Ex parte Means et al.

Board of Patent Appeals and Interferences

Mar 17, 1999

08239732 (B.P.A.I. Mar. 17, 1999)

Application for patent filed May 9, 1994. According to1
the appellants, the application is a continuation-in-part of
Application 07/959,700, filed October 13, 1992, now U.S.
Patent 5,311,023, issued May 10, 1994.
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not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ORVILLE D. MEANS, ROBERT W. LECLAIR,
and DAVID S. FURUNO
__________
Appeal No. 96-4194
Application 08/239,7321
___________
ON BRIEF
___________
Before HAIRSTON, BARRETT and RUGGIERO, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5, 7 through 12 and 14 through 19. In an Amendment
Appeal No. 96-4194
Application 08/239,732
2
After Final (paper number 8), claims 1 through 5, 12 and 15
through 18 were amended. As a result of this amendment, the
examiner stated
(paper number 9) that claims 2 through 5, 16 and 18 are
allowed, and that claim 10 is objected to. Accordingly,
claims 1, 7 through 9, 11, 12, 14, 15, 17 and 19 remain before
us on appeal.
The disclosed invention relates to a filter inspecting
apparatus for inspecting generally tubular filters for holes.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A filter inspecting apparatus for inspecting
generally tubular filters, comprising:
a support frame;
mounting means mounted on said support frame for mounting
a substantially tubular filter having inner and outer surfaces
for rotation about its axis;
EMR generating means mounted on said support frame for
generating and directing electromagnetic radiation;
a rotatable multifaceted mirror positioned for receiving
electromagnetic radiation directly from said generating means
and directing said electromagnetic radiation in a continuous
sweep directly onto and along one of said inner and outer
surfaces of the filter;
Appeal No. 96-4194
Application 08/239,732
3
EMR sensing means mounted adjacent to the other of said
inner and outer surfaces for sensing EMR passing through said
filter and generating a signal responsive thereto; and
indicator means responsive to said signal for indicating
passage of EMR through the filter.
The references relied on by the examiner are:
Merlen et al. (Merlen) 4,247,204 Jan. 27,
1981
Everroad 4,279,508 July 21,
1981
West et al. (West) 4,323,311 Apr. 6,
1982
Claims 1, 7 through 9, 11, 12, 14, 15, 17 and 19 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Everroad in view of West and Merlen.
Reference is made to the final rejection, the brief and
the answer for the respective positions of the appellants and
the examiner.
OPINION
The obviousness rejection is sustained as to claims 1, 7
through 9 and 11, and is reversed as to claims 12, 14, 15, 17
and 19.
Everroad discloses a method and apparatus for inspecting
paper air filters 14 for leaks or holes. A rotatable table 11
Appeal No. 96-4194
Application 08/239,732
4
with a hole in the center supports the filter 14 (Figure 1).
An electric lamp 12 is mounted on a rod 13 that provides
vertical movement to the lamp through the hole in the table
and inside the filter. The light that shines through leaks or
holes in the filter is visually scanned by the operator of the
testing apparatus via monocular optical device 20. The area
around the inspection apparatus is darkened by curtains 25 and
26.
West discloses a multifaceted rotating mirror 14 (Figures
1 and 2) that directs a beam of radiation from a laser 11 onto
a tin plate strip 10 via lens 25 and mirrors 17, 53 and 54.
The
beam of radiation is scanned across the tin plate strip 10,
and any radiation that passes through holes in the tin plate
strip 10 is detected by an array of perspec light guides 22
which direct the light to a photomultiplier 36.
Merlen discloses a laser scanner 10 that uses a
multifaceted mirror 14 (Figure 1) to direct a beam of
radiation onto a moving web of material 30 without any
Appeal No. 96-4194
Application 08/239,732
5
intervening optics. A photomultiplier 36 picks up radiation
that reveals where flaws are on the web.
The examiner’s rejection (Answer, pages 3 and 4) is as
follows:
Everroad scans the filter by moving the light
source, but it would have been obvious to provide
the scanning by using a laser beam and a rotating
multifaceted mirror, such as taught by West et al,
so that the beam could be moved rapidly and
uniformly across the surface of the object being
inspected. It would also have been obvious to use
non-image detecting means so that automatic
inspection could be achieved. Automatic inspection
would have avoided operator fatigue as well as
allowing for more rapid and reliable inspection.
Merlin et al is cited as a teaching reference to
show that direct direction of the beam from the
scanner to an object is old in the inspection art,
with the choice depending on intended use and the
size of the holes to be detected. In modifying the
Everroad invention to use a rotating, multifaceted
