Ex Parte Nygaard et al

Patent Trial and Appeal Board

May 16, 2018

13414081 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/414,081 03/07/2012
22045 7590 05/18/2018
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Michael G. Nygaard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GINS0164PUS 1019
EXAMINER
AHMED, JAMIL
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
05/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL G. NYGAARD
and GREGORY M. NYGAARD
Appeal2016-004254
Application 13/414,081 1
Technology Center 2800
Before JAMES C. HOUSEL, BRIAND. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4---6, 8, 11-13, 15, 16, and 19-24. We have
jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is GII Acquisition, LLC,
d/b/a "General Inspection, LLC." Appeal Br. 3.
Appeal 2016-004254
Application 13/414,081
STATEMENT OF THE CASE2
Appellants describe the invention as relating to high-speed, three-
dimensional inspection of cold formed parts such as, for example, hex-
headed bolts/threaded fasteners. Appeal Br. 3; Spec. ,r 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A high-speed, 3-D method of optically inspecting cold
formed parts which have heads, the method comprising:
supporting a cold formed part to be inspected at a loading
station;
automatically transferring the supported part so that the
part travels along a first path which extends from the loading
station to an inspection station at which the head of the part has
a predetermined position and orientation for inspection;
simultaneously and automatically illuminating a top
surface of the head and an outer peripheral surface which extends
360° around the head at the inspection station;
generating a signal indicating the part is in position for the
top surface and the peripheral surface of the head to be optically
inspected;
based on the generated signal, automatically forming an
optical image of the illuminated top surface and an optical image
of the-illuminated peripheral surface of the head at a single image
plane at the same time;
detecting the optical images at the image plane;
processing the detected optical images to obtain an end
view of the head and a 3-D panoramic view of the peripheral
surface of the head and to determine a head crack or split and to
identify a defective part having the head crack or split appearing
in the peripheral surface of the head and caused by the cold
forming; and
2 In this opinion, we refer to the Final Office Action dated December 12,
2014 ("Final Act."), the Appeal Brief filed August 17, 2015 ("Appeal Br."),
the Examiner's Answer dated February 12, 2016 ("Ans."), and the Reply
Brief filed March 8, 2016 ("Reply Br.").
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automatically transferring the part after the inspection at
the inspection station so that the inspected part travels along a
second path which extends from the inspection station to an
unloading station.
Appeal Br. Claims App. 1.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Jones, Jr. et al.
("Jones")
Simkulet et al.
("Simkulet")
Hanna
Snow et al.
("Snow")
US 7,245,759 B2
US 7,649,690 B2
US 2006/0236792 Al
US 2008/0182008 Al
July 1 7, 2007
Jan. 19,2010
Oct. 26, 2006
July 31, 2008
Yang US 2010/0278417 Al Nov. 4, 2010
Andrew Wilson, "Lens Designs Tackle Novel Vision Applications," Vision
Systems Design, July 1, 2011 ("Wilson")
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 2, 4, 8, 11-13, 15, 16, 19, 20, 22, and 23 under
35 U.S.C. § I03(a) as unpatentable over Jones in view of Hanna, Wilson,
Yang, and Simkulet. Final Act. 2.
Rejection 2. Claims 5, 6, and 21 under 35 U.S.C. § I03(a) as
unpatentable over Jones in view of Hanna, 3 Wilson, Yang, and Simkulet as
applied to claims 1 and 12 and further in view of Snow. Final Act. 10.
3 The Examiner did not explicitly refer to Hanna in stating this rejection
(Final Act. 10), but the omission is harmless because it is clear the Examiner
was adding Snow to the combination applied to claim 1.
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Rejection 3. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Jones in view of Hanna, Simkulet, Wilson, and Yang. Final Act. 12.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error except where we
otherwise explain below. Thus, except where indicated below, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejection 1, claims 1, 2, 12, and 15. Appellants argue claims 1, 12,
and 15 as a group. See Appeal Br. 21-24. Appellants also do not present a
separate argument for claim 2. Therefore, consistent with the provisions of
37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our discussion of these claims to
claim 1. Claims 2, 12 and 15 stand or fall together with claim 1.
The Examiner rejects claim 1 as unpatentable over Jones in view of
Hanna, Wilson, Yang, and Simkulet. Final Act. 2. The Examiner finds that
Jones teaches a high-speed, 3-D method for optically inspecting parts
including, for example, moving the parts to a path for inspection,
illuminating the part, and processing images to identify defective parts
having a head crack or split. Id. at 3 (citing Jones).
