Ex Parte 7296503 et al

Patent Trial and Appeal Board

Dec 30, 2014

95001970 (P.T.A.B. Dec. 30, 2014)

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.
95/001,970 04/13/2012 7296503 154-11-318 4394
7590 12/31/2014
ALAN MCGRATH
4400 WEST LAKE AVE.
APT. 201B
GLENVIEW, IL 60026
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/31/2014 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
____________________

UNITED STATES
Requester, Appellant

v.

ALAN T. McGRATH
Patent Owner, Respondent
____________________

Appeal 2014-008255
Reexamination Control 95/001,970
US Patent No. 7,296,503 B11
Technology Center 3900
____________________

Before: STEVEN D. A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued on November 20, 2007 to Alan Thomas McGrath (hereinafter
referred to as the '970 patent).
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Reexamination Control 95/001,970
US Patent No. 7,296,503 B1

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STATEMENT OF THE CASE
Requester appeals under 35 U.S.C. §§ 134(b) and 315(a) from the
Examiner’s non-adoption of various proposed rejections of claims 5 and 7.
App. Br. 1. We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b).
We are informed that the '970 patent is the subject of litigation in McGrath
v. United States, Case No. 11-318, pending in the United States Court of
Federal Claims, which is currently stayed pending the resolution of this
reexamination. App. Br. 1.
We REVERSE.

THE INVENTION
Patent Owner's invention is directed generally "to an apparatus and
method for neutralizing explosive devices and to a mobile unit for
performing the method." Spec., col. 1, ll. 9-11. Claim 5 and its non-
appealed parent claim 1, reproduced below, are illustrative of the claimed
subject matter:
1. A non-marine apparatus for exploding explosive devices
or rendering them inoperable comprising:
a) a truck for carrying an electrical engine-generator;
b) an electrical circuit connected to said electrical engine-
generator;
c) a first end of a front lead of said electrical circuit
connected to a first terminal of said engine-generator;
d) a second end of said front lead completing the circuit
into a surface at a front end of said truck;
e) electricity flowing from said engine-generator through
said front lead into said explosive device;
f) a first end of a second lead of the said electrical circuit
connected to a second terminal of said engine-generator; and
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US Patent No. 7,296,503 B1

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g) a second end of said second lead being in contact with
the surface.
5. Apparatus as in claim 1 wherein the circuit is a single
wire earth return circuit.

REFERENCES
The prior art relied upon by the Requester in proposing rejection of
the claims on appeal is:
Bushman
Green
Hutmacher
Bitar
Lundquist
US 5,982,180
US 6,250,260 B1
US 6,371,000 B1
US 7,400,487 B1
US 7,987,760 B1
Nov. 9, 1999
June 26, 2001
Apr. 16, 2002
July 15, 2008
Aug. 2, 2011

THE WITHDRAWN REJECTIONS ON APPEAL
The Requester proposed the following rejections, which were
originally adopted, but then subsequently withdrawn by the Examiner:
1. Claims 5 and 7 under 35 U.S.C §102(e) as being anticipated by
Lundquist. App. Br. 3.
2. Claims 5 and 7 under 35 U.S.C §103(a) as being unpatentable
over Lundquist alone or in combination with either of Bushman or Green.
Id.
3. Claim 5 under 35 U.S.C §102(b) as being anticipated by
Hutmacher. Id.
4. Claim 5 under 35 U.S.C §102(b) as being anticipated by
Bushman. Id.
5. Claims 5 and 7 under 35 U.S.C §103(a) as being unpatentable
over Bushman and Bitar. Id.
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US Patent No. 7,296,503 B1

