Ex parte KATO et al.

Board of Patent Appeals and Interferences

May 30, 2000

08016979 (B.P.A.I. May. 30, 2000)

1
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not binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHISATO KATO,
TAKAHIRO KOBAYASHI,
and KAZUO KITAO
_____________
Appeal No. 1997-3912
Application 08/016,979
______________
ON BRIEF
_______________
Before THOMAS, MARTIN, and LALL, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner's
final rejection of claims 39 through 42. As of the decision
date of this appeal, the examiner has indicated the
allowability of claims 1 through 29, 31 through 38 and 45
through 52, appellants having canceled claims 30, 43 and 44.
Appeal No. 1997-3912
Application 08/016,979
2
Representative claim 42 is reproduced below:
42. A method of processing a plurality of workpieces by
a working system including a working machine for successively
processing the workpieces, machine control means for
determining a working condition of said working machine on the
basis of an extraneous signal, and controlling said working
machine according to the determined working condition, and a
measuring device for measuring actual dimensions of working
portions of the workpieces processed by said working machine,
said method comprising the steps of:
determining as said extraneous signal a compensating
value for adjusting said working condition of said machine for
the workpieces to be processed subsequently by said machine,
on the basis of the actual dimensions of the working portion
of the workpieces which have been measured by said measuring
device, and according to a compensation rule which changes
with a change in a dynamic variation amount of measured values
of said actual dimensions successively obtained by said
measuring devices, and
according to a compensation rule which changes with a
change in a variation amount of measured values of said actual
dimensions successively obtained by said measuring device; and
applying said compensating value to said machine control
means.
The following reference is relied upon by the examiner:
Moyer et al. (Moyer) 4,719,586 Jan. 12,
1988
Claims 39 through 42 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Moyer. This was a new ground
Appeal No. 1997-3912
Application 08/016,979
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of rejection set forth in the initial examiner's answer.
Rather than repeat the positions of the appellants and
the examiner, reference is made to the briefs and the answers
for the respective details thereof. These include the initial
examiner's answer dated April 1, 1996 and the supplemental
answer of September 25, 1996. We have also considered
appellants' principal brief on appeal filed on November 28,
1995 and appellants' reply brief of May 31, 1996 reflecting
the last entered amendments to the claims on appeal. The
supplemental reply brief filed on November 25, 1996 has not
been considered by us since the examiner's communication,
Paper No. 29, mailed on February 6, 1997, indicates that it
has not been entered. There, the examiner indicated
appellants' "substantial amendments to the claimed limitations
add new issues to the case."
OPINION
We sustain the rejection of claims 39 through 42 on the
basis of the reasoning expressed by the examiner in principal
answer, as well as the embellishments in the supplemental
answer. It is noted that the version of these claims on
Appeal No. 1997-3912
Application 08/016,979
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appeal is that set forth with respect to the claims attached
to the initial reply brief of May 31, 1996.
Pages 3 and 4 of the supplemental answer take the
position that the newly added limitations of claims 39 through
42 as presented in the first reply brief are taught in Moyer.
We agree. Because the supplemental reply brief of November
25, 1996 has not been entered by the examiner, we have not
considered any arguments presented therein. It is further
noted, however, that the supplemental reply brief presented in
an untimely manner substantial new amendments to the claims on
appeal which have obviously not been entered as reflected by
the examiner's statement in the communication on February 6,
1997. On the basis on this view of the examiner, the
appellants appear to have impliedly admitted the propriety of
the examiner's rejection because of the stated substantial
amendments to the claims on appeal in the supplemental reply
brief.
In view of the foregoing, the decision of the examiner
rejecting claims 39 through 42 under 35 U.S.C. § 102 as being
anticipated by Moyer is affirmed.
Appeal No. 1997-3912
Application 08/016,979
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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

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN C. MARTIN )
APPEALS
Administrative Patent Judge ) AND
)
INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 1997-3912
Application 08/016,979
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Finnegan, Henderson, Farabow
Garrett and Dunner
1300 I Street, N.W.
Washington, DC 20005
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