Ex parte Schwarz

• Decision Date: 25 June 2018
• Docket Number: Appeal 2016-005037,Application 13/525,066
• Parties: Ex parte JOACHIM SCHWARZ Technology Center 3700
• Court: Patent Trial and Appeal Board

Ex parte JOACHIM SCHWARZ Technology Center 3700

Appeal 2016-005037

Application 13/525, 066^[1]

United States Patent and Trademark Office, Patent Trial and Appeal Board

June 25, 2018

FILING DATE: 06/15/2012

Before STEFAN STAICOVICI, JAMES P. CALVE, and ANTHONY KNIGHT Administrative Patent Judges.

DECISION ON APPEAL

KNIGHT, Administrative Patent Judge.

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) from a Final Office Action, dated January 27, 2015 ("Final Act.") rejecting claims 1-6, 8, and 11-15. An oral hearing in accordance with 37 C.F.R. § 41.47 was held on June 19, 2018. We have jurisdiction under 35 U.S.C. § 6(b).

We REVERSE.

CLAIMED SUBJECT MATTER

The claims are directed to "an optical measuring device for monitoring a joint seam, a joining head and a laser welding head." Spec. 1:6-8. Claim 1, the sole independent claim, reproduced below, is illustrative of the claimed subject matter:

1. An optical measuring device for monitoring a joining region in a workpiece, comprising:

at least one light-section device with a first light source, which casts a light fan in a direction of the workpiece in order to create a triangulation light line within the joining region on the workpiece, the triangulation light line intersecting a joint seam in the joining region;

a first optical sensor with a first observation beam path for spatially resolved imaging of the triangulation light line projected onto the joint seam;

a second optical sensor with a second observation beam path for spatially resolved imaging of the joint seam, with the second observation beam path being coaxially coupled into the first observation beam path and with the first optical sensor and the second optical sensor using a common objective lens;

at least one first illumination module for homogeneous illumination of the joining region of the workpiece at a first angle to an optical axis of the common objective lens;

at least one second illumination module for homogenous illumination of the joining region of the workpiece at a second angle, larger than the first angle, to the optical axis of the objective lens; and

a control device, which, as a result of different actuation of the at least one first illumination module and of the at least one second illumination module at different periods of time, alternates between a dark-field and a bright-field illumination or sets a ratio of the intensities of the bright-field illumination and the dark-field illumination with respect to one another,

wherein a readout rate of the first optical sensor is greater than 1 kHz and a readout rate of the second optical sensor is less than 500 Hz.

REFERENCES

The prior art relied upon by the Examiner in rejecting the claims on appeal is:

Ogino U.S. 2003/0197791 A1 Oct. 23, 2003 Almogy U.S. 6, 671, 042 B1 Dec. 30, 2003 Schwarz U.S. 2005/0041852 A1 Feb. 24, 2005 ("Schwarz '852") Boillot et al. U.S. 2005/0247681 A1 Nov. 10, 2005 ("Boillot") Schwarz U.S. 2008/0232677 A1 Sept. 25, 2008 ("Schwarz '677") Schwarz U.S. 2009/0266989 A1 Oct. 29, 2009 ("Schwarz '989") Behr et al. U.S. 2009/0302011 A1 Dec. 10, 2009 ("Behr") Schwarz^[2] U.S. 7, 983, 470 B2 July 19, 2011 ("Schwarz '470") Peltie et al. U.S. 2011/0190639 A1 Aug. 4, 2011 ("Peltie")

REJECTIONS

The Examiner made the following rejections:

I Claims 1-6, 8, and 11-15 stand rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement.

II. Claims 1-3, 5, 8, and 11-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Boillot, Ogino, Peltie, Schwarz '470, Behr, and Schwarz '989.

III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Boillot, Ogino, Peltie, Schwarz '470, Behr, Schwarz '989, and Almogy.