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ANALYSIS
Prosecution History
The Requester provides a detailed summary of the prosecution history
in this case, which we will summarize briefly because it provides context to
the present appeal. See App. Br. 4-9. Initially, a first examiner rejected all
pending claims during the reexamination, which at that time were claims 1-
7, over various combinations of the art cited above. See App. Br. 5-7. After
the Patent Owner submitted a response with additional claims 8-11, a new
examiner withdrew all rejections of claims 5 and 7, but maintained the
rejections of claims 1-4 and 6 over Hutmacher alone or in combination with
Bushman or Green, and also rejected the newly added claims 8-11. App. Br.
8. The new examiner interpreted certain language of claims 5 and 7 to
require an additional element not found by the first examiner, namely a
direct contact of the front lead with the ground-earth-soil. See, e.g., App. Br.
16. The Patent Owner accepted the Examiner's decision without further
argument and the Requester then appealed the non-adoption of the
aforementioned rejections of claims 5 and 7. See App. Br. 8-9.
Anticipation by Lundquist
Requester argues that the second examiner erred in withdrawing, inter
alia, the rejection of claims 5 and 7 over Lundquist. App. Br. 8. Looking at
the figures of the '970 patent and Lundquist, it is clear that these two patents
disclose very similar devices and are, for all practical purposes,
differentiated only by the fact that Lundquist teaches a front Tesla device,
while the '970 device teaches a front wire lead directly contacting the
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ground. Figure 1 of the '970 patent and Figure 16 of Lundquist are
reproduced below.

The above image is Figure 1 of the '970 patent and shows a mine-exploding
apparatus having a front lead 35 and a rear lead 36 that drag on the ground.

