Ex Parte Whinnem et al

Patent Trial and Appeal Board

Aug 18, 2016

12419054 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/419,054 0410612009
63759 7590 08/22/2016
DUKEW, YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Eric Whinnem
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.
08-1266-US-NP 9801
EXAMINER
OMGBA, ESSAMA
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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 WHINNEM,
GARY A. LIPCZYNSKI, and
JOHN A. BAUMANN
Appeal2014-008549
Application 12/419,054
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and LEE L. STEPINA,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-9 and 11-18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-008549
Application 12/419,054
CLAIMED SUBJECT MATTER
Claims 1 and 18 are independent. Claim 1 is reproduced below.
1. A method for performing operations on a structure, the
method comprising:
positioning a fixed platform associated with a moveable
platform in an area relative to the structure to define a working
envelope, wherein the working envelope is defined by an
opening in the fixed platform, wherein the fixed platform is
associated with the moveable platform through an actuation
system for the moveable platform, and wherein the moveable
platform is connected to a tool that is moveable around a
plurality of axes using the moveable platform;
moving the tool to a plurality of locations within the
working envelope using the moveable platform; and
performing an operation with the tool through the
working envelope at each of the plurality of locations using the
moveable platform.
REJECTIONS
Claims 1-9, 11, and 13-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Arntson (US 6,926,094 B2, iss. Aug. 9, 2005), Holy (US
6,161,992, iss. Dec. 19, 2000), and Marcroft (US 2010/0122602 Al; pub.
May 20, 2010).
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Arntson, Holy, Marcroft, and Amirehteshami (US 2007/0014645 Al, pub.
Jan. 18, 2007).
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Arntson, Holy, Marcroft, and Amirehteshami.
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Appeal2014-008549
Application 12/419,054
ANALYSIS
Claims 1-9, 11, and 13-17 unpatentable over Arntson, Holy, and Marcroft
The Examiner found that Arntson discloses a method of positioning a
fixed platform 30, 50 and tool 150 but not a moving platform connected to a
tool, as recited in claim 1. Final Act. 2-3. The Examiner found that Holy
teaches a tool connected to a movable platform that varies the tool position
in space and advances the tool on any path or axis. Id. at 3. The Examiner
determined that it would have been obvious to replace Arntson's fixed tool
with one connected to a moveable platform as taught by Holy to allow for
more flexibility and increase the degrees of freedom of the tool and thereby
provide more precise positioning and adjustment of the tool. Id.; Ans. 3.
The Examiner also found that Arntson and Holy do not teach a fixed
platform associated with a moveable platform through an actuation system,
but Marcroft teaches this feature. Final Act. 3. The Examiner determined
that it would have been obvious to modify the moveable platform of Holy to
be associated with a fixed platform by the actuation system of Marcroft as an
obvious matter of design choice. Id.; Ans. 10-11. The Examiner reasoned
that the combination would have been obvious to try. Ans. 11-12.
Appellants argue that the proposed combination would change the
principle of operation of each reference. Appeal Br. 9-13. Appellants also
argue that it is unclear how the combination would result in moving a tool to
a plurality of locations within the working envelope using the moveable
platform. Id. at 13. Appellants further argue that the Examiner's reason for
modifying Holy with Marcroft as an obvious matter of "design choice" does
not provide an articulated reasoning with rational underpinning and thus, is
indicative of hindsight reconstruction. Id. at 14--15.
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Appeal2014-008549
Application 12/419,054
The Examiner's reason for modifying Holy's moveable platform with
Marcroft's moveable is not supported by rational underpinning. It is not
clear why a skilled artisan would have been motivated to modify the device
of Arntson and Holy, which already associates a moving platform and tool
of Holy with the fixed platform of Arntson, to include the actuation system
of Marcroft, which also associates a moveable platform to a fixed platform,
other than hindsight reconstruction. As the Examiner found, the moveable
platform of Holy already allows the position of a tool to be varied in space
and advanced along any path, axis, or angle to a plurality of locations. Final
Act. 3; Ans. 10-11. Thus, further modification of the Examiner's proposed
combination of Arntson and Holy to include Marcroft's actuation system
appears to be undertaken solely to satisfy the limitations of claim 1. Indeed,
the Examiner added Marcroft's actuation system as a design choice. Final
Act. 4; Ans. 11. However, Holy discloses its design as an improvement to
prior art hexapod systems like Marcroft. Holy, 1: 12-36, 2: 10-20, 2:35-65.
Because the proposed modification changes the operation of Arntson and
Holy (Reply Br. 3--4; Appeal Br. 9-11), it is not just a design choice.
In appropriate circumstances, a modification of prior art teachings
