The Boeing Company

Patent Trials and Appeals Board

Oct 27, 2021

2020004546 (P.T.A.B. Oct. 27, 2021)

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.
14/680,293 04/07/2015 Brian J. Tillotson 14-1708-US-
NP (24691-823)
1054
60476 7590 10/27/2021
PATENT DOCKET DEPARTMENT
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
SUH, JOSEPH JINWOO
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
10/27/2021 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte BRIAN J. TILLOTSON, ROBERT PAUL HIGGINS, and
ANDREJ MARTIN SAVOL
_______________

Appeal 2020-004546
Application 14/680,293
Technology Center 2400
_______________

Before ROBERT E. NAPPI, NORMAN H. BEAMER, and
MICHAEL T. CYGAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 through 2, 4 through 5, 7, 8, 10, 14 through 16, and 19.
Claims 6, 9, 11, 12, 17, and 20 have been identified as reciting allowable
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, The Boeing Company
is the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosed and claimed invention relates to an apparatus for use in
inspecting a wire segment. Abstract. Claim 1 is reproduced below.
1. An apparatus for use in inspecting a first
inspection zone and a second inspection zone defined at
different lengths along a single wire segment, said apparatus
comprising:
a guide tube comprising a side wall fabricated from an at
least partially transparent material, said guide tube sized to
receive the single wire segment; and
an array of mirrors positioned about said side wall of said
guide tube, wherein each mirror in said array is oriented such
that:
a reflection of the single wire segment in said array
of mirrors forms a circumferential view of the first
inspection zone and the second inspection zone of the
single wire segment positioned within said side wall;
the reflection from each mirror is within a field of
view from a single vantage point; and
a length of a first optical path from the first
inspection zone to the single vantage point is
substantially similar to a length of a second optical path
from the second inspection zone to the single vantage
point,
wherein the single vantage point is coaxially aligned with
a centerline of said guide tube.

EXAMINER’S REJECTIONS2
The Examiner rejects claims 1, 2, 4, 5, 8, 10, 14 through 16, and 19
under 35 U.S.C. § 103 as unpatentable over Ondo (US 2015/0336767 A1;

2 Throughout this Decision, we refer to the Appeal Brief filed September
18, 2019 (“Appeal Br.”); Reply Brief filed January 3, 2020 (“Reply Br.”);
Non-Final Office Action mailed June 18, 2019 (“Non-Final Act.”); the
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pub. Nov. 26, 2015), Nomoto (US 6,279,215 B1; iss. Aug. 28, 2001), Onaka
(JP 2000-241363 A; pub. Sept. 8, 2000) (as translated) and Pison (US
2013/0293706 A1; pub. Nov. 7, 2013). Non-Final Act. 3–13.3
The Examiner rejects claim 7 under 35 U.S.C. § 103 as unpatentable
over Ondo, Nomoto, Onaka, Pison, and Otsuka (US 2008/0036969 A1; pub.
Feb. 14, 2008). Non-Final Act. 13–14.

ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, Reply
Brief, the Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejections of the claims 1, 2, 4, 5, 7, 10, 14 through 16, and 19
under 35 U.S.C. § 103, but Appellant has persuaded us of error in the
Examiner’s rejection of claim 8 under 35 U.S.C. § 103.
Independent claims 1, 10, and 15
With respect to the rejection of independent claims 1, 10, and 15,
Appellant argues the Examiner has not established a proper rationale to
combine the teachings of Ondo, Nomoto, Onaka, and Pison. Appeal Br. 4–
12, Reply Br. 2–3. Appellant asserts the rationale to combine is in error for
four reasons which we address in order presented.
Initially, Appellant argues that Ondo cannot be modified by the
teachings of the other references as it would render it unsuitable for its
intended purpose. Appeal Br. 7. Appellant asserts that:

Examiner’s Answer mailed October 11, 2019 (“Ans.”); and the Specification
filed April 7, 2015 (“Spec.”).
3 The Examiner withdrew the rejection of claims 6, 9, 12, and 20. Ans. 15,
21, 22.
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Ondo is directed to a wire guidance system that feeds a wire
segment from a wire guide channel immediately into a
processing station (e.g., using compressed air to support the
wire segment). Incorporating a single vantage point for
viewing reflections from a mirror array into such a system
coaxially aligned with the wire guide would prevent the wire
from being fed into the processing station, rendering the wire
guidance system of Ondo unsuitable for its intended purpose of
feeding a wire.
Appeal Br. 7.
The Examiner has provided a comprehensive response to Appellant’s
arguments, including a figure, to depict how the coaxial mirror arrangement
of Onaka can be used to inspect the wire in the wire guidance system of
Ondo. Ans. 16.
Appellant’s arguments directed to the first assertion, which focus on
Ondo have not persuaded us combining Ondo’s wire guidance system with a
coaxial mirror inspection system would render Ondo unsuitable for its
intended purpose. The purpose of Ondo’s system is to provide a wire guide,
which can be used to guide wire to a wire processing device. Ondo Abstr.,
¶ 17. Appellant has not identified how an inspection of the wire renders the
guide unsuitable for its intended purpose, further, Nomoto, which teaches a
wire processing device, identifies that such devices include inspection
components. Nomoto Abstr., col. 5, ll. 48–52. Further, the Examiner has
provided a diagram showing how the inspection system, such as Onaka’s
coaxial system, can be arranged with Ondo’s wire guide, showing that it
does not interfere with the wire guide. We concur with the Examiner’s
depiction. As such, Appellant’s arguments have not persuaded us that the
Examiner’s combination of the references renders Ondo unsuitable for its
intended purpose.
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Appellant’s second assertion is that the skilled artisan would not
modify Ondo’s wire guidance system with Nomoto’s automatic wire cutting
and termination process as it is not needed. Appeal Br. 8. Appellant asserts
that there is no benefit or advantage of adding the system and that as such
there is no reason or motivation to apply Nomoto’s system to Ondo. Appeal
Br. 8.
The Examiner responds to Appellant’s arguments identifying that the
benefit of combining Ondo and Nomoto is that it would provide automatic
wire cutting and terminating. Ans. 17–18.
Appellant’s arguments directed to the second assertion have not
persuaded us of error in the Examiner’s rejection. As identified by
Appellant, Ondo teaches the wire guide can be used with a wire processing
device. Appeal Br. 8.4 Specifically, Ondo teaches that the wire guide can be
used with a wire processing device that can perform operations such as
cutting, stripping, applying seal, and crimping a terminal on the wire (i.e.,
cutting and terminating the wire). See Ondo ¶ 17. However, we do not find
that this would discourage using Ondo’s wire guide with another system
such as the automated system of Nomoto. As identified by the Examiner,
this has the advantage of automating the cutting and terminating. Further,
we consider this combination to be a mere substitution of one wire cutting
and terminating system for another known wire cutting and terminating
system. “[T]he mere substitution of one element for another known in the

4 In as much as Appellant’s assertion is directed to the modification of Ondo
such that the wire guide is transparent as is taught in Nomoto (col. 5, l. 38),
we are not persuaded as Ondo, also teaches that the wire guide can be glass
or plastic, which are materials which are commonly transparent.
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field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing U.S. v. Adams,
383 U.S. 39, 50–51 (1966)). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. Accordingly, Appellant’s arguments
have not persuaded us the Examiner erred in concluding the skilled artisan
would combine Ondo’s wire guide with Nomoto’s automatic wire cutting
and terminating device.
Appellant’s third assertion is that the Examiner has not established a
proper motivation to combine the inspection apparatus of Onaka with the
wire guide of Ondo. Appeal Br. 9. Appellant argues that Ondo, alone or as
modified by Nomoto has no need for an inspection system, and the
Examiner has not identified a problem that would be improved by an
inspection system. Appeal Br. 9.
We are not persuaded by Appellant’s arguments directed to the third
assertion. The Examiner finds that Onaka has the advantage of providing
inspection of the circumference of an object using a single camera. Non-
Final 5. As discussed above with respect to the first and second assertions,
the use of Nomoto’s wire processing system into Ondo represents the mere
substitution of known elements. Further, Nomoto teaches that wire
processing devices include inspection components.5 Nomoto col. 5, ll. 48–
52. Similarly, Onaka teaches a system to inspect a circumferential surfaces,
using one camera and a mirror system. Thus, we consider using Onaka’s
system to also be the combination of familiar elements according to a known

5 We note that the known purpose of the inspection system is to confirm the
condition of the item being inspected.
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function to provide the improvement of allowing for circumferential
inspection of the wire As such Appellant’s arguments have not persuaded us
the Examiner erred in concluding the skilled artisan would combine Onaka’s
inspection system with Ondo and Nomoto.
Appellant’s fourth assertion is that the Examiner’s rationale to
combine Pison’s teaching with Onaka to reduce cost by removing mirrors
16a–c of Figure 2, is improper as the Examiner fails to identify a problem
that would lead the skilled artisan to apply the teachings of Pison. Appeal
Br. 10, 11.
The Examiner’s rejection identifies that the combination of Ondo,
Nomoto, and Onaka does not explicitly teach a single vantage point
coaxially aligned with the centerline of the guide tube, and relies upon Pison
to teach a single vantage point (image sensor) coaxially aligned with the
centerline of the item under inspection. Non-Final Act. 5. The Examiner
reasons in so aligning the image sensor with the centerline of the item under
inspection, mirrors 16a–c of Onaka’s inspection would not be needed and
the resulting combination would result in a cost savings (fewer parts) thus
motivating the skilled artisan to make the modification. Ans. 19–20.
We are not persuaded by Appellant’s arguments directed to the fourth
assertion. Initially, we note representative claim 1 recites that the single
vantage point, which provides a view of the reflection of each mirror, is
coaxially aligned with the centerline of the guide tube. The Examiner in
applying Pison, is interpreting the vantage point as the image sensor, or
camera. Non-Final Act. 5. However, we are not persuaded that the claim is
that narrow and we consider the vantage point as claimed to be broad
enough to be a point at which the field of view of all the mirrors can be
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viewed. When the claim is construed in this manner, Onaka, teaches this
limitation as the mirror 22 in Figure 2 is at a vantage point coaxially aligned
with the centerline of the item under inspection. Nonetheless, applying the
Examiner’s interpretation we are not persuaded of error in the Examiner’s
rejection as the rejection does not need to Pison to meet the claim. Onaka, in
Figure 3, depicts an arrangement where the camera (item 15) is coaxial with
the item under inspection (bottle cap item 2). Thus, regardless of whether
the Examiner provided a proper motivation to use the teachings of Pison we
are not persuaded of error as we consider the claimed vantage point to be
taught by Onaka. The Board may rely on less than all of the references
applied by the Examiner in an obviousness rationale without designating it
as a new ground of rejection. In re Boyer, 363 F.2d 455, 458 n.2 (CCPA
1966) (citing In re Bush, 296 F.2d 491, 496 (CCPA 1961))
As we are not persuaded by any of the four reasons Appellant asserted
the Examiner erred in combing the teachings of Ondo, Nomoto, and Onaka,
we sustain the Examiner’s rejection of claim 1 and claims 2, 4, 10, and 14
through 16 grouped with claim 1.

