Ex Parte Denker

Patent Trial and Appeal Board

Oct 17, 2016

13134077 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/134,077 05/26/2011
38137 7590 10/18/2016
ABELMAN, FRAYNE & SCHWAB
666 THIRD A VENUE, 1 OTH FLOOR
NEW YORK, NY 10017
FIRST NAMED INVENTOR
Wolfgang Denker
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.
211,495 5659
EXAMINER
EKIERT, TERESA M
ART UNIT PAPER NUMBER
3725
MAILDATE DELIVERY MODE
10/18/2016 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 WOLFGANG DENKER
Appeal2014-008447
Application 13/134,077
Technology Center 3700
Before GEORGE R. HOSKINS, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wolfgang Denker ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-4 in this application. The Board
has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies SMS SIEMAG AG as the real party in
interest. Appeal Br. 2.
Appeal2014-008447
Application 13/134,077
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites (with
line breaks and emphases added):
1. An apparatus for manufacturing a metal strip (1 ),
compnsmg
a number of rolls (2, 3, 4, 5) over which the metal strip (1)
is guided in a transporting direction under a strip tension that
insures that the strip is flat to a large extent at least between two
rolls (2, 3);
at least one light source ( 6) operable for illuminating a
predetermined surface area of the metal strip ( 1) as it moves in
the transporting direction; and
two cameras (7, 8) located in a region of the at least one
light source ( 6) at a distance from each other and secured in a
predetermined position relative thereto and relative to each other
and operable for photographing the predetermined area of the
metal strip ( 1) illuminated by the at least one light source from
two different directions.
Appeal Br. 11 (Claims App.).
REJECTIONS ON APPEAL
Claims 1--4 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Nishimura (JP 56148414 A, pub. Nov. 17, 1981).
Claims 1--4 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Raney (US 5,212,647, iss. May 18, 1993).
Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Steeper (US 5,996,384, iss. Dec. 7, 1999).
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Steeper and Palzer (US 6,349,581 Bl, iss. Feb. 26, 2002).
Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Palzer and Steeper.
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Appeal2014-008447
Application 13/134,077
ANALYSIS
A. Anticipation by Nishimura
In rejecting claim 1 as anticipated by Nishimura, the Examiner finds
Nishimura discloses in Figure 1 "at least one light source (3) operable for
illuminating ... a surface area of the metal strip ( 1) ... and two
cameras (4, 4') located in a region of the at least one light source (3)." Final
Act. 2, 6-7. Under the Examiner's view of the broadest reasonable
interpretation of claim 1, "for an element to be located 'in a region' of
another element requires only that they be in the general vicinity of each
other," as shown for example in Nishimura's Figure 1.2 Id. at 7.
Appellant argues Nishimura' s two cameras ( 4, 4') are not "located in a
region" of light source (3), as claimed. Appeal Br. 5. Instead, according to
Appellant, Nishimura's two cameras (4, 4') each have their "own light
source" (3 or 3'). Id. Appellant asserts the "physical capability of the
second camera ( 4') to photograph the surface which was previously
illuminated by the first light source (3)" does not anticipate, because
Nishimura "disclose[ s] that for exercising this 'capability', a second light
source [3'] is required." Id. Thus, in Appellant's view, while Nishimura's
second camera ( 4') "arguendo, might be considered 'capable' of
photographing the surface area of [the] strip previously illuminated by at
least one light source [3], it is not 'operable' for photographing the area of
the strip illuminating by the at least one source [3]." Id.
In answer, the Examiner additionally includes Nishimura's second
light source (3') with the first light source (3) as "together" meeting the
2 This interpretation is provided in connection with the Steeper anticipation
rejection, but it also applies to the Nishimura anticipation rejection.
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Appeal2014-008447
Application 13/134,077
claimed "at least one light source." Ans. 2-3, 7. The Examiner further finds
Nishimura's first light source (3) illuminates an area of metal strip (1) while
first camera ( 4) photographs the area, and then later the same area is again
illuminated by Nishimura's second light source (3') while second camera
(4') photographs the area. Id. at 7.
