Ex Parte Vinciguerra et al

Patent Trial and Appeal Board

Sep 21, 2018

13881783 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/881,783 06/24/2013 Regis Vinciguerra
153967 7590 09/21/2018
FITZPATRICK CELLA HARPER & SCINTO (MICHELIN)
1290 A venue of the Americas
NEW YORK, NY 10104-3800
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.
03161.002549. 1057
EXAMINER
DELANEY, MOLLY K
ART UNIT PAPER NUMBER
2666
MAIL DATE DELIVERY MODE
09/21/2018 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 REGIS VINCIGUERRA, STEVE BOURGEOIS, and
ALEXANDRE JOLY
Appeal2017-002002
Application 13/881,783 1
Technology Center 2600
Before JOHN A. EVANS, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 11-20, which are all claims pending in the application.
Appellants have canceled claims 1-10. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real parties in interest are COMP AGNIE
GENERALE DES ETABLISSEMENTS MICHELIN and MICHELIN
RECHERCHE ET TECHNIQUE S.A. App. Br. 4.
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Application 13/881,783
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
the field of [tire] manufacture. More particularly ... the problem of visual
inspection of [tires] during or at the end of the production process [to
determine] whether they conform to the control references established for
the purpose of the use of which the ... [tire] will be made. Spec. ,r 1.
Exemplary Claim
Claim 11, reproduced below, is representative of the subject matter on
appeal:
11. A method for inspecting a surface of a tyre by
comparison with an image of a three-dimensional reference
surface, the reference surface and the surface of the tyre
including markings in relief, the method comprising steps of:
obtaining an image of a three-dimensional profile of a
tyre surface to be inspected;
extracting, from the image of the tyre surface to be
inspected, contours of graphic elements;
locating characteristic points on the image of the tyre
surface to be inspected, and pairing the characteristic points
with corresponding reference characteristic points of the image
of the reference surface so as to create a set of paired points;
associating a first reset B-spline surface with the
reference surface by associating the reference characteristic
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Feb. 29, 2016); Reply Brief ("Reply Br.," filed Nov. 28, 2016); Examiner's
Answer ("Ans.," mailed Sept. 29, 2016); Final Office Action ("Final Act.,"
mailed Mar. 12, 2016); and the original Specification ("Spec.," filed
Apr. 26, 2016).
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Application 13/881,783
points of the reference surface with control points of the first
reset B-spline surface; and
deforming the image of the reference surface by moving
the control points of the first reset B-spline surface associated
with the reference characteristic points of the reference surface
so as to superpose the control points of the first reset B-spline
surface on the characteristic points of the image of the tyre
surface to be inspected paired therewith.
Prior Art3
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Joly et al. ("Joly") US 2011/0019903 Al Jan. 27, 2011
Joly et al. ("Joly '539") WO 2009/077539 A2 June 25, 2009
Zhiyong Xie and Gerald E Farin, "Image Registration Using
Hierarchical B-Splines," IEEE TRANSACTIONS ON
VISUALIZATION AND COMPUTER GRAPHICS, VOL 10,
NO. 1, JANUARY/FEBRUARY 2004 (hereinafter "Xie").
Rejections on Appeal
Claims 11-20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Joly and Xie. Final Act. 5-14.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 13-25), we decide the
appeal of the obviousness rejection of claims 11-20 on the basis of
representative claim 11. 4
3 We note the Examiner rejected the appealed claims over International
Publication Joly '539 but, to aid in prosecution, offered the Joly reference as
the corresponding English language translation of the originally-cited
International Patent Publication Joly '539.
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Application 13/881,783
ISSUE
Appellants argue (App. Br. 13-25; Reply Br. 5-10) the Examiner's
rejection of claim 11 under 35 U.S.C. § 103(a) as being obvious over the
combination of Joly and Xie is in error. These contentions present us with
the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests " [a] method for inspecting a surface of a tyre by comparison
with an image of a three-dimensional reference surface, the reference surface
and the surface of the tyre including markings in relief' as recited in
claim 11 because of alleged improper motivation to combine Joly with Xie
in the manner suggested by the Examiner?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
We disagree with Appellants' arguments with respect to claims 11-20
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claim 11 for
emphasis as follows.
Appellants point out that the Joly reference includes all the named
inventors in the present application (App. Br. 13), and characterizes Joly as
teaching "that deformations due to anomalies are found to be typically in one
direction, i.e., the radial direction, and that other local deformations due to
anomalies are minor." App. Br. 15. Appellants continue by alleging:
Joly teaches that deformations due to anomalies typically occur
in only the radial direction, and that other local deformations
due to anomalies are unimportant. Consequently, Appellants
submit that a person of ordinary skill in the art would
understand from Joly that deformations in other directions are
not significant, and therefore there would be no impetus or
suggestion to look for a scheme to modify Joly's method.
App. Br. 17. "Joly's teachings discourage modifications of the type taught in
Xie, and thus Joly's teachings would, in effect, teach away from making
such modifications." App. Br. 18. Appellants then argue the Examiner
improperly relied upon their Specification to justify combining Joly with
Xie. App. Br. 20. For example,
[T]he Examiner's contention that the inventors' own reasoning
for using B-splines during image registration is the same as that
provided by Xie is respectfully submitted to be misleading, and
further does not address the fact that the inventors' own
research led them to identify a problem with Joly's method. Xie
does not relate at all to tyres or tyre inspection, and would
provide no clue to a person of ordinary skill in the art that there
is a problem with Joly's method. The mere fact that Xie's
mathematical teachings could be adapted to Joly's method to
somehow improve Joly's method does not justify a need to add
more computation and more complexity to Joly's method.
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The inventors' research leading to the identification of the
problem in using Joly's method is largely ignored by the
Examiner. Instead, the Examiner uses the inventors' disclosure
of the invention to, in effect, say that because the inventors
found a problem and came up with a solution to the problem,
the solution must be obvious to a person of ordinary skill in the
art.
App. Br. 21.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A
reference does not teach away if it merely expresses a general preference for
an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
However true Appellants' contentions regarding the deficiencies of
Joly may be, based upon our review of the record before us, 5 we find
Appellants' arguments are not supported with specific factual evidence of
sufficient character and weight to persuade us of error regarding the
Examiner's findings of facts and ultimate legal conclusion of obviousness.
Mere attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
5 We note there is no declaration or affidavit evidence of record to support
Appellants' contentions, e.g., see Ans. 21 ("the inventors' own research led
them to identify a problem with Joly's method.").
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1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8
(BP AI Aug. 10, 2009) (informative), available at http://www.uspto.gov/
web/ offices/ dcom/bpai/its/fd09004693. pdf.
In KSR, the Court stated " [ t ]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill .... [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
We find Joly does not disparage or otherwise explicitly discourage the
use of B-splines in image registration, and because one of ordinary skill in
the art would have understood Xie's B-spline techniques to be an additional
method that could be implemented in the method of Joly for more accurate
image registration, as set forth by the Examiner. Final Act. 7.
Appellants have not demonstrated that the Examiner's proffered
combination of references would have been "uniquely challenging or
difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
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Application 13/881,783
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). (See also App. Br. 35, "IX.
Evidence Appendix None.").
In the absence of persuasive evidence to the contrary, we fail to find
that Joly teaches away from use of B-spline techniques as taught by Xie.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 11, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 11, and grouped claims 12-20 which fall therewith. See
Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 5-10) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 3 7
C.F.R. § 4I.41(b)(2)), which Appellants have not shown.
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CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 11-20 under 35 U.S.C. § 103(a) over the cited prior art combination
of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 11-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 4I.50(f).
AFFIRMED
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