Ex parte Frary

Board of Patent Appeals and Interferences

Oct 28, 1999

08168167 (B.P.A.I. Oct. 28, 1999)

Application for patent filed December 17, 1993.1
1
Paper No. 17
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JAMES M. FRARY
______________
Appeal No. 1996-3084
Application 08/168,1671
_______________
HEARD: OCTOBER 5, 1999
_______________
Before THOMAS, FLEMING and FRAHM, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
final rejection of claims 1 through 18, which constitute all
the claims in the application.
Appeal No. 1996-3084
Application 08/168,167
An outstanding rejection of certain claims under the second paragraph2
35 U.S.C. § 112 as set forth in the final rejection was withdrawn by the
examiner as noted at pages 2 and 5 of the answer.
Appellant's reply brief filed on March 25, 1996 has been denied entry3
by the examiner in the communication dated April 5, 1996, as well as the
Interview Summary form issued on April 17, 1996. Therefore, we have not
considered it in our deliberations.
2
Representative claim 16 is reproduced below:
16. A physical volume comprising:
a housing;
a computer readable medium mounted in said housing for
storing data; and
an electromagnetic transponder, attached to said housing,
having a non-volatile memory configured to store data
associated with the physical volume.
The following reference is relied on by the examiner:
Juengel 4,742,470 May 3, 1988
Claims 1 through 18 stand rejected under 35 U.S.C. § 103.
As evidence of obviousness, the examiner relies upon Juengel
alone. 2
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and the answer for
the respective details thereof. 3
OPINION
Appeal No. 1996-3084
Application 08/168,167
3
For the reasons set forth by the examiner in the answer,
we sustain the rejection as to claims 1 through 16, but
reverse the rejection as to claims 17 and 18 for reasons that
will be apparent in the ensuing discussion.
At the outset, we note that with respect to appellant's
arguments at pages 10 and 11 of the brief asserting that the
applied prior art Juengel patent does not solve the same
problem as appellant addresses in accordance with the
disclosed and claimed invention, it is noted that in an
obviousness determination, the prior art need not suggest
solving the same problem set forth by appellant. In re
Dillon, 919 F.2d 688,
692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(in banc)
(overruling-in-part In re Wright, 848 F.3d 1216, 1120 6 USPQ2d
1959, 1962 (Fed. Cir. 1988)); cert. denied, 500 U.S. 904
(1991).
To the extent the prior art as a whole includes
appellant's discussion with respect to the prior art at the
bottom of page 1 through the top of page 3 of the disclosed
invention, appellant's arguments between pages 8 and 10 of the
brief on appeal relate principally to known prior art
Appeal No. 1996-3084
Application 08/168,167
4
disadvantages already identified in this portion of the
specification. Principally, the major disadvantage known to
the prior art is that a table-lookup system was necessary to
identify various parameters of prior art cartridges associated
with automated cartridge systems in a host computer rather
than in or on the claimed “physical volume” or cartridge per
se.
Juengel is significant in two respects with respect to
this understanding of the prior art. First, from an artisan's
perspective, both embodiments in Jeungel relate to the
particular item in question, in this case, a “machine tool
bit” carrying in an enclosed memory therein information
relating to the item or tool bit itself. Thus, in contrast to
the prior art deficiencies noted earlier in this opinion in
the early portions of the specification as filed requiring
such information to be located in tables external to the
“physical volume” itself, the series of problems associated
with this deficiency of the prior art is specifically
addressed in the teachings in this reference.
It is noted further that appellant admits at the bottom
of page 8, as well as at the bottom of page 11 of the brief,
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Application 08/168,167
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that transponders of the type claimed have been utilized to
identify various types of objects in the prior art. On the
other hand, Juengel himself identifies in a general way that
the teachings of his invention may be applicable to other
types of utilities outside the machine tool environment as
expressed initially at column 2, lines 1 through 4 and at
column 4, lines 25 through 34.
As to the argument presented at page 9 of the brief that
the claimed and disclosed invention permits information
relative to the claimed physical volume to be determined
without loading the physical volume itself in a drive, this
advantage over prior art systems is also met by the teachings
in Juengel. Most notably, the discussion associated with
Figure 7 and the showing thereof indicates that a computer
numerical control machine tool system 100 has associated with
it a tool rotating drum or magazine 102 on which various tools
104 are rotatable for selection by the machine tool system
itself for use on a selective basis. There is no need to load
the tool into the machine tool to determine the nature of the
tool or its various data attributes stored in the memory
