RENISHAW PLC

Patent Trials and Appeals Board

Apr 2, 2020

14765200 - (D) (P.T.A.B. Apr. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/765,200 07/31/2015 Calum Conner MCLEAN 167277 5883
25944 7590 04/02/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
HODGES, SUSAN E
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CALUM CONNER MCLEAN, TIMOTHY CHARLES
FEATHERSTONE, and RICHARD GEORGE DEWAR
Appeal 2019-000415
Application 14/765,200
Technology Center 2400
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
MICHAEL J. STRAUSS, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–44. See Final Act. 1. We have

1 We refer to the Specification, filed July 31, 2015 as amended on July 31,
2015 and October 11, 2017 (“Spec.”); the Final Office Action, mailed
December 13, 2017 (“Final Act.”); the Appeal Brief, filed June 6, 2018
(“Appeal Br.”); the Examiner’s Answer, mailed August 23, 2018 (“Ans.”);
and Reply Brief, filed October 18, 2018 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Renishaw PLC.
Appeal Br. 1.
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Application 14/765,200
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jurisdiction under 35 U.S.C. § 6(b). Oral argument was held on March 24,
2020. A copy of the transcript will be added to the record in due course.
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to illumination and inspection of an object in a
machine vision apparatus. Spec., Title. Claims 1 and 33, reproduced below
with disputed limitations emphasized in italics, are illustrative of the claimed
subject matter:
1. A method of inspecting an object, the method comprising:
locating an object on a machine vision apparatus;
attaching a light panel to the object to backlight a region
of the object;
obtaining an image of the region backlit by the light panel;
and
identifying a geometric property of the object from the
image.
33. A method of inspecting an object, the method comprising:
locating an object in a machine vision apparatus;
fixing a flexible light panel in the machine vision
apparatus to hold the flexible light panel bent in a
required configuration for backlighting a region of the
object;
obtaining an image of the region backlit by the flexible
light panel; and
identifying a geometric property of the object from the
image.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Meggs
Kamiyama
US 4,521,835
US 7,430,050 B2
June 4, 1985
Sept. 30, 2008

