Ex Parte Nygaard et al

Patent Trial and Appeal Board

Dec 12, 2018

14722329 (P.T.A.B. Dec. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/722,329 05/27/2015
22045 7590 12/14/2018
Brooks Kushman
1000 Town Center
22nd Floor
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Michael G. Nygaard
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.
GINS 0164 PUS2 1072
EXAMINER
AHMED, JAMIL
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
12/14/2018 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 MICHAEL G. NYGAARD and
GREGORY M. NYGAARD
Appeal2018-002584
Application 14/722,329 1
Technology Center 2800
Before JAMES C. HOUSEL, BRIAND. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 26-40. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, GII Acquisition, LLC doing business as
General Inspection, LLC, which according to the Appeal Brief, is also the
real party in interest. Appeal Br. 2.
Appeal2018-002584
Application 14/722,329
STATEMENT OF THE CASE2
Appellant describes the invention as relating to high-speed, three-
dimensional inspection of cold formed parts such as, for example, hex-
headed bolts/threaded fasteners. Appeal Br. 2; Spec. ,r 1. Claim 26,
reproduced below, is illustrative of the claimed subject matter:
26. A method of inspecting parts of the type formed with a
head having an end surface and a peripheral surface, the method
compnsmg:
transporting a part to an inspection station;
simultaneously illuminating and imaging the end surface
of the head and the peripheral surface of the head in a single
image plane when the part is at the inspection station;
and
determining whether the part head is defective based on
images of the end and peripheral surfaces of the head in the single
image plane.
Appeal Br. Appendix 1 (Claims App.).
We note that the claims and rejections now at issue are, in many
respects, similar to those addressed by our prior decision Ex parte Nygaard,
Appeal 2016-004254 (PTAB May 18, 2018).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Jones, Jr. et al. US 7,245,759 B2 July 1 7, 2007
2 In this Decision, we refer to the Final Office Action dated November 18,
2016 ("Final Act."), the Amended Appeal Brief filed September 11, 2017
("Appeal Br."), the Examiner's Answer dated November 13, 2017 ("Ans."),
and the Reply Brief filed January 12, 2018 ("Reply Br.").
2
Appeal2018-002584
Application 14/722,329
("Jones")
Snow et al.
("Snow")
US 2008/0182008 Al July 31, 2008
Nygaard et al. US 2010/0201806 Al Aug. 12, 2010
("Nygaard")
Andrew Wilson, ed., Lens Designs Tackle Novel Vision Applications, July
1, 2011 ("Wilson").
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 26-34, 36, 39, and 40 under 35 U.S.C. § I03(a)
as unpatentable over Jones in view of Wilson. Final Act. 2.
Rejection 2. Claim 35 under 35 U.S.C. § I03(a) as unpatentable over
Jones in view of Wilson, and further in view of Nygaard. Id. at 23.
Rejection 3. Claim 37 and 38 under 35 U.S.C. § I03(a) as
unpatentable over Jones in view of Wilson, and further in view of Snow. Id.
at 24.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellant's arguments, we are not
persuaded that Appellant identifies reversible error except where otherwise
identified below. Thus, where we affirm the Examiner's rejections, we do so
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Application 14/722,329
for the reasons expressed in the Final Office Action and the Answer. We add
the following primarily for emphasis.
The Appellant presents separate arguments for claims 26, 35, 37, and
38. We limit our discussion to those claims. Consistent with the provisions
of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), all remaining claim will stand or fall
with claim 26.
The Examiner rejects claim 26 under 35 U.S.C. § 103 as unpatentable
over Jones in view of Wilson. Final Act. 2. The Examiner finds that Jones
teaches a method of inspecting fasteners (parts) including transporting the
fasteners to an inspection station, illuminating and imaging the fasteners,
and determining whether the fastener is damaged. Id. at 2--4 (citing Jones).
The Examiner finds that Jones does not disclose "simultaneously
illuminating and imaging the end surface of the head and the peripheral
surface of the head in a single image plane and determining defect based on
peripheral surface of the head." Id. at 4. The Examiner finds, however, that
Wilson teaches inspection of objects with a telecentric illumination system
that illuminates and images head and peripheral surfaces in a single image
plane. Id. ( citing Wilson). The Examiner determines that it would have
been obvious to one of ordinary skill in the art to modify Jones as taught by
Wilson to "minimize the number of cameras necessary while still providing
a converging view of an object and determining whether the part head is
defective based on images of the end and peripheral surfaces of the head ...
in order to provide optimum yields for the advantage of cost savings." Id.
at 5.
Appellant argues that Jones inspects a machine screw that has no
peripheral surface. Appeal Br. 9, 16, 19. The Examiner, however, finds that
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Application 14/722,329
Jones Figures IA and Figure 5 depict the fastener 136 of Jones as having
both a head and a peripheral surface ( a circumference portion of the head).
Ans. 6-7. Appellant does not persuasively dispute this finding, and the
finding is supported by a preponderance of the evidence. See, e.g., Wilson
Figs. IA, 2, 5.
Appellant argues that Wilson does not teach imaging headed parts,
headed fasteners, or part heads. Appeal Br. 9-10. The Examiner, however,
relies on Jones as teaching inspection of headed fasteners. Final Act. 2--4.
Wilson generally teaches the value of simultaneously illuminating and
imaging "an array of parts" for inspection. Wilson 1. For example, Wilson
teaches that its system can image flanged nuts. Id. at 6. Wilson also teaches
that its system can image "odd objects" with a single camera. Ans. 9-1 O;
Wilson 4--5. Appellant's argument addresses Wilson individually rather
than persuasively explaining why the combined teachings of Jones and
Wilson, as explained by the Examiner, would not have met the recitations of
claim 26. Ans. 10-12; see also In re Keller, 642 F.2d 413, 426 (CCPA
1981 ). Appellant does not argue or present evidence supporting that
Wilson's imaging system could not be successfully combined with the
Jones' s inspection system.
Appellant also argues that the Examiner improperly engages in
"picking and choosing" by combining the teachings of the cited references.
Appeal Br. 11-12. The Examiner, however, stated reasons why a person
having ordinary skill in the art would have combined the teachings of each
cited reference (Final Act. 5-28), and Appellant's argument does not
identify error in the Examiner's stated rationales. Appellant argues that the
references do not provide motivation to "minimize the number of cameras"
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(Appeal Br. 21 ), but the Examiner finds that Wilson teaches using only one
camera. Ans. 23-24. The preponderance of the evidence supports the
Examiner's finding that Wilson teaches that its single telecentric camera
approach to part inspection is advantageous. See, e.g., Wilson 6.
Appellant argues that the Examiner improperly cites In re Keller.
Appeal Br. 12-13. We disagree. The oft cited proposition that "one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references" is well-established.
In re Keller, 642 F.2d at 426. To reach this proposition, the In re Keller
court cited In re Young, 403 F.2d 754 (CCPA 1968) rather than relying upon
In re Winslow or In re Antor as emphasized by Appellant. Appeal Br. 14.
Appellant does not identify authority suggesting that this In re Keller
proposition has been overturned by later precedent. And, as further
explained herein, Appellant also does not persuasively argue that the
Examiner's findings with regard to either applied reference are erroneous or
that the Examiner's stated rationale as to why a person of skill would have
combined the references is erroneous. For example, Appellant's arguments
that Wilson does not image headed parts ( when the Examiner relies on Jones
as teaching this) (Appeal Br. 10-11, 17) or that Jones does not teach imaging
peripheral surfaces (when the Examiner relies on Wilson as teaching this)
(id. at 19-21) do not identify reversible error.
Appellant also argues that Jones does not provide an enabling
disclosure. Appeal Br. 14--16. "' [A] prior art printed publication cited by an
examiner is presumptively enabling barring any showing to the contrary by a
patent applicant."' In re Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013) (quoting
In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012)). Where, as
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Application 14/722,329
here, an applicant has challenged the enablement of a cited reference, we
review all evidence and applicant argument to determine if the prior art
reference is enabling. Id.; Antor Media, 689 F.3d at 1292.
