Ex parte Pryor

Board of Patent Appeals and Interferences

Jan 13, 2000

08161304 (B.P.A.I. Jan. 13, 2000)

Application for patent filed December 2, 1993. According1
to appellant, this application is a continuation of
Application 07/848,937, filed March 10, 1992, now abandoned;
which is a continuation of Application 07/509,295, filed April
16, 1990, now U.S. Patent No. 5,112,131; which is a
continuation of Application 07/042,527, filed April 27, 1987,
now U.S. Patent No. 5,012,574; which is a continuation of
Application 06/767,374, filed August 20, 1985, now abandoned;
which is a continuation of Application 06/560,259, filed
December 12, 1983, now U.S. Patent No. 4,559,684; which is a
continuation of Application 03/238,702, filed February 21,
1981, now abandoned.
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(2) is not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TIMOTHY R. PRYOR
__________
Appeal No. 1997-2981
Application 08/161,3041
__________
ON BRIEF
__________
Before KRASS, FLEMING, and FRAHM, Administrative Patent
Judges.
Appeal No. 1997-2981
Application No. 08/161,304
2
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 39 and 41 through 50, all of the claims pending in the
application.
The invention pertains to manufacturing methods for
producing an object with a desired contour, for shaping
manufactured parts and for assembly of parts.
Representative independent claim 39, directed to
producing an object with a desired contour, is reproduced as
follows:
39. A method of producing an object with a desired
contour, comprising the steps of:
a) rapidly, accurately, and on-line, electro-
optically determining the existing contour of said object;
b) providing, on a surface of said object, a marking
containing information related to said existing contour
as determined in step a); and
c) utilizing said information contained in said
marking to control the production of said object.
The examiner relies on the following references:
Idelsohn et al. 4,149,089 Apr. 10, 1979
(Idelsohn)
Pryor et al. 4,373,804 Feb. 15, 1983
(Pryor)
Appeal No. 1997-2981
Application No. 08/161,304
3
Claims 39 and 41 through 50 stand rejected as
alternatively anticipated under 35 U.S.C. 102(b) by Idelsohn
or under 35 U.S.C. § 102(e) by Pryor.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
At the outset, we note that the examiner has been of
little help in particularly explaining the rejections on
appeal. A mere statement that claims stand rejected “as being
clearly anticipated by” a particular reference, without any
further rationale, such as pointing out corresponding elements
between the instant claims and the applied reference, fails to
clearly make out a prima facie case of anticipation.
Nevertheless, we will sustain the rejection of claim 39
and its dependent claim 46 under both 35 U.S.C. § 102(b) and
§ 102(e). However, we will not sustain the rejections of
claims 41 through 45 and 47 through 50 under either 35 U.S.C.
§ 102(b) or § 102(e).
Turning first to the rejection of claim 39 under 35
U.S.C.
Appeal No. 1997-2981
Application No. 08/161,304
4
§ 102(b), while we certainly understand the difference between
the instant disclosed invention and that taught by Idelsohn,
it is our view that the language of instant claim 39 is of
such broad nature as to read on Idelsohn. Idelsohn clearly
discloses a method for producing an object (a cut board or
boards) with a desired contour (i.e., the shape of the board)
by “rapidly, accurately, and on-line, electro-optically
determining the existing contour of said object” (Idelsohn
uses an optical scanner for “rapid and accurate [column 4,
lines 4-5] determination of the defects, their type and
location,” i.e., the “existing contour” of the object is
determined). Then, a “mark” is provided on the surface of the
object [column 3, line 60] and this mark contains “information
related to said existing contour as determined in step a).”
That is, the mark contains information as to where a cut
should be made and the position of the cut is clearly “related
to said existing contour” in the sense that the size and shape
of the board will determine where the cut or cuts should be
made for optimum use of the board. Finally, Idelsohn utilizes
the information contained in the marking, i.e., the mark used
for cutting, “to control the production of said object.” That
Appeal No. 1997-2981
Application No. 08/161,304
5
is, using the mark in Idelsohn, the cut or cuts are made and
the cut pieces of lumber constitute the “production of said
object.”
