Ex Parte Lipnevicius

Patent Trial and Appeal Board

Jul 22, 2013

11084278 (P.T.A.B. Jul. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GEOFF M. LIPNEVICIUS
____________________

Appeal 2011-007309
Application 11/084,278
Technology Center 3700
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Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BARRY L. GROSSMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/084,278

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
25, 26, 30-32, 34-46, and 48. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Appellant’s claimed invention relates to “a robotic welding system
designed to efficiently weld a cylindrical workpiece.” Spec., para. [0001].
Claims 25 and 48 are the independent claims on appeal. Claim 25,
reproduced below, is illustrative of the claimed subject matter:
25. A robotic welding system comprising:
a robot arm;
a welder carried by the robot arm;
a workpiece support defining a workpiece holding area
within a work area of the welder;
a power source network configured to provide power to
the robot arm and the workpiece support; and
a robotic controller having an interface for receiving
inputs from an external location, and a program storage area
storing at least one of (i) a family of individual open loop
control programs, at least some of the individual control
programs of the family of individual open loop control
programs capable of operating with a plurality of different sized
workpieces; and (ii) a single open loop control program capable
of receiving values representing particular sizes of the plurality
of different sized workpieces, the values replacing variables
within the single open loop control program, such replacement
customizing the single open loop control program for operation
with a particular workpiece, of the plurality of different sized
workpieces, having a size corresponding to the received values,
the at least one of (i) the family of open loop control programs
and (ii) the single open loop control program, including
instructions to control actions of at least one of the robot
welding arm, the welder, and the workpiece support, wherein
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the robotic welding system is capable of operating on each of
the plurality different sized workpieces, and wherein the at least
one of (i) the family of open loop control programs and (ii) the
single open loop control program is capable of operating
without feedback during operation.

Evidence Relied Upon
Sakurai
Rennau
Parker
Stone
Toquet
Lemelson
Kakehi1
Schmid2
US 4,229,642
US 5,652,488
US 5,676,857
US 6,274,839 B1
US 2003/0038154 A1
US 7,065,856 B1
JP 55-24749
DE 3500806 A1
Oct. 21, 1980
Jul. 29, 1997
Oct. 14, 1997
Aug. 14, 2001
Feb. 27, 2003
Jun. 27, 2006
Feb. 22, 1980
Jul. 17, 1986

The Rejections
The following rejections are before us on appeal:
I. Claims 25, 34, and 35 under 35 U.S.C. § 103(a) as unpatentable over
Schmid3 and Lemelson.
II. Claims 26 and 30-32 under 35 U.S.C. § 103(a) as unpatentable over
Schmid, Lemelson, and Sakurai.
III. Claims 36, 37, 39, and 41-44 under 35 U.S.C. § 103(a) as
unpatentable over Schmid, Lemelson, and Parker.

1 References in this opinion to “Kakehi” are to an English translation in the
prosecution history bearing the notice “COPYRIGHT 2010 DERWENT
INFORMATION LTD” having a date of December 17, 2010, in the footer.
2 References in this opinion to “Schmid” are to a Machine Assisted
Translation in the prosecution history having a date of January 22, 2009, in
the footer. The Examiner identifies this translation as dated February of
2009. Ans. 3.
3 Each of the uses of Schmid is relied upon by the Examiner as evidenced by
Rennau. See, e.g., Ans. 4.
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IV. Claims 38 and 40 under 35 U.S.C. § 103(a) as unpatentable over
Schmid, Lemelson, Parker, and Kakehi.
V. Claims 45 and 46 under 35 U.S.C. § 103(a) as unpatentable over
Schmid, Lemelson, and Stone.
VI. Claim 48 under 35 U.S.C. § 103(a) as unpatentable over Schmid,
Lemelson, and Toquet.

OPINION
Rejection I
The Examiner found that Schmid discloses the subject matter of
independent claim 25, to include a robotic controller, except that Schmid’s
control programs are capable of operating with a single size workpiece
rather than with a plurality of different sized workpieces as claimed. Ans. 4-
6. The Examiner found that preprogramming capable of operating with
different sized workpieces instead of a single workpiece is known in the art,
as evidenced by Lemelson.4 Ans. 6. The Examiner concluded that it would
have been obvious to modify Schmid’s system having control programs
capable of operating with a single sized workpiece to be operable with a
plurality of different sized workpieces as disclosed by Lemelson, “in order
to provide a means to not have to send the same type of workpiece to the
same machine until reprogrammed, thereby providing an automatic
production apparatus in which the total time required to operate on a specific
workpiece is reduced.” Ans. 6.