Appeal No. 1996-3084
Application 08/168,167
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internal to it in the transponder 112 of Juengel since the
transceiver 114 associated with the machine tool reads the
data remotely by electromagnetic and/or electrostatic, passive
means. The discussion of Figure 7 begins at column 4, line
35. Note also the discussion of prior art tool holder pickup
stations at column 3, lines 4 through 9.
To the extent appellant further argues at page 9 of the
brief that the claimed and disclosed invention does not
require the physical volume be tied to a particular system, it
is noted that Juengel also solves these problems inherently
and it has generally been known in accordance with the
discussion in the background of Juengel's invention at column
1, lines 30 through 35 that a flexible manufacturing system
environment allows machine tools to exchange or share tools
between themselves.
Juengel presents to the artisan a second major advantage
within an assessment of the prior art as a whole. To the
extent the earlier discussion has directly addressed the noted
deficiencies of the prior art recognized by appellant in the
early pages of the specification as filed, Juengel has further
significance to the artisan since the physical corollary of
Appeal No. 1996-3084
Application 08/168,167
7
the claimed type of “automated cartridge system” is often in
the art called a “jukebox” cartridge storage system, where
Juengel presents in Figure 7 to the artisan an analogous
structure since the tool rotating drum or magazine 102 in this
figure associated with the computerized numerical control
machine tool system 100 is physically analogous to prior art
“jukebox” systems utilized to store and search various tape
cartridge mechanisms. Thus, there would have been an obvious
logical commendation among the teachings of Juengel which
would have been clearly pertinent to an inventor's attention
in considering the problems or deficiencies of the prior art
as set forth in In re Clay,
966 F.2d 656, 23 USPQ2d 1058 (Fed. Cir. 1992). The discussion
in the paragraph bridging columns 4 and 5 of Juengel also
lists various advantages to the approach taken according to
both embodiments set forth in this reference.
In accordance with appellant's claim grouping, the above
arguments have been principally addressed to the rejection set
forth of independent claims 1 and 16. No arguments have been
presented by appellant with respect to dependent claims 2
through 8. It is noted that independent claim 9 is identical
Appeal No. 1996-3084
Application 08/168,167
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to the subject matter of claim 1 with the further feature
recited that additional elements permit determining the
relative positioning of the transceiver means and the selected
label based on attributes of the signal received by the
transceiver means from the transponder. We sustain the
rejection of this claim for the reasons set forth by the
examiner and note further that appellant has presented no
arguments with respect to dependent claims 10 through 15.
Even a brief study of Juengel indicates that at least
with respect to the showing in Figure 7 of the transceiver 114
communicating with each of the tools 104 via transponder unit
112 therein as they rotate about the drum or magazine 102 for
selection of the tool in accordance with the known prior art
teachings identified as conventional in the art in the
discussion beginning at column 4, line 49, the ability to
select between rotation tool bits determines relative position
based upon received signals. Appellant's brief summary of
Juengel at the top of page 8 even recognizes that Juengel is
an interrogation-response-based system which generally even
uses the term “transponder and transceiver” indicating
bidirectional communications exist between transceiver 114 and
Appeal No. 1996-3084
Application 08/168,167
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transponder 112. Relative position is obviously taught within
35 U.S.C. § 103 in Juengel in the manner claimed based upon
the selectability or non-selectability of an individual tool
bit as it rotates around past the transceiver 114.
We reach an opposite conclusion and reverse the rejection
of independent claim 17 and its dependent claim 18 since this
method claim goes beyond a mere determination of relative
position of the robotic hand assembly to include the
adjustment of the relative position based upon the return
signal from the transponder at the transceiver. Even in view
of the examiner's arguments with respect to the adjustability
feature, Juengel is silent as to utilizing any signals
received by the transceiver 114 from the transponder 112 for
relative position adjustments.
In view of the foregoing, we sustain the rejection of
claims 1 through 16, but reverse the rejection of claims 17
and 18. Therefore, the decision of the examiner is affirmed-
in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 1996-3084
Application 08/168,167
10
AFFIRMED-IN-PART
James D. Thomas )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Eric S. Frahm )
Administrative Patent Judge )
JDT/cam
Appeal No. 1996-3084
Application 08/168,167
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