Ex Parte Hill

Patent Trial and Appeal Board

Sep 2, 2016

12775332 (P.T.A.B. Sep. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121775,332 05/06/2010 Jason Lester Hill
37374 7590 09/07/2016
INSKEEP INTELLECTUAL PROPERTY GROUP, INC
2281W.190TH STREET
SUITE 200
TORRANCE, CA 90504
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1506-577 9934
EXAMINER
ROGERS, DAVID A
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
09/07/2016 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):
inskeepstaff@inskeeplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON LESTER HILL
Appeal2015-000691
Application 12/775,332 1
Technology Center 2800
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 21--40. Appellant has previously canceled claims 1-20.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is The Toro Company.
App. Br. 1.
Appeal2015-000691
Application 12/775,332
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed "invention relates generally to
wireless sensing devices and sensor communication devices." Spec. if 2.
Exemplary Claim
Claim 21, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
21. A method for installing a wireless soil moisture
sensor, compnsmg:
removing a portion of soil to create a hole in an area of
turf;
placing said soil moisture sensor into said hole;
moving said soil moisture sensor sideways towards a
wall of said hole such that a first group of moisture sensor pins
penetrate said wall at a first height and a second group of
moisture sensor pins simultaneously penetrate said \~1all at a
second height;
and, packing soil around said soil moisture sensor.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Feb. 24, 2014); Reply Brief ("Reply Br.," filed Oct. 10, 2014); Examiner's
Answer ("Ans.," mailed Aug. 13, 2014); Final Office Action ("Final Act.,"
mailed June 27, 2013); and the original Specification ("Spec.," filed
May 6, 2010).
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Appeal2015-000691
Application 12/775,332
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Ryokai et al. ("Ryokai") US 4,886,088 Dec. 12, 1989
Dukes et al. ("Dukes") US 2003/0230638 Al Dec. 18, 2003
Hydra Soil Moisture Probe User's Manual, ver. 1.2, PIN 92915
Rev. A, June 1994, Stevens Vitel, Inc., Chantilly, Virginia
(hereinafter "Vitel").
Rejections on Appeal
RI. Claims 21, 23-28, 30-34, and 35--40 stand rejected under 35
U.S.C. § 103(a) as being obvious over the combination of Dukes and Vitel.
Final Act. 2.
R2. Claims 22 and 29 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Dukes, Vitel, and Ryokai. Final
Act. 4.
ISSUE
Appellant argues (App. Br. 4--9; Reply Br. 2-5) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Dukes and Vitel is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method for installing a wireless soil moisture sensor that
includes, inter alia, the step of "moving said soil moisture sensor sideways
towards a wall of said hole," as recited in claim 21?
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Appeal2015-000691
Application 12/775,332
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We agree with particular
arguments advanced by Appellant with respect to claims 21--40 for the
specific reasons discussed below. We highlight and address specific
findings and arguments regarding claim 21 for emphasis as follows.
Appellant contends:
[NJ one of the prior art references disclosed moving a soil
moisture sensor sideways towards a wall of a hole such that a
first group of moisture sensor pins penetrate the wall at a first
height and a second group of moisture sensor pins
simultaneously penetrate the wall at a second height, as
differently recited in each of the independent claims. In the
present Final Office Action dated June 27, 2013, the Examiner
acknowledges this point, but argues on page 3 that "it would
have been obvious to integrate two or more of the probes in
Dukes et al. for the [predictable] benefit of allowing a single
device to be placed in one hole while measuring at different
depths."
App. Br. 6.
The Examiner makes several findings related to using a moisture
sensor housing with two different sets of pins and their relative orientation,
i.e., either parallel to the surface or any other desired orientation, and the
effect of adding additional pins at a second depth. See Ans. 2-5.
However, we disagree with the Examiner's finding that the
modification of Dukes with the teachings of Vitel would have been obvious
"in order to use a preferred set of directional movements to lower the probe
into a hole and to position the probe relative to the sidewall of the hole so
that the pins can be inserted into the sidewall of the hole." Ans. 3.
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Appeal2015-000691
Application 12/775,332
We disagree with the Examiner because he does not directly address
the contested limitation of the method of installation of claim 1, i.e.,
"moving said soil moisture sensor sideways towards a wall of said hole."
(Emphasis added). We particularly disagree because Vi tel explicitly teaches
"[t]he probe should be placed into the soil without any side to side
motion . ... " Vitel p. 10 (emphasis added). Therefore, because sideways
movement is explicitly disavowed in Vitel,. we find a person of ordinary
skill in the art would have been led away from incorporating the teachings
of Vitel in Dukes to arrive at the claimed invention.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the combined
teachings and suggestions of the cited prior art combination to teach or
suggest the disputed limitation of claim 21, such that we cannot adopt the
Examiner's legal conclusion of obviousness. Therefore, we do not sustain
the Examiner's obviousness rejection of independent claim 21; or
independent claims 28 and 37, which recite the contested limitation in
commensurate form. For the same reasons, we do not sustain Rejection R 1
of claims 23-27, 30-36, or 38--40, which variously depend therefrom, nor
can we sustain Rejection R2 of claims 22 and 29, rejected under§ 103 as
being unpatentable over the combination of Dukes, Vitel, and Ryokai.
CONCLUSION
The Examiner erred with respect to obviousness Rejections RI and R2
of claims 21--40 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we do not sustain the rejections.
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Appeal2015-000691
Application 12/775,332
DECISION
We reverse the Examiner's decision rejecting claims 21--40.
REVERSED
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