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The Examiner finds that Jones does not explicitly reference inspecting
and supporting "cold formed parts," but the Examiner finds that Hanna
teaches inspection of cold formed parts as known and determines that it
would have been obvious to modify the method of Jones to inspect the cold
formed parts taught by Hanna to determine whether the cold formed parts
have damage and to obtain optimum yields. Id. at 4 (citing Hanna).
The Examiner finds that Jones does not teach simultaneously
illuminating a top surface of the head and an outer peripheral surface. Id. at
5. The Examiner finds, however, that Wilson teaches capturing images 360
degrees around the head and forming an optical image of the top and
peripheral surface. Id. ( citing Wilson). The Examiner determines it would
have been obvious to employ the imaging of Wilson in Jones in order to
minimize the number of cameras necessary while providing a converging
view of an object to determine numerous manners of damage for the
advantage of optimum yields. Id.
The Examiner finds that Jones also does not explicitly teach
generating a signal indicating a part is in position for inspection. Id. The
Examiner finds, however, that Yang teaches generating such a signal and
inspecting based on the signal. Id. at 6 ( citing Yang). The Examiner
determines that it would have been obvious to employ the teaching of Yang
in the method of Jones as modified by Wilson "in order to make [the] system
more efficient for the advantage of saving time and system memory." Id.
The Examiner further finds that Jones does not explicitly teach 3-D
imaging. Id. The Examiner finds, however, that Simkulet teaches optically
inspecting parts including 3-D imaging. Id. at 6-7 (citing Simkulet). The
Examiner determines that it would have been obvious to apply the teachings
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of Simkulet to the method of Jones as modified by Wilson and Yang in order
to determine disfigurements of the fastener and to determine degree of
damage. Id. at 7-8.
Appellants first argue that Jones does not teach illumination of "the
top surface of the head and an outer peripheral surface." Appeal Br. 10; see
also Reply Br. 8. As explained above, however, the Examiner relies on
Wilson as teaching this point. Appellants do not persuasively dispute that
Wilson teaches this point (id. at 15) and do not persuasively dispute the
Examiner's stated rationale as to why a person of skill in the art would have
combined the teachings of Jones and Wilson. As such, this argument does
not identify reversible error. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) ("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.").
Appellants similarly argue that Yang does not transmit a signal that a
part is in position for its top surface and peripheral surface to be inspected.
Appeal Br. 15-16. The Examiner, however, relies on Wilson for inspection
of both the top and peripheral surface. The Examiner makes use of Yang's
teaching to send a signal when a part is ready for inspection. Ans. 9-10. It
is the combination of references that would have made obvious a "signal
indicating the part is in position for the top surface and the peripheral surface
of the head to be optically inspected" ( as recited in claim 1 ). Appellants'
argument does not identify error because it does not persuasively refute the
Examiner's findings concerning Yang or the Examiner's stated rationale for
combining the teaching of Yang with the other cited references.
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Appellants argue that Snow4 does not enable "apparatus controller 84"
(Appeal Br. 20), that Jones does not enable 3-D inspection (Appeal Br. 23-
24), and that Simkulet would not enable the claimed invention (Appeal Br.
24). See also Reply Br. 9-10. "'[A] prior art printed publication cited by an
examiner is presumptively enabling barring any showing to the contrary by a
patent applicant."' In re Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013) (quoting
In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012)). Where, as
here, an applicant has challenged the enablement of a cited reference, we
review all evidence and applicant argument to determine if the prior art
reference is enabling. Id.; Antor Media, 689 F.3d at 1292.
To the extent Appellants are arguing that each of these references
does not enable or teach all recitations of claim 1 ( or, for Snow, claim 5), the
argument is unpersuasive because the argument does not squarely address
the Examiner's combination of references or rationale for combining
references. The Examiner readily agrees that, for example, Jones does not
teach all recitations, but this is not pertinent to whether all recitations would
have been obvious in view of the combined teachings of the references.