4 While the Examiner mentions that such programming was “known in the
art”, the Examiner did not go so far as to take Official Notice.
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The issue before us is whether the Examiner’s finding that Lemelson
discloses control programs capable of operating with a plurality of different
sized workpieces as claimed is adequately supported by the reference.
While this is a close case, for the reasons that follow, we determine that the
finding is not adequately supported.
Lemelson discloses a machine tool apparatus employing “a plurality
of tool heads which may be sequentially or simultaneously automatically
controlled to perform preprogrammed operations on either the same or
different workpieces.” Lemelson, Abstract. Lemelson also discloses that “a
plurality of production machines” may simultaneously be operated on either
the same or different workpieces (Lemelson, col. 1, ll. 50-56), and that “two
or more separate machine tool units may perform predetermined operations
relative to a single workpiece or a plurality of workpieces of different sizes
and shapes” (Lemelson, col. 2, ll. 1-4). Thus, Lemelson consistently
discloses that a plurality of tools5 may work on workpieces of different sizes.
Lemelson does not explicitly disclose control programs capable of
operating a single tool (e.g., a welder carried by a robot arm) with a plurality
of different sized workpieces.
The Examiner reasons that because Lemelson’s production machines
are separately program controllable, Lemelson’s control programs are
capable of operating a single robot with a plurality of different sized
workpieces as claimed. Ans. 16-17 (citing Lemelson, col. 1, ll. 52-56; col.
1, l. 66 to col. 2, l. 4). We examine the cited portions of the reference in
turn.

5 Meaning either, “a plurality of tool heads,” “a plurality of production
machines,” or “two or more separate machine tool units.”
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In the first cited portion, Lemelson discloses:
Accordingly, it is a primary object of this invention to provide
an automatic production apparatus including a plurality of
production machines, each of which is separately program
controllable and simultaneously operable on either the same or
different workpieces whereby the total time required to operate
on a specific workpiece is substantially reduced.
Lemelson, col. 1, ll. 50-56.
The fact that each production machine is separately programmable
does not demonstrate that each production machine is capable of operating
with a plurality of different sized workpieces.
In the second cited portion, Lemelson discloses:
Another object is to provide a new and improved
automatic production apparatus having a plurality of self-
propelled machine tools movable along a common guide or
trackway and each program controllable in its operation to
operate on work from any selected location on said trackway
whereby two or more separate machine tool units may perform
predetermined operations relative to a single workpiece or a
plurality of workpieces of different sizes and shapes.

Lemelson, col. 1, l. 63 to col. 2, l. 4.
The fact that “two or more” machine tool units may perform
operations on different sized workpieces does not demonstrate that each
machine tool unit is capable of operating with a plurality of different sized
workpieces.
Consequently, the Examiner’s finding is not supported by a
preponderance of the evidence, and we agree with Appellant that Lemelson
would not have led a person of ordinary skill in the art to modify Schmid to
reach the subject matter of independent claim 25. See App. Br. 11-14.
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As such, we do not sustain the rejection of independent claim 25 and
its dependent claims 34 and 35.

Rejections II-V
Each of these rejections relies upon a third reference in conjunction
with the same combination of Schmid and Lemelson utilized for Rejection I.
Ans. 8-13. None of the additional references are relied upon to correct the
shortcoming of the Schmid and Lemelson combination explained in the
analysis of the Rejection I, supra. Accordingly, we do not sustain
Rejections II-V.

Rejection VI
Independent claim 48 is similar to claim 25 in that it calls for a
program storage area storing a control program for operation with a
particular workpiece of the plurality of different sized workpieces. The
Examiner rejected claim 48 over Schmid, Lemelson, and Toquet, and Toquet
is not relied upon to correct the deficiency of the Schmid and Lemelson
combination identified in the analysis of Rejection I.

DECISION
We reverse the Examiner’s decision to reject claims 25, 26, 30-32, 34-
46, and 48.

REVERSED

mls