Ex Parte Reid et al

Patent Trial and Appeal Board

Dec 30, 2015

12192248 (P.T.A.B. Dec. 30, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/192,248 08/15/2008
63759 7590 01/04/2016
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
EricM. Reid
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.
08-0190-US-NP 2379
EXAMINER
VAUGHAN, JASON L
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
01/04/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC M. REID, ALAN R. MERKLEY,
and JAMES C. MURPHY
Appeal2013-007900
Application 12/192,248
Technology Center 3700
Before NEAL E. ABRAMS, WILLIAM A. CAPP,
and BRANDON J. WARNER, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Eric M. Reid et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1, 8, 10-13, 16-18,
and 24--28. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM and designate a rejection as a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
Appeal2013-007900
Application 12/192,248
THE INVENTION
The claimed invention is directed to rail mounted tools used in
manufacturing.
Claims 1 and 24, reproduced below, are illustrative of the claimed
subject matter.
1. An apparatus comprising:
a flexible rail system compnsmg a flexible rail
configured to be attached to a curved work surface;
a multi-axis carriage coupled to the flexible rail system,
wherein the multi-axis carriage is configured to move along the
flexible rail system and is configured to move a tool relative to
the work surface along multiple axes;
a tool module removably coupled to the multi-axis
carriage, wherein the tool module comprises a frame and the
tool, wherein the tool is mounted on the frame, wherein the tool
is located on a first side of the tool module and wherein the tool
module further comprises:
a pressure foot located on the first side and
configured to apply pressure to the work surface;
a reaction unit located on a second side of the tool
module and configured to stabilize the multi-axis carriage
during operation of the tool, wherein the reaction unit is
configured to stabilize the multi-axis carriage while the
multi-axis carriage moves along the flexible rail.
24. An apparatus comprising:
a carriage configured to move along a rail system that is
configured to be attached to a work surface;
a rail motor attached to the carriage and configured to
move the carriage along the rail system;
a tool module removably attached to the carriage;
a tool module motor attached to the carriage and
configured to move the tool module along a first axis that is
about perpendicular to a second axis of movement of the
carriage along the rail system, and wherein the first axis and the
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second axis are both about parallel to a surface of the rail
system; and
a tool attached to the tool module.
THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Boyl-Davis
Boyl-Davis
Fritsche
US 6,843,328 B2
US 2005/0265798 Al
US 2007/0036618 Al
THE REJECTIONS
Jan. 28, 2005 1
Dec. 1, 2005 2
Feb. 15,2007
Claims 24--28 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1, 10-13, 16, and 17 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Fritsche.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fritsche and B-D '328.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fritsche, B-D '798 and B-D '328.
Claims 24--28 stand rejected under 35 U.S.C. § § 103(a) as being
unpatentable over Fritsch and B-D '328.
1 Hereinafter B-D '328.
2 Hereinafter B-D '798.
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OPfNION
The Rejection of Claims 24-28
Under Section 112, First Paragraph
This rejection is based upon the Examiner's finding that the statement
in lines 7-9 of claim 24 of a tool module motor "configured to move the tool
module along a first axis that is about perpendicular to a second axis ...
wherein the first axis and the second axis are both about parallel," sets forth
a limitation that is "not described in the specification and the recitation of
the term about further implies a range that is also not set forth in the
specification." Thus, the Examiner concludes, independent claim 24, and
dependent claims 25-28, fail to comply with the written description
requirement of the first paragraph of Section 112. See Final Act. 3; Ans. 3.
Appellants point out that the drawings disclose in Figure 4 that the
claimed axes, X ( 416) and Y ( 418), are clearly perpendicular to each other
and parallel to a surface of the rail system. Appellants then argue:
[T]hose of ordinary skill in the art know axiomatically that
measurements can never be infinitely precise. Thus,
ascertaining whether two axes on a real device are precisely and
exactly perpendicular is impossible. Thus, those of ordinary
skill accept a degree of uncertainty in any measurement. Those
of ordinary skill routinely use the term "about" to contemplate
this uncertainty .... [and] in view of the clear disclosure of the
specification and the ubiquitous knowledge of those of ordinary
skill regarding uncertainty in measurement, there is no reason
to believe that Appellant[ s] did not have in possession the
invention as claimed. Appellant[ s are] not using a special
meaning for the term "about," but rather use[] the term "about"
in its reasonable and ordinary meaning. This use of the term
"about" is definite and allowable in claims so long as the
underlying subject matter is subject to quantitative
measurement, which is certainly true in the case at hand.
