Ex Parte Wilson et al

Board of Patent Appeals and Interferences

Jun 25, 2009

10160928 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte ETHEL M. WILSON and EDWARD A. RADFORD, JR.
____________________
Appeal 2009-002685
Application 10/160,928
Technology Center 3600
____________________
Decided1: June 26, 2009
____________________

Before HUBERT C. LORIN, ANTON W. FETTING, and
KEVIN F. TURNER Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Final
Rejections of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM2.

THE INVENTION
Appellants’ claimed invention relates to a method for verifying the
quality of manufactured components by conducting manufacturing site
inspections of components remotely from another site. (Abstract).
Independent claim 1, which is deemed to be representative, reads as
follows:
1. A method for remote inspection of components
manufactured at a manufacturing site, comprising the
steps of:
electronically receiving from the manufacturing
site a test report pertaining to physical tests performed on
a selected component produced at the manufacturing site;
electronically receiving from the manufacturing
site one or more digital photographs of the selected
component recorded at the manufacturing site;
associating the test report with the one or more
digital photographs;
inspecting the one or more digital photographs to
determine whether the component meets prescribed
specifications;

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Sept. 13, 2007) and the Examiner’s Answer (“Ans.,” mailed Dec. 11,
2007).
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generating an inspection report based on the results
of the inspecting step; and
transmitting the inspection report to the
manufacturing site.

THE REJECTION

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barnes et al. (“Barnes”) 2002/0198731 A1 Dec. 26, 2002
Guerrero et al. (“Guerrero”) 6,739,512 B2 May 25, 2004

The Examiner rejected claims 1-10 under 35 U.S.C. § 103(a) as being
unpatentable over Guerrero in view of Barnes.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments that Appellants did not make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Have Appellants shown that the Examiner erred in rejecting claims 1-
10 under 35 U.S.C. § 103(a) as being obvious over Guerrero in view of
Barnes?

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
1. Guerrero is directed to a method for managing manufacturing of a
virtual factory which includes receiving at a management location, for a
plurality of respective particular components, a request over a network for a
serial number to be used in identifying the particular component. (Abstract).
2. Barnes is directed to a method for expediting customs processing
wherein an electronic still camera at the check-in counter records an image
of the passenger and subsequently compares it with a prior image of the
passenger. ([0006]).
3. Barnes discloses that, “a first electronic photo of the passenger may
be recorded 240 into a computer-accessible memory. The photo may be
compared and matched 250 with the image taken from the passport or
driver's license, or other known prior or officially approved image of the
passenger.” ([0021]).
4. Guerrero discloses that, “[c]omponent tracking module 18 offers
information sharing at a central location, allowing casting entity 26,
machining entity 28, coating entity 30, and warehouse entity 34 to share
information about a component as it proceeds through a manufacturing
process.” (col. 8, ll. 65-67 and col. 9, ll. 1-2).
5. Guerrero discloses that, “the component tracking module may
catalogue material test reports associated with each component being
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manufactured. The test data may be provided to any interested party such
that decisions regarding the implementation or the purchase of the
component may be informed.” (col. 2, ll. 50-55). Guerrero also discloses
that, “[i]n addition, such a protocol for storing component documentation (as
provided by the component tracking module) eliminates the dependence on
hard copy documentation . . . .” (col. 2, ll. 55-58).
6. Appellants’ Specification does not provide a definition for
“associating.”
7. The ordinary and customary meaning of “associating” is “1) [t]o
join in a relationship.” (See Webster’s II Dictionary 45 (3d ed. 2005)).
8. Barnes discloses that, “[t]he airline may then use these images and
databases to verify the identity of each passenger.” ([0032]).
9. Barnes discloses that, “once the passengers begin to enplane. A
video or still electronic camera may record one more electronic photo 300 of
a passenger and compare this photo to the first electronic photo or to the
passport or driver's license photo 310 to ensure that the passengers enplaning
are the same passengers that checked in.” ([0023]).
10. The component tracking module of Guerrero is part of the network
environment in communication with the manufacturing entities. (col. 4, ll.
46-52).
11. Appellants’ Specification discloses that, “the shared database 32
may be resident at the contractor site 14 or at any other convenient location.”
(Spec. [0015]).
12. Appellants’ Specification discloses that, “[t]he manufacturing site
12 and the contractor site 14 are linked by a computer communication
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network 20, which may be a private network or intranet, or may be a
publicly accessible network, such as the Internet.” (Spec. [0015]).

PRINCIPLES OF LAW
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 426 (CCPA 1981).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. The Court explained:
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
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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.

