Ex Parte Burrows et al

Patent Trial and Appeal Board

Mar 2, 2017

12716461 (P.T.A.B. Mar. 2, 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.
12/716,461 03/03/2010 Alistair C. BURROWS 50249-005 1797
51590 7590 03/06/2017
NEXUS LAW GROUP LLP
Suite 1140 - 625 Howe Street
P.O. Box 9
VANCOUVER, BC V6C 2T6
CANADA
EXAMINER
MCANDREW, CHRISTOPHER P
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
03/06/2017 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):
info@nexuslaw.ca
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ALISTAIR C. BURROWS, CHRIS BUZUNIS,
GEOFFREY CHEN, GREGORY P. JAMAN, STEPHEN LIAO,
GAMAL K. MUSTAPHA, RYAN RAMCHANDAR, and
JASON G. TEETAERT
Appeal 2015-007606
Application 12/716,461
Technology Center 2800
Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
LILAN REN, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1—8, 11—18, 20-28, and 30. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
Appeal 2015-007606
Application 12/716,461
We REVERSE.
Appellants’ invention is directed to an apparatus, system and method
for detecting defects in building structures (Spec. 1:12—13).
Claim 1 is illustrative:
1. An apparatus for detecting a defect in a building
structure, the apparatus comprising:
(a) a base comprising a pair of spaced-apart
terminals defining a probe attached to and projecting from
said moveable base, said terminals being dimensioned for
immersing into a fluid situated adjacent a first side of an
electrically insulating member of the building structure, said
electrically insulating member being supported at a second
side thereof by an electrically conductive support of the
building structure, the apparatus being operable to produce a
measurement of electrical current flow within said fluid
between said terminals when said terminals are contacting
said fluid and a potential difference is being generated
between said electrically conductive support and said fluid,
the apparatus being operable to determine, at a first location
of the apparatus in response to said measurement produced at
said first location only, an indication of the direction from
said first location toward the defect; and
(b) a transmitter operable to wirelessly transmit said
indication from the apparatus to a central controller.
Appellants appeal the following rejections:
1. Claims 1—8, 11—16, 18, and 20-27 are rejected under 35 U.S.C. §
103(a), as being unpatentable over Wiswell (US 2007/0279067 Al,
pub. Dec. 6, 2007) in view of Lorenz (US 2008/0143349 Al, pub.
Jun. 19, 2008) and Daily (US 6,331,778 Bl, iss. Dec. 18, 2001).
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Application 12/716,461
2. Claims 28 and 30 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Wiswell in view of Lorenz, Daily and Colahan (US
2005/0057258 Al, pub. Mar. 17, 2005).
3. Claim 17 is rejected under 35 U.S.C. § 103(a), as being unpatentable
over Wiswell in view of Lorenz, Daily and Vokey (US 2009/0044595
Al, pub. Feb. 19, 2009).
FINDINGS OF FACT AND ANALYSES
The Examiner’s findings and conclusions are located on pages 5—7 of
the Final Action. The Examiner finds that Wiswell teaches an apparatus that
is operable to determine a first location of the apparatus an indication of the
direction from the first location toward the defect and a transmitter operable
to wirelessly transmit said indication to a central controller (Final Act. 5).
The Examiner finds that Wiswell is silent on the structure recited in claim 1
of a base comprising a pair of spaced apart terminals defining a probe that is
immersed in water to sense defects in a building structure (Id. at 5—6). The
Examiner finds that Lorenz teaches an apparatus that includes moving
sensors along a roof surface to detect defects in the roof by monitoring the
electrical current flow (Id. at 6). The Examiner concludes that it would have
been obvious to incorporate the probe and building structure of Lorenz into
the apparatus and method of Wiswell for the purpose of providing a more
widely usable apparatus (Id. at 6).
The Examiner finds that Wiswell and Lorenz do not explicitly teach
that the apparatus is operable to determine, at a first location of the apparatus
in response to said measurement produced at said first location only, an
indication of the direction from said first location toward the defect (Id. at
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7). The Examiner finds that Daily teaches the missing feature in the
structure including reference numbers 16, 18, 19, 20 and 21. Id. The
Examiner concludes that it would have been obvious to incorporate the
teachings of Daily with the teachings of Wiswell and Lorenz because it is an
efficient and cost effective means of identifying a leak location in that it
requires knowledge and placement of the least number of variables and
sensors. Id.
Appellants argue that neither Wiswell, Lorenz, nor Daily teach the
disputed functional limitation (App. Br. 13—20). Because the Examiner
agrees that Wiswell and Lorenz do not teach the disputed limitation, we need
focus only on Daily (Final Act. 7). Appellants argue that Daily teaches that
a leak is detected in the area encompassed by the electrical potential
distribution because electrical current must flow through the leak in order to
create the electrical potential distribution around the leak location (App. Br.
16). Appellants contend that Daily’s structure calculates the potential at
each electrode 16 and between the electrodes 16 and 19, and the leak in
order to determine the leak location {Id. at 16—17). Appellants contend that
the calculation of the equipotential lines cannot be performed until after
samples of the electrical potential distribution are produced by measuring
the potential at multiple electrodes 16 at different locations (Id. at 17).
Appellants contend that Daily teaches that multiple sample locations of the
electrical potential at electrodes 16 must be at a fixed location to produce a
valid calculation for variable No. 1 (Id. at 17—18). Appellants contend that
one of ordinary skill in the art would understand that combining the
moveable sensor mechanism in Wiswell and the sampling of electrical
potential in Daily, which must occur at fixed locations in order to produce a
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Appeal 2015-007606
Application 12/716,461
valid result, would have failed to produce the moveable device of Wiswell or
produced an invalid calculation in Daily (Id. at 19). We understand
Appellants to argue that the Examiner has not provided sufficient reason for
making the combination. We agree.
The Examiner has not sufficiently explained why or how Wiswell,
Lorenz and Daily would have been combined. The Examiner responds to
Appellants’ argument by stating that the test of obviousness is not bodily
incorporation but what the teachings of prior art would have suggested to the
ordinarily skilled artisan (Ans. 4). While the Examiner’s statement of the
rubric for analyzing obviousness is accurate, the Examiner failed to provide
sufficient explanation or embellishment on how the teachings of the prior art
would have been arranged to meet the claims. Appellants challenged the
Examiner’s combination on the basis that Daily requires a stationary array of
electrodes, whereas Wiswell uses a moveable apparatus for sensing stray
voltage. The Examiner has not explained how Wiswell and Lorenz would
have been modified by Daily’s teachings to provide a structure that is
capable of “determin[ing], at a first location of the apparatus in response to
said measurement produced at said first location only, an indication of the
direction from said first location toward the defect” as required by claim 1.
Indeed, Daily uses an array of stationary electrodes where electropotential
readings are taking at each of the electrodes to determine the potential at
various locations to permit accurate potential distribution (col. 6,11. 55—58).
The Examiner does not explain how Daily’s multiple measurements and
calculations would have taught or suggested an apparatus that is capable of
“determin[ing], at a first location of the apparatus in response to said
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measurement produced at said first location only, an indication of the
direction from said first location toward the defect” as recited in claim 1.
On this record, we find that the Examiner has not dispensed with the
burden of establishing a prima facie case of obviousness. We reverse the
Examiner’s § 103 rejections.
DECISION
The Examiner’s decision is reversed.
ORDER
REVERSED
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