Ex Parte Renke

Patent Trial and Appeal Board

Aug 26, 2016

12534687 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/534,687 08/03/2009
81466 7590 08/26/2016
MacMillan, Sobanski & Todd, LLC - GM
One Maritime Plaza
720 Water Street
5th Floor
Toledo, OH 43604
FIRST NAMED INVENTOR
David T. Renke
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.
P005607-NAPD-LDA 1072
EXAMINER
KOEHLER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3726
MAILDATE DELIVERY MODE
08/26/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte DAVID T. RENKE
Appeal2014-008431
Application 12/534,6871
Technology Center 3700
Before EDWARD A. BROWN, JASON W. MEL VIN, and
PAUL J. KORNICZKY, Administrative Patent Judges.
MELVIN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from a rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).
1 Appellant identifies GM Global Technology Operations LLC as the real
party in interest. Appeal Br. 1.
Appeal2014-008431
Application 12/534,687
BACKGROUND
The claims are directed to a torque monitoring assembly gun with
integral vision system. Claim 1, reproduced below, is illustrative:
1. A system for forming an assembly from a plurality of
automobile members and at least one mechanical fastener,
said mechanical fastener having an optimal torque in
relation to said assembly and forming an optimal joint in
relation to the assembly, said system comprising:
a fastening device in communication with a processor and
operated by a controller as directed by the processor, said
fastening device configured to provide torque data to said
processor;
said processor adapted for retrieving data from a data
storage device containing data related to the assembly
and selected from the list including characteristic data,
torque data and joint data;
a rotation sensor in communication with said processor and
adapted for recording visual information related to the
rotation of the fastening device relative to the assembly
and transmitting said recorded visual information to said
processor; whereby said processor compares said stored
data with said transmitted data, and
said controller, through said fastening device, configured to
operate said fastening device to provide torque to said
mechanical fastener until said torque data corresponds to
said optimal torque and said visual information relating
to the rotation of the fastening device corresponds to said
joint data.
Appeal Br. 9 (Claims App.).
2
Appeal2014-008431
Application 12/534,687
REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Morden (US 2007/0180674 Al, pub. Aug. 9,
2007) and Sargent (US 5,321,506, iss. June 14, 1994). Final Act.
2-5.
2. Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Morden, Sargent, and Paulsen (US 6,522,777
Bl, iss. Feb. 18, 2003). Final Act. 5.
DISCUSSION
Claims 1 and 5-9
The Examiner finds that Morden substantially teaches claim l's
limitations but "does not explicitly teach that the rotation sensor is in
communication with the processor and adapted for recording visual
information related to assembly and transmitting said recorded visual
information to said processor." Final Act. 3 (emphasis added). For the
rotation sensor using visual information, the Examiner relies on Sargent.
Though Sargent uses a sensor that measures a threaded fastener's translation
along its axis of rotation (Sargent 6:58-7:19), the Examiner finds that "the
measurement inherently provides information as to the amount the fastening
device rotated the first part onto the second part." Final Act. 3.
Regarding the combination of Morden and Sargent, the Examiner
reasons that a person of ordinary skill would have "incorporated the visual
rotation sensor of Sargent into the fastening system of Morden ... to provide
an additional joint verification system," noting, in particular, that "slight
3
Appeal2014-008431
Application 12/534,687
irregularities in threads or out-of-roundness of the fastener can lead to spikes
in the torque which exceed the reference value, causing the system to
erroneously identify the proper torque (Sargent, col. 7, lines 40-54) and the
secondary visual system can confirm proper tightening." Final Act. 4.
Appellant first challenges the Examiner's finding that Morden
teaches "a rotation sensor in communication with [the] processor." Appeal
Br. 5 (quoting Final Act. 3). We agree with the Examiner, however, as
Morden teaches that its apparatus can "log the tightening result for every
hole," and that those results include "the final torque and angle achieved
during the installation." Morden ,-i 87; see Ans. 6.
Appellant also argues that Morden only discusses rotation of the
fastener, not the fastening device, as claimed. Appeal Br. 5; Reply Br. 2.
The Examiner responds that for Morden to function according to its intended
purpose, the fastening device's rotation must be the same as the rotation of
the fastener itself. Ans. 7. We agree that the most logical view of Morden
supports that Morden monitors the fastening device to indicate the fastener's
rotation. Thus, Appellant's arguments regarding a distinction between a
fastener's rotation and that of a fastening device do not apprise us of error in