Appellant’s arguments regarding scanning the mark, the
mark being simply the output of a computer after determination
of a proper cutting location and the mark not actually
containing any information are unpersuasive. Claim 39 does
not preclude the “marking” from being the output of a
computer, nor does the claim require the marking to be
scanned. With regard to containing information, as explained
supra, the mark in Idelsohn certainly does “contain
information” as to where the cut or cuts should be made in
order to produce the object. In accordance with the broad
claim language, it does not matter that it is the position of
the mark in Idelsohn which offers this information rather than
a bar code, as envisioned by appellant.
Turning now to the rejection of claims 39 and 46 under 35
U.S.C. § 102(e), it is our view that Pryor also anticipates
the instant claimed invention, as broadly set forth.
Appellant does not dispute that Pryor discloses a method
for electro-optically determining the dimension of part
Appeal No. 1997-2981
Application No. 08/161,304
6
surfaces nor that Pryor discloses the use of bar codes and
orientation codes to assist a robot in picking up or
maneuvering a part properly. However, appellant argues that
Pryor does not disclose attaching any code to the part which
contains information related to the determined contour of the
part. We disagree. If Pryor identifies a part, which it
clearly must for the robot to know what part is being
maneuvered, then since a given part has a given contour, it
can be reasonably stated that the contour of that part is
known. While the computer program in the robot need not
identify which part is which [column 13, lines 33-34], the bar
code part type is indicative of the part and, hence, its
contour. Thus, the marking contains information, even if only
implicitly, related to the existing contour of the object.
Appellant argues that Pryor discloses the placement of a
bar code or orientation code on the part surface “before” any
action is taken with respect to the part. Even if true, it is
not clear how this is precluded by the instant claim language.
With regard to dependent claim 46, this claim merely
requires the contour to be “three dimensional.” Since the
parts in Pryor and the lumber in Idelsohn are clearly three
Appeal No. 1997-2981
Application No. 08/161,304
7
dimensional objects, this claim limitation is met.
With regard to claims 41-45 and 47-50, we will not
sustain the rejection of these claims under 35 U.S.C. § 102.
Each of these claims requires, in one form or another, “a
further shaped part” or “interaction” of first and second
parts in some manner. Idelsohn is concerned with only one
“part,” viz, a board to be cut. Pryor is concerned with one
part at a time and that part is not used in any manner to
manufacture a “further shaped part.” Neither reference is
concerned with any interaction between first and second parts.
Moreover, the examiner never comes to grips with these
specific claim limitations. They are not addressed in the
statement of the rejection of these claims and they are not
addressed in the response to appellant’s arguments section of
the answer. The only response that comes close to addressing
these claim limitations appears at page 4 of the answer where
the examiner talks about the marks on the lumber in Idelsohn
containing information and that this accumulated
“...information which describes a piece of lumber is used to
select a further object or piece of lumber for future
production.” The examiner then goes on to contend that
Appeal No. 1997-2981
Application No. 08/161,304
8
certain practices are known in the lumber industry. However,
we find no suggestion in either Idelsohn or Pryor for
providing a “further shaped part” from the utilization of the
determined contour of the first shaped part, as claimed. The
examiner has failed to particularly point out how each and
every claimed element is met by the applied references.
We have sustained the rejection of claims 39 and 46 under
both 35 U.S.C. § 102(b) and § 102(e) but we have not sustained
the rejection of claims 41 through 45 and 47 through 50 under
either 35 U.S.C. § 102(b) or § 102(e). Accordingly, the
examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
Appeal No. 1997-2981
Application No. 08/161,304
9
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Eric Frahm )
Administrative Patent Judge )
tdl
Appeal No. 1997-2981
Application No. 08/161,304
10
LARSON & TAYLOR
Transpotomac Plaza
1199 North Fairfax St., Suite 900
Alexandria, VA 22314