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Reply Br. 3--4. Further in this regard, Appellants assert that "those of
ordinary skill would not expect Appellant[ s] to have described this
relationship to infinite precision and accuracy" (Id. at 5), and that
the exact words of a claim need not appear in the specification.
"While there is no in haec verba requirement, newly added
claim limitations must be supported in the specification through
express, implicit, or inherent disclosure." MPEP § 2163(I)(B),
2nd paragraph. Appellant[ s] respectfully submit[] that the
specification supports the terms "about parallel" and "about
perpendicular" via implicit and inherent disclosure; specifically,
in inherently contemplating the notoriously well-known
impossibility of obtaining angle measurements to infinite
precision and accuracy.
(Id. at 6).
We find these arguments not to be persuasive. Appellants' disclosure
establishes, without reservations, that the invention comprises first and
second axes that are "perpendicular" and "parallel." It is axiomatic that, in
geometric usage, "perpendicular" means "90 degrees," and "parallel" means
"180 degrees." From our perspective, prefacing each of these terms with
"about" constitutes a redefinition that manifests itself in a major change in
their scope, for the applicable common definition of "about" is "almost or
nearly" and the term is commonly used as an adverb to "indicate that a
number, amount, time, etc., is not exact or certain." 3
The record here is devoid of any indication of what degree of
deviation constitutes "almost or nearly" perpendicular or parallel.
Appellants have not provided evidence in support of their position that those
of ordinary skill in the art would understand that no measurement can be
3 See, for example, www.merriam-webster.com/ dictionary/ about.
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"infinitely precise," would accept a "degree of uncertainty" in any
measurement, and would "routinely" use the term "about" to "contemplate
this uncertainty." In the absence of such, it is our view that the relationships
of the axes in the invention possessed by Appellants at the time this
application was filed, described therein as being "perpendicular" or
"parallel," are just that-two axes that are oriented 90 degrees to one
another, and/or are oriented parallel to one another.
Appellants also argue on page 4 of the Reply Brief that
[ t ]his use of the term "about" is definite and allowable in claims
so long as the underlying subject matter is subject to
quantitative measurement, which is certainly true in the case at
hand. Compare also MPEP § 2173.0S(b)(A), which confirms
that the term "about" in this context is definite.
This argument also is not persuasive. MPEP § 2173.0S(b )(A) actually is
contra to Appellants' position because, although it does not focus on the
written description requirement of Section 112, first paragraph, it instructs
that "about" is acceptable only when the breath of the limitation it is
modifying can be established, to wit:
In determining the range encompassed by the term "about," one
must consider the context of the term as it is used in the
specification and claims of the application. 4 . . . [A] limitation
defining the stretch rate of a plastic as "exceeding about 10%
per second" is definite because infringement could clearly be
assessed through the use of a stopwatch. 5 ... Claims reciting "at
least about" were invalid for indefiniteness where there was
close prior art and there was nothing in the specification,
prosecution history, or the prior art to provide any indication
40rtho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321,
1326 (Fed. Cir. 2007).
5 W.L. Gore &Assoc., Inc. v. Garlock, Inc., 721F.2d1540 (Fed. Cir. 1983),
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as to what range or specific activity is covered by the term
"about "6 (emphasis added in all cases).
Here, such information was not provided in the original disclosure, nor has it
been established during the prosecution history.
Therefore, while we have carefully considered all of Appellants
arguments, we are not persuaded that this rejection is in error, and it is
affirmed.
The Rejection of Claims 1, 10-13, 16, and 17
As Anticipated by Fritsche
Among the findings made by the Examiner are, with reference to
Figures 2 and 5, that Fritsche discloses a tool module 70 removably coupled
to the carriage via air cylinders 26, that tool module 70 comprises a frame 24
and a tool 82, and that tool 82 is located on a first side of tool module 70.
