Ex Parte CrowtherDownload PDFPatent Trial and Appeal BoardJan 13, 201712571836 (P.T.A.B. Jan. 13, 2017) 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. 12/571,836 10/01/2009 David Crowther GINS0135PUS1 2739 22045 7590 01/18/2017 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 EXAMINER BRYANT, REBECCA CAROLE ART UNIT PAPER NUMBER 2877 NOTIFICATION DATE DELIVERY MODE 01/18/2017 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): docketing @brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID CROWTHER Appeal 2015-007838 Application 12/571,836 Technology Center 2800 Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 1 In the Opinion below, we refer to the Specification filed October 1, 2009 (“Spec.”); the Final Action mailed January 21, 2015 (“Final Act.”); the Appeal Brief filed March 20, 2015 (“App. Br.”); the Examiner’s Answer mailed June 23, 2015 (“Ans.”); the Corrected Appeal Brief filed August 13, 2015 (“Corrected App. Br.”); and the Reply Brief filed August 24, 2015 (“Reply Br.”). Appeal 2015-007838 Application 12/571,836 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of claims 1, 2, 4, 7—13, 15, 18—22, 34—36, and 38—63. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims3 are directed to systems and methods for inspecting a threaded fastener. Claims 1, 12, 34, 44, and 50. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A profile inspection system for a threaded fastener having a length, a width, and an axis defined as being central to the fastener and upper and lower surfaces and side surfaces angularly spaced about the axis, the system comprising: a rotatable fixture including upper and lower members to hold the fastener in a generally vertical orientation at the upper and lower surfaces, respectively, and to rotate the held component through a predetermined angle about the axis during a rotational scan of a scanning process wherein the fixture allows the side surfaces of the fastener to be scanned during the rotational scan and along the entire length of the fastener between the upper and lower members at known linear lengthwise increments of movement during a linear scan of the scanning process; a light source supported on a linear translator on one side of the fixture to project a plane of light having a width wider than the width of the component onto the held fastener to obtain left and right portions of the plane of light passing by and not 2 Appellant identifies GII Acquisition, LLC, d/b/a/ “General Inspection, LLC” as the real party in interest. App. Br. 3. 3 The claims filed with the Appeal Brief did not reflect amendments to the claims made on December 29, 2014. Corrected App. Br. 1. Appellant acknowledges that the Examiner considered the amended claims in the Answer. Id. 2 Appeal 2015-007838 Application 12/571,836 blocked by the held fastener wherein the axis is substantially perpendicular to the plane of light throughout the entire scanning process; a line scanned camera including at least one row of pixel elements wherein distance moved during each increment of movement is calibrated to the at least one row of pixel elements wherein a given number of rows of pixel elements is utilized to detect a line image during each movement, the camera being supported on the linear translator on a second side opposite the one side of the fixture, the camera having a field of view wider than the width of the fastener to detect the left and right portions, thereby enabling the camera to image left and right portions of the outer edges of the fastener at a plurality of angular orientations of the held fastener and provide corresponding electrical signals; and a processor coupled to the at least one row of pixel elements and being operative to perform the following functions: a) receive the electrical signals representative of left and right outer profiles imaged by the at least one row of pixel elements during each incremental movement during the linear scan and during the rotational scan, b) control the rotational and linear scans, c) record the left and right outer profiles imaged by the camera based on the electrical signals, the recorded left and right outer profiles representing composite profiles taken at the plurality of angular orientations wherein the side surfaces of the held component which extend completely around the fastener between the upper and lower members are inspected without a need to detect a portion of the plane of light blocked by the fastener, d) assemble the composite profiles of the fastener taken at the plurality of angular orientations, and 3 Appeal 2015-007838 Application 12/571,836 e) calculate at least one geometric parameter associated with a thread of the