scanner, it would have been obvious to use an
elongated detecting means extending across the width
of the object, such as shown by Merlen et al, so
that all portions of the scanned areas could be
detected without having to move the detecting means.
It would have been obvious that such elongate
detecting means could have
been provided by using a single elongated detector or a
plurality of detectors, with the choice depending upon
desired extent of the detection area, cost, and desired
resolution. The use of rollers to rotate an object is
well known.
Appeal No. 96-4194
Application 08/239,732
6
Appellants’ arguments (Brief, pages 6 through 8)
concerning the shortcomings in the teachings of each of the
applied references are not convincing of the nonobviousness of
the claimed invention because one cannot show nonobviousness
by attacking the references individually where the rejection
is based on a combination of references. The test for
obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference. Nor is it that the claimed invention must
be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the
references would have suggested to the skilled artisan. In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Thus, appellants’ arguments (Brief, pages 4 through 10) to the
contrary notwithstanding, we are of the opinion that the
examiner has presented convincing lines of reasoning for
replacing the movable lamp of Everroad with a multifaceted
mirror as taught by West for the advantage of rapidly and
uniformly scanning a surface for holes (Answer, pages 3, 5 and
6), and for replacing a human observer as taught by
Appeal No. 96-4194
Application 08/239,732
7
Everroad with an automatic inspection system for the advantage
of rapid and reliable inspection, and to avoid eye fatigue on
the part of the human observer (Answer, pages 3, 5 and 6).
Although West uses optical elements between the laser 11 and
the tin plate strip 10, Merlen recognizes that the laser beam
can be directed onto the scanned surface without the
intervening optics. For the advantage of a simpler scanning
system, it would have been obvious to one of ordinary skill in
the art to replace the scanner of West with the much simpler
scanning system disclosed by Merlen (Answer, pages 3 and 6).
We are also in agreement with the examiner that the choice of
a plurality of detectors as disclosed by West in the form of a
plurality of perspec light guides 22 (Figure 1), or a single
detector as disclosed by Merlen in the form of a pickup
receiver 36 (Figure 2) depends upon "desired extent of the
detection area, cost, and desired resolution" (Answer, pages 3
and 4).
In view of the foregoing, the obviousness rejection of
claims 1, 7 and 9 is sustained. The obviousness rejection of
claims 8 and 11 is likewise sustained because of appellants’
grouping of the claims (Brief, page 4).
Appeal No. 96-4194
Application 08/239,732
8
Turning to claims 12, 14, 15, 17 and 19, "the examiner
maintains her position that rollers are commonly used to
rotate
an object and takes judicial notice that she has known of such
use for decades" (final rejection, page 5). In response to
the taking of judicial notice, appellants requested either a
reference or a declaration executed by the examiner to support
the proposition that such rollers were well known in the art
(Brief, page 9). "Allegations concerning specific ‘knowledge’
of the prior art . . . should also be supported and the
appellant similarly given the opportunity to make a
challenge." In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418,
420-21 (CCPA 1970). As indicated in 37 CFR § 1.104(d)(2):
When a rejection in an application is based on
facts within the personal knowledge of an employee
of the Office, the data shall be as specific as
possible, and the reference must be supported, when
called for by the applicant, by the affidavit of
such employee, and such affidavit shall be subject
to contradiction or explanation by the affidavits of
the applicant and other persons.
Inasmuch as the examiner has not responded to appellants’
Appeal No. 96-4194
Application 08/239,732
Our reversal of the obviousness rejection is based on2
procedural grounds, and has nothing to do with the accuracy of
the examiner’s conclusion (Answer, page 4) concerning the use
of rollers to rotate an object. We note in passing that
Everroad uses roller bearings 29 (Figure 3) to rotate the
filter 14 via table 11.
9
challenge with either a reference teaching or a declaration
executed by the examiner, we must reverse the obviousness
rejection of claims 12, 14, 15, 17 and 19.2
DECISION
The decision of the examiner is affirmed as to claims 1,
7 through 9 and 11, and is reversed as to claims 12, 14, 15,
17 and 19.
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-IN-PART

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
Appeal No. 96-4194
Application 08/239,732
10
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
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