may be a matter of design choice. E.g., ACCO Brands Corp. v. Fellowes,
Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (where the prior art consistently
located two sensors in shredder's feed, skilled artisan faced two design
choices of placing the thickness sensor above or below the presence sensor
and each design choice was an obvious combination of prior art elements);
Rexnord Indus., LLC v. Kappas, 705 F.3d 1347, 1356 (Fed. Cir. 2013)
(where the prior art taught that conveyor belt elements are spaced to avoid
pinching fingers, the claimed 10 mm dimension was a design choice that
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Appeal2014-008549
Application 12/419,054
takes into account the size of fingers and small objects); Sciele Pharma Inc.
v. Lupin Ltd., 684 F.3d 1253, 1263 (Fed. Cir. 2012) ("it would have been a
routine and obvious design choice to make an extended release dosage form
with a lower T max" in view of teachings in the prior art to lower T max and
evidence that such change was predictable and within the level of skill in the
art); PlaSmart, Inc. v. Kappas, 482 Fed. Appx. 568, 574 (Fed. Cir. 2012)
(unpublished) (attaching safety wheel directly to twister member of scooter
instead of body would have been a common sense alternative design choice
as a safety feature to prevent tipping of the scooter); In re Conte, 36 Fed.
Appx. 446, 451 (Fed. Cir. 2002) (unpublished) (whether keyhole slot used to
retain rubber band to front of gun barrel faced upwardly or downwardly was
a fairly insignificant design choice as both slots retained rubber band); In re
Aslanian, 590 F.2d 911, 915 (CCPA 1979) (making front and rear bottom
side portions co-planar was a design choice); In re Kuhle, 526 F.2d 553, 555
( CCP A 197 5) (a spring-loaded electrical contact was an obvious matter of
design choice within the skill in the art where placement of electrical contact
provides no novel or unexpected result).
A proposed change that results in different structure and function may
not be an obvious design choice. E.g., Flour Tee, Corp. v. Kappas, 499 Fed.
Appx. 35, 41--42 (Fed. Cir. 2012) (adding an expander to a lower pressure
configuration to accommodate a high pressure feed was not a design choice
where a separate high-pressure configuration also was used); In re Gal, 980
F.2d 717, 719-20 (Fed. Cir. 1992) (custom logic cells had different structure
and purpose than prior art logic cells and thus were not a design choice), cf,
Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (claim 1
obvious because structure that functioned differently was not claimed).
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Appeal2014-008549
Application 12/419,054
The structure and function of Marcroft's actuation system differs from
that of Holy, as noted above. The Examiner has not explained why a skilled
artisan would have modified the combined system of Arntson and Holy with
Marcroft's actuation system as a mere design choice when the modification
would change the structure and operation of the system of Arntson and Holy.
Merely asserting that the change is an obvious design choice is insufficient.
See Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx. 575, 578 (Fed. Cir.
2016) (unpublished) (stating that a particular placement of an element is a
design choice does not make it obvious; a reason must be offered as to why a
skilled artisan would have made the specific design choice).
The Examiner's determination that the modification was obvious to
try is not supported by sufficient findings that finite choices were available.
Ans. 11-12. Even so, because Arntson and Holy also associate a moveable
platform 16 and tool 2 of Holy with Arntson's fixed platform 30, 50 (Final
Act. 2-3) for movement around a plurality of axes, as claimed, adding the
actuation system of Marcroft again appears to be proposed based on
impermissible hindsight.
Thus, we do not sustain the rejection of claims 1-9, 11, and 13-17.
Claim 12 unpatentable over Arntson, Holy, Marcroft, and Amirehteshami
Claim 12 depends from claim 1 and recites "positioning a cutting tool
over a surface of the structure in a selected position that is offset from a
centerline for a hole" and "moving the cutting tool around the centerline
using the moveable platform." The Examiner found that Amirehteshami
teaches this feature. Final Act. 5. Appellants argue that Amirehteshami
does not remedy deficiencies of Arntson, Holy, and Marcroft as to claim 1.
Appeal Br. 16. We agree. Thus, we do not sustain the rejection of claim 12.
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Appeal2014-008549
Application 12/419,054
Claim 18 unpatentable over Arntson, Holy, Marcroft, and Amirehteshami
The Examiner relied on Arntson, Holy, and Marcroft to disclose the
features in independent claim 18 that are recited in claim 1. Final Act. 5-7.
The Examiner relied on Amirehteshami to disclose positioning a cutting tool
offset from a centerline and moving the tool around the centerline. Id. at 7.
Appellants argue that claim 18 contains the same features as claims 1
and 12, and the rejection of claim 18 should be reversed for at least the
reasons set forth for those claims. Appeal Br. 17. Because we do not
sustain the rejection of claims 1 and 12, we also do not sustain the rejection
of claim 18.
DECISION
We REVERSE the rejection of claims 1-9 and 11-18.
REVERSED
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