Dependent claims 5 and 19
With respect to the rejection of dependent claims 5 and 19, Appellant
argues “[n]o combination of Ondo, Nomoto, Onaka, and Pison describes or
renders obvious a first plurality of mirrors and a second plurality of mirrors
that are offset from the first plurality of mirrors relative to the single vantage
point.” Appeal Br. 13. Further Appellant argues that Onaka’s mirrors 12c–d
are not offset from mirrors 12a–b and that “to be ‘offset relative to the single
vantage point,’ the first and second plurality of mirrors must be axially or
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longitudinally offset.” Appeal Br. 13–14.
The Examiner responds to Appellant’s arguments stating:
A definition of “offset” in Merriam-Webster dictionary is “to
create an equal balance between two things.” The placement of
the mirrors is done in a way to create equal balance among
them. Thus, the mirrors meet the claim language of the
“offset.” It appears that Appellant’s conception on the “offset”
is “not in the same axial or longitudinal plan,” and if so, the
claim language must include the language of “not in the same
axial or longitudinal plan” to argue in that way. Current
language does not include it, thus, the argument is not based on
the actual claim language.
Ans. 20.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection. We adopt the Examiner’s interpretation of offset
relative to the single vantage point as being equal balance between two
things and concur with the Examiner that in Onaka mirrors 12a–b are offset
from 12c–d (see Figs. 2 and 3a–c). We decline to import the term “axially
or longitudinally” into the claim as argued by Appellant in the Brief.
Similarly, we decline to import the alternative interpretation of the term
“offset” as meaning positioned at a “different location ‘relative to
centerline’” which Appellant proffered in the Reply Brief. Reply Br. 4
(citing examples in ¶¶ 38, 39 of the Specification). While it is true that we
must interpret the claims in light of the Specification we do not import
limitations not recited into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993). Thus, as Appellant’s arguments are not
commensurate with the broadest reasonable interpretation of the claim, we
are not persuaded of error and sustain the Examiner’s rejection of claims 5
and 19.
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Dependent claim 8
With respect to the rejection of dependent claim 8, Appellant argues
the combination of Ondo, Nomoto, Onaka, and Pison does not teach the
claim 8 limitation directed to the plurality of mirrors being orientated such
that the optical path from the inspection zone to the vantage point has a
partially helical trajectory. Appeal Br. 16.
The Examiner responds to Appellant’s arguments by providing a
drawing depicting an optical path when the devices of Onaka and Ondo are
combined. Ans. 21. Further, the Examiner describes the drawing as
showing:
the light path from the wire to the mirror 22. The light comes
from the wire (114 in the diagram) and goes into the mirror 12a
and then reflected by the mirror 12a and then goes to the mirror
22. The light goes around the wire and moves to the direction
of the wire (in the diagram, the light goes into the page). The
term “helical” is defined as “having the form of helix” and
“helix” is defined as “the shape formed by a line that curves
around and along a central line.” The diagram shows the light
path curves around the wire and along a central line. Note that
the light paths in the Appellant’s Specification goes in the same
way. Thus, the Onaka reference teaches the limitation in the
Claim.
Ans. 22.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. The Examiner has presented insufficient evidence to demonstrate
that the light path would be helical as claimed and depicted in the proffered
drawing (on page 21 of the Answer). Specifically, the Examiner has not
shown a disclosure in any of the references which teach or suggest an
arrangement of the mirrors such that optical path “goes around the wire and
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moves to the direction of the wire” as the Examiner states on page 22 of the
Answer. Similarly, the implication by the Examiner that the arrangement in
the prior art is the same as Appellant’s is incorrect, the Appellant’s
Specification identifies that the helical path is caused by an arrangement
where the mirrors are angled from the centerline. The Examiner has not
shown that the references include such an arrangement. Accordingly, we do
not sustain he Examiner’s rejection of claim 8

Dependent claim 7
With respect to the rejection of dependent claim 7, Appellant argues
the Examiner’s rejection of claim 7 based upon the combination of Ondo,
Nomoto, Onaka, Pison and Otsuka is in error for the same reasons a
discussed with respect to claims 1 and 5. Further, Appellant asserts that
Otsuka does not remedy the deficiencies noted in the rejection of claims 1
and 5.
As discussed above we are not persuaded of error in the Examiner’s
rejection of claims 1 or 5. Accordingly, we sustain the Examiner’s rejection
of claim 7 for the same reasons as discussed with respect to claims 1 and 5.

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CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed
1, 2, 4, 5,
8, 10, 14–
16, 19
103 Ondo,
Nomoto,
Onaka, Pison
1, 2, 4, 5, 10,
14–16, 19
8
7 103 Ondo,
Nomoto,
Onaka, Pison,
Otsuka
7
Overall
Outcome
1, 2, 4, 5, 7,
10, 14–16, 19
8
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)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED IN PART