To the extent Appellants argue that each reference does not enable the
teaching the Examiner relies on making the rejection and/or argues that the
Examiner's stated combination of teachings would not be enabled by the
combined art, the argument is unpersuasive because Appellants do not
adequately explain why a person having ordinary skill in the art would not
have been able to implement the relevant teaching of any reference or would
4 We are mindful that the teachings of Snow were applied principally to the
rejection of claims 5, 6, and 21. Final Act. 10-12. However, for brevity, we
address the common issue of non-enablement raised with respect to Snow,
Jones, and Simkulet together.
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not have been able to combine the teachings of the art in the manner
proposed by the Examiner without undue experimentation. Appellants'
arguments are distinguished from, for example, In re Morsa, 713 F.3d at
110, because Appellants provide no specific, concrete reasons why the
references are non-enabling. The mere fact that, for example, Snow does not
describe the apparatus control 84 in detail (Appeal Br. 20) does not
necessarily mean that a person of skill in the art would not have been able to
implement such a controller with a reasonable expectation of success and
without undue experimentation.
Appellants also argue that the Examiner has not adequately explained
why a person of skill in the art would have had motivation to combine the
teachings of the cited references. Appeal Br. 21. Appellants argue that the
Examiner's "rote recital of 'Therefore, it would have been obvious ... , '
fails to meet the requirement of articulated reasoning with rational
underpinning." Id. at 23. As explained above, however, the Examiner
provided a rationale as to why a person of skill in the art would have had
reason to combine each of the references' teachings that the Examiner relies
upon. Appellants' argument ignores, rather than attempting to refute, the
stated rationales. Accordingly, the argument is not persuasive.
Appellants also argue that Simkulet is non-analogous art. Simkulet,
however, is concerned with the problem of improving imaging of parts for
inspection. Ans. 14--15; Simkulet 3:53-56 ("The optical system can be ...
enlarged for pipe inspection or other large-scale inspection
implementations."). Simkulet is analogous art at least because it is in the
same field of endeavor of both the present invention and of Wilson (part
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inspection) and because it is reasonably pertinent to the problem of
improving part inspection.
In the Reply Brief, Appellants further argue that it is improper for the
Examiner to assume that a person having ordinary skill in the art would be
knowledgeable of all material prior art in his field of endeavor. Appeal Br.
3. Our reviewing Court, however, has explained that
[a] reference qualifies as prior art for an obviousness
determination under § 103 only when it is analogous to the
claimed invention. . . . Two separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal citations and
quotes omitted). Appellants have not persuasively argued that any of the
cited art is non-analogous. Appellants' argument is thus not persuasive.
Because Appellants' arguments do not identify reversible error, we
sustain the Examiner's rejection of claims 1, 2, 12, and 15.
Rejection 1, claim 4. Claim 4 recites, "[t]he method as claimed in
claim 1, wherein the loading station is spaced away from the unloading
station." Appellants argue that Figure 6 of Jones does not teach this
recitation. The Examiner finds, however, that Figure 6 depicts a loading
station at 310 spaced away from a loading station at 300. Ans. 15.
Appellants argue that 300 is a "bin" and 310 is a "rotating tray" (Appeal Br.
25), but Appellants do not explain why these elements are not also a loading
station and unloading station. Appellants direct us to no special meaning of
"loading station" and "unloading station" that distinguish the recited
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language from Jones. Rather, the loading station and unloading station of
the Specification appear to be the same or similar to those identified by the
Examiner in Jones as they are merely places where parts are
loaded/unloaded before and after inspection. Appeal Br. 6-7; Spec. Fig. 5,
,r,r 49, 57 (indicating that the loading and unloading stations are part of the
system's wheel). Appellants' argument thus does not identify error.
Rejection 1, claims 8, 11, 16, 19, 20, and 22. Appellants rely on the
arguments raised as to claims 1 and 12. Appeal Br. 25. Those arguments
are unpersuasive for the reasons explained above.
Rejection 1, claim 13. Claim 13 recites, "[t]he system as claimed in
claim 12, wherein the lens and the detector assembly includes a hypercentric
or pericentric lens subsystem and wherein the lens subsystem provides a
converging 3-D panoramic view of the peripheral surface of the head."
Appeal Br. Claims App. 3. The Examiner finds that Wilson teaches these
recitations and provides a rationale for combining this teaching with Jones.
Final Act. 8-9.
Appellants argue that Jones does not teach all recitations of claim 13
and dependent claim 12. Appeal Br. 26. The Examiner's rejection,
however, is based not on Jones alone but on a combination of references.
Therefore, this argument does not identify error.
