Ex Parte SCHWARZ

Patent Trial and Appeal Board

Jun 25, 2018

13525066 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/525,066 06/15/2012
60601 7590 06/25/2018
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
FIRST NAMED INVENTOR
Joachim SCHWARZ
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.
l 739/0200PUS 1 1068
EXAMINER
TRAN, THIEN S
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
06/25/2018 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 JOACHIM SCHWARZ
Appeal 2016-005037
Application 13/525,066 1
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Office
Action, dated January 27, 2015 ("Final Act."), rejecting claims 1---6, 8, and
11-15. An oral hearing in accordance with 37 C.F.R. § 41.47 was held on
June 19, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is PRECITEC KG. Br. 2.
Appeal2016-005037
Application 13/525,066
CLAIMED SUBJECT MATTER
The claims are directed to "an optical measuring device for
monitoring a joint seam, a joining head and a laser welding head." Spec.
1 :6-8. Claim 1, the sole independent claim, reproduced below, is illustrative
of the claimed subject matter:
1. An optical measuring device for monitoring a joining region
in a workpiece, comprising:
at least one light-section device with a first light source,
which casts a light fan in a direction of the workpiece in order to
create a triangulation light line within the joining region on the
workpiece, the triangulation light line intersecting a joint seam
in the joining region;
a first optical sensor with a first observation beam path for
spatially resolved imaging of the triangulation light line
projected onto the joint seam;
a second optical sensor with a second observation beam
path for spatially resolved imaging of the joint seam, with the
second observation beam path being coaxially coupled into the
first observation beam path and with the first optical sensor and
the second optical sensor using a common objective lens;
at least one first illumination module for homogeneous
illumination of the joining region of the workpiece at a first angle
to an optical axis of the common objective lens;
at least one second illumination module for homogenous
illumination of the joining region of the workpiece at a second
angle, larger than the first angle, to the optical axis of the
objective lens; and
a control device, which, as a result of different actuation
of the at least one first illumination module and of the at least one
second illumination module at different periods of time,
alternates between a dark-field and a bright-field illumination or
sets a ratio of the intensities of the bright-field illumination and
the dark-field illumination with respect to one another,
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Application 13/525,066
wherein a readout rate of the first optical sensor is greater
than 1 kHz and a readout rate of the second optical sensor is less
than 500 Hz.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ogino US 2003/0197791 Al Oct. 23, 2003
Almogy US 6,671,042 Bl Dec. 30, 2003
Schwarz US 2005/0041852 Al Feb.24,2005
("Schwarz '852")
Boillot et al. US 2005/0247681 Al Nov. 10, 2005
("Boillot")
Schwarz US 2008/0232677 Al Sept. 25, 2008
("Schwarz '677")
Schwarz US 2009/0266989 Al Oct. 29, 2009
("Schwarz '989")
Behr et al. US 2009/0302011 Al Dec. 10, 2009
("Behr")
Schwarz2 US 7,983,470 B2 July 19, 2011
("Schwarz '4 70")
Peltie et al. US 2011/0190639 Al Aug. 4, 2011
("Peltie")
2 Schwarz '470 is the U.S. National Stage entry for PCT Publication No.
W02007 /053973. For international applications filed under the Patent
Cooperation Treaty, the international application and the national stage
application are the same application. See 35 U.S.C. § 363. We will thus
refer to Schwarz '4 70 in this decision instead of Schwarz '677 as recited by
the Examiner.
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Appeal2016-005037
Application 13/525,066
REJECTIONS
The Examiner made the following rejections:
I. Claims 1-6, 8, and 11-15 stand rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
II. Claims 1-3, 5, 8, and 11-15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Boillot, Ogino, Peltie, Schwarz '470,
Behr, and Schwarz '989.
III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boillot, Ogino, Peltie, Schwarz '470, Behr, Schwarz '989,
and Almogy.