Appellant's argument that Jones is not enabling is unpersuasive
because Appellant does not adequately explain why a person having
ordinary skill in the art would not have been able to implement the relevant
teaching of Jones or would not have been able to combine the teachings of
the art in the manner proposed by the Examiner without undue
experimentation. Appellant's arguments are distinguished from, for
example, In re Morsa, 713 F.3d at 110, because Appellant provides no
specific, concrete reasons why the references are non-enabling. The mere
fact that, for example, Jones does not allegedly describe the operation of
each functional block of Figure 6 in detail (Appeal Br. 14--16) does not
necessarily mean that a person of skill in the art would not have been able to
implement such a controller with a reasonable expectation of success and
without undue experimentation.
Because Appellant's arguments do not identify reversible error with
regard to claim 26, we sustain the Examiner's rejection of claim 26 and of
the other claims that the Appellant does not argue separately ( claims 27-34,
36, 39, and 40).
The Examiner rejects claim 35 under 35 U.S.C. § 103 as unpatentable
over Jones in view of Wilson, and further in view of Nygaard. Final Act 23.
Appellant argues that the Examiner does not adequately explain how
Nygaard is pertinent. Appeal Br. 19. The Examiner elaborates on the
pertinence of the Nygaard reference in the Answer (Ans. 20-21, 27-28), and
Appellant does not allege in the Reply Brief that this elaboration
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Application 14/722,329
inadequately explains Nygaard or that the Examiner's findings regarding
Nygaard are in error (Reply Br. 2-3). Accordingly, Appellant's argument as
to claim 35 does not identify reversible error.
The Examiner rejects claims 37 and 38 under 35 U.S.C. § 103 as
unpatentable over Jones in view of Wilson, and further in view of Snow.
Final Act. 24. With respect to claim 37, Appellant argues that "metering
wheel 3 8" of Snow is different in structure and placement from the metering
wheel recited in claim 37." Appeal Br. 17-18. Appellant does not explain,
however, how or why Snow is different from claim 37. Appellant's
argument is too cursory to persuasively identify reversible error. See
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that merely
asserting that applied prior art does not teach a recited limitation is not
substantive argument for separate patentability).
Claim 3 8 recites, "[ t ]he system of claim 3 7, wherein the metering
wheel is optically transparent to permit the part to be imaged by a backlight
through the metering wheel." Appeal Br. Appendix 3 (Claims App.).
Appellant argues that the Snow's metering wheel is not "optically
transparent." Appeal Br. 18.
The Examiner agrees that Snow does not explicitly teach its metering
wheel is optically transparent. Ans. 19-20. The Examiner states:
However, it is considered within the level of someone of ordinary skill
in the art to manufacture a metering wheel from a transparent material
such as Plexiglas or hard transparent plastic in order to take image
there through. Such transparent materials are often used to provide
windows to view an object or machinery and can also help to alleviate
the size and weight of a piece of machinery, as a transparent plastic
part often weighs less that its metallic counterpart.
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Application 14/722,329
Id.
Therefore, it would have been obvious to one of ordinary skill in the
art at the time of invention was made to create the metering wheel out
of a transparent material in the system of Jones as modified by Wilson
as modified by Snow in order to decrease the weight of an object as
well as to be able to view the object within the metering wheel.
With respect to claim 38, Appellant's argument persuades us of error.
The Examiner's rejection of claim 38 requires a core factual finding that use
of an optically transparent metering wheel was known in the art. This issue
is not peripheral to claim 3 8 and does not relate to something so commonly
known that the assertion can be supported without further evidence. In re
Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001) ("With respect to core factual
findings in a determination of patentability, however, the Board cannot
simply reach conclusions based on its own understanding or experience----or
on its assessment of what would be basic knowledge or common sense.
Rather, the Board must point to some concrete evidence in the record in
support of these findings."). Accordingly, we do not sustain the Examiner's
rejection of claim 3 8.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 26-37, 39, and 40. We reverse the Examiner's rejection of claim 38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
9