Darcy Warren et al.

Patent Trials and Appeals Board

Dec 27, 2021

2020006559 (P.T.A.B. Dec. 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.
13/576,221 07/31/2012 Darcy Warren 67047-017 PUS1 4247
26096 7590 12/27/2021
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
VO, TUNG T
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
12/27/2021 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DARCY WARREN, RON BARTEL, and STEVE BARTEL
______________________

Appeal 2020-006559
Application 13/576,221
Technology Center 2400
____________________

Before ERIC S. FRAHM, CATHERINE SHIANG, and JOYCE CRAIG,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1–5 and 11–18, which constitute all pending claims on appeal.
Claims 6–10 have been canceled (see Appeal Br. 2). We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies Liqui-Force Sewer Services (Ontario) Inc., as the real party in
interest (Appeal Br. 1).
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DISCLOSED AND CLAIMED INVENTION
Appellant’s disclosed and claimed invention, entitled Pipe Lining
Preparation Assembly (see Title), “generally relates to a device for preparing
and measuring a sewer pipe prior to installation of a cured in place pipe
lining” (Spec. ¶ 2). To inspect and prepare a customer’s lateral sewer line
(see Figs. 1, 14) without digging up a homeowner’s front yard, it is desirable
to use multiple tools (see Fig. 1, tools 18, clean out tool 20, camera 22) using
access from the main sewer line (see Abstr.; Fig. 1; ¶¶ 4, 5). Accordingly,
Appellant’s disclosed and claimed invention is directed to a tow machine 25
towing plural drive modules 28 and a launch head 35 and control conduit 24
for insertion in a main sewer line 10, along with a plurality of tools 18, 20,
and 22 for follow-on insertion into a lateral sewer line 14 (see Figs. 1–3;
Spec. ¶¶ 19–23; claim 1). Each drive module 28 houses a guide bracket 60C
for routing hoses 56 and 56’ and cables 58 and 58’ (see Fig. 4; Spec. ¶¶ 30,
31; claim 1).
Claim 1 is illustrative of the claimed subject matter:
1. A sewer preparation system comprising:

a plurality of drive modules linked together, each of the
drive modules including a separately actuateable motor for
moving a corresponding one of a plurality of control conduits,
wherein each of the plurality of drive modules includes a conduit
drive mechanism driven by a corresponding motor, the drive
module comprising first and second opposing drive wheels for
frictionally driving the corresponding one of the plurality of
control conduit;
a plurality of tools corresponding with the plurality of
control conduits driven by the corresponding one of the plurality
of drive modules, each of the tools attached to an end of the
corresponding control conduit, wherein the plurality of tools
includes a cleaning tool for cleaning a sewer pipe and a camera,
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and the plurality of control conduits includes a hose supplying
water at a desired pressure to a corresponding one of the plurality
of tools and an electric conduit for communicating information
to the camera; and
a launch head coupled to the plurality of drive modules for
storing the tools, the launch head defining a passageway through
which each of the plurality of tools extends into a pipe, wherein
each of the plurality of control conduits is guided through a
guide bracket disposed in each of the plurality of drive modules,
the guide bracket guiding one of the plurality of control conduits
into driving engagement with the first and second opposing drive
wheels and the other of the plurality of conduits around the first
and second opposing drive wheels.

Appeal Br. 16 (Claims App.) (emphases added).

REJECTIONS
The Examiner made the following rejections:
(1) Claims 1–5 and 11–18 were rejected under the judicially created
doctrine of non-statutory, obviousness-type double patenting over claims 1–
10 of U.S. Patent No. 9,964,250 B2; issued May 8, 2018 (Final Act. 2–6).
Because the Examiner has withdrawn this rejection in the Answer (see Ans.
3; Reply Br. 2), we do not reach the merits or otherwise review this rejection
in our decision.
(2) Claims 1–5 and 11–18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McGrew (US 2002/0166396 A1; published Nov.
14, 2002) and Hinger (US 5,309,947; issued May 10, 1994). Final Act. 6–
11; see also Ans. 3–9.

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ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 6–
15) and Reply Brief (Reply Br. 1–10), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1–5 and 11–18 under
35 U.S.C. § 103(a) as being unpatentable over the combination of McGrew
and Hinger, because there is not proper motivation to combine McGrew and
Hinger?

ANALYSIS
We have reviewed the Examiner’s rejection (see Final Act. 6–11) in
light of Appellant’s arguments that the Examiner has erred (see Appeal Br.
6–15; Reply Br. 1–10), as well as the Examiner’s response to Appellant’s
arguments in the Appeal Brief (see Ans. 3–9). Appellant’s contentions that
the Examiner has not provided a sufficient motivation to combine McGrew
and Hinger (see Appeal Br. 6–12; Reply Br. 2–5) are persuasive. We
provide the following explanation for emphasis.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made” and that articulation
requirement “appl[ies] with equal force to the . . . motivation to combine
analysis.” In re Nuvasive, Inc., 842 F.3d 1376, 1382–83 (Fed. Cir. 2016).
When “motivation to combine . . . is disputed,” the USPTO “must articulate
a reason why a PHOSITA would combine the prior art references.” Id.; KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the
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relevant field to combine the elements in the way the claimed new invention
does.”). “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418. “The factual inquiry whether to
combine references must be thorough and searching and the need for
specificity pervades our authority on the findings on motivation to combine.”
Nuvasive, 842 F.3d at 1381–82 (bracketing, internal quotation marks, and
citation omitted). We will not resort to speculation or assumptions to cure
deficiencies in the Examiner’s fact finding or reasoning. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
With this background in mind, we turn to the Examiner’s rejection.
There is no dispute as to the individual teachings of the applied prior art (see
Appeal Br. 8–10; Final Act. 6–9). It is not disputed that McGrew teaches a
lateral sewer line inspection apparatus 10 (see Fig. 1) for (i) insertion of a
main camera 42, supply cable 22, and drive motor 36 into a main sewer line
12; and (ii) follow-on insertion of a lateral camera 44 and push rod cable 46
into a lateral sewer line 14 (see Fig. 1; ¶¶ 25–28). It is also not disputed that
Hinger teaches a high-pressure cleaning tool (see Fig. 1, water supply line
77; Fig. 6, nozzle 53; col. 7, ll 10–21; see generally cols. 5–6). Notably,
McGrew only teaches a single tool, camera 44, for insertion in a lateral
sewer line.
Based on Appellant’s arguments (see Appeal Br. 6–12; Reply Br. 2–
5), the dispositive issue is whether a person of ordinary skill in the art would
have been motivated to combine the various teachings found in the prior art
in the manner done so by the Examiner. In other words, has the Examiner
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articulated a satisfactory explanation for its action including a rational
connection between the facts found and the choice made?
Here, we agree with Appellant’s contentions that the Examiner has
not provided the requisite rationale for combing the teachings of McGrew
and Hinger (see Appeal Br. 6–12; Reply Br. 2–5). Regarding the motivation
for combining and/or modifying McGrew and Hinger, the Examiner
provides the following statement and rationale:
Taking the teaching of McGrew and Hinger together as a
whole, it would have been obvious to one of ordinary skill in the
art to modify the teachings of Hinger into the system McGrew
for the camera to capture a clear image of the sewer after
cleaning and provide accuracy location of the defect of the sewer
pipe for repairing.
Final Act. 9 (emphasis added). The rationale does not address how or why a
person having ordinary skill in the art would modify McGrew’s single-tool
system with Hinger’s cleaning tool to create a multiple-tool apparatus for
insertion into a lateral sewer line following insertion of drive modules
having routing brackets into a main sewer line, as claimed.2 Even if we
agree with the Examiner that it would have been desirable to inspect a sewer
line using a camera after cleaning, in order to accurately find a pipe defect
for repair, the Examiner provides no explanation as to how/why to modify

2 Notably, the Examiner does not adequately address how the combination
meets the recitation in claim 1 of using plural tools, conduits, and drive
modules having a guide bracket. See 37 C.F.R. § 1.104(c)(2) (“When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be designated as
nearly as practicable. The pertinence of each reference, if not apparent,
must be clearly explained and each rejected claim specified.” (emphasis
added)).

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the combined teachings of McGrew and Hinger to include routing control
conduit, hoses, and cables through drive modules using the claimed guide
bracket. We agree with Appellant’s contentions (see Appeal Br. 8, 11, 12)
that McGrew’s plural brackets 183, 148, and 168 and motors 82, 84, and 86
(see e.g., Figs. 2, 3) merely serve to orient, rotate, and tilt the lateral camera
44 (see McGrew ¶¶ 34, 39), thus do not teach or suggest “multiple drive
modules and multiple separately controllable and extendible tools” or
“routing of multiple conduits and through multiple drive modules” (Appeal
Br. 12).
The Examiner’s reasoning is too general, speculative, and is not
tailored to explaining why one skilled in the art would have seen the benefit
of adding Hinger’s cleaning tool to create a multiple-tooled apparatus to be
driven by multiple motors and having a guide bracket to guide a control
conduit along with multiple hoses and cables to drive and power the tools.
See KSR, 550 U.S. at 424 (“[t]he proper question to have asked was whether
a . . . designer of ordinary skill. . . would have seen a benefit to upgrading
Asano with a [feature from the secondary reference]”). As a result, the
Examiner has not provided “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness,” as required by
KSR. See KSR, 550 U.S. at 418.
Based on the foregoing, we find that the Examiner has not properly
established articulated reasoning with a rational underpinning to support the
legal conclusion of obviousness for claim 1, resulting in a failure to establish
a prima facie of obviousness. Thus, Appellant has overcome the Examiner’s
prima facie case of obviousness with respect to independent claim 1. As a
result, Appellant has shown the Examiner erred in rejecting claims 1–5 and
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11–18 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of McGrew and Hinger.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of sole independent claim 1, as well as
claims 2–5 and 11–18 depending therefrom.

DECISION
For the reasons explained above, we do not sustain the rejection of
claims 1–5 and 11–18 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of McGrew and Hinger.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 11–
18
103(a) McGrew, Hinger 1–5, 11–
18

REVERSED