We determine the Examiner's rejection applies an unreasonably broad
construction of claim 1. Our reviewing court has instructed:
[U]nder the broadest reasonable interpretation, the Board's
construction "cannot be divorced from the specification and the
record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
2011 ), and "must be consistent with the one that those skilled in
the art would reach," In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999). A construction that is "unreasonably broad" and
which does not "reasonably reflect the plain language and
disclosure" will not pass muster.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
Appellant's Specification discloses a single embodiment, shown in
one figure, which is unnumbered. Appellant's figure illustrates light
source ( 6) generating light (one arrow pointing down) to reflect off metal
strip (1) (two arrows pointing up), for detection by two cameras (7, 8).
Spec. 6:16-18. That is, Appellant's solely disclosed embodiment has two
cameras photographing the metal strip in the same region of space,
illuminated by the same light source. Appellant's Specification indicates
this is done to visualize the stress distribution of the metal strip under a high
tension, with two cameras being used to photograph the strip from two
different directions. Id. at 3:16-5:5, 9 (original claim 1), Abstract.
Employing two cameras to photograph the strip from two different
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Application 13/134,077
directions improves the stress distribution determination when the strip is
under a "high" tension. Id. at 3: 16-5: 5.
From Appellant's disclosure, a person of ordinary skill in the art
would understand the two cameras are "located in a region of the at least one
light source," as claimed, when the two cameras are disposed to photograph
an area of the metal strip within a region of space under illumination by the
at least one light source. A person of ordinary skill in the art would further
appreciate that claim 1 specifies only one such region. That is, in
embodiments where there is more than one light source, the multiple light
sources illuminate the same region in space, through which the metal strip
moves, and the two cameras are disposed to photograph an area of the metal
strip in that one region.
Applying this claim construction to Nishimura, it is apparent that
Nishimura discloses two light sources (3) and (3') illuminating two different
regions of space through which metal strip ( 1) moves. Nishimura, Figs. 1-2.
It is further apparent that "entry side" camera (4) is located in the region of
light source (3), and "exit side" camera ( 4') is located in the region of light
source (3'). Id.; see also Nishimura Translation, 5:21-6:11 (entry and exit
refer to metal strip correction apparatus 7). Entry side camera (4) is not in
the region of light source (3'), and exit side camera (4') is not in the region of
light source (3). Thus, Nishimura fails to disclose two cameras located in a
region of at least one light source, as claimed.
For the foregoing reasons, we do not sustain the rejection of claim 1
and its dependent claims 2--4 as anticipated by Nishimura.
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Application 13/134,077
B. Anticipation by Steeper, and Obviousness based in part on Steeper
In rejecting claim 1 as anticipated by Steeper, the Examiner finds
Steeper discloses in Figure 1 two cameras (1, 3) located in a region of at
least one light source (first 4 and/or second 4). Final Act. 4, 7-8; Ans. 3--4,
8. Appellant argues Steeper fails to disclose two cameras "located in a
region of the at least one light source," similar to Nishimura's deficiency.
Appeal Br. 6-7. Given the structural similarities between the Nishimura
apparatus and the Steeper apparatus as they relate to that claim limitation,
we agree. Compare Nishimura, Fig. 1, with Steeper, Fig. 1; see also Steeper
2:44-63 (respective regions of cameras (1, 3) are separated by hydraulic
cylinders which modify metal strip (7)). Therefore, we do not sustain the
rejection of claim 1 as anticipated by Steeper.
The obviousness rejections rely on Steeper as disclosing two cameras
located in a region of the at least one light source, as recited in claim 1.
Final Act. 4-6. Therefore, we do not sustain the rejection of claims 2 and 3
as unpatentable over Steeper and Palzer, or the rejection of claims 1-3 as
unpatentable over Palzer and Steeper.