IV. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boillot, Ogino, Peltie, Schwarz '470, Behr, Schwarz '989,
and Schwarz '852. 3
OPINION
Rejection I
Claim 1 recites, in relevant part, "at least one light-section device with
a first light source," "at least one first illumination module," and "at least
one second illumination module." Br. 10 (Claims App'x.). The Examiner
finds that the claims are not adequately described in the Specification. Final
Act. 3. Specifically, the Examiner finds that claim 1 requires three
illumination sources or light sources and "only two source [ s] of light or
illumination are described in the specification." Id. The Examiner reiterates
this position in the Examiner's Answer stating that "[t]here is no disclosure
in the written description or drawings that shows a first light source having a
first and second illumination module." Ans. 5.
3 Schwarz '852 is referred to by the Examiner as Halschka. Final Act. 18.
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Appeal2016-005037
Application 13/525,066
Appellant argues that Figures IA, IB, 2A, and 2B illustrate at least
one light source. Br. 5. Appellant further argues that Figure 4 illustrates
pairs of first and second illumination modules. Id. Finally, Appellant cites
to the Specification at page 7, lines 24--3 5 for written description support for
the claimed invention. Id.
We agree with Appellant that the Specification adequately describes
the invention. We make our decision based upon a review of the
Specification through the viewpoint of a person having ordinary skill in the
art. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) ("[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
(citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991)
(quoting Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985)); see also In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
The Court in Ariad Pharmaceuticals explained this test as follows:
The term "possession," however, has never been very
enlightening. It implies that as long as one can produce records
documenting a written description of a claimed invention, one
can show possession. But the hallmark of written description is
disclosure. Thus, "possession as shown in the disclosure" is a
more complete formulation. Yet whatever the specific
articulation, the test requires an objective inquiry into the four
comers of the specification from the perspective of a person of
ordinary skill in the art. Based on that inquiry, the specification
must describe an invention understandable to that skilled artisan
and show that the inventor actually invented the invention
claimed.
This inquiry, as we have long held, is a question of fact.
Ralston Purina, 772 F.2d at 1575. Thus, we have recognized
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Application 13/525,066
that determining whether a patent complies with the written
description requirement will necessarily vary depending on the
context. Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir.
2005). Specifically, the level of detail required to satisfy the
written description requirement varies depending on the nature
and scope of the claims and on the complexity and
predictability of the relevant technology. Id. For generic
claims, we have set forth a number of factors for evaluating the
adequacy of the disclosure, including "the existing knowledge
in the particular field, the extent and content of the prior art, the
maturity of the science or technology, [and] the predictability of
the aspect at issue."
Ariad Pharmaceuticals, 598 F.3d at 1359.
Here, the invention is relatively straight forward, it is a welding head
with an optical measuring device. Spec. 4:5-12. In particular, the limitation
that is in question is the number of lights that may be positioned on the
welding head. Final Act. 3. Appellant argues that the number of lights may
be discerned by reference to the figures and in particular, Figure 4, which
shows two pairs of lights 26a and 26b or at least four lights in this exemplary
embodiment. Br. 5. Further, reviewing Appellant's Specification, it recites
"the first light source of the light-section device and the second light source
of the at least one illumination device." Spec. 7:16-18. Also, for optimum
illumination, the at least one illumination device comprises "at least one first
illumination module for illumination at a small angle and the at least one
second illumination module for illumination at a large angle." Spec. 7:32-
35. This passage of the Specification uses the phrase "at least one" in
reference to both the first and second illumination modules implying that
there are multiple first and second illumination modules that may be utilized.
A person having ordinary skill in the art viewing the totality of Appellant's
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Appeal2016-005037
Application 13/525,066
figures and Specification would understand that there is adequate support in
Appellant's Specification for the number of illumination modules and light
sources recited in the claims. Accordingly, we do not sustain the
Examiner's rejection of claims 1-6, 8, and 11-15 under 35 U.S.C. § 112,
first paragraph.
Rejection II
Claim 1
The Examiner makes numerous findings with respect to Boillot but
does not specifically state whether Boillot discloses "at least one first
illumination module ... at a first angle to an optical axis" and "at least one
second illumination module ... at a second angle, larger than the first
angle." Br. 10 (Claims App'x.). The Examiner, however, finds that Behr
teaches this limitation. See Final Act. 8 ("at least one second illumination
module being provided for illumination at a large angle (Fig 1, angle
between laser line 1 7 and axis 19 is larger than angle between laser line 11
and axis 19)").
