11226068 (P.T.A.B. Apr. 30, 2014)

Ex Parte Goldenberg

Patent Trial and Appeal BoardApr 30, 2014

11226068 (P.T.A.B. Apr. 30, 2014)

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. 11/226,068 09/14/2005 Alex Goldenberg 2005P57009 US 3080 45113 7590 04/30/2014 Siemens Corporation Intellectual Property Department 170 Wood Avenue South Iselin, NJ 08830 EXAMINER HAJNIK, DANIEL F ART UNIT PAPER NUMBER 2614 MAIL DATE DELIVERY MODE 04/30/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEX GOLDENBERG ___________ Appeal 2011-008871 Application 11/226,068 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, CARL W. WHITEHEAD JR., and JOHNNY A. KUMAR, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008871 Application 11/226,068 2 STATEMENT OF THE CASE Appellant is appealing the final rejection of claims 1-25 under 35 U.S.C. § 134(a). Appeal Brief 6. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We reverse. Introduction The invention is directed to “computational geometry design for forming sheet metal machinery corners.” Appeal Brief 8. Representative Claim (Emphasis Added) 1. A method for creating a parametric corner on a three- dimensional design, comprising the steps of: associating a plurality of adjacent, geometric members on a target body, calculating, in a computer, a plurality of mapped bend lines relative to said geometric members, at least one of said mapped bend lines connecting a first point on a first surface of said target body and a second point on a second surface of said target body, said first point calculated from a first normal to a first line extended from a flange of said target body and said second point, calculated from a second normal to a second line extended from said flange of said target body, connecting, by the computer, at least one parametric surface to said geometric members, and forming a machinery corner, by the computer, by sewing each of said parametric surfaces together, whereby a design feature can be successfully placed on said machinery corner. Appeal 2011-008871 Application 11/226,068 3 Rejections on Appeal Claims 1, 2, 4-14, and 16-24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Konno (U.S. Patent Number 5,619,625; issued April 8, 1997) and “White Paper, Pro/SHEETMETAL Bend Relief”; published February 4, 1999 (“White Paper”). Answer 3-15. Claims 3, 15, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Konno, White Paper, and Kask (U.S. Patent Number 6,144,896; November 7, 2000). Answer 16-18. ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed November 18, 2010), the Answer (mailed January 26, 2011), and the Reply Brief (filed March 16, 2011) for the respective details. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant contends the White Paper fails to disclose first and second points on first and second surfaces as recited in the claims and therefore the White Paper fails to address Konno’s noted deficiency. Appeal Brief 17-19; Answer 6. The Examiner finds: This whitepaper describes a program where an intersection point is found in the central portion of a corner in a sheet metal design. The intersection of the lines as shown in the figure are [sic] the features that correspond with that described in the claim language. When the first point and second point shown above are applied as a corner section, these Appeal 2011-008871 Application 11/226,068 4 points in turn are connected through mapped bend lines when combined with the base reference of Konno. Answer 10. The Examiner finds the White Paper addresses Konno’s deficiency because: If the appellant is allowed to seek patentable protection of an invention claiming a first surface and second surface where those surfaces are really portions of a single plane separated by lines then it is only fair that the examiner should be allowed to apply this same standard to the examination process of the prior art. Terms designated in the claim language should be applied consistently and be applied both ways. Id. at 23-24. Appellant disagrees with the Examiner’s interpretation of the claim language: Appellant is clearly not seeking patent protection for an invention claiming a first surface and second surface where those surfaces are really portions of a single plane separated by lines. The Specification makes clear that Claim 1 seeks patent protection for an invention claiming a mapped bend line connecting a point on a top surface of a target body and a point on a bottom surface of the target body. Appellant seeks to apply terms designated in the claim consistent with the Specification . . . . Reply Brief 16-17. During examination, claims are given the broadest reasonable interpretation; however, we do not find the Examiner’s interpretation of the first and second surfaces of the claimed invention to be reasonable in light of the Specification for the reasons articulated by Appellant. The White Paper fails to disclose first and second surfaces because the figure relied upon by Appeal 2011-008871 Application 11/226,068 5 the Examiner shows only one surface with the Examiner employing first and second surface nomenclature that is inconsistent with Appellant’s Specification. See Answer 23. Therefore, we reverse the Examiner’s rejection of independent claims 1 and 14, as well as, dependent claims 2-13 and 15-24. We also reverse the Examiner’s rejection of independent claim 25 for the same reasons articulated above and we further find Kask fails to address the noted deficiency of the Konno/White Paper combination. DECISION The Examiner’s 35 U.S.C. § 103 rejection of claims 1-25 is reversed. REVERSED msc