Id. at 417.
The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only
if this initial burden is met does the burden of coming forward with evidence
or argument shift to the Appellants. In re Oetiker, 977 F.2d at 1445. See
also In re Piasecki, 745 F.2d at 1472. Obviousness is then determined on
the basis of the evidence as a whole and the relative persuasiveness of the
arguments. See Oetiker, 977 F.2d at 1445; see also In re Piasecki, 745 F.2d
at 1472.
In making a rejection, however, an examiner may “take notice of facts
beyond the record which, while not generally notorious, are capable of such
instant and unquestionable demonstration as to defy dispute.” In re Ahlert,
424 F.2d 1088, 1091 (CCPA 1970) (citing In re Knapp-Monarch Co., 296
F.2d 230 (CCPA 1961)).
ANALYSIS
Appellants argue each of the independent claims 1 and 6 separately.
Of claims 2-5 depending from claim 1, Appellants argue claim 4 separately.
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Additionally, of claims 7-10 depending from claim 6, Appellants argue
claim 9 separately. Further, Appellants argue claims 2, 3, 5, 7, 8, and 10 as a
group for the same reasons as independent claims 1 and 6. Accordingly, we
select claims 1, 4, 6 and 93 as representative of each of those respective
groups. 37 C.F.R. § 41.37(c)(1)(vii) (2007).

Claims 1-10 rejected under 35 U.S.C. § 103(a) as unpatentable over
Guerrero and Barnes.

Independent claim 1
Appellants argue Guerrero and Barnes fail to render claim 1 obvious.
Specifically, Appellants argue that, “Guerrero taken in view of Barnes does
not teach or suggest electronically receiving, from a manufacturing site, one
or more digital photographs of a selected component recorded at the
manufacturing site, as recited in claim 1”. (Br. 7-8). Further, Appellants
argue that, “Claim 1 recites one or more digital photographs of a selected
component. In claim 1, the selected component is produced at the
manufacturing site. Obviously, in Barnes, the passengers are not produced
at an airport. Thus, the photo of passengers disclosed in Barnes does not
correspond to the one or more digital photographs of a selected component
recited in claim 1.” (Br. 8). We do not find this argument persuasive and
agree with Examiner that Barnes teaches a comparable method with respect

3 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii).
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to electronically receiving one or more digital photographs to compare
against an officially approved image of the passenger. (FF 3). A person of
ordinary skill in the art would have been able to use the one or more digital
photographs taken of a passenger, disclosed in Barnes, and be able to apply
this technique to any type of remote inspection system, including the virtual
factory in Guerrero which tracks components by serial number throughout
manufacture in order to verify that a component is valid. (FF 1). We
conclude that because both Guerrero and Barnes share the common problem
of tracking and identifying subject matter (FF 1, 2), a person of ordinary
skill in the art would have been able to use the one or more digital
photographs of Barnes to identify and track the manufactured components in
Guerrero. With respect to the fact that the electronic photographs disclosed
in Barnes relate to passengers rather than components recorded at the
manufacturing site, the modification proposed by the Examiner is nothing
more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement. See KSR, 550 U.S. at 417. Specifically, the modification
involves merely the substitution of the use of a barcode to identify the
component technique taught by Guerrero for the one or more digital
photographs of Barnes, and thus appears to be merely a predictable variation
of Guerrero to identify and track the components. Accordingly, we find this
argument unpersuasive.
Additionally, Appellants argue, “Guerrero taken in view of Barnes
fails to teach or suggest associating a test report with one or more digital
photographs.” (Br. 9). Guerrero discloses a test report (FF 5), but fails to
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disclose associating a test report with one or more digital photographs.
However, Barnes discloses associating data with one or more digital
photographs (FF 3, 8). Since Appellants’ claim does not provide clear
boundaries as to the scope of what “associating” comprises and the
Specification provides no clear definition (FF 6), we construe the limitation
according to its broadest reasonable interpretation as joining the test report
with the one or more digital photographs. (FF 7). Thus, when Barnes
performs the step of identifying each passenger using electronic photos and
databases to verify the passenger’s identity (FF 8), the step of associating
data with one of more digital photographs has been disclosed. Therefore,
since Appellants have not shown that the Examiner erred in finding that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to combine the test report as taught by Guerrero with associating
data with one of more digital photographs as taught by Barnes, we find this
argument unpersuasive.
With regard to Appellants’ argument that, “even assuming arguendo
that the images disclosed in Barnes are similar to the one or more digital
photographs recited in claim 1, Barnes still does not disclose the associating
recited in claim 1 since a passenger, as disclosed in Guerrero, clearly does
not correspond to a test report, as recited in claim 1.” (Br. 9). The Examiner
cites Guerrero, and not Barnes, as disclosing the recited test reports (FF 5).
The rejection is in view of both Guerrero and Barnes, and one cannot show
non-obviousness by attacking Barnes individually as lacking a limitation
disclosed in Guerrero. Accordingly, we find this argument unpersuasive.
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Further, Appellants argue that, “[i]n claim 1, the recited test report
pertains to physical tests performed on a selected component produced at the
manufacturing site . . . . The passenger disclosed in Barnes does not possess
the properties of the test report recited in claim 1.” (Br. 9). We are not
persuaded by Appellants’ arguments and find that a person with ordinary
skill in the art would be able to use the test report disclosed in Guerrero,
which consists of material test reports associated with each component being
manufactured (FF 5), and be able to apply this reporting technique to any
type of data including data used in Barnes to perform the step of identifying
each passenger using electronic photos and databases to verify the
passengers identity (FF 8). This modification is nothing more than the
simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement. See KSR, 550 U.S. at 417. Specifically, the modification
involves merely the substitution of the contents of a test report. We
conclude that this modification would have been obvious to one of ordinary
skill in the art the time of the invention and thus appears to be merely a
predictable variation of the test report disclosed in Guerrero. Accordingly,
we find this argument unpersuasive.
Lastly, Appellants argue that, “the test report recited in claim 1 is
electronically received from the manufacturing site.” (Br. 9). We are not
persuaded by Appellants’ arguments and find that Guerrero discloses that,
“test data may be provided to any interested party . . . . as provided by the
component tracking module.” (FF 5). This component tracking module in
Guerrero is part of the network environment in communication with the
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manufacturing entities. (FF 10). Further Guerrero discloses that the
component tracking module stores documentation thereby eliminating the
dependence on hard copy documentation. (FF 5). Thus, the test data
provided to any interested party would be sent electronically via the network
in Guerrero. (FF 5). Therefore, Guerrero discloses wherein the test report
recited in claim 1 is electronically received from the manufacturing site.
Even assuming that Guerrero does not explicitly disclose that “the test
report . . . is electronically received from the manufacturing site” (Br. 9), a
person of ordinary skill in the art would appreciate from a reading of
Guerrero and Barnes, that when electronically providing test data to any
interested party (FF 5), the test data could be received from any location.
Thus, a person of ordinary skill in the art would have known this from
Guerrero and applied this technique to Barnes when electronically
transmitting the test report the manufacturing site. Therefore, Appellants’
argument is not persuasive as to error in the rejection.