Ans. 5. Appellants argue that the numeral 70 denotes only a tool, and not a
tool module (App. Br. 12), and that even if 70 is considered to be the
claimed tool module, "the more accurately characterized tool module (Y axis
carriage 24) in Fritsche is slidably and fixedly attached to the rest of the
carriage" (Id. at 13; Reply Br. 12).
We do not agree. With reference to Figure 2, Fritsche describes
element 70 not merely as a tool, but as "a power tool assembly or machining
device" (i-f 33; emphasis added), and therefore it falls within the common
applicable definition of "module," which is "one of a set of parts that can be
connected or combined to build or complete something."7 This is confirmed
in paragraphs 17 and 18, where Figures 8 and 9 are described as showing
side views "of the machining device," and each clearly shows that such
6Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200 (Fed. Cir. 1991).
1 See, for example, www.merriam-webster.com/dictionary/module.
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device comprises more structure than a drilling tool itself Fritsche further
teaches that element 70 "may be temporarily coupled to [the] second side 60
of the Y-axis carriage" (emphasis added) by, as shown in Figure 5, "an
attachment fixture 84, such as a tooling knob." Id. In our view, these
explanations indicate that element 70 comprises a "tool module" that is
"removably coupled" to multi-axis carriage 19, as is required by claim 1.
The Examiner also finds that Fritsche discloses the reaction unit
recited in claim 1, in the form of a vacuum cup assembly 64, which
stabilizes the carriage during operation of the tool by applying a vacuum, as
well as stabilizing it while the carriage is moving when the vacuum is not
applied. Ans. 6. The Examiner explains that
if a vacuum was not applied to the vacuum cup the multi-axis
carriage would be able to move and the reaction unit would still
be capable of stabilizing the multi-axis carriage by reacting to
any rotation of the carriage around an x-axis that is parallel to
the path of the rails (12 of Figure 2).
Id. at 18. The Examiner further states that "configured to stabilize" is
merely functional language that requires the Fritsche structure to be capable
of so performing, and that
while it would not necessarily contact the workpiece during
movement of the carriage along the rail system, [the Fritsche
structure] would certainly at least provide a counterbalancing
effect on the remainder of the apparatus by its weight alone ....
[and] this counterbalancing effect could react [to] any wobble
or rotation of the apparatus as it travelled along the flexible rail
system and would therefore provide some amount of
stabilization to the apparatus.
Id. at 18-19.
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The focus of the arguments set forth by Appellants with regard to this
issue can be summarized by the statements that
[t]he asserted vacuum cup in Fritsche, cited as coupling device
64, cannot stabilize the multi-axis carriage while the multi-axis
carriage moves along the flexible rail. The vacuum cup is either
engaged, and "stabilizing" the carriage in Fritsche, or is not
engaged and is not stabilizing the carriage in Fritsche (App. Br.
19-20),
and that
even if the Examiner's Answer had been able to broadly read
Fritsche and speculate as to how Fritsche might be shoehorned
to fit the claimed invention, such speculation is insufficient
under Kalman v. Kimberly-Clark Corp. to assert and support an
anticipation rejection (Reply Br. 11 ).
Appellants' Specification states that "[a] reaction unit may be used to
stabilize a multi-axis carriage during movement of the multi-axis carriage
along the flexible rail" (i-f 42), however, no definition of "stabilize" is
provided. In the absence of such, \Ve look to the common applicable
definition of "stabilize," which is "to hold steady," to "limit fluctuations." 8
Fritsche discloses a vacuum system that can provide fluid to a vacuum cup
assembly 64 as well as to one side of the double-acting cylinders 26 that
lock the X-axis and Y-axis carriages together at appropriate times. i131.
