Ex Parte Gnausch

Patent Trial and Appeal Board

Sep 14, 2016

12735052 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121735,052 10/08/2010
24972 7590 09/16/2016
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Tobias Gnausch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10191/6480 3567
EXAMINER
AYUB, HINAF
ART UNIT PAPER NUMBER
2877
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOBIAS GNAUSCH
Appeal2015-002924
Application 12/735,052
Technology Center 2800
Before MARK NAGUMO, MICHAEL P. COLAIANNI, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 11 and 13-20. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellant, the real party in interest is Robert Bosch
GmbH. Appeal Br. 1.
Appeal2015-002924
Application 12/735,052
STATEMENT OF THE CASE
Appellant describes the present invention as relating to an optical
probe for optically testing surface irregularities in a manufactured object.
Appeal Br. 3. Appellant states that the present invention has the advantage
of permitting measuring components having different inner diameters using
only one probe. Appeal Br. 4; Spec. 2:12-16. Claims 11and20 are the
only independent claims on appeal. Claim 11, reproduced below with
emphasis added, is illustrative of the claimed subject matter:
11. An optical probe for optically testing surface irregularities
in a manufactured object, comprising:
a stationary probe component;
a rotating probe component rotatable about an axis of
rotation and coupled mechanically and optically to the stationary
probe component;
at least two optical outputs on the rotating probe
component for coupling out measuring beams of varying focal
distances corresponding to different inner diameters of the object
being tested for surface irregularities; and
a prism for each of the at least two optical outputs, each of
the prisms situated in series along the axis of rotation,
wherein a beam striking at least one prism is partially
deflected to its respective optical output and partially guided
straight ahead to a next prism in the series,
wherein each of the at least two optical outputs are
positioned at different lengths along the axis of rotation and
are arranged according to decreasing focal distances toward
an end of the optical probe inserted into the object, and
wherein the measuring beams exit perpendicularly with
respect to axis of rotation.
2
Appeal2015-002924
Application 12/735,052
Appeal Br. 2 1 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Xie et al.
(hereinafter "Xie")
Jens en et al.
(hereinafter "Jensen")
Lindner et al.
(hereinafter "Lindner")
US 2004/0085543 Al May 6, 2004
US 7 ,529,577 B2 May 5, 2009
WO 2005/019768 Al Mar. 3, 2005
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 11, 13-18, and 20 under 35 U.S.C. § 103 as
unpatentable over the Applicant's Admitted Prior Art (Spec. 3, 11. 8-11,
hereinafter "AAPA") in view of Lindner and Jensen. Final Act. 4.
Rejection 2. Claim 19 under 35 U.S.C. § 103 as unpatentable over the
AAP A in view of Lindner and further in view of Xie. Id. at 7. 3
ANALYSIS
After having considered the evidence presented in this Appeal and
each of Appellant's contentions, we are not persuaded that Appellant
identifies reversible error. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI
2 In this decision, we refer to the Final Office Action mailed April 24, 2014
("Final Act."), the Appeal Brief filed September 15, 2014 ("Appeal Br."),
the Examiner's Answer mailed November 19, 2014 ("Ans."), and the Reply
Brief filed January 20, 2015 ("Reply Br.").
3 The Final Office Action suggests the Examiner intended to also apply
Jensen to claim 19. Final Act. 7 ("AAPA, in view of Lindner and Jensen, is
silent with respect to a switching device. Xie, however, ... discloses .... ").
To extent there is an ambiguity in the record, Appellant does not argue that
the ambiguity results in reversible error.
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Appeal2015-002924
Application 12/735,052
2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) ("it has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections")). We
thus affirm the Examiner's§ 103 rejections for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
Rejection 1. The Examiner rejects claims 11, 13-18, and 2 0 as
obvious over the AAPA in view of Lindner and Jensen. Final Act. 4.
Appellant does not separately argue claims 13-18 and 20. Appeal Br. 3--4.
We therefore limit our discussion to claim 11. Claims 13-18 and 20 stand or
fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that an optical probe with stationary and rotating
components is admitted prior art. Final Act. 4. The Examiner also finds that
Lindner teaches having two optical outputs positioned at different heights
along an axis of rotation, and Jensen teaches an optical probe with varying
focal output. Id. at 5. The Examiner concludes that it would have been
obvious to modify the admitted prior art probe "with at least two optical
outputs" as taught by Lindner "for the purpose of reducing the site-
dependency of the spectral measurement." The Examiner also concludes
that it would have been obvious to further adapt the AAP A modified probe
"so that the optical outputs have varying focal distances for the purpose of
precisely imaging a cavity .... " Id. The preponderance of the evidence
supports these findings and conclusions, and these findings and conclusions
are not persuasively disputed by Appellant.
Appellant argues that none of the cited references disclose or suggest
"arranging the at least two optical outputs according to decreasing focal
distances toward an end of the optical probe inserted into the object."
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Appeal2015-002924
Application 12/735,052
Appeal Br. 4. The Examiner agrees that the references do not "specify the
order of arranging the outputs along the axis .... " Final Act. 6; Ans. 2.
The Examiner, however, further determines that it would have been obvious
to try this order of arrangement as there are a finite number of options for
ordering the outputs along the axis and one of ordinary skill would
reasonably choose to order them so that the smallest focal distance is closest
to the insert end of the probe (Final Act. 6).
Under KSR, a design that is obvious to try would have been obvious
"[ w ]hen there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp." KSR Int'!, Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Here, Claim 11 could have as few as two optical outputs. The Examiner
finds that the AAP A/Lindner/Jensen probe's first output would either be
closer to the optical probe tip than the second output or farther from it. Ans.
2; see also Final Act. 5 (finding that Lindner teaches "two optical outputs
(11, 12), each of the prisms (HSP, SP) situated in series along the axis of
rotation"); Lindner Fig. 2. Appellant does not persuasively dispute this
finding. Because there are only two possible options, if one option did not
work well, it would have been obvious for a person of ordinary skill to try
the other option. See also Ans. 2 (finding that claimed configuration would
"avoid[] diffuse reflections from unfocused light hitting the walls of the
cavity"). Thus, we are persuaded that either location would have been
obvious. Cf ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367
(Fed. Cir. 2016) (holding that claimed configuration is obvious even if one
of two design choices based on obvious combination of prior-art elements is
not within scope of claimed invention).
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Appeal2015-002924
Application 12/735,052
We therefore sustain the Examiner's rejection of claims 11, 13-18,
and 20.
Rejection 2. The Examiner rejects claim 19 as obvious over the
AAP A in view of Lindner and further in view of Xie. Final Act. 7.
Appellant relies upon the claim 11 arguments above and adds that Xie does
not suggest the features not disclosed by AAP A and Lindner. Appeal Br. 4--
5. We therefore sustain the Examiner's rejection of claim 19 for the reasons
explained above.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
11 and 13-20.
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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