Ex Parte ConeDownload PDFPatent Trial and Appeal BoardDec 20, 201612940878 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 12/940,878 11/05/2010 Michael Cone CONE/0003.02 8482 107456 7590 12/22/2016 Artegis Law Group, LLP John Carey 7710 Cherry Park Drive Suite T #104 Houston, TX 77095 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): algdocketing @ artegislaw. com kcruz @ artegislaw.com mmccauley @ artegislaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL CONE Appeal 2015-000931 Application 12/940,878 Technology Center 3700 Before JOHN C. KERINS, GEORGE R. HOSKINS, and SEAN P. O’HANLON, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael Cone (“Appellant”)1 appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—20 in this application. The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 The Appeal Brief identifies Vibration Technologies, LLC, as the real party in interest. Appeal Br. 3. Appeal 2015-000931 Application 12/940,878 CLAIMED SUBJECT MATTER Claims 1 and 16 are independent. Claim 1 illustrates the subject matter on appeal, and it recites: 1. A machine tool for measuring the dynamic response of a material during a machining process, comprising: a machining implement configured to modify a material during a machining operation; and a sensor integrated with the machining implement and configured to measure a force of impact of the machine tool with the material during the machining operation. Appeal Br. 15 (Claims App.). REJECTIONS ON APPEAL Claims 1, 2, 5, 8, 10-17, and 20 stand rejected under 35 U.S.C. § 102(b) as anticipated by Nachtigal (US 3,967,515, iss. July 6, 1976). Claims 3, 4, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nachtigal and Renken (US 2008/0087105 Al, pub. Apr. 17, 2008). Claims 6, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nachtigal. ANALYSIS A. Anticipation by Nachtigal Claims 1, 2, 5, 8, and 10—15 The initial rejection of claim 1 does not articulate clearly what structure in Nachtigal is found to correspond to the “machining implement” of the claimed machine tool. Final Act. 2—3. The initial rejection, rather, suggests indirectly that the claimed machining implement is found to be Nachtigal’s grinding wheel 12. Id. at 3 (“Nachtigal discloses wherein the 2 Appeal 2015-000931 Application 12/940,878 machining operation is a cutting operation performed by an external cylinder 12”). That suggestion is consistent with later analysis provided by the Examiner. Id. at 4; Ans. 4—5 (“The sensor of Nachtigal is ‘integrated’ with the tool 12” (emphasis added)). Further, the Examiner does not dispute Appellant’s characterization of the rejection as finding the claimed machining implement corresponds to Nachtigal’s grinding wheel 12. See Appeal Br. 10. Thus, we understand the Examiner’s rejection to find the claimed machining implement corresponds to Nachtigal’s grinding wheel 12. Appellant argues the Examiner errs in finding Nachtigal’s sensors 22, 252 are “integrated with” grinding wheel 12, and further “configured to measure a force of impact of the machine tool with the material,” as claimed. Appeal Br. 9—12. Appellant asserts sensors 22, 25 are “spatially separated from” grinding wheel 12 and workpiece 14 “by several components, including the grinding wheel assembly 13, horizontal shaft 15, supports 17, and machine structure 10.” Id. at 9. Such separation, in Appellant’s view, means sensors 22, 25 may be “coupled to” grinding wheel 12, but they are not “integrated with” grinding wheel 12. Id. at 9—10. Appellant further asserts the separation prevents sensors 22, 25 from measuring the force of impact between grinding wheel 12 and workpiece 14, because the sensor measurements will necessarily include the dynamic excitations and vibrational characteristics of the intervening components. Id. at 10—11. 2 The Examiner refers to “one or more sensors 22, 23” in Nachtigal. Final Act. 2. It is apparent the Examiner meant to refer to transducers 22 and 25 as the claimed sensors, and not shaft 23. See Nachtigal, Fig. 1, 5:38-47, 10:5-17, 11:23-29. 