Vacuum cup assembly 64 is described as being "adaptive to substantially
affix Y-axis carriage 24 to work piece 18 by vacuum ... [to] prevent
carriage system 19 from moving along the X-axis." Id. i128. Vacuum cup
assembly 64 is shown in Figure 2 as being fixedly attached to Y-axis
carriage at side 58, and there is no indication that it is movable upwardly or
8 See, for example, www.merriam-webster.com/dictionary/stabilize.
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downwardly with respect to the carriage. Thus, we agree with the Examiner
that even the mere presence of the un-energized vacuum suction cup
assembly 64 would "stabilize" the multi-axis carriage while it moves along
the flexible rail by limiting the amount of tilting about the X-axis beyond a
certain amount. Further in this regard, we note that Fritsche teaches that
after the machining device has completed its action upon a particular
workpiece location, the vacuum system is operated to supply air to vacuum
cup assembly 64 to cause it "to act as an air float device that allows carriage
system 19 to move along the X-axis" (Id. i-f 54), in which case it also would
contribute to stabilizing the carriage during the movement phases of carriage
operation.
Insofar as Kalman v. Kimberly-Clark Corp. is concerned, it states that,
assuming that a reference is properly "prior art," it is only necessary that the
claims under attack "read on" something disclosed in the reference, i.e., all
limitations of the claim are found in the reference, or are "fully met" by it. 9
We agree with the Examiner that such is the case with the Fritsche reference.
We have carefully considered all of Appellants' arguments with
regard to this rejection. However, they have not convinced us that the
positions taken by the Examiner are in error. Therefore, for the reasons
expressed above, the rejection of claim 1 is affirmed. Appellants have
chosen not to argue the separate patentability of claims 10-13, 16, and 17,
which depend from claim 1 (App. Br. 20), and therefore the like rejection of
these claims also is affirmed.
9 713 F.2d 760, 772 (Fed. Cir. 1983).
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The Rejection of Claim 8
As Being Obvious in View of Fritsche and B-D '328
Claim 8 adds to claim 1 the requirement that there be a motor to move
the multi-axis carriage along the X-axis. The Examiner finds that this is
disclosed in B-D '328, and concludes that it would have been obvious to
modify Fritsche by providing a motor in place of a human operator. Ans. 9.
Appellants do not challenge this finding, but argue only that B-D '328 fails
to overcome the deficiencies in Fritsche regarding the removable tool
module and the reaction unit recited in claim 1. App. Br. 20; Reply Br. 12.
The rejection of claim 1 having been affirmed on the basis of Fritsche
alone, the rejection of claim 8 also is affirmed.
The Rejection of Claim 18
As Being Obvious in View of Fritsche, B-D '798 and B-D '328
Claim 18 is an independent claim that recites a structure similar to that
of claim 1. The Examiner adds cites B-D '328 for its teaching of using
motors to po\~1er the multi-axis carriage, concluding that it \~1ould have been
obvious to so modify the Fritsche system, in which the carriages are
manually positioned, to eliminate the need for a human operator. Ans. 11-
12. B-D '798 was cited for its teaching of substituting the plurality of
suction cups taught by this reference for the one disclosed in Fritsche to
achieve the "predictable result" of providing greater stability. Id. at 12-13.
Appellants argue only that B-D '798 and B-D '328 fail to overcome the
deficiencies in Fritsche regarding the removable tool module and the
reaction unit recited in claim 1. App. Br. 20; Reply Br. 12.
The rejection of claim 1 having been sustained on the basis of Fritsche
alone, the rejection of claim 18 also is affirmed.
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The Rejection of Claims 24-28
As Being Obvious in View of Fritsche and B-D '328
Although we have agreed with the Examiner that these claims fail to
comply with written description requirement of 35 U.S.C. § 112, first
paragraph, in the interest of judicial economy we shall also consider this
rejection on the basis of the applied prior art.
The Examiner finds all of the subject matter recited in claim 24 to be
disclosed by Fritsche, except for the presence of a motor attached to the
carriage and configured to move the carriage along the rail system. In
arriving at this conclusion, the Examiner takes the position that that the tool
module is moved along a first axis perpendicular to the work surface by tool
module motor 104. The Examiner also finds that B-D '3 2 8 discloses
providing a first carriage with a motor to move it along the X-axis, and
concludes that it would have been obvious to modify Fritsche by adding
such a motor to automate Fritsche' s manual system to improve consistency
along a large workpiece. See Ans. 14--15.