fastener as a function of the assembled composite profiles; wherein the linear translator is fixed to translate along a fixed one-dimensional linear path, wherein the light source and the camera are supported on the linear translator with a fixed distance therebetween such that the light source and the camera are moved along the fixed one-dimensional linear path in unison along the length of the component during the linear scan while maintaining the fixed distance therebetween, and wherein the rotation of the component and fixed one-dimensional movement of the linear translator enables the fastener to be scanned during the scanning process. Corrected App. Br. 3-4 (Claims App’x). REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Reeves US 4,644,394 Feb. 17, 1987 Castore et al. US 5,521,707 May 28, 1996 (“Castore”) Migdal et al. US 6,044,170 Mar. 28, 2000 (“Migdal”) Mufti et al. (“Mufti”) US 6,055,329 Apr. 25, 2000 REJECTIONS The Examiner rejected the claims as obvious under 35 U.S.C. § 103(a) as follows: (1) claims 1, 2, 4, 7, 8, 10—13, 15, 18, 19, 21, 22, 34—36, 39, 41— 44, 46—50, and 52—63 over Reeves in view of Mufti; (2) claims 9, 20, 38, 45, and 51 over Reeves in view of Mufti and further in view of Migdal; and (3) claim 40 over Reeves in view of Mufti and further in view of Castore. Final Act. 3, 19, and 20. 4 Appeal 2015-007838 Application 12/571,836 OPINION Appellant groups the claims into five groups. App. Br. 6—7. However, Appellant argues the nonobviousness of claim 1, and submits that all other pending claims are nonobvious on the same grounds as for claim 1. Id. at 15, 19, and 20. We select claim 1 as representative of the group. Combining Reeves and Mufti Appellant argues that the foundational issue on appeal is whether Reeves, as a primary reference, may be combined with Mufti as a secondary reference, without resort to hindsight. Id. at 8. According to the Examiner, Reeves teaches holding a component (object) stationary while moving linearly and rotationally a light source and camera, while Mufti teaches rotating and translating the component while holding the light source stationary. Final Act. 2. The Examiner finds that it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teachings of Reeves and Mufti for multiple reasons. First, the Examiner finds that although Reeves teaches horizontal orientation of the object (pipe) and Mufti teaches vertical orientation of the object, it would have been obvious that the orientation of the objects serves no particular purpose and is a matter of perspective. Id. at 8. Second, the Examiner finds that, although Reeves teaches rotating the translation stage to which the light and camera are attached, it would have been obvious maintain the light and camera in a stationary position and rotate the object, as taught by Mufti, where the object is small and requires less energy to be rotated than does the light and camera, and there is less chance of damage to the light and camera. Id. Third, the Examiner finds that it would have been obvious to use an inspection field wider than the fastener, as taught in Mufti, 5 Appeal 2015-007838 Application 12/571,836 to detect both left and right profiles of the fastener at the same time for multiple reasons, including better precision and faster evaluation. Id. at 8—9. The Examiner additionally finds that it would have been obvious to use a line scan camera in place of the video camera disclosed in Reeves, since they are art-recognized equivalents. Id. at 9. Finally, the Examiner finds that it would have been obvious to use an LED as a light source, as LEDs are art-recognized equivalents to the general light source used in Reeves. Id. Appellant rejects the Examiner’s reasons for combining Reeves and Mufti. See App. Br. 11. Appellant argues the Examiner impermissibly “picks and chooses” parts of the references, while excluding other parts, or alternatively, selectively chooses elements based on hindsight, because Reeves and Mufti disclose thread inspection systems that are different in their physical structure and principles of operation from each other and from the claims. App. Br. 11—12. Appellant also argues that the proposed combination would change the principle of operation of the prior art invention. Id. at 13; see also Reply Br. 2—\. Appellant further argues that the combination of references is based on improper use of hindsight. Id. at 14. Appellant argues that consideration of the entirety of the references would have taught away from the combination. Id. at 12. For this argument, Appellant points to the statement in Reeves that “[[t]here is no necessity to rotate the pipe being inspected. . . .” and in Mufti that “system accuracy is highly dependent upon the rotation drive means and the ability to accurately position the part. ...” Id. at 12—13 (emphasis in original). 