Ex Parte Burrows et alDownload PDFPatent Trial and Appeal BoardMar 2, 201712716461 (P.T.A.B. Mar. 2, 2017) Copy Citation 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). 2 Appeal 2015-007606 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 3 Appeal 2015-007606 Application 12/716,461 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 4 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 5 Appeal 2015-007606 Application 12/716,461 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 6 Copy with citationCopy as parenthetical citation