Dependent claim 4
Appellants argue, “Guerrero taken in view of Barnes fails to teach or
suggest that an inspecting step includes retrieving a test report and one or
more digital photographs from a shared database, as recited in claim 4.”
(Br. 10). We are not persuaded by Appellants’ arguments and find that
Barnes stores data on a computer-accessible memory and retrieves images
which are compared and matched with previously stored images. (FF 3).
Additionally, we find that Guerrero teaches that the component tracking
module shares test report data at a central location which may be retrieved
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by any interested party. (FF 4, 5). Thus, a person of ordinary skill in the art
would appreciate from a reading of Guerrero and Barnes, that when
inspecting subject mater, a test report and one or more digital photographs
can be retrieved from a shared database. (FF 3, 5). Therefore, a person of
ordinary skill in the art would have known this from Barnes and applied this
technique to Guerrero when retrieving a test report and one or more digital
photographs from a shared database.
With regard to a “shared database,” Appellants’ Specification
describes the shared database as being resident at the contractor site or at any
other convenient location. (FF 11). Moreover, Appellants’ Specification
allows these sites to be accessed on a publicly accessible network, such as
the Internet. (FF 12). Thus, under the broadest reasonable interpretation, we
find this shared database to be any networked storage device. Therefore, the
combination of Guerrero and Barnes discloses the step of retrieving a test
report and one or more digital photographs as described supra. (FF 3, 4, 5,
8). Accordingly, we find this argument unpersuasive.

