Ex Parte Fortune et al

Patent Trial and Appeal Board

Nov 29, 2016

13566440 (P.T.A.B. Nov. 29, 2016)

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.
13/566,440 08/03/2012 Kenneth Fortune TRMB-2948.2 6819
112877 7590 12/01/2016
Kilpatrick Townsend & Stockton LLP
Trimble Navigation Limited
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
EXAMINER
KAN, YURI
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH FORTUNE, JAMES M. JANKY, and
MICHAEL V. MCCUSKER
Appeal 2015-001952
Application 13/566,440
Technology Center 3600
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenneth Fortune et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s final rejection of claims 1—21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-001952
Application 13/566,440
CLAIMED SUBJECT MATTER
The claims are directed to a mobile platform for conveying a survey
instrument. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A survey instrument conveyance comprising:
a mobile platform comprising:
a set of wheels attached to the platform;
a handle attached to the mobile platform, the handle
for a user to propel and guide the mobile platform along a path;
a mechanical coupling assembly to couple a survey
instrument to the mobile platform; and
an adjustable position mechanism coupled to the
mechanical coupling assembly to raise and lower the survey
instrument relative to the mobile platform.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Capps US 4,691,444 Sept. 8, 1987
Simpson US 4,754,553 July 5, 1988
Howard US 5,990,809 Nov. 23, 1999
Boulianne US 6,008,757 Dec. 28, 1999
Gilliland US 6,241,047 B1 June 5, 2001
Maggio US 2006/0278454 A1 Dec. 14, 2006
Zimmerman US 7,693,659 B2 Apr. 6, 2010
Anderson US 2011/0150348 A1 June 23, 2011
REJECTIONS
(I) Claim 9 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
(II) Claims 1, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Howard, Capps and Gilliland.
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Appeal 2015-001952
Application 13/566,440
(III) Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Howard, Capps, Gilliland, and Boulianne.
(IV) Claims 3, 4, and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Howard, Capps, Gilliland, and Maggio.
(V) Claims 8, 9, 11, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Howard, Boulianne, Gilliland, and Capps.
(VI) Claims 10 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Howard, Boulianne, Gilliland, Capps, and Maggio.
(VII) Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Howard, Boulianne, Gilliland, Capps, and Simpson.
(VIII) Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Howard, Boulianne, Gilliland, Capps, and Zimmerman.
(IX) Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Howard, Boulianne, Gilliland, Capps, and Anderson.
(X) Claims 17 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Howard, Boulianne, Gilliland, Capps, and Zimmerman.
(XI) Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Howard, Boulianne, Gilliland, Capps, Zimmerman, and Maggio.
(XII) Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Howard, Boulianne, Gilliland, Capps, Zimmerman, and Simpson.
(XIII) Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Howard, Boulianne, Gilliland, Capps, Zimmerman, Anderson, and
Simpson.
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Appeal 2015-001952
Application 13/566,440
OPINION
Rejection (I)
Appellants make no arguments traversing the Examiner’s rejection of
claim 9 as indefinite. Accordingly, we summarily sustain this rejection.
Rejection (II)
The Examiner finds that Howard discloses most of the limitations of
claim 1 including a mobile platform having wheels and a mechanical
coupling assembly for a survey instrument, but relies on Gilliland for
teaching handles for vehicle propelling and guiding. Final Act. 4—5 (citing
Howard, Abstract; col. 1,11. 51—53; Figs. 1^4 and 6; and Gilliland, col. 3,11.
15—36). The Examiner concludes that it would have been obvious “to
modify the teaching of Howard by adding and utilizing . . . handles with
means for controlling motions of a vehicle with its components as taught by
Gilliland in order to control motions of vehicle and its components such as
steering and traction of vehicle, and raising or lowering platform.” Id. at 6
(citing Gilliland, col. 2,11. 6—9).
Appellants argue that “adding a handle is not an obvious variation of
Howard ... it is but one example of [impermissible] hindsight.” Appeal Br.
7. Appellants assert that there is no “logical reasoning” to modify the engine
driven/remote controlled cart of Howard to have a handle. Id. at 8.
The Examiner responds that the rejection does not require
“removing] the remote control and/or engine aspects of the cart.” Ans. 6.
Appellants also assert that the device of Howard is used underwater
and it is not reasonable to have a handle to be pulled by a user on such a
device. See Appeal Br. 7, Reply Br. 3.
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Appeal 2015-001952
Application 13/566,440
Howard relates to an underwater surveying system (see Howard, Title;
Abstract) and Howard’s vehicle 10 is already “driven along an underwater
route, with . . . control signals to drive control module 22, which controls
engine 18 and valves 40 to move vehicle 10 along the desired route”
Howard, col. 6,11. 23—27. As Appellants note, the modification proposed by
the Examiner, to add and use handles, would require a scuba diver, or other
under water operator to propel and guide the cart of Howard. See Reply Br.
3. Although the handles described in Gilliland provide benefits (steering
and traction) in a certain context, the Examiner does not explain sufficiently
how these benefits would be provided in the Examiner’s proposed
modification of Howard. Thus, we agree with Appellants that the
Examiner’s rationale for the proposed combination of Howard and Gilliland
is not adequate. See Appeal Br. 8.
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
5, and 6 as unpatentable over Howard, Capps, and Gilliland.
Rejections (III—IV)
The Examiner’s reliance on Boulianne and Maggio does not remedy
the deficiencies discussed above with respect to Rejection (I), and we
likewise do not sustain Rejections (III—IV).
Rejection (V)
Independent claim 8 recites substantially similar features to those
discussed above with respect to the rejection of independent claim 1, and
Appellants rely on similar arguments made for the patentability of claim 1
for the patentability of claim 8 as well. See Appeal Br. 9-12. The
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Appeal 2015-001952
Application 13/566,440
Examiner’s reliance on Boulianne does not remedy the deficiencies
discussed above with respect to Rejection (I), and we likewise do not sustain
the Examiner’s rejection of claim 8 and claims 9, 11, and 15 depending
therefrom as unpatentable over Howard, Boulianne, Gilliland, and Capps.
Rejections (VI—IX)
The Examiner’s reliance on Boulianne, Maggio, Simpson,
Zimmerman, and Anderson does not remedy the deficiencies discussed
above with respect to Rejection (I), and we likewise do not sustain
Rejections (VI—IX).
Rejection (X)
Independent claim 17 recites substantially similar features to those
discussed above with respect to the rejection of independent claim 1, and
Appellants rely on similar arguments made for the patentability of claim 1
for the patentability of claim 17 as well. See Appeal Br. 13—16. The
Examiner’s reliance on Boulianne and Zimmerman does not remedy the
deficiencies discussed above with respect to Rejection (I), and we likewise
do not sustain the Examiner’s rejection of claim 17 and claim 20 depending
therefrom as unpatentable over Howard, Boulianne, Gilliland, Capps, and
Zimmerman.
Rejections (XI)—(XIII)
The Examiner’s reliance on Boulianne, Maggio, Simpson,
Zimmerman, and Anderson does not remedy the deficiencies discussed
above with respect to Rejection (I), and we likewise do not sustain
Rejections (XI-XIII).
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Appeal 2015-001952
Application 13/566,440
DECISION
The Examiner’s decision to reject claim 9 under 35U.S.C. § 112,
second paragraph, is affirmed.
The Examiner’s decision to reject claims 1—21 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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