3 Appeal 2015-000931 Application 12/940,878 The Examiner responds that the claim term “integrated with” is synonymous with “coupled” and “combined,” and therefore means “unite, bring together or incorporate parts into a whole.” Final Act. 4; Ans. 4—5. Applying that claim construction, the Examiner finds Nachtigal’s sensors 22, 25 are “integrated with” grinding wheel 12 via accelerometer 28 and the horizontal arm of assembly 13, because all those components “are integrated (united) and incorporated into a whole to achieve the measurement of the dynamic response during machining.” Final Act. 4; Ans. 5. We determine the Examiner’s rejection applies an unreasonably broad construction of the claim term “integrated with.” Our reviewing court has instructed that: [Ujnder the broadest reasonable interpretation, the Board’s construction “cannot be divorced from the specification and the record evidence,”/!? reNTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011), and “must be consistent with the one that those skilled in the art would reach,” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). A construction that is “unreasonably broad” and which does not “reasonably reflect the plain language and disclosure” will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting/?? re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). Appellant’s Specification consistently describes a sensor being “integrated with” a machining implement when the sensor is disposed within or on the structure of the machining implement itself, to measure a force of impact of the machining implement against a material being worked. Spec. 1126—27 & Figs. 2A—2D (sensor 215 integrated with sanding drum implement 200), H 30—31 & Fig. 3D (sensor 315 integrated with cutting bit implement 300), 132 & Fig. 4A (sensor 415 integrated with cutting bit 4 Appeal 2015-000931 Application 12/940,878 implement 400). Appellant’s Specification may be read to suggest the sensor need not be disposed within or on the structure of the machining implement itself (Spec. 120 & Fig. 1), but the Specification does not indicate such a sensor would then be integrated with the machining implement (id.). The Examiner’s claim construction fails to consider Appellant’s Specification. Further, the Examiner’s determination that the claim term “integrated with” is synonymous with “coupled” and “combined,” and therefore means “unite, bring together or incorporate parts into a whole,” is unsupported by citation to any evidence. Final Act. 4; Ans. 4—5. We assume these determinations rest upon one or more dictionary definitions. Regardless, the lack of citation is troubling because it prevents Appellant from finding the evidentiary source(s) to consider potential rebuttal arguments. For the foregoing reasons, we determine the Examiner’s claim construction is faulty, and the proper claim construction of the term “integrated with” requires the sensor to be disposed within or on the structure of the machining implement itself. Nachtigal’s sensors 22, 25 are not disposed within or on grinding wheel 12. See Nachtigal, Figs. 1—2. Thus, we determine that the Examiner’s rejection of claim 1 as anticipated by Nachtigal is not supported by a preponderance of the evidence. For the foregoing reasons, we do not sustain the rejection of claim 1, and of claims 2, 5, 8, and 10—15 depending therefrom, as anticipated by Nachtigal. 5 Appeal 2015-000931 Application 12/940,878 Claims 16, 17, and 20 Claim 16, similarly to claim 1, recites a machining means for modifying a material during a machining operation, and a sensing means “integrated with” the machining means for measuring a force of impact of the machining means with the material. Appeal Br. 17 (Claims App.). The Examiner’s consideration of these limitations is identical to claim 1, discussed above. Final Act. 2—3. For the reasons provided above, we do not sustain the rejection of claim 16, and of claims 17 and 20 depending therefrom, as anticipated by Nachtigal. B. Obviousness based on Nachtigal and Renken, or Nachtigal Alone The Examiner’s additional consideration of dependent claims 3,4, 6, 7, 9, 18, and 19 in light of Nachtigal and Renken does not cure the deficiency of Nachtigal as to the independent claims, noted above. See Final Act. 3^4. Particularly concerning claims 6 and 7, the Examiner states Nachtigal “does not disclose the sensor within the grinding cylinder [12],” but “to have the senor(s) within the cylinder or externally would have been obvious . . . since either arrangement performs equally and the choice of either would be within the level of one of ordinary skill.” Id. at 3^4. This conclusory analysis does not, however, provide any evidence that it was known at the time of Appellant’s invention to provide a sensor within a grinding cylinder or other machining implement—much less that such an arrangement would perform equally well to the sensor arrangement disclosed by Nachtigal. Thus, we do not sustain the obviousness rejections of claims 3, 4, 6, 7, 9, 18, and 19. 6 Appeal 2015-000931 Application 12/940,878 DECISION The Examiner’s decision to reject claims 1—20 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation