Ex Parte Stuke et al

Patent Trial and Appeal Board

Feb 23, 2017

13116946 (P.T.A.B. Feb. 23, 2017)

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.
13/116,946 05/26/2011 Ingo Stuke 236293; 3052599 6555
13090 7590
Barclay Damon, LLP
Barclay Damon Tower
125 East Jefferson Street
Syracuse, NY 13202
EXAMINER
KARIM, ZIAUL
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
IPDocket@barclaydamon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INGO STUKE, MICHAEL WUESTENBECKER,
ANDREAS BEYER, HOLGER LUX, and LOTHAR HORN
Appeal 2016-008330
Application 13/116,946
Technology Center 2100
Before ERIC S. FRAHM, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—6, 9—14, and 17—20. Claims 7, 8, 15, and 16 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellants ’ Disclosed Invention
Appellants disclose a non-destructive testing system and method for
analyzing an interior portion of a part for defects using a computed
tomography (CT) scanner and computer-aided design (CAD) (Spec. 11,2;
Appeal 2010-0004498330
Application 11/496,987946
Title; Abs.; claims 1, 4, 9, 13, 14, and 18; Fig. 3). Appellants admit in the
Specification that it was known to use non-destructive testing using “testing
systems that may deploy equipment to inspect the interior of parts” (Spec.
12 (emphasis added)).
Exemplary Claim
Claims 1, 4, and 14 are independent. An understanding of the
invention can be derived from a reading of exemplary independent claim 1,
reproduced below, with emphases added:
1. A testing system for analyzing a part, said testing
system comprising:
a scanning device configured to generate a part model of
the part; and
a control unit connectable to the scanning device, the
control unit operatively configured to execute a part analysis on
an analysis model to identify whether a feature of interest is
present in the part, the analysis model incorporating the part
model from the scanning device and a reference model having a
resion definins a volume unit on the interior of the reference
model that corresponds to and surrounds a location on the part
model where the feature of interest may be found,
wherein the part analysis compares an area of the part
model with the region on the interior of the reference model,
wherein the part analysis uses test parameters that are
assigned to the region and which are indicative of the feature of
interest,
wherein the reference model comprises a three-
dimensional computer-aided design (CAD) representation of the
part.
2
Appeal 2010-0004498330
Application 11/496,987946
The Examiner’s Rejection
The Examiner rejected claims 1—6, 9-14, and 17—20 under 35 U.S.C.
§ 103(a) as being unpatentable over Rivera (US 6,341,153 Bl; issued Jan.
22, 2002) and Shannon (US 2007/0217672 Al; published Sept. 20, 2007).
Final Act. 5—15; Ans. 2—12.
Appellants ’ Contentions1
With regard to claims 1—6, 9-14, and 17—20, Appellants primarily
contend that neither Rivera, Shannon, nor the combination of Rivera and
Shannon, teaches or suggests examining the interior of a part. Appellants
assert that both Rivera and Shannon disclose, at best, examining only the
exterior of a part (see generally App. Br. 12—21; Reply Br. 2-4).
Issues on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 9—22)
and the Reply Brief (Reply Br. 2—5), the following principal issue is
presented on appeal:
Have Appellants sufficiently shown the Examiner erred because the
combination of Rivera and Shannon, taken in light of the knowledge of the
ordinarily skilled in artisan at the time of Appellants’ invention as admitted
by Appellants, fails to teach or suggest the limitations of representative
independent claim 1, including a non-destructive testing system for
1 Appellants primarily present arguments as to claims 1, 4, and 14 (App. Br.
9-21), and rely on those arguments as to the remaining claims 2, 3, 6, 9—13,
and 17—20 (App. Br. 21—22). Independent claims 1, 4, and 14 all contain
similar features drawn to a non-destructive testing system and method for
analyzing an interior portion of a part for defects. We select claim 1 as
representative of the entire group of claims rejected over the combination of
Rivera and Shannon (claims 1—6, 9—14, and 17—20).
3
Appeal 2010-0004498330
Application 11/496,987946
analyzing an interior of a part for defects?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 5—15;
Ans. 2—12) in light of Appellants’ contentions in the Appeal Brief (App. Br.
9—22) and the Reply Brief (Reply Br. 2—5) that the Examiner has erred, as
well as the Examiner’s response to Appellants’ arguments in the Appeal
Brief (Ans. 12—17). We disagree with Appellants’ contentions.
With regard to representative independent claim 1, we adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 5—7; Ans. 2-4), and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 12—17). We highlight and amplify certain
teachings and suggestions of the references as well as Appellants’ arguments
as follows.
For at least the following three reasons, we disagree with Appellants’
arguments (see generally App. Br. 12—21; Reply Br. 2-4) that neither
Rivera, Shannon, nor the combination of Rivera and Shannon, teaches or
suggests examining the interior of a part, and that both Rivera and Shannon
disclose, at best, examining only the exterior of a part.
First, we agree with the Examiner (Final Act. 6; Ans. 16—17) that
Shannon suggests examining the interior of a part in paragraph 25.
Shannon’s disclosure of non-destructively examining parts to determine
“severity, such as length of cracks, depth of erosion, size of pits, etc.” (125),
is suggestive of examining parts in three dimensions, such as a volume that
may be on an interior of a part (e.g., pits, cracks, etc.).
4
Appeal 2010-0004498330
Application 11/496,987946
Second, Rivera explicitly teaches examining the interior of a part.
Column 3, lines 36—38 (emphasis added) states: “The present invention
allows non-destructive measurement and dimensioning of the interior as
well as exterior surfaces.” Therefore, Appellants’ argument (App. Br. 13—
14; Reply Br. 4) that Rivera fails to disclose examining the interior of a part,
and thus fails to disclose a region defining a volume unit on the interior of
that part, is not persuasive.
Third, Appellants admit in the Specification (Background of Invention
section) that it was known at the time of their invention to examine the
interior of a part using non-destructive testing (Spec. 12).2
In summary, Appellants’ arguments in the Appeal Brief (App. Br. 9—
21) and Reply Brief (Reply Br. 2—5) do not convince us of the patentability
of representative independent claim 1. Accordingly, we sustain the
2 A statement by an applicant in the specification or made during
prosecution identifying the work of another as “prior art” is an admission
which can be relied upon for both anticipation and obviousness
determinations, regardless of whether the admitted prior art would otherwise
qualify as prior art under the statutory categories of 35 U.S.C. § 102.
RiverwoodInt’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir.
2003). A prior art admission should be established by reviewing the
Specification (as originally filed) and record as a whole, and determining
which disclosures and statements constitute prior art admissions. See In re
Nomiya, 509 F.2d 566, 571 (CCPA 1975); Ex parte Shirley, No. 2009-2352,
2009 WL 1317144, at *25 (BPAI 2009). In the instant case, we have
reviewed Appellants’ statement in paragraph 2 of the Specification, in light
of the record as a whole, to determine if this disclosure and statement
actually constitutes a prior-art admission. In re Nomiya, 509 F.2d at 571; Ex
parte Shirley, p. 25. Based on our review of the Specification as originally
filed, and the entire record before us on appeal, we find Appellants’
statement at paragraph 2 to be an admission that it was known at the time of
their invention to examine the interior of a part using non-destructive testing.
5
Appeal 2010-0004498330
Application 11/496,987946
obviousness rejection of representative claiml, as well as claims 2—6, 9-14,
and 17—20 grouped therewith, over the combination of Rivera and Shannon,
taken in light of the knowledge of the ordinarily skilled artisan at the time of
Appellants’ invention.
CONCLUSIONS
Appellants have not sufficiently shown the Examiner erred because
the combination of Rivera and Shannon, taken in light of the knowledge of
the ordinarily skilled in artisan at the time of Appellants’ invention as
admitted by Appellants, teaches or suggests the limitations of representative
independent claim 1, including a non-destructive testing system for
analyzing an interior of a part for defects.
DECISION
The Examiner’s rejection of claims 1—6, 9—14, and 17—20 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)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).
AFFIRMED
6