Independent claim 6
Appellants argue that, “Guerrero taken in view of Barnes does not
teach or suggest digitally photographing a selected component at a
manufacturing site, as recited in claim 6.” (Br. 11). We are not persuaded by
Appellants’ argument and find that a person of ordinary skill in the art would
have been able to use the one or more electronic photos of a passenger
disclosed in Barnes (FF 9) and be able to apply this technique of digitally
photographing passengers to any type of inspection system. This
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modification is nothing more than the simple substitution of one known
element for another or the mere application of a known technique to a piece
of prior art ready for the improvement. See KSR, 550 U.S. at 417.
Specifically, the modification involves merely the substitution of the
contents of a digital photograph and their origin. Here, Appellants digital
photograph consists of a “selected component at the manufacturing site,”
whereas Barnes electronic photo is of a passenger at an air terminal. (FF 9).
We conclude that both photographs are used to identify the subject matter
being inspected and a person of ordinary skill in the art would recognize that
a digital photograph would improve the inspection of a component during a
remote inspection in the same way Barnes uses digital images to verify the
identity of each passenger. Thus, because both Guerrero and Barnes share
the common problem of tracking and identifying subject matter (FF 1, 2), a
person with ordinary skill in the art would be able to use the one or more
digital photographs of Barnes to identify and track the manufactured
components in Guerrero. Accordingly, we find this argument unpersuasive.
Additionally, Appellants argue that, “Guerrero taken in view of
Barnes does not teach or suggest associating a received test report with one
or more digital photographs, as recited in claim 6.” (Br. 11). Guerrero
discloses a test report (FF 5), but fails to disclose associating a test report
with one or more digital photographs. However, Barnes discloses
associating data with one or more digital photographs (FF 3, 8). Since
Appellants’ claim does not provide clear boundaries as to the scope of what
“associating” comprises and the Specification provides no clear definition
(FF 6), we construe the limitation according to its broadest reasonable
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interpretation as joining the test report with the one or more digital
photographs. (FF 7). Thus, when Barnes performs the step of identifying
each passenger using electronic photos and databases to verify the
passenger’s identity (FF 8), the step of associating data with one of more
digital photographs has been disclosed. Therefore, since Appellants have
not shown that the Examiner erred in finding that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
combine the test report as taught by Guerrero with associating data with one
of more digital photographs as taught by Barnes, we find this argument
unpersuasive.
Further, Appellants argue that, “Guerrero taken in view of Barnes
does not teach or suggest transmitting an inspection report to a
manufacturing site, as recited in claim 6.” (Br. 12). We are not persuaded by
Appellants’ arguments and find that Guerrero discloses that, “test data may
be provided to any interested party . . . . as provided by the component
tracking module.” (FF 5). This component tracking module in Guerrero is
part of the network environment in communication with the manufacturing
entities. (FF 10). Further Guerrero discloses that the component tracking
module stores documentation thereby eliminating the dependence on hard
copy documentation. (FF 5). Thus, the test data provided to any interested
party would be sent electronically via the network in Guerrero. (FF 5).
Therefore, Guerrero discloses transmitting an inspection report to a
manufacturing site.
Even assuming that Guerrero does not explicitly disclose
“transmitting an inspection report to a manufacturing site” (Br. 12), a person
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of ordinary skill in the art would have appreciated from a reading of
Guerrero and Barnes, that when electronically providing test data to any
interested party (FF 5), the test data could be transmitted to any location.
Thus, a person of ordinary skill in the art would have known this from
Guerrero and applied this technique to Barnes when electronically
transmitting an inspection report to the manufacturing site. Therefore,
Appellants’ argument is not persuasive as to error in the rejection.

Dependent claim 9
Appellants argue, “Guerrero taken in view of Barnes fails to teach or
suggest that an inspecting step includes retrieving a test report and one or
more digital photographs from a shared database, as recited in claim 4.”
(Br. 10). We are not persuaded by Appellants’ arguments and find that
Barnes stores on a computer-accessible memory and retrieves images which
are compared and matched with previously stored images. (FF 3).
Additionally, we find that Guerrero teaches that the component tracking
module shares test report data at a central location which may be retrieved
by any interested party. (FF 4, 5). Thus, a person of ordinary skill in the art
would appreciate from a reading of Guerrero and Barnes, that when
inspecting subject matter, a test report and one or more digital photographs
can be retrieved from a shared database. (FF 3, 5). Therefore, a person of
ordinary skill in the art would have known this from Barnes and applied this
technique to Guerrero when retrieving a test report and one or more digital
photographs from a shared database.
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With regard to a “shared database,” Appellants’ Specification
describes the shared database as being resident at the contractor site or at any
other convenient location. (FF 11). Moreover, Appellants’ Specification
allows these sites to be accessed on a publicly accessible network, such as
the Internet. (FF 12). Thus, under the broadest reasonable interpretation, we
find this shared database to be any networked storage device. Therefore, the
combination of Guerrero and Barnes discloses the step of retrieving a test
report and one or more digital photographs as described supra. (FF 3, 4, 5,
8). Accordingly, we find this argument unpersuasive.

Claims 2, 3, 5, 7, 8, and 10
The Appellants do not separately argue claims 2, 3, 5, 7, 8, and 10,
depending from claims 1 and 6 respectively, and so has not sustained its
burden of showing that the Examiner erred in rejecting claims 2, 3, 5, 7, 8,
and 10 under 35 U.S.C. § 103(a) as unpatentable over Guerrero and Barnes
for the same reasons we found as to claims 1 and 6, supra.

CONCLUSION OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-10 as being obvious over Guerrero in view of Barnes.

DECISION
The decision of the Examiner to reject claims 1-10 under 35 U.S.C.
§ 103(a) as being obvious over Guerrero in view of Barnes is AFFIRMED.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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