Ex Parte Kisch

Patent Trial and Appeal Board

Nov 30, 2016

12029676 (P.T.A.B. Nov. 30, 2016)

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.
12/029,676 02/12/2008 Robert A. Kisch 07-1057-US-NP 9282
63759 7590 12/02/2016
DTTKFW YFF
EXAMINER
YEE & ASSOCIATES, P.C. KOCH, GEORGE R
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
12/02/2016 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT A. KISCH
Appeal 2015-005932
Application 12/029,676
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 4—7, and 28—34. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellant’s invention is directed to a method of identifying or
compensating for mislocations in a placement of tows by a fiber placement
machine. App. Br. 4—6. Claim 1 is illustrative of the subject matter on
appeal and is reproduced below:
Appeal 2015-005932
Application 12/029,676
1. A method of identifying mislocations in a placement
of tows by a fiber placement machine, comprising:
laying down a first test layup comprising a first plurality
of tows using the fiber placement machine and a controller
program;
scanning the first plurality of tows, wherein scanning the
first plurality of tows generates position data for the first
plurality of tows, and wherein the position data comprises a
separate corresponding position of each of the first plurality of
tows;
comparing the position data with reference datum to
identify mislocations, wherein the reference datum comprises a
separate corresponding correct position of each of the plurality
of tows;
determining if the mislocations are within predetermined
limits;
generating compensation values from identified
mislocations outside of the predetermined limits;
modifying the controller program using the compensation
values to form a modified program; and
using the modified program to lay down a second test
layup comprising a second plurality of tows, the second test
layup being substantially similar to the first test layup but
comprising placement adjustments resulting from the
compensation values in the modified program.
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Appeal 2015-005932
Application 12/029,676
Appellant (App. Br. 4) requests review of the following rejections
from the Examiner’s Final Action:
I. Claims 1, 2, 4—7, and 28—34 rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement for the
claim term "predetermined limits” used in independent claims 1, 28, and 29.
II. Claims 1, 2, 4—7, and 28—34 rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
III. Claims 1, 2, 6, 7, and 28—34 rejected under 35 U.S.C. § 103(a)
as unpatentable over Oldani (US 2007/0173966 Al, published July 26,
2007) and Engelbart et al. (US 2005/0203657 Al, published September 15,
2005) (“Engelbart”).
IV. Claims 4 and 5 rejected under 35 U.S.C. § 103(a) as
unpatentable over Oldani, Engelbart, Rueb et al. (US 2005/0082262 Al,
published April 21, 2005) (“Rueb”) and Dorsey-Palmateer (US 5,341,183,
issued August 23, 1994).
OPINION
Rejection I (35 U.S.C. § 112, first paragraph (enablement))
We REVERSE.
The Examiner asserts that the Specification does not enable one
skilled in the art to make or use the invention because it does not provide a
definition or standard defining the term “predetermined limits” used in
independent claim 1, 28, and 29 so as to inform one skilled in the art what
limits are predetermined. Final Act. 3—A. According to the Examiner, it
would take undue experimentation for one skilled in the art to ascertain the
meaning of the “predetermined limits.” Id. at 4—6.
We agree with Appellant that a person having ordinary skill in the art
would understand that “predetermined limits” within the field of fiber
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Appeal 2015-005932
Application 12/029,676
placement defects are situation dependent based on materials and desired
use. App. Br. 17—18. Moreover, the Specification describes as known to
adjust the placement of tows by first measuring the start placement or end
placement for each tow of each course placed on a tool base and comparing
the measurement to scribe lines on a tool base to determine any deviations
between the tows and the scribe lines and subsequently adjusting the
placement of the tows to minimize the deviations within a predetermined,
acceptable distance of the scribe lines (predetermined limits). Spec. 14.
That is, the Specification provides guidance to one skilled in the art as to the
meaning of the objected term. The Examiner has not provided an adequate
explanation why this disclosure does not enable one skilled in the art to
make or use the invention.
Accordingly, we reverse the rejection under 35U.S.C. § 112, first
paragraph, for the reasons presented by Appellant and given above.
Rejection II (35 U.S.C. § 112, 2nd Paragraph)
We have reviewed the respective positions of the Examiner and
Appellant regarding the issues raised with respect to claims 1, 28, and 29
under 35 U.S.C. § 112, 2nd paragraph. Final Act. 6—7; Ans. 17—19; App.
Br. 21. We determine that the ordinarily skilled artisan would understand
that “predetermined limits” means limits for the differences between the
position data as compared to the reference datum (i.e., mislocations) that are
