Ex Parte Hillis et al

Patent Trial and Appeal Board

Aug 6, 2018

13623041 (P.T.A.B. Aug. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/623,041 09/19/2012
103746 7590 08/08/2018
Elwha LLC c/o Polsinelli PC
Kory D. Christensen
Three Embarcadero Center
Suite 2400
San Francisco, CA 94111
FIRST NAMED INVENTOR
Daniel W. Hillis
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.
46076/38 3539
EXAMINER
AMARA, MOHAMED K
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
08/08/2018 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):
ISFDocketlnbox@intven.com
USPT@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL W. HILLIS, RODERICK A. HYDE,
JORDIN T. KARE, MURIEL Y. ISHIKAWA, and
LOWELL L. WOOD, JR.
Appeal2017-011089
Application 13/623,041
Technology Center 2800
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-7, 10-12, 16, 17,22-24,27,29, 138, 180,204-207,210-216,221,224-
227 and 275. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Elwha LLC. Appeal Brief of
January 11, 2017 ("Br."), 4. In this Opinion, we also refer to the Final
Action of May 27, 2016 ("Final Act."), and the Examiner's Answer of April
24, 2017 ("Ans."). No Reply Brief was filed.
Appeal2017-011089
Application 13/623,041
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for tracking surface particles dislodged from an
object, the system comprising:
a first outlet;
an image sensor;
a non-transitory computer-readable storage medium
programmed to instruct a processor associated with the image
sensor and the first outlet to:
cause the image sensor to provide image data
corresponding to an image of at least a portion of the object;
identify particles of interest on the object by analyzing the
image data;
determine a target location on the object corresponding to
the particles of interest;
cause the first outlet to deliver a dislodging fluid jet to the
target location on the object and dislodge one or more particles
of the particles of interest from the object; and
cause the image sensor to provide tracking information
comprising information derived from tracking the one or more
particles dislodged from the object in flight, wherein the image
sensor continuously or intermittently tracks a position of the one
or more particles along a path before capture or without being
captured; and
an analysis system configured to analyze the one or more
particles dislodged from the object.
Br. 34 (Claims Appendix) (emphasis added).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Linker
Clark
US 6,334,365 Bl Jan. 1, 2002
US 2010/0282960 Al Nov. 11, 2010
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Appeal2017-011089
Application 13/623,041
REJECTION
Claims 1, 2, 4--7, 10, 16, 17, 22, 24, 138,180,204, 211-212, 214--
216,221,224,225, and 275 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Clark in view of Linker. Final Act. 4. 2
OPINION
In rejecting claim 1 3, the Examiner finds an image sensor that "tracks
a position of ... one or more particles along a path" is taught or suggested
by Clark. Final Act. 5---6 ( citing various portions of Clark). Appellants
acknowledge, for example, that the prior art sensor could "determine that the
identified metal objects or particles on and/or near the subject in the
radiometric image probably are of the same metal detected by the trace
detection system." Br. 17-19 (discussing Clark's teachings as cited by the
Examiner at Clark abstract, ,r,r 6, 16, 25 28, 29, 33 and acknowledging the
same with regard to other cited portions, for example, that Clark's sensor
"could analyze the radiometric image taken of the subject by the terahertz
sensors to identify locations of objects or particles including plastic
2 Claims 3, 11, 12, 23, 27, 29,206,210,213,226, and 227 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Clark, Linker and
additional references. Final Act. 20, 21, 22, 24; Br. 30-31. Appellants
argue for the patentability of these claims solely based on the asserted
patentability of claim 1. See Br. 30-31. Claims 3, 11, 12, 23, 27, 29,206,
210,213,226, and 227 therefore stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013).
3 Appellants do not present separate arguments for independent claim 13 8 or
independent claim 275. Br. 27, 28. Nor do Appellants argue claims 2, 4--7,
10, 16, 17,22,24, 180,205,207,211,212,214-216,221,224,and225
separately. Id. at 29-30; see Final Act. 14. These claims therefore stand or
fall with claim 1. See Br. 27-30; 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Appeal2017-011089
Application 13/623,041
explosives or materials having the particular water content identified by the
trace detection system") ( emphases removed). Appellants, however, argue
that the Examiner reversibly erred because "it would be known beyond mere
probability that the particles in the image have the chemical composition
detected by the trace detection system because the particles were tracked
thereto." Id (emphases removed).
Claim 1 does not recite the image sensor to provide information
"beyond mere probability" as argued by Appellants. See Br. 18 ( emphasis
removed). Such an assertion, unsupported by evidence, "is no substitute for
evidence." Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Appellants' argument that identifying the location "beyond mere
probability" may be achieved in some of the prior art embodiments "without
tracking particles along a path with an image sensor" (Br. 19) does not
identify reversible error in the Examiner's findings that the prior art sensors
may locate particles associated with contraband at a particular location. See
Final Act. 6 ( citing various portions of Clark and explaining why a skilled
artisan would have found the limitation taught or suggested by these cited
portions). Appellants' other arguments unsupported by evidence-for
example, that Clark does not require a determination of "the original
location" of a sample (Br. 22) or its sensor is incapable of tracking the
particles "with a single image" (Br. 24--25}-are likewise directed to
features not recited in claim 1 and cannot provide patentable distinction. In
re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (holding that
unclaimed features cannot impart patentability to claims).
Appellants' argument that "Examiner is ignoring [the] other
components taught by Clark" (Br. 20) does not persuade us of reversible
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Appeal2017-011089
Application 13/623,041
error because "[t]he prior art's mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The
Examiner finds that the prior art teaches or suggests the limitation at issue
based on his finding regarding the scope and content of prior art and
differences between prior art and claims at issue ( among other relevant
factors as required by Graham vs. John Deere Co., 383 U.S. 1, 17-18
(1966)). Final Act. 5-8; Ans. 3-18. For example, the Examiner finds that
the prior art image sensor scans a subject "and fus[ es] the collected data and
the collected chemical data to generate at least one of a location and a
probability of a chemical composition of the contraband" which would have
led a skilled artisan to find the recited sensor that "tracks a position of ...
one or more particles along a path" obvious. Final Act. 5-6 ( citing Clark
,r 6); Ans. 14--15. Appellants' argument that the Examiner failed to
sufficiently explain that "scanning the subject with a plurality of imaging
sensors can be read as tracking particles along a path with an image sensor"
(Br. 23) does not address the prior art teachings as a whole and does not
identify reversible error in the Examiner's findings.
Because the Examiner does not rely on Linker for the limitation at
issue, Appellants' argument with regard to Linker cannot identify reversible
error in the Examiner's findings with regard to Clark. See Br. 25.
Appellants' remaining argument asserting that the Examiner has performed
certain patent art searches does not address the teachings of the cited
references and does not identify reversible error in the Examiner's findings
and conclusions. See id. at 25-26.
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Appeal2017-011089
Application 13/623,041
DECISION
The Examiner's decision is affirmed.
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
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