6 Appeal 2015-007838 Application 12/571,836 Addressing the last issue first, “teaching away” requires more than the mere expression of a general preference. Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). It requires that a reference discourages one of ordinary skill in the art from following the path set out in the reference, or leads that person in a direction divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). On the record before us, the references do not teach away from each other or the claimed invention. With respect to the other issues raised by Appellant, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In the Final Action and Answer, the Examiner sufficiently explains why one of ordinary skill in the art would have made the combination of which Appellant complains. Final Act. 8—9; Ans. 8—9. “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 that person’s skill.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 401 (2007). KSR applies here. Although the apparatus disclosed in Reeves applies to devices, such as oil and gas well pipes, that are substantially larger than the threaded screws or bolts to which Mufti is drawn, the concept of inspecting the threads by use of rotation, a light source, a camera, and a processor is similar, and the principle of operation is 7 Appeal 2015-007838 Application 12/571,836 similar. We are not persuaded by Appellant’s arguments that the Examiner indulged in hindsight reconstruction such that Reeves and Mufti cannot be combined. Obviousness of Claim 1 in View of Alleged Factual Errors Made by the Examiner Appellant also argues that claim 1 is not obvious because the Examiner made factual errors in rejecting claim 1. App. Br. 15. We address each of the purported errors below. First, Appellant disputes the Examiner’s finding that Reeves discloses “a rotatable fixture . . . to rotate the held fastener relative to a light source and camera”. Id. (emphasis in original). Appellant contends that Reeves discloses a pipe, not a fastener, and lauds not rotating the pipe. Id. The Examiner responds that a threaded pipe is a fastener, which is hardware that joins two components. Ans. 22. We agree. The Examiner also points out that the pipe (fastener) rotates with respect to the light source and camera, which we find to be factually accurate. See id. In addition, Mufti discloses a fastener that rotates. Mufti col. 4,11. 64—67. Appellant next argues that Reeves does not disclose “a light source. . . to project a plane of light having a width wider than the width of the fastener.” App. Br. 16 (emphasis in original). In the Final Action, the Examiner found that “Reeves fails to disclose . . . rotating the fastener via the rotating fixture” and correctly identified Mufti as teaching this limitation (Final Act. 7). In the Answer, the Examiner agreed that this limitation is missing from Reeves. Ans. 22—23. As Mufti teaches the limitation, and Appellant does not dispute this, it is not reversible error that Reeves fails to disclose this limitation. . 8 Appeal 2015-007838 Application 12/571,836 Appellant contends that the Examiner erred in finding that Reeves teaches the processor of the claims and in identifying it as “processor 21” of Reeves. App. Br. 17. Appellant is correct that element 21 in Reeves is a video camera, not a processor. However, in the Answer, the Examiner identifies the processor shown in Figure 11, and that it is in communication with both the translation stage and the detector. Ans. 23. Figure 11 of Reeves supports the Examiner’s finding. Appellant then contends that the Examiner erred in finding that Mufti discloses “rotating the fixture to cause the held fastener to rotate about an axis” because Mufti does not disclose a fixture that rotates. App. Br. 17—18. The Examiner responds that Mufti discloses a vacuum chuck that rotates. Ans. 23. The portions of Mufti cited in support state that “the workpiece . . . is rotated in successive positions by the positioning system 22,” which is also identified as a vacuum chuck. Mufti col. 7,11. 62—645, col. 8,11. 16—19. It is reasonable to conclude that some part of the positioning system must rotate if it is to rotate the workpiece. We do not find Appellant’s argument to the contrary persuasive. Appellant finally argues that Mufti does not disclose a camera. App. Br. 18. The Examiner responds that Mufti discloses an imaging array, “which is by definition a camera (visual image recorder).” Ans. 23. Mufti teaches “a video imaging method and device” (column 3, lines 48—49), “video image collection and analysis” (column 4, lines 3—4), and use of “a two dimensional solid state detector array such as the kind used in CCD or CID cameras” (column 4, lines 19—20). Mufti sufficiently discloses a camera. 