Appellant argues that "Behr teaches only a first and a second line
projector 10, 16 each of which projects a laser line 11, 17 onto metal parts
5." Br. 8. Further, Appellant argues that "[t]he angle between the optical
axis 19 of lens 4 and the incident laser line 11 is exactly the same as the
angle between the optical axis of the lens and the laser line 1 7 contrary to the
Examiner's assertion." Id.
Below is an annotated copy of Behr Figure 1 with the optical axis and
lasers lines labeled by the Board for ease of reference.
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Application 13/525,066
1
~
7
4
18 8 9
?
6
14
13
_________ /_ ____ -----
12
3
2 4
Fig.1
Behr, Figure 1, is a diagrammatic section view of a laser welding head
including a line projector 10 that projects a laser line 11 and a line projector
16 that projects a laser line 17 and welding position 8. Behr i-fi-132, 34, 37.
As an initial matter, we note that an Examiner's burden of proving
unpatentability when rejecting claims in a patent application is by a
preponderance of the evidence. In re Caveney, 761F.2d671, 674 (Fed. Cir.
1985). In order to satisfy this standard, the evidence must demonstrate that
it is more likely than not that the alleged facts are actually true. See Bosies
v. Benedict, 27 F.3d 539, 542 (Fed. Cir. 1994) (noting that the
preponderance of the evidence standard "only requires the fact finder 'to
believe that the existence of a fact is more probable than its nonexistence"'
(quoting Jn re Winship, 397 U.S. 358, 371 (1970)).
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Appeal2016-005037
Application 13/525,066
The Examiner relies upon Figure 1 of Behr to teach that laser lines 11
and 17 are at different angles to the optical axis 19. Final Act. 7-8. The
Examiner provides no further explanation for this conclusion, except to find
the different angles are clearly shown in Figure 1. Ans. 9. In this regard, it
should be kept in mind that patent drawings are not meant to be blueprints.
See In re Andersen, 743 F.2d 1578, 1581 (Fed. Cir. 1984) ("[p]atent
drawings are not working drawings" (citation omitted)), overruled on other
grounds by In re Etter, 756 F.2d 852, 858-59 (Fed. Cir. 1985). A drawing,
nevertheless, teaches all that it reasonably discloses and suggests to a person
of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979).
Looking at Figure 1 of Behr, it is not clear that lines 11 and 17 are at
different angles relative to optical axis 19. Further, a review of Behr' s
Specification is equally silent as to the particulars of the angles. See e.g.,
Behr i-f 18 ("[L ]aser line of the second line projector is projected in relation
to the observation axis of the image processing means at a predetermined
angle .... "). Behr recites a predetermined angle for the laser lines but does
not specify what the measurements for the predetermined angles are or
makes a comparison between the angles of laser lines 11 and 19. Without
knowing the angles or the angular relationship between laser lines 11 and 19,
there is insufficient evidence to support a rejection based upon Behr.
Accordingly, the rejection of claim 1 as being obvious over Boillot, Ogino,
Peltie, Schwarz '470, Behr, and Schwarz '989 is not sustained.
Claims 2, 3, 5, 8, and 11-15
Claims 2, 3, 5, 8, and 11-15 depend from claim 1. Br. 10-12 (Claims
App 'x. ). The Examiner relies on the same deficient findings and reasoning
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Appeal2016-005037
Application 13/525,066
based on Boillot, Ogino, Peltie, Schwarz '470, Behr, and Schwarz '989,
discussed above, regarding claim 1 (see supra Rejection II). Thus, for the
same reasons discussed above, we do not sustain the rejection of claims 2, 3,
5, 8, and 11-15.
Rejections III and IV
Claims 4 and 6 depend from claim 1. Br. 11 (Claims App'x.). The
Examiner relies on the same deficient findings and reasoning based on
Boillot, Ogino, Peltie, Schwarz '470, Behr, and Schwarz '989 discussed
above, regarding claim 1 (see supra the rejection of claim 1 ). Thus, for the
same reasons discussed above, we do not sustain the rejection of claims 4
and 6.
DECISION
For the above reasons, the Examiner's rejection of claims 1-6, 8, and
11-15 is reversed.
REVERSED
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