The above image is Figure 16 of Lundquist and shows a mine-exploding
device having a rear lead 711 that drags on the ground and a front lead 706
that emits a spark 707 to complete the circuit to the ground/mine 712/104.
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According to the Requester, the Examiner improperly reads "in an
unclaimed requirement that the 'front lead' of claim 1 and the 'first lead' of
claim 7 be in direct contact with the ground-earth-soil" in order to withdraw
the rejection of Lundquist. App. Br. 16. As the Requester points out (App.
Br. 19), the Examiner found, regarding Lundquist, that "the leads do not
contact the same surface nor are they inherently capable of such operation in
the configurations given." RAN 8.
A review of claims 1 and 7 shows that claim 1 requires "a second end
of said front lead completing the circuit into a surface at a front end of said
truck," while method claim 7 requires the step of "connecting a single wire
earth return circuit to said engine-generator" and "terminating a first lead of
said circuit to a ground at a front end of said truck." We see nothing in these
claim limitations that requires the direct contact as found the Examiner.
As to claim 1, this claim requires only that the circuit be
"complet[ed]…into" a surface at a front end of the truck. Although
Lundquist teaches a tesla coil that uses a spark 707 jumping the gap between
probe 706 and the ground/mine (Fig. 16), this is still a complete circuit,
which falls within the language of claim 1. The Examiner states that he
"does not contest the fact that electricity or current flows in Lundquist[,]
only that the leads do not contact the same surface." RAN 8. In determining
that the Examiner has misconstrued the claims, we point out that part of
claim 1 does explicitly require direct contact as to the second/rear lead by
reciting "a second end of said second lead being in contact with the surface."
Given this explicit requirement of direct contact relating to the second lead,
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we agree with the Requester that the broader language in claim 1 referring to
the first/front lead does not require the same direct contact.
With respect to claim 7, we likewise conclude that the step of
"terminating a first lead of said circuit to a ground" does not require any
direct connection to the ground, but merely requires the first lead be
terminated and complete the circuit in a similar manner as that recited in
claim 1. Accordingly, the Examiner erred in requiring that the claims
require direct contact between the front lead.
Requester also argues, and we agree, that even if the claims were to
require direct contact, Lundquist is capable of achieving such contact, for
example when traversing up hills. App. Br. 25. Because the probe 706 is
fixed in front of the vehicle, as the vehicle approaches an upwardly sloping
surface, the probe is capable of contacting the ground. In addition, any
rough surface having piles of dirt or rubble in the area of the probe could
likewise result in direct contact with the ground. Accordingly, we also
disagree with the Examiner that Lundquist is not inherently capable of
achieving such direct contact.
Lastly, we turn to the requirement in claim 5 that the circuit comprises
"a single wire earth return circuit," also known as a SWER, or phantom
loop. By way of stating that it is clear that current flows through the circuit
in Lundquist, the Examiner does not appear to argue that Lundquist fails to
show a SWER, only that certain limitations of claim 1 are missing. A
SWER or phantom loop is a term of art that refers to a circuit that is
completed via the ground or earth. In the case of Lundquist, current flows
out of probe 706 and into the ground/earth via spark 707 and the circuit is
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completed through ground 712 via rear lead 711. Fig. 16. Accordingly,
Lundquist discloses the claimed SWER.
The Patent Owner argues that Lundquist fails to show a SWER, but
appears to rely on the fact that there is no direct contact with the front lead
and the ground, similar to the argument above with respect to claim 1. See,
e.g., Resp. Br. 6-7. Our understanding of a SWER, or phantom loop, is not
that this term requires direct contact between the front connection and the
ground, but only that the circuit be completed via the ground, which is what
is taught in Lundquist. See Reply Br. 6. Accordingly, we are not persuaded
that the limitation of claim 5 is missing from Lundquist. Thus, we reverse
the Examiner's non-adoption of Rejection 1 (claims 5 and 7 based on
Lundquist), and enter the rejection denominating it as a New Ground. See
37 C.F.R. § 41.77(b).
Obviousness over Lundquist
The Examiner's basis for withdrawing the obviousness rejections over
Lundquist alone or in combination with either of Bushman or Green also
relies on the faulty claim construction requiring direct connection of the
front lead to the ground. See, RAN 8. Accordingly, we also reverse the
Examiner's non-adoption of Rejection 2, and enter the rejection, also
denominating it as a New Ground. See 37 C.F.R. § 41.77(b).
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Remaining Withdrawn/Non-Adopted Rejections
Because our entry of the rejections of claims 5 and 7 over Lundquist
(either alone or in combination) deals with all outstanding claims, we do not
reach the Requester's arguments regarding the other proposed rejections
(Rejections 3-5).
DECISION
For the above reasons, we REVERSE the Examiner’s decision not to
adopt the Requester's proposed rejections of claims 5 and 7 as anticipated
by, or as obvious over, Lundquist either alone or in combination (Rejections
1 and 2 supra).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b), which provides that “[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may request rehearing under 37
C.F.R. § 41.79, if appropriate; however, the Board may elect to defer issuing
any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
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For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the
Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. The owner may file a
response requesting reopening of prosecution
before the examiner. Such a response must be
either an amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both.
(2) Request rehearing. The owner may request
that the proceeding be reheard under § 41.79 by
the Board upon the same record. ...
Any request to reopen prosecution before the examiner under 37 C.F.R.
§ 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised
by the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the Patent Owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
The Requester may file comments in reply to a Patent Owner
response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R.
§ 41.77(c) shall be limited in scope to the issues raised by the Board's
opinion reflecting its decision to reject the claims and the Patent Owner's
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response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed
rejection is not permitted as a matter of right. A newly proposed rejection
may be appropriate if it is presented to address an amendment and/or new
evidence properly submitted by the Patent Owner, and is presented with a
brief explanation as to why the newly proposed rejection is now necessary
and why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all Patent Owner responses and Requester comments, is required.
The Examiner, after the Board's entry of a Patent Owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED

Appeal 2014-008255
Reexamination Control 95/001,970
US Patent No. 7,296,503 B1

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PATENT OWNER:
Alan McGrath
440 West Lake Ave.
Apt. 201B
Glenview, IL 60026

THIRD PARTY REQUESTER:
John Fargo, Director
U.S. Department of Justice
1100 L Street N.W., Room 11116
Washington, DC 20530