the rejection.
According to Appellant, "Sargent does not make up for this deficiency
as it also does not teach or suggest anything relating to recording
information related to the rotation of a fastening device." Appeal Br. 5.
Here also, we are persuaded that a preponderance of the evidence supports
that Sargent teaches a linear sensor that "acts, through the processor, as a
rotational sensor." See Ans. 7-8; Final Act. 3. Sargent teaches a vision
system to determine "the precise number of turns of coupling rotation
4
Appeal2014-008431
Application 12/534,687
required to move coupling" into the desired position. Sargent 7:29-34.
Thus, Appellant's argument regarding Sargent measuring linear rather than
rotational position (Appeal Br. 5-6; Reply Br. 3) does not apprise us of error
in the rejection of claim 1. For claims 5 and 6, Appellant relies on the same
arguments made for claim 1. Appeal Br. 6. Similarly, for claims 7-9,
Appellant offers no arguments beyond those for claim 1. See Appeal Br. 8.
Accordingly, we sustain the rejections of claims 1 and 5-9.
Claim 2
Claim 2 depends from claim 1 and further recites that the system
includes "a tension sensing device." Appeal Br. 9 (Claims App.).
The Specification states that "[ d]iscussion of tension sensing methods
is disclosed in U.S. Patent No. 4,738,145, which is hereby incorporated by
reference." Spec. ii 25. That incorporated' 145 patent discusses monitoring
a fastener's torque. E.g., '145 patent 1:6-8. As far as we can determine, it
does not separately discuss sensing tension. Accordingly, by incorporating
the '145 patent and not otherwise discussing tension measurement,
Appellant has effectively disclosed a "tension sensing device" as
synonymous with a torque-sensing device.
Appellant argues that "[n]either Morden nor Sargent sense tension."
Appeal Br. 7. The Examiner cites Morden paragraph ii 87 as supporting that
Morden teaches a tension sensing device. Final Act. 4. Morden states that
its system can record the "final torque ... achieved during the installation."
Morden ii 87. In light of the Specification linking "tension sensing" with
"torque sensing," we agree with the Examiner that Morden teaches a
tension-sensing device as claimed.
5
Appeal2014-008431
Application 12/534,687
Accordingly, we sustain the rejection of claim 2.
Claims 3 and 4
Claims 3 and 4 depend from claim 1 (directly or indirectly) and
further recite that the "rotation sensor further includes a projector for
propagating light across [the] assembly." Appeal Br. 10 (Claims App.).
Appellant argues that the Examiner mistakenly finds that Sargent teaches
such a projector when the Examiner reasons that "there must be sufficient
lighting for the cameras 46a, 46b to monitor the joint." Appeal Br. 7 (citing
Final Act. 4). The Examiner does not respond. We agree with Appellant.
Even assuming sufficient light in Sargent for the cameras to operate, that
alone does not teach the presence of "a projector for propagating light
across" an assembly. Nor would it be appropriate in this instance to rely on
common sense for concluding the claimed projector would have been
obvious. See Arendi S.A.R.L. v. Apple Inc., No. 2015-2073, 2016 WL
4205964 (Fed. Cir. Aug. 10, 2016).
Accordingly, we do not sustain the rejection of claims 3 or 4.
NEW GROUND OF REJECTION
Although we do not sustain the Examiner's rejection of claims 3 or 4
based on a combination of Morden and Sargent, we conclude that the subject
matter of claims 3 and 4 would have been obvious in light of Morden,
Sargent, and Paulsen. As the Examiner determined (for Rejection 2) and we
adopt, a person of ordinary skill in the art at the time of invention would
have "incorporated the improved imaging system of Paulsen into the system
of Morden/Sargent in order to provide automated, high-speed, three-
6
Appeal2014-008431
Application 12/534,687
dimensional and accurate inspection of the fastening." Final Act. 5 (citing
Paulsen, col. 3, lines 1-16). We further determine that a person of ordinary
skill in the art would have incorporated Paulsen's projector to ensure
adequate illumination for the imaging system. Paulsen teaches using a
projector for propagating light across the assembly, as claims 3 and 4 recite.
Final Act. 5; Ans. 6; e.g., Paulsen 5:40--47, 7:48-53. For all other aspects of
the rejection, we adopt the Examiner's findings and reasoning regarding
Morden and Sargent. See Final Act. 2--4; Ans. 2-5. Accordingly, a person
of ordinary skill in the art at the time of invention would have found the
subject matter of claims 3 and 4 obvious. Thus, we enter a new ground of
rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Morden, Sargent, and Paulsen, pursuant to 37 C.F.R. § 41.50(b).
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
1, 2, and 5-9. We reverse the Examiner's rejection of claims 3 and 4 and
enter a new ground of rejection for claims 3 and 4, pursuant to 37 C.F.R.
§ 41.50(b).
Section 41.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides (emphasis added):
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
7
Appeal2014-008431
Application 12/534,687
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
8