Ex Parte Steinbichler et al

Patent Trial and Appeal Board

Feb 25, 2013

11314181 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/314,181 12/20/2005 Marcus Steinbichler LSG05326 4512
50488 7590 02/26/2013
ALLEMAN HALL MCCOY RUSSELL & TUTTLE LLP
806 SW BROADWAY
SUITE 600
PORTLAND, OR 97205-3335
EXAMINER
WANG, JACK K
ART UNIT PAPER NUMBER
2682
MAIL DATE DELIVERY MODE
02/26/2013 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCUS STEINBICHLER,
ROMAN BERGER, JORG COLLREP,
and RAINER HUBER
____________

Appeal 2011-001488
Application 11/314,181
Technology Center 2600
____________

Before MAHSHID D. SAADAT, DENISE M. POTHIER, and
JEFFREY S. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001488
Application 11/314,181

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4-12, 14-19, and 21-32, which are all the claims
remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
Claim 1. A method of testing a component, wherein the component is
tested using a test sensor whose position is sensed, wherein the position of
the test sensor is sensed using a tracking system, wherein test results
determined by the test sensor are associated with associated locations in the
component to be tested, and wherein the test results associated with the
locations in the component to be tested are spatially resolved test results
including spatially resolved structural information of the component
indicating at which points of the component an actual quality deviates from
a desired quality.

Prior Art
Chen US 5,920,383 July 6, 1999
Pryor US 2002/0023478 A1 Feb. 28, 2002
Poropat US 2002/0049530 A1 Apr. 25, 2002
Maidhof US 2003/0112448 A1 June 19, 2003
Schroeder US 2004/0234025 A1 Nov. 25, 2004

Examiner’s Rejections
Claims 1, 2, 4, 5, 7-10, 18, 19, 21, 22, 24, 25, 31, and 32 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Pryor and
Schroeder.
Claims 6, 11, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pryor, Schroeder, and Poropat.
Appeal 2011-001488
Application 11/314,181

3
Claims 12, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pryor, Schroeder, and Chen.
Claims 14-16 and 28-30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pryor, Schroeder, and Maidhof.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pryor, Schroeder, Maidhof, and Chen.

ANALYSIS
Section 103 rejection of claims 1, 2, 4, 5, 7, 9, 10, 18, 19, 21, 22, 24,
25, 31, and 32
Appellants contend that Pryor has nothing to do with testing structural
information of locations in a component. App. Br. 12-14. In particular,
Appellants contend that Pryor measures external dimensions of an object,
but does not teach test results determined by the test sensor are associated
with locations in the component to be tested. Reply Br. 2-4.
Appellants’ contention is based on the premise that measuring the
locations of surfaces, edges, or holes of a component as taught by Pryor (see
Ans. 4, citing ¶¶ 4 and 33; see also Fig. 4 and ¶¶ 48, 63) is somehow
different from “test results determined by the test sensor are associated with
associated locations in the component to be tested” as recited in claim 1. We
are not persuaded that results concerning the surface, edge, or hole of the
component of Pryor are not “associated with associated locations in the
component” within the meaning of claim 1. We interpret the scope of “test
results determined by the test sensor are associated with associated locations
Appeal 2011-001488
Application 11/314,181

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in the component to be tested” as encompassing measuring the locations of
surfaces, edges, or holes of a component as taught by Pryor.
1

Further, the Examiner relies on Schroeder to teach “test results …
associated with associated locations in the component.” One cannot show
non-obviousness by attacking references individually, where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants contend that combining the x-ray sensors of Schroeder
with the photo-grammatic system of Pryor renders Pryor inoperable for its
intended purpose because Pryor’s sensor tracking methods do not work with
Schroeder’s CT scanner. App. Br. 15-18; Reply Br. 6-7. The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. The test is
what the combined teachings of those references would have suggested to
those of ordinary skill in the art. Keller, 642 F.2d at 425. The intended
purpose of Pryor is determining the location of and calibrating a sensor
during a test. See ¶¶ 2, 18, 19, 59, 63 and Fig. 4. Schroeder teaches an x-ray
sensor that tests locations internal to a component. See Abstract. Testing
internal locations of an object using the x-ray sensor of Schroeder while
determining the location of the x-ray sensor using the photo-grammatic
system of Pryor is the combination of familiar elements according to known
methods that yields the predictable result of determining the locations of the
x-ray sensor’s test results.