Appellants also argue that the Examiner does not provide a motivation
for combining the teachings of the different references. Id. The Examiner,
however, states that a person of skill in the art would have combined the
relevant teaching of Wilson with Jones "in order to minimize the number of
cameras necessary while still providing a converging view of an object such
that the top and sides of the object can be imaged simultaneously." Final
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Act. 8-9. Appellants do not persuasively dispute the Examiner's stated
rationale and therefore do not identify reversible error.
Rejection 1, claim 23. Claim 23 recites, "[t]he system as claimed in
claim 22, wherein the metering wheel is optically transparent to permit the
head to be imaged by the backlight through the metering wheel." Appeal Br.
Claims App. 4. The Examiner finds that Jones does not teach a transparent
metering wheel. The Examiner states:
[I]t is considered within the level of someone of ordinary skill in
the art to manufacture a metering Wheel from a transparent material
such as plexiglass or a hard transparent plastic in order to take image
therethrough. Such transparent materials are often used to provide
windows to view an object or machinery and can also help to alleviate
the size and weight of a piece of machinery, as a transparent plastic part
often weighs less that its metallic counterpart.
Therefore, it would have been obvious to one having an ordinary
skill in the art at the time of invention to create the metering wheel out
of a transparent material in the system of Jones in order to decrease the
weight of an object as well as to be able to view the object within the
metering wheel.
Final Act. 9-10; see also Ans. 16.
Appellants argue that the rejection is flawed because the Examiner
does not support the findings above with documentary evidence. Appeal
Br. 2 7; see also Reply Br. 10-11. Appellants' argument is persuasive. The
Examiner's rejection of claim 23 requires a core factual finding that use of
an optically transparent metering wheel was known in the art. This issue is
not peripheral to the claim and does not relate to something so commonly
known that the assertion can be supported without further evidence. In re
Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001) ("With respect to core factual
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findings in a determination of patentability, however, the Board cannot
simply reach conclusions based on its own understanding or experience----or
on its assessment of what would be basic knowledge or common sense.
Rather, the Board must point to some concrete evidence in the record in
support of these findings."). Accordingly, we do not sustain the Examiner's
rejection of claim 23.
Rejection 2, claim 5. Appellants argue that the Examiner's rejection
is in error because it is dependent from claim 1 and because Snow does not
enable an apparatus controller. Appeal Br. 29--30. These arguments are
unpersuasive for the reasons explained above.
Rejection 2, claim 6. Claim 6 recites, "[t]he method as claimed in
claim 1, wherein the first and second paths define a curved path and wherein
each of the stations is located along the curved path." Appeal Br. Claims
App. 2. Appellants argue that Snow lacks such a curved path. Appeal Br.
20-21, 29--30. The Examiner, however, finds that Jones teaches the curved
path. Ans. 11 (citing Jones). Appellants do not dispute this finding of fact,
and Appellants' argument therefore does not identify reversible error.
Appellants also argue that the art does not teach a metering wheel.
Appeal Br. 30. Claim 6 does not recite a metering wheel.
Rejection 2, claim 21. Claim 21 recites "[t]he system as claimed in
claim 20, wherein the transfer mechanism includes a metering wheel."
Appeal Br. Claims App. 4. Appellants argue that Snow lacks a "metering
wheel" and argue that, according to the Specification, the recited metering
wheel "meter[ s] the fasteners from the track mechanism 3 6 to engagement
with the conveyor system 18." Appeal Br. 21. Appellants' argument is not
supported by the evidence. Snow explicitly teaches a metering wheel. Ans.
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11-12 (citing Snow Fig. 1, ,r 23). Moreover, Appellants do not dispute the
Examiner's stated rationale as to why a person of skill in the art would have
combined the metering wheel of Snow with the teachings of the other cited
references. Id. at 12. Accordingly, this argument does not identify
reversible error.
To the extent Appellants also rely on arguments raised as to
independent claim 12 for claim 21 ( Appeal Br. 25), the argument is
unpersuasive for the reasons explained above.
Rejection 3, claim 24. Claim 24 is an independent system claim.
Appellants raise arguments similar to those addressed above. Appeal Br.
31-32. As explained above, those arguments are unpersuasive.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1, 2, 4---6, 8, 11-13, 15, 16, 19-22, and 24. We reverse the
Examiner's rejection of claim 23.
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
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