Ex Parte Denney et al

Patent Trial and Appeal Board

Dec 12, 2012

11401116 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL E. DENNEY, JAY R. EASTMAN,
PAUL M. FALLARA, ANDREW P. JOSEPH,
JOHN S. PHILLIPS, MICHAEL N. PATENA,
TIM BURNHAM, and PAUL COLEMAN
____________________

Appeal 2010-009453
Application 11/401,116
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
LYNNE H. BROWNE, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009453
Application 11/401,116
2
STATEMENT OF THE CASE
Paul E. Denney et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 18-35. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on December 6, 2012.
We REVERSE.
The Claimed Subject Matter
Claim 18, reproduced below, is illustrative of the claimed subject
matter.1
18. A manipulation system for controllably positioning a head
relative to a surface of an inhabitable structure and irradiating
the surface with energy waves from the head, the manipulation
system comprising:
a positioning mechanism releasably coupled to the head,
and
an anchoring mechanism releasably coupled to the
positioning mechanism and releasably coupled to the structure.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Primbsch
Uraki
Freiwald
US 4,137,778
US 5,977,515
US 6,693,255 B2
Feb. 6, 1979
Nov. 2, 1999
Feb. 17, 2004
Rejections
Appellants request our review of the following rejections.
The Examiner rejected claims 18-25 and 29-35 under 35 U.S.C.
§ 103(a) as unpatentable over Uraki and Freiwald.

1 Claim 29, the only other independent claim involved in this appeal, is
substantially similar to claim 18, except that claim 29 specifically requires a
“laser” head, uses “means” language, and uses the term “affixed” in place of
“coupled.”
Appeal 2010-009453
Application 11/401,116
3
The Examiner rejected claims 26-28 under 35 U.S.C. § 103(a) as
unpatentable over Uraki, Freiwald, and Primbsch.
OPINION
Appellants argue that “neither Uraki nor Freiwald discloses or
suggests a positioning mechanism ‘releasably coupled’ to the ‘anchoring
mechanism’ and ‘releasably coupled to the head’ as recited by Claim 18.”
App. Br. 7. Appellants also argue that “neither Uraki nor Freiwald disclose
or render obvious ‘positioning means releasably affixed to the laser head’
and releasably affixed to the ‘anchoring means’ as recited by Claim 29.”
App. Br. 10. Appellants additionally argue that the combination of Uraki
and Freiwald fails to render obvious a positioning mechanism releasably
coupled to the head, as called for in claim 18, or a positioning means
releasably affixed to the laser head, as called for in claim 29. Reply Br. 5-6,
8.
The Examiner’s rejection identifies the laser torch driving mechanism
11 of Uraki as the claimed “anchoring mechanism” and does not identify any
structure in Uraki that corresponds to the “positioning mechanism” of claims
18 and 29. See Final Rej. 2; Ans. 3-4. The Examiner’s rejection does not
identify any structure in Freiwald that corresponds to the “positioning
mechanism” of claim 18 and “means for positioning” of claim 29, or
propose any modification of Uraki to provide a “positioning mechanism [or
means] releasably coupled [or affixed] to the head [or laser head].” See
Final Rej. 2-3; Ans. 4-5.
In responding to Appellants’ argument, the Examiner identifies the
laser torch driving mechanism 11 of Uraki as the “positioning mechanism,”
but seems to acknowledge that Uraki fails to disclose that the laser torch
driving mechanism 11 is releasably coupled or affixed to the laser torch 6.
Appeal 2010-009453
Application 11/401,116
4
Ans. 7. To account for this “releasably” coupled or affixed limitation, the
Examiner admonishes Appellants for purportedly attacking Uraki
individually and quotes the disclosure in column 12 of Freiwald directed to
the lazy-susan component shown in figures 11A, 11B, and 12. Id. at 7-8.
The Examiner posits that “if the laser head is releasably coupled from the
positioning mechanism as taught by the combination of” Uraki and
Freiwald, the anchoring mechanism would also somehow be releasably
coupled to the positioning mechanism by virtue of the head and anchoring
mechanism being connected to each other. Id. at 8. However, the Examiner
does not explain how the lazy-susan component of Freiwald is to be
combined with Uraki to arrive at the claimed invention, much less articulate
an apparent reason to do so.
For the above reasons, the Examiner has not satisfied the initial
burden to establish a prima facie case that Uraki and Freiwald render
obvious the subject matter of independent claims 18 and 29 and their
dependent claims 19-25 and 30-35. We do not sustain the rejection of these
claims.
We also do not sustain the Examiner’s rejection of claims 26-28 as
unpatentable over Uraki, Freiwald, and Primbsch, which suffers from the
same deficiency as the rejection of claim 18.
DECISION
The Examiner’s decision rejecting claims 18-35 is reversed.
REVERSED

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