harold
Josephs, Ph.D. (“2018 Josephs Decl.”)). Appellant argues that the
Examiner’s determination that “pipe clamp + translational frame = fixture”
is a faulty arithmetic expression. Id. at 13–15; Reply Br. 3 (citing 2018
Josephs Decl.). We disagree that the Examiner’s conclusion regarding the
obviousness of rotating the fastener rather than the translational stage is a
matter of arithmetic. Rather, the “equation” is merely a shorthand way of
referencing the Examiner’s conclusion that it would have been obvious to
rotate the fastener rather than rotate the translational stage since in both
cases they are being moved with respect to one another. See Final Act. 12.
Appellant contends that Reeves is structurally and operationally dissimilar to
Figure 5 of the application. App. Br. 15. We find no support for limiting
the rotatable fixture of claim 34 to the single embodiment shown in Figure 5.
Appellant also argues that the Examiner’s analysis of “rotatable
fixture” is inconsistent with use of the term in the claims and Specification.
App. Br. 15. We disagree. The Specification reveals that, in addition to the
linear scan, “a rotational scan may be used.” Spec. 7, ll. 21–23. The
Examiner’s analysis is consistent with a translational stage that moves
linearly and rotationally.
Appellant contends that there is no rotatable fixture in Mufti. App.
Br. 16. The Examiner relies on Mufti for rotating the fixture to cause the
fastener to rotate. Final Act. 11; Ans. 4. Mufti discloses such rotation of the
fixture (workpiece):
Image data representative of the silhouette may be generated in
a strobe fashion. This provides for the possibility of rotating a
single workpiece in place and taking images of various edge
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profiles, for example at regularly spaced angular positions
around a longitudinal axis of the workpiece.

Mufti, col. 4, ll. 63–67.
Mufti discloses use of a chuck as a means to position a fastener:
The fastener can be positioned, for example, by means of a
vacuum chuck or conveyor bracket, so that the fastener is
disposed in a known orientation.

Id., col. 4, ll. 20–23. Appellant argues that Mufti does not recite the word
“fixture,” and that the “chuck” of Mufti does not meet the limitation of “a
rotatable fixture to hold the fastener . . . at its upper and lower ends.” App.
Br. 16 (emphasis omitted). We note first that the Examiner employs the
combination of Reeves and Mufti to teach the limitation. See Final Act. 10–
11; Ans. 4. The Examiner relies on Mufti to teach that the fastener can be
rotated. Ans. 4. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. Id. In addition, in common with Mufti, the Specification makes use
of the word “chuck” in describing a fixture that holds a component in place.
Spec. 10, ll. 22–23 (describing a chuck as being used in the invention “to
hold components for rotational purposes”). Thus, Appellant’s argument is
unpersuasive.
Appellant argues that “Mufti does not disclose in any working detail
the construction and operation of . . . [Mufti’s] ‘positioning system 22.’”
App. Br. 9 (emphasis omitted). Appellant contends that, at the time the
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reference was filed, constructing Mufti’s positioning system 22 would have
required custom software and machine-specific technology not disclosed in
the reference. Id. (citing 2017 Josephs Decl. ¶ 19). The point of Appellant’s
complaint is not clear. To the extent that it is intended as an argument that
Mufti does not enable positioning system 22, a non-enabling reference may
qualify as prior art for the purpose of determining obviousness under § 103
for all that it teaches. Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569,
1578 (Fed. Cir. 1991) (citing Reading & Bates Constr. Co. v. Baker Energy
Resources Corp., 748 F.2d 645, 652 (Fed. Cir. 1984) (reference that lacks
enabling disclosure is not anticipating, but “itself may qualify as a prior art
reference under § 103, but only for what is disclosed in it”), and Beckman
Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir.
1989) (“Even if a reference discloses an inoperative device, it is prior art for
all that it teaches”).
Furthermore, Appellant’s argument is not persuasive, as the portion of
Mufti (column 8, lines 16–22), relied on for the conclusion refers to the
functions of the processor, not the positioning system, as being “provided
through appropriate programming of the processor in accordance with the
conventional manners of automated positioning and imaging systems.” See
App. Br. 9 and 2017 Josephs Decl. ¶ 19. Thus, Mufti describes its
positioning system as “conventional.” Appellant’s assertion to the contrary
does not serve to negate the Examiner’s conclusion that the combination of
Reeves and Mufti renders claim 34 obvious.
We sustain the rejection of claim 34. We likewise sustain the
rejection of claims dependent from claim 34: claims 35–47.
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Claim 48
Claim 48 recites a method of inspecting an externally threaded
fastener comprising steps similar to the requirements of claim 34. Claims
App. 3–4 (App. Br.).
Appellant argues that neither Reeves nor Mufti disclose the steps of
(1) holding the fastener in a fixture in a generally vertical orientation at its
upper and lower ends; or (2) rotating the held fastener about its axis through
an angular range. App. Br. 18. Appellant refers to the arguments made with
respect to claim 34 regarding similar limitations. Id.
We direct Appellant to our analysis of the rejection of claim 34
relating to analogous limitations.
We sustain the rejection of claim 48, as well as dependent claims 49–
53.
Claim 54
Claim 54 recites the method step of “rotating the workpiece about its
axis through an angular range.” App. Br. 18. Appellant argues that neither
Reeves nor Mufti contain an enabling disclosure for rotating the workpiece.
Id. at 19.
We refer to the discussion of the rejection of claim 34, supra,
regarding this issue. For the reasons given therein, we sustain the rejection
of claim 54 and its dependent claims 55–59.
Claim 60
Claim 60 recites the limitation “a rotation mechanism for rotating the
workpiece about its axis through an annular range.” App. Br. 19.
In line with the discussion supra, the Examiner finds that Reeves fails
to disclose a rotation mechanism for rotating the workpiece about its axis,
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but Mufti discloses rotating the fixture to cause the held fastener to rotate
about an axis during the rotational scan. Final Act. 19.
Appellant refers to the arguments made relating to the similar
limitation in claim 34. For the reasons discussed in relation to the rejection
of claim 34, we do not find Appellant’s arguments persuasive. We sustain
the rejection of claim 60, as well as dependent claims 65–77.
DECISION
The rejection of claims 34–60 and 65–77 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)(1)(iv).
AFFIRMED