Appellants present two arguments with regard to this rejection. The
first is that the combined references fail to disclose a tool module removably
attached to the carriage. App. Br. 21; Reply Br. 12. As we stated with
regard to this argument as applied to the rejection of claim 1 (supra at 7-8),
we find this not to be the case. The second argument presented by
Appellants is that motor 104, which the Examiner found moved the tool
module, actually moves only the tool, and not the entire tool module, and
therefore is not "configured to move the tool module along a first axis that is
about perpendicular to a second axis of movement of the carriage along the
rail system," as is required by this claim. App. Br. 22; Reply Br. 14--15.
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Notwithstanding the positions taken by the Examiner and the
arguments raised by Appellants, it is our view that the combined teachings
of Fritsche and B-D '328 render obvious the subject matter recited in claims
24--28 in view of the following reasoning.
With regard to claim 24, Fritsche discloses a carriage system 19
comprising a first carriage 20 configured to move along a first axis on a
flexible rail system that is configured to be attached to a work surface, and a
second carriage 24 mounted on the first carriage 24 and configured to move
along a second axis perpendicular to the first axis, with the two axes being
parallel to a surface of the rail. Fig. 2; i-fi-124--26. As explained above in the
discussion of the rejection of claim 1, it is our view that Fritsche also
discloses a tool module 70 removably attached to the second carriage, and a
tool attached to the tool module.
Although Fritsche does not teach moving the first and second
carriages by means of motors, Fritsche acknowledges that the use of motors
to drive carriages along X and Y axes was known in the prior art at the time
of the Fritsche invention. i15. B-D '328 discloses such an arrangement in a
flexible rail system having first and second carriages configured to operate
in the same manner and along the same axes as those of Fritsche, driven by
motors 40 and 60. Fig. 2; Col. 5, 1. 51---Col. 6, 1. 24. It therefore is our view
that it would have been obvious to one of ordinary skill to modify the
Fritsche system by providing a first (rail) motor attached to carriage 20 and
configured to move carriage 20 along the rail system, and a second (tool)
motor attached to carriage 24 to drive it, with attached tool module 70, along
an axis that is about perpendicular to the axis of movement of carriage 20
along the rail. Such a modification amounts merely to applying a known
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technique to a known device to yield predictable results, in this case
replacing a human operator with automation in order to improve results.
"[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Thus, the combined teachings of Fritsche and B-D '328 establishes a
prima facie case of obviousness with regard to the subject matter recited in
Appellants' claim 24, and this rejection of claim 24 is affirmed.
Dependent claim 25 requires that the carriage be "further configured
such that when the tool module is removed, at least one replacement module
is removably attachable to the carriage." Appellants argue that neither
reference discloses this feature. App. Br. 23; Reply Br. 15. However, we
agree with the Examiner's position (Ans. 15) that the two modules shown in
Figures 8 and 9 are configured to be attached to the carriage, and therefore
are considered to be replaceable tool modules attachable to the carriage.
Again, as explained above regarding the rejection of claim 1, we also agree
with the Examiner that Fritsche discloses a tool module that is removably
coupled to the carriage. It follows that the carriage therefore is "configured"
such that a replacement tool module can be removably coupled to the
carriage when the presently installed module is removed. This rejection of
claim 2 5 is affirmed.
Appellants have indicated that claim 26 stands or falls with claim 24
(App. Br. 23), and therefore this rejection of claim 26 is affirmed.
With regard to claim 27, Appellants assert that neither Fritsche nor
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B-D '328 discloses a reaction unit that stabilizes the carriage during
operation of the tool, and regarding claim 28 that neither discloses a reaction
unit that stabilizes the carriage during movement along the rail. On the basis
of the explanation set forth above in the discussion of the rejection of claim
1, we agree with the Examiner that the claimed reaction unit is taught by
Fritsche, and this rejection of claims 27 and 28 is affirmed.
DECISION
All five rejections are affirmed.
DESIGNATION OF NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b)
Because new reasoning has been applied, we designate our affirmance
of the rejection of claims 24--28 under 35 U.S.C. § 103(a) as a new ground
of rejection pursuant to 37 C.F.R. § 41.50(b) 2015, which provides that "[a]
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b )(1 ), in order to preserve the right to seek
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review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affinnance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
kis
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