acceptable for a particular tow and a part being manufactured. We
REVERSE the rejection for the reasons presented by Appellant and those
reasons discussed above with respect to the rejection under 35 U.S.C. § 112,
1 st paragraph.
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Appeal 2015-005932
Application 12/029,676
Prior Art Rejections
Rejection III1
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner’s prior art rejection of claims 1, 2, 6,
7, and 28—34 under 35 U.S.C. § 103(a) for the reasons presented by
Appellant. We add the following.
Independent claim 1 is directed to a method of calibrating and
automated fiber placement device by using test fiber tow layups on a tool
base having datum lines representing the desired product design, as shown in
Figure 8 of the Specification. Spec. 17—18. In this way, the claimed
invention ensures that the fiber tows, once placed, will result in the desired
product prior to actual production. Id. This is done by comparing the test
layup against the datum lines to ascertain whether significant deviations
exist between them that require modifying the device’s control system
programing to result in a more desirable result.
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 7—16.
Appellant argues both Oldani and Engelbart are directed to making
production layups and not test layups used to identify mislocations in the test
layups against a datum line as claimed. App. Br. 11—13; Reply Br. 6—7.
According to Appellant, Oldani and Engelbart do not subsequently modify a
controller program for an automated fiber placement device based on the
mislocations identified by either Oldani or Engelbart to lay down a second
1 All independent claims require laying a test layup comprising a plurality of
tows using the fiber placement machine and a controller program. We limit
our discussion to independent claim 1.
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Appeal 2015-005932
Application 12/029,676
test layup, as claimed. App. Br. 11—13; Oldani || 18, 23, 26, 61, 64;
Engelbart Figure 2B, 149.
We agree with Appellant. The Examiner found Oldani discloses a
process of making a product using an automated fiber placement (AFP)
device that comprises comparing a virtual image 114 of the desired product
with a visual image 112 of a fiber layup 102. Final Act. 7—8; Oldani Figure
1,143. The Examiner also found Engelbart discloses a method of repairing
a fiber layup by identifying defects and using an indirect quantitative
measurement of the defect based upon correlation data to repair it. Final
Act. 8—9; Engelbart H 41 42. However, the Examiner directs us to no
portion of Oldani or Engelbart that discloses their respective fiber layup as a
test layup. In addition, the Examiner directs us to no portion of Oldani that
discloses using the result of the comparison between virtual image 114 and
visual image 112 to modify the controller program for the AFP device. On
the contrary, paragraphs 60-64 of Oldani disclose that the results of the
image comparison are stored for historical purposes. This finding supports
Appellant’s contention that fiber layup 102 of Oldani is a production layup
and not a test layup as alleged by the Examiner. App. Br. 15. Thus, the
Examiner does not adequately explain how the process of Oldani would
have been modified by one skilled in the art to include the steps of using test
layups as claimed absent impermissible hindsight. App. Br. 13—14. In
addition, the Examiner has not adequately explained how Engelbart’s
disclosed repair process would have led one skilled in the art to recognize
the use of test layups as claimed. Thus, the Examiner has not provided an
adequate explanation of how the combined teachings of the cited art would
have led one skilled in the art to the claimed invention.
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Appeal 2015-005932
Application 12/029,676
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSRInt’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
Accordingly, we reverse the Examiner’s prior art rejection of claims
1, 2, 6, 7, and 28—34 under 35 U.S.C. § 103(a) for the reasons presented by
Appellant and given above.
Rejection IV
The Examiner’s prior art rejection of claims 4 and 5 under 35 U.S.C.
§ 103(a) is premised on the teachings of Oldani and Engelbart rendering the
subject matter of independent claim 1 obvious to one skilled in the art. Final
Act. 16—17. As discussed above, such is not the case. The Examiner did not
rely on the additionally cited secondary references to overcome the
previously noted deficiencies of Oldani and Engelbart. Id.
Accordingly, we also reverse the Examiner’s prior art rejection of
claims 4 and 5 for the reasons presented by Appellant and given above.
ORDER
The Examiner’s rejections of claims 1, 2, 4—7, and 28—34 under
35 U.S.C. § 112, first paragraph (enablement) is reversed.
The Examiner’s rejection of claims 1, 2, 4—7, and 28—34 under
35 U.S.C. § 112, second paragraph is reversed.
The Examiner’s prior art rejections of claims 1, 2, 4—7, and 28—34
under 35 U.S.C. § 103(a) are reversed.
REVERSED
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