C. Anticipation by Raney
Appellant argues for the patentability of claims 1--4 over Raney
together as a group. Appeal Br. 6 (argument for claim 1), 9 ("Claim[s] 2--4
depend on claim 1 and are allowable at least as being dependent on an
allowable subject matter."). Accordingly, we select claim 1 to decide the
appeal of the Raney anticipation rejection, with claims 2--4 standing or
falling with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds Raney discloses a first embodiment, shown in
Figures 2, 3, 5, and 9, including at least one light source (110) operable for
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Application 13/134,077
illuminating a surface area of metal strip (56), and two cameras (96) located
in a region of light source (110). Final Act. 3, 7 (citing Raney, 7:15-55, and
Figs. 2, 3, and 5); Raney, 4:31-56 (Figure 9 illustrates the "first
embodiment" also shown in Figures 2, 3, and 5). The Examiner also finds
Raney further discloses a second embodiment, shown in Figure 7, likewise
disclosing two cameras (96) located in a region of at least one light source.
Ans. 3--4, 7-8 (citing Raney, 7:66-8:14). The Examiner "interprets" the
lighting system of Raney's second embodiment as "inherently operable for
illuminating" strip (56), in order for Raney's cameras (96) to function
properly, as described in Raney. Id. at 7-8. The Examiner further states the
claimed predetermined surface area is considered to be the entire width of
strip (56). Id. at 8.
Appellant argues the two cameras (96) of Raney's first embodiment
are not located in the region of light source (110), and are not secured in a
predetermined position relative thereto and relative to each other. Appeal
Br. 6. Appellant asserts the two cameras (96) "photograph different areas"
of strip (56). Id. Appellant further argues, concerning Raney's second
embodiment, that " [ t ]he Examiner concedes that Raney ... [Figure 7] do [es]
not show a lighting system but alleges that the light source is inherent for
illuminating the predetermined surface area." Reply Br. 2. Appellant
further contends, even assuming arguendo that the light source is inherent in
Raney' s second embodiment, "the Examiner failed to provide any evidence
that the light source is 'arranged as in the claim."' Id. at 3.
We determine that the Examiner's finding that Raney discloses two
cameras located in a region of at least one light source is supported by a
preponderance of evidence. Raney' s first embodiment disposes an area of
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Appeal2014-008447
Application 13/134,077
metal strip (56) between die holder (42) and punch holder (46) which, when
metal strip (56) is properly positioned, come together to perform a die
cutting operation on metal strip (56). Raney, 5:35-60, Figs. 2-3. To verify
that metal strip (56) is positioned properly, Raney's first embodiment
includes light source (110) to illuminate the width of metal strip (56) located
between punch holder ( 46) and die holder ( 42), and two cameras (96) to
photograph metal strip (56) under the illumination. Id. at 7: 18-56, Figs. 2
and 9. In particular, borescopes (100) each carry light from light
source (110) to illuminate metal strip (56) under one end of the
borescope (100), and also carry the reflected light to the camera (96)
mounted at the opposite end of the borescope (100). Id.; see also id. Fig. 8
(illustrating internal structure ofborescopes 100). Cameras (96) verify
proper positioning of metal strip (56) by detecting indicia (94) disposed on
metal strip (56). Id. at 6:54-63, Figs. 2 and 9.
Given the proximity ofborescopes (100) in Raney's first embodiment
above the area of metal strip (56) disposed in the region of space between
punch holder ( 46) and die holder ( 42), light emitted from the end of each
borescope (100) will extend to the field of view of both cameras (96). In
this way, both cameras (96) of Raney' s first embodiment are located "in a
region of' at least one light source (110), as claimed. Substantially the same
analysis similarly establishes Raney's second embodiment likewise has
cameras (96) located "in a region of' at least one light source, which Raney
describes as "either a direct lighting system or a back lighting system." See
Raney, 7:66-8:14, Fig. 7. Appellant's conclusory statements to the contrary,
which fail to address the disclosure of Raney in any sort of detail, are not
persuasive. See Appeal Br. 6; Reply Br. 2-3.
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Application 13/134,077
For the foregoing reasons, we sustain the rejection of claims 1--4 as
anticipated by Raney.
DECISION
We reverse the rejections of claims 1-4 as anticipated by Nishimura;
claim 1 as anticipated by Steeper; claims 2 and 3 as unpatentable over
Steeper and Palzer; and claims 1-3 as unpatentable over Palzer and Steeper.
We affirm the rejection of claims 1--4 as anticipated by Raney.
No time period for taking any subsequent action in connection with
this appeal may be extended, under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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