1
In the event of further prosecution, the Examiner should consider whether
Pryor alone describes each limitation of claim 1 (see, for example, Fig. 4 and
¶ 63).
Appeal 2011-001488
Application 11/314,181

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In addition, we find that Schroeder teaches a coordinate measuring
instrument that measures the coordinates of an object using two cameras (see
¶¶ 27, 120, 122, 127). The x-ray sensor and the coordinate measuring
instrument are integrated into a single device as shown in Figure 1. We find
that using the two cameras in the coordinate measuring instrument of
Schroeder to determine the location of Schroeder’s sensor as taught by Pryor
is the combination of familiar elements according to known methods that
does no more than yield the predictable result of spatially resolving test
results of the x-ray sensor.
Appellants contend that Schroeder does not teach a spatially resolved
link between the sensed positions of the test sensor and the sensor readings
because the test sensor of Schroeder does not move. Reply Br. 4-5.
However, Figure 1 of Schroeder shows that the component moves relative to
the test sensor. Appellants have not provided persuasive evidence or
argument to distinguish moving the component relative to the test sensor
from moving the test sensor relative to the component. Appellants’
contention is also inconsistent with paragraph 3 of Schroeder, which
suggests moving the sensor relative to the component, or vice versa, for
testing internal locations of an object.
Further, claim 1 does not require the test sensor to move; claim 1 only
requires “the position of the test sensor is sensed using a tracking system.”
Because Figure 1 and paragraph 67 of Schroeder show the position of the
component is sensed relative to the position of the sensor using a tracking
system, Schroeder teaches “the position of the test sensor” relative to the
component “is sensed using a tracking system” within the meaning of claim
1. We find that Appellants’ contention that Schroeder does not teach a
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Application 11/314,181

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spatially resolved link between the sensed position of the test sensor and the
sensor readings is inconsistent with Schroeder’s Figure 1 and corresponding
written description in paragraphs 67 and 114-128.
2

Moreover, Pryor teaches tracking the position of the test sensor to
account for position changes of the sensor due to temperature fluctuations.
Abstract. Using the cameras in the coordinate measuring instrument of
Schroeder to determine the location of Schroeder’s sensor as taught by Pryor
is the combination of familiar elements according to known methods that
does no more than yield the predictable result of spatially resolving test
results.
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants
have not presented arguments for separate patentability of claims 2, 4, 5, 7,
9, 10, 18, 19, 21, 22, 24, 25, 31, and 32 which fall with claim 1.

Section 103 rejection of claim 8
Appellants contend that a system utilizing both a photo-grammatic
system and a CT scanner would not be obvious. App. Br. 18. We disagree
for the reasons given by the Examiner in the Final Rejection and Examiner’s
Answer. Further, Appellants’ argument is inconsistent with Figure 1 and
paragraphs 27 and 120 of Schroeder, which suggest both cameras and a CT
scanner integrated into one single device. Pryor suggests that the cameras of
Schroeder can be photo-grammatic cameras.
We sustain the rejection of claim 8 under 35 U.S.C. § 103.

2
In the event of further prosecution the Examiner should determine whether
Schroeder alone describes each limitation of claim 1 (see, for example, Fig.
1 and ¶¶ 114-128).
Appeal 2011-001488
Application 11/314,181

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Section 103 rejection of claims 6, 11, and 23
Appellants rely on the arguments presented for claim 1, which we find
unpersuasive, to support patentability of claims 6, 11, and 23. We sustain
the rejection of claims 6, 11, and 23 under 35 U.S.C. § 103.

Section 103 rejection of claims 12, 26, and 27
Appellants rely on the arguments presented for claim 1, which we find
unpersuasive, to support patentability of claims 12, 26, and 27. We sustain
the rejection of claims 12, 26, and 27 under 35 U.S.C. § 103.

Section 103 rejection of claims 14-16 and 28-30
Appellants rely on the arguments presented for claim 1, which we find
unpersuasive, to support patentability of claims 14-16 and 28-30. We
sustain the rejection of claims 14-16 and 28-30 under 35 U.S.C. § 103.

Section 103 rejection of claim 17
Appellants rely on the arguments presented for claim 1, which we find
unpersuasive, to support patentability of claim 17. We sustain the rejection
of claim 17 under 35 U.S.C. § 103.

DECISION
The rejection of claims 1, 2, 4, 5, 7-10, 18, 19, 21, 22, 24, 25, 31, and
32 under 35 U.S.C. § 103(a) as being unpatentable over Pryor and Schroeder
is affirmed.
The rejection of claims 6, 11, and 23 under 35 U.S.C. § 103(a) as
being unpatentable over Pryor, Schroeder, and Poropat is affirmed.
Appeal 2011-001488
Application 11/314,181

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The rejection of claims 12, 26, and 27 under 35 U.S.C. § 103(a) as
being unpatentable over Pryor, Schroeder, and Chen is affirmed.
The rejection of claims 14-16 and 28-30 under 35 U.S.C. § 103(a) as
being unpatentable over Pryor, Schroeder, and Maidhof is affirmed.
The rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Pryor, Schroeder, Maidhof, and Chen is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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