Ex parte Shaikh et al.

Board of Patent Appeals and Interferences

May 20, 1998

08158054 (B.P.A.I. May. 20, 1998)

Application for patent filed November 26, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FURQAN Z. SHAIKH, GREGORY H. SMITH,
MICHAEL R. RIGLEY, CRAIG E. BURCH, MARTIN A. BROGLEY,
ROBERT F. NOVAK, ROBERT W. GRENKOWITZ and GERALD A. GRAB
_____________
Appeal No. 96-2127
Application 08/158,0541
______________
ON BRIEF
_______________
Before THOMAS, KRASS and FLEMING, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2127
Application 08/158,054
2
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1 to 5 and 7 to 11, the examiner having
allowed claims 6 and 12 to 17.
Representative claim 1 is reproduced below:
1. A method of rapidly producing a contoured part,
comprising:
(a) designing a computer graphic model of said part;
(b) sectioning said graphic model into graphic members which
are at least one of blocks and slab, said sectioning being sized
to facilitate carving of two or more sides of each member;
(c) independently carving a solid member for each of the
graphic members, said solid member being proportional to and
enveloping such graphic member, said carving being carried out by
accessing two or more sides of such solid member to at least
essentially duplicate the corresponding graphic member; and
(d) securing said carved solid members together to replicate
said graphic model as a usable unitary part.
The following reference is relied on by the examiner:
Christensen et al. (Christensen) 4,736,306 Apr. 5, 1988
Claims 1, 3 to 5 and 7 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Christensen. The remaining
claims on appeal, claims 2, and 8 to 11, stand rejected under 35
U.S.C. § 103 as being obvious over Christensen alone.
Appeal No. 96-2127
Application 08/158,054
3
Rather than repeat the positions of the appellants and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
OPINION
For all the reasons expressed by the examiner in the answer,
as best expressed in the responsive arguments portion of the
answer beginning at page 4, and for the additional reasons
presented here, we will sustain that prior art rejections of all
claims on appeal. Significantly, there is no reply brief of
record to dispute the examiner’s views expressed in the
responsive arguments portion of the answer.
The four clauses (a) to (d) of independent claim 1 on appeal
correspond directly with the Figure 1 flowchart-like sequence of
appellants disclosed methodology. Page 5, lines 13 through 15 of
appellants’ specification indicate that the method of this figure
comprises four steps, the first three of which are carried out
within or under the control of the programmed computer. Without
explicitly arguing such, appellants’ position in the brief
Appeal No. 96-2127
Application 08/158,054
4
appears to automatically assume, for example, that the carving
step of clause (c) is performed as a physical operation. It does
not appear to be so in the reference relied upon by the examiner,
yet the breadth of the recitation in claim 1 can be interpreted
either as a physical step or a step performed in an automated
part modeling operation. Indeed, such is consistent with
appellants’ description of Fig. 1 as just noted at page 5 of the
specification. Much of the same can be said of step (d) of
securing. It appears that appellants’ disclosed invention
involves the physical securing of the carved solid members
together, yet the claim does not require such a physical securing
operation and the reference relied upon and part of the reasoning
of the examiner does not appear to require a physical securing
operation. Thus, when all is said and done, many of the
positions articulated by appellants in the brief are not
persuasive.
We will not repeat the examiner’s responsive arguments
position which appear to directly address many of the arguments
raised by appellants in the arguments portion of the brief. On
the one hand, appellants appear to admit at the bottom of page 3
Appeal No. 96-2127
Application 08/158,054
5
of the brief that Christensen does suggest the use of sectioning
planes that are parallel with respect to each other, but continue
to argue that with respect to claim 5 this reference fails to
show the use of solid members that are generally uniform in
thickness. If they are generally parallel with respect to each
other as admitted with respect to claim 4, they would be
generally uniform in thickness to the extent recited. The
showings beginning at Fig. 10 as well indicate the parallel
nature of the subsections in Christensen as well as their general
uniform thickness.
As to appellants’ discussion in the paragraph bridging pages
3 and 4 of the brief, there is little relevance of the objects of
the present invention as argued directly reflected in the subject
matter of the claims on appeal. In any event, patents utilized
as references are not limited to what patentees regard as their
own inventions or to the problems with which they are concerned.
In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed.
Cir. 1983). In the context of the rejection of the claims under
35 U.S.C. § 102, no claim listed by the examiner relates to
reassembling by bonding as argued at the top of page 4 of the
brief. Claim 8 does recite a feature of adhesive bonding, but
Appeal No. 96-2127
Application 08/158,054
6
that is encompassed within the rejection under 35 U.S.C. § 103.
We are satisfied that the examiner’s correlation of the features
in the responsive arguments portion of the answer satisfies the
principal argument presented by appellants with respect to the
§ 102 rejection that Christensen does section a graphic model to
facilitate carving, and independently carve a solid member for
each graphic member and secure the carved members together to
create a unitary part as argued at the middle of page 4 of the
brief.
As to the rejection under 35 U.S.C. § 103, appellants’
initial remarks, beginning at the bottom of page 4, do not
directly relate to the features of dependent claims 2 and 8 to
11. Indeed, the statement that the appellants traverse the
rejection of these claims for the same reasons recited above in
connection with the § 102 rejection is misplaced for the same
reasons expressed earlier. While on the one hand, appellants
admit that Christensen suggests the use of one or more vertical
and horizontal planes in the computer sectioning as it applies to
dependent claim 11 on appeal, appellants also take the position
Appeal No. 96-2127
Application 08/158,054
7
that this claim is patentable for the reasons expressed earlier
in the § 102 analysis with respect to claim 1. Such an
argumentative approach is clearly not persuasive.
As to the features recited in dependent claims 8 to 10 on
appeal, in addition to the position set forth by the examiner in
the answer, we add that appellants’ own disclosure takes the
position and inherently presumes that the features recited in
these claims are well known in the art anyway. In re Fox, 471
F.2d 1405, 1406-07, 176 USPQ 340, 341 (CCPA 1973). Christensen
also contains extensive discussions with respect to the use of a
“process plan” such as element 18 in Fig. 1b as a part of the
overall control manufacturing process in step 26 at the bottom of
Fig. 2, both of which have been outlined by the examiner in the
answer. The clear suggestibility to the artisan that in the
context of this portion of Christensen, physical process steps
would have been taught or suggested that were well known in the
manufacturing arts anyway would have been readily apparent to the
artisan. Obviously, to this same artisan, the choice and use of
the well known manufacturing processes chosen would have been
dependent upon the nature of the part and the result of the
Appeal No. 96-2127
Application 08/158,054
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cleaving operations as well as the rebirthing teachings within
Christensen itself.
In view of the foregoing, the decision of the examiner
rejecting claims 1, 3 to 5 and 7 under 35 U.S.C. § 102, as well
as the decision to reject claims 2 and 8 to 11 under 35 U.S.C. §
103 are both sustained. As such, the decision of the examiner
rejecting claims 1 to 5 and 7 to 11 on the basis of prior art
within 35 U.S.C. §§ 102 and 103, is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 96-2127
Application 08/158,054
9
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Joseph W. Malleck
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