IV. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Boillot, Ogino, Peltie, Schwarz '470, Behr, Schwarz '989, and Schwarz '852.^[3]

OPINION

Rejection I

Claim 1 recites, in relevant part, "at least one light-section device with a first light source," "at least one first illumination module," and "at least one second illumination module." Br. 10 (Claims App'x.). The Examiner finds that the claims are not adequately described in the Specification. Final Act. 3. Specifically, the Examiner finds that claim 1 requires three illumination sources or light sources and "only two source[s] of light or illumination are described in the specification." Id. The Examiner reiterates this position in the Examiner's Answer stating that "[t]here is no disclosure in the written description or drawings that shows a first light source having a first and second illumination module." Ans. 5.

Appellant argues that Figures 1 A, IB, 2A, and 2B illustrate at least one light source. Br. 5. Appellant further argues that Figure 4 illustrates pairs of first and second illumination modules. Id. Finally, Appellant cites to the Specification at page 7, lines 24-35 for written description support for the claimed invention. Id.

We agree with Appellant that the Specification adequately describes the invention. We make our decision based upon a review of the Specification through the viewpoint of a person having ordinary skill in the art. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) ("[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." (citing Vas-Cathlnc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991) (quoting Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)); see also In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).

The Court in Ariad Pharmaceuticals explained this test as follows:

The term "possession," however, has never been very enlightening. It implies that as long as one can produce records documenting a written description of a claimed invention, one can show possession. But the hallmark of written description is disclosure. Thus, "possession as shown in the disclosure" is a more complete formulation. Yet whatever the specific articulation, the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.

This inquiry, as we have long held, is a question of fact. Ralston Purina, 772 F.2d at 1575. Thus, we have recognized that determining whether a patent complies with the written description requirement will necessarily vary depending on the context. Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005). Specifically, the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Id. For generic claims, we have set forth a number of factors for evaluating the adequacy of the disclosure, including "the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue."

Ariad Pharmaceuticals, 598 F.3d at 1359.

Here, the invention is relatively straight forward, it is a welding head with an optical measuring device. Spec. 4:5-12. In particular, the limitation that is in question is the number of lights that may be positioned on the welding head. Final Act. 3. Appellant argues that the number of lights may be discerned by reference to the figures and in particular. Figure 4, which shows two pairs of lights 26a and 26b or at least four lights in this exemplary embodiment. Br. 5. Further, reviewing Appellant's Specification, it recites "the first light source of the light-section device and the second light source of the at least one illumination device." Spec. 7:16-18. Also, for optimum illumination, the at least one illumination device comprises "at least one first illumination module for illumination at a small angle and the at least one second illumination module for illumination at a large angle." Spec. 7:32- 35. This passage of the Specification uses the phrase "at least one" in reference to both the first and second illumination modules implying that there are multiple first and second illumination modules that may be utilized. A person having ordinary skill in the art viewing the totality of Appellant's figures and Specification would understand that there is adequate support in Appellant's Specification for the number of illumination modules and light sources recited in the claims. Accordingly, we do not sustain the Examiner's rejection of claims 1-6, 8, and 11-15 under 35 U.S.C. § 112, first paragraph.

Rejection II

Claim 1

The Examiner makes numerous findings with respect to Boillot but does not specifically state whether Boillot discloses "at least one first illumination module ... at a first angle to an optical axis" and "at least one second illumination module ... at a second angle, larger than the first angle." Br. 10 (Claims App'x.). The Examiner however, finds that Behr teaches this limitation. See Final Act. 8 ("at least one second illumination module being provided for illumination at a large angle (Fig 1, angle between laser line 17 and axis 19 is larger than angle between laser line 11 and axis 19)").

Appellant argues that "Behr teaches only a first and a second line projector 10, 16 each of which projects a laser line 11, 17 onto metal parts 5." Br. 8. Further, Appellant argues that "[t]he angle between the optical axis 19 of lens 4 and the incident laser...