9 Appeal 2015-007838 Application 12/571,836 Based on this record, Appellant has not established that the Examiner erred in finding claim 1 obvious over Reeves in view of Mufti. Obviousness of Claims 2, 4, 7, 8, 10—13, 15, 18, 19, 21, 22, 34-36, 39, 41-44, 46-50, and 52-63 Appellant argues that claims 2, 4, 7, 8, 10-13, 15, 18, 19, 21, 22, 34— 36, 39, 41—44, 46—50, and 52—63 are not obvious over Reeves in view of Mufti for the same reasons as argued for claim 1. App. Br. 19. For the reasons provided above, Appellant has not established that the Examiner erred in rejecting these claims as obvious. Obviousness of Claims 9, 20, 38, 45, and 51 over the Combination of Reeves, Mufti, and Migdal Appellant contends that claims 9, 20, 38, 45, and 51 are patentable over Reeves in combination with Mufti and Migdal. App. Br. 19—20. Appellant describes Migdal’s teaching, but makes no argument that Migdal is not combinable with Reeves and Mufti. Id. Appellant relies on his arguments regarding patentability of claim 1 to support patentability of claims 9, 20, 38, 45, and 51. Appellant fails to establish that the Examiner erred in rejecting these claims for the reasons provided above. Arguments in the Reply Brief Appellant raises two arguments in the Reply Brief. The first, that the Examiner’s proposed combination changes the principle of operation of Reeves, was previously raised by Appellant in the Appeal Brief at page 13. Reply Br. 2. Appellant does not purport to be responding to a new issue raised by the Examiner in the Answer. Any new arguments and new facts relied upon in the Reply Brief which were not raised or relied upon in the 10 Appeal 2015-007838 Application 12/571,836 Appeal Brief will not be considered by the Board unless good cause is shown. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010). We addressed the issue of the principle of operation of the prior art above and decline to respond to new arguments made for the first time in the Reply Brief. The second argument in Appellant’s Reply Brief, that “the prior art fails to teach a fixed one-dimensional linear path movement of the camera and light source,” Appellant raises for the first time, allegedly in response to the Examiner’s Answer. Id. at 4. However, the portion of the Answer that Appellant identifies in asserting this new argument (pages 6—7 of the Answer) is identical to the Final Action at page 6. Therefore, Appellant again raises new arguments in the Reply Brief which were not raised or relied upon in the Appeal Brief. We decline to consider the new arguments. See 37 C.F.R. § 41.37(c)(l)(iv). In the Answer, the Examiner raises a new point that Appellant responded to in the Reply Brief. Specifically, the Examiner found that “[rotation of one part or another to cause them to rotate in relation to one another has a finite number of solutions,” and concluded that it “would have been within the ordinary skill in the art to try.” Ans. 8. Appellant responds that there are numerous parameters that can vary in order to inspect a part and the prior art provides no indication of which parameters are critical and no direction as to which of many possible choices is likely to be successful. Reply Br. 4—5 (citing In re Kubin, 561 F.3d 1351, 1358 (Fed. Cir. 2009). In 11 Appeal 2015-007838 Application 12/571,836 Kubin, the Federal Circuit explained that “where a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.” Kubin, 561 F.3dat 1359. The Federal Circuit also cited KSR for the Supreme Court’s statement “that where a skilled artisan merely pursues ‘known options’ from a ‘finite number of identified, predictable solutions,’ obviousness under §103 arises.” Id. (citing KSR, 550 U.S. at 421. In the instant case, the combination of Reeves and Mufti would have provided a skilled artisan with known options from a finite number of identified, predictable solutions, rendering the claims obvious. On the record before us, Appellant has not identified a reversible error in the Examiner’s conclusion that the system of claim 1 would have been obvious over the teachings of Reeves in view of Mufti. For the same reasons, Appellants have not identified a reversible error in the Examiner’s rejection of claims 2, 4, 7—13, 15, 18—22, 34—36, and 38—63. DECISION For the above reasons, the Examiner’s rejection of claims 1, 2, 4, 7—13, 15, 18—22, 34—36, and 38—63 is affirmed. 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). AFFIRMED 12 Copy with citationCopy as parenthetical citation