REJECTIONS
Claims 1–8, 10–25, and 27–44 stand rejected under pre-AIA 35
U.S.C. § 102(b) as being anticipated by Kamiyama. Final Act. 4–20.
Claims 9 and 26 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Kamiyama and Meggs. Final Act. 20–21.
OPINION
Independent Claims 1, 17, 29, and 30.
Independent claims 1, 17, 29, and 30 recite attaching a light panel to
an object (method claim 1), a fixture attaching a light panel of an object
(apparatus claims 17 and 29), and a light panel attached to an object
(apparatus claim 30) to backlight a region of the object. Appeal Br. 6. The
Examiner finds Kamiyama’s “stage apparatus 100 [that] includes a stage
section 200 on which a predetermined workpiece W is set up and which
illuminates the workpiece W from the lower face side” discloses the
disputed limitation of attaching a light panel to an object to backlight a
region of the object. Final Act. 4. Applying “the broadest reasonable
interpretation” of the claim language, the Examiner finds the disputed
limitation is disclosed by Kamiyama because work piece W is not separate
from stage section 200. Id. at 2–3. According to the Examiner, “if the prior
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art structure is capable of performing the intended use ‘to backlight a region
of the object’, then it meets the claim.” Id.
Appellant contends the Examiner’s “interpretation of the claim term
‘attach’ is quite unreasonable.” Appeal Br. 6. Appellant argues the
Specification uses the term “attach” consistent with its ordinary and
customary meaning of to fasten, secure, or join or to affix or append. Id. at 7
(citing THE AMERICAN HERITAGE COLLEGE DICTIONARY 91 (4th ed. 2007)).
Appellant further directs attention to embodiments of the invention including
“physical connecting members and a fixture 8 used to ‘attach’ or secure the
light panels to the object 6.” Id. According to Appellant “Kamiyama’s
simple act of setting or placing a workpiece W on a stage section 200 is thus
not ‘attaching’ as that term would have been properly interpreted under even
a broadest reasonable interpretation.” Id. at 7–8.
The Examiner responds, as follows:
features upon which Appellant relies (i.e., physical connecting
members) are not recited in the rejected claim(s). Although the
claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. See In re Van
Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As
states above, Appellant seems to be reading into the claims a
structural element used to attach the light panel to the object.
However, the claims do not define such an element. Rather the
claims merely require backlighting a region of the object by
attaching a light panel. Thus the claims are properly anticipated
by Kamiyama.
Ans. 21–22 (emphasis omitted). According to the Examiner, because
Kamiyama’s flatness adjuster supports a lower face side of the plane
light emitter, the reference discloses the plane light emitter is “being
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held, secure, joined or connected” to the flatness adjuster thereby
disclosing the disputed limitation. Id. at 22 (emphasis omitted).
Appellant’s contention is persuasive of reversible Examiner error. In
order to anticipate under 35 U.S.C. § 102, a prior art reference must not only
disclose all elements of the claim within the four corners of the document
(whether expressly or inherently), but must also disclose those elements
“arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d
1542, 1548 (Fed. Cir. 1983). During examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation
standard, claim terms are given their ordinary and customary meaning as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). Furthermore, all limitations of a claim must be considered when
making a patentability determination. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir.
1983); Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 546 (Fed. Cir. 1994).
The claimed attaching limitation may not be ignored even if the
recited functioning of the light panel to backlight a region of an object were
to be considered an intended use. Although a device capable of backlighting
a region of an object may teach the recited functional limitation, providing
the recited functionality is insufficient to satisfy the structural limitation that
the light panel be attached to the object as claimed. Instead, we agree with
Appellant that attaching requires structures be fastened, secured, or joined,
affixed, or appended to each other, consistent with its broadest reasonable
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interpretation, not merely in contact with each other . In particular,
Kamiyama merely discloses a workpiece is set (i.e., placed) on the stage
surface (see, e.g., Kamiyama col. 2, ll. 27–29, 39–41), not that it is attached,
fastened, secured, joined, affixed, or appended to or otherwise held in place
on stage surface 211. Thus, the Examiner provides insufficient evidence to
persuade us that the “attaching” step of claim 1 or the corresponding
structure of claims 17, 29, and 30 is satisfied by Kamiyama’s disclosure of
setting or placing a workpiece W on stage section 200 as argued by
Appellant. Appeal Br. 22.
Furthermore, even if Kamiyama discloses plane light emitter 220 is
secured to underlying flatness adjuster 300 as found by the Examiner (Ans.
22), this does not mean that plane light emitter 220 is also attached to
overlying workpiece W, either directly or through intervening stage glass
210. As discussed above, Kamiyama merely discloses setting workpiece W
on stage surface 211, not attaching it. Therefore, Kamiyama fails to disclose
the argued attaching limitation. Because we agree with at least one of the
arguments advanced by Appellant, we do not reach the merits of Appellant’s
remaining arguments in connection with claims 1, 17, 29, and 30.
For the reasons discussed above, we do not sustain the rejection of
independent claims 1, 17, 29, and 30 under 35 U.S.C. § 102(b) as being
anticipated by Kamiyama. For the same reasons, we do not sustain the
rejection of dependent claims 2–8, 10–16, 18–25, 27, 28, 31, 32, and 38–44
that stand with their respective base claims. We further do not sustain the
rejection of claims 9 and 26 under 35 U.S.C. § 103(a) as the Examiner’s
application of the Meggs reference fails to cure the noted deficiency of
Kamiyama.
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Independent Claims 33, 36, and 37.
Independent method claim 33 recites fixing a flexible light panel in a
machine vision apparatus to hold the panel bent in a required configuration
for backlighting a region of an object with independent apparatus claims 36
and 37 reciting corresponding limitations. Appeal Br. 8. The Examiner
finds Kamiyama’s stage section 200 supported by jacks 310 in contact with
a lower surface of light reflection plate 230 discloses the disputed limitation.
Final Act. 14.
Appellant contends as follows
the vast majority of Kamiyama’s stage section 200 is composed
of the stage glass 210. The skilled person would not have
considered glass to be suitably flexible so as to follow any
contour of an object to be followed, and Kamiyama thus fails to
disclose a “flexible light panel” such as that recited.
Appeal Br. 8. Appellant further argues, rather than disclosing stage section
200 is “bent in a required configuration” as recited by the claims,
“Kamiyama is specifically and conversely concerned with maintaining that
section 200 flat under its own weight.” Id. at 9.
The Examiner responds, alleging “the features upon which Appellant
relies (i.e., that follows a contour of a region of the object) are not recited in
the rejected claim(s).” Ans. 23. According to the Examiner
In Claim 33, 36 and 37, the limitation merely requires the “to
hold the flexible light panel bent”. As described in Col. 2, Lines
33-27, a flatness adjuster that supports a lower face side of the
plane light emitter at a plurality of points and adjusts the flatness
of the stage surface by adjusting the height at a plurality of
supporting points. Again, if the prior art structure is capable of
performing the intended use, then it meets the claim.
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Id.
Appellant replies, arguing
Appellant does not seek to import limitations from the
specification into the claims, but to point out that one of ordinary
skill in the art would not have considered, in view of this term’s
plain meaning consistent with Appellant’s specification,
Kamiyama’s stage section 200 substantially composed of glass
210 to be “flexible.” Appellant also again reminds the Office that
at least claim 33 is a process claim, and the referenced “bent”
limitation constitutes part of a concrete “fixing” step of that
process that must be given patentable weight. Because
Kamiyama’s device does not necessarily bend its stage section
200 as part of its normal and usual operation, and as explained
previously by Appellant in fact teaches the exact opposite when
the workpeice [sic] W is placed thereon, the Office's positions
cannot be sustained.
Reply Br. 5–6 (emphasis omitted).
Appellant’s argument is persuasive of reversible Examiner error. We
agree the requirement for a flexible light panel held bent in a required
configuration for backlighting a region of the object is not properly
interpreted to include a light panel affixed to a substantially planar glass
panel. In the context of claim 33, flexible includes bendable. At most,
Kamiyama discloses adjusting the flatness of light reflection plane 230 that
supports plane light emitter 220. However, Kamiyama fails to disclose that
plane light emitter 220 is itself flexible and, in any case, any flexibility of
the panel would be defeated by its being sandwiched between light reflecting
plane 230 and stage glass 210 such that it could not be readily bent in a
required configuration as recited by the disputed limitation. Because we
agree with at least one of the arguments advanced by Appellant, we do not
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reach the merits of Appellant’s remaining arguments in connection with
independent claims 33, 36, and 37.
For the reasons discussed above, we do not sustain the rejection of
independent claims 33, 36, and 37 under 35 U.S.C. § 102(b) as being
anticipated by Kamiyama. For the same reasons, we do not sustain the
rejection of dependent claims 34, and 35 that stand with their respective base
claims.
CONCLUSION
The Examiner’s rejections under 35 U.S.C. §§ 102(b), 103(a) are
reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Affirmed Reversed
1 – 8, 10 – 25,
27 – 44 102(b) Kamiyama
1 – 8, 10 – 25,
27 – 44
9, 26 103(a) Kamiyama, Meggs 9, 26
Overall
Outcome
1–44

REVERSED