Ex Parte MAPLES

Patent Trial and Appeal Board

Aug 14, 2018

14271852 (P.T.A.B. Aug. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/271,852 05/07/2014 Mike MAPLES
11171 7590 08/16/2018
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404
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.
0337-029/PI_Ol l 7 2718
EXAMINER
ZAKARIA, AKM
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
08/16/2018 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):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE MAPLES
Appeal2017-009378
Application 14/271,852
Technology Center 2800
Before DONNA M. PRAISS, CHRISTOPHER L. CRUMBLEY, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part and reverse-in-part.
1 The real party in interest is identified as SERCEL, INC. Appeal Brief of
August 29, 2016 ("App. Br."), 2.
2 Final Office Action of April 6, 2016 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of December 16, 2016 ("Ans."). No
Reply Brief was submitted.
Appeal2017-009378
Application 14/271,852
CLAIMED SUBJECT MATTER
Claims 1, 14, and 20, reproduced below, are illustrative of the claimed
subject matter:
1. A marine electro-mechanical cable comprising:
a strength member extending along a section of the
electro-mechanical cable;
an overstress indicator cable comprising at least one non-
twisted conductor disposed within the section of the electro-
mechanical cable; and
an outer jacket enclosing the strength member and the
overstress indicator cable,
wherein the non-twisted conductor breaks when a tension
in the non-twisted conductor is greater than an allowable
working load/or the electro-mechanical cable.
14. A method for detecting an overstress condition in an
electro-mechanical cable comprising:
applying a voltage to a non-twisted conductor in an
overstress indicator cable;
measuring at least one characteristic of a circuit formed
by the non-twisted conductor and one of a second non-twisted
conductor, a strength member, and a twisted conductor;
comparing the measured characteristic to an expected
value for the characteristic; and
if the measured characteristic varies from the expected
value for the characteristic by more than a predetermined
amount, indicating that an overstress condition has occurred in
the electro-mechanical cable, wherein the non-twisted
conductor breaks when a tension in the non-twisted conductor
is greater than an allowable working load for the electro-
mechanical cable.
20. An apparatus for indicating overstress in an electro-
mechanical cable comprising:
an outer jacket surrounding the electro-mechanical cable;
a strength member disposed lengthwise within the
electro-mechanical cable;
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Application 14/271,852
foam disposed within the electro-mechanical cable;
a seismic sensor component disposed within a sensor
carrier disposed within the electro-mechanical cable;
an overstress indicator cable, comprising at least two
non-twisted conductors, wrapped helically around the strength
member within a cabling layer in the electromechanical cable,
each non-twisted conductor comprising copper wire disposed
within an outer insulation jacket, wherein the non-twisted
conductors break when a tension in the non-twisted conductors
is greater than an allowable working load of the
electromechanical cable;
a first connector and a second connector disposed within
the electro-mechanical cable, wherein one end of the non-
twisted conductors are connected to the first connector and the
other end of the non-twisted conductors are connected to the
second connector;
and a monitoring device comprising at least one of an
ammeter and an ohmmeter connected to the overstress indicator
cable, wherein the monitoring device is adapted to apply a
voltage to the non-twisted conductors and determine if one of
the non-twisted conductors has broken based on based on
measurements from the ammeter or ohmmeter and indicate that
an overstress condition has occurred in the electro-mechanical
cable when a non-twisted conductor is determined to be broken.
Appeal Br. 22, 25, 26 (Claims App. 'x) ( emphases added).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Horwinski
Wagner
Syed
Goldner
Register
us 3,610,808
us 4,598,168
US 2008/0053577 Al
US 2012/0227504 Al
US 2012/0315004 Al
3
Oct. 5, 1971
July 1, 1986
Mar. 6, 2008
Sept. 13, 2012
Dec. 13, 2012
Appeal2017-009378
Application 14/271,852
REJECTIONS
Claims 1, 6, and 10-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horwinski and Goldner. Final Act. 7.
Claims 2, 5, 9, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horwinski, Goldner, and Wagner. Final Act. 10.
Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Horwinski, Goldner, and Syed. Final Act. 14.
Claims 4 and 7-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horwinski, Goldner, and Register. Final Act. 15.
Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Horwinski and Wagner. Final Act. 18.
Claims 14, 15, and 17-19 are rejected under 35 U.S.C. § 102(a)(l) as
being anticipated by Horwinski. Final Act. 4.
OPINION
Claim l3
Appellant argues that the Examiner reversibly erred in finding that
Horwinski teaches or suggests a marine electro-mechanical cable having a
"non-twisted conductor" that "breaks when a tension in the non-twisted
conductor is greater than an allowable working load for the
electro-mechanical cable" as recited in claim 1.
3 Although listed under a separate heading for "claim 9," Appellant presents
the same arguments for the patentability of claim 9 and, therefore, claim 9
stands or falls with claim 1. App. Br. 15; see Ans. 14--15 (the Examiner's
findings with regard to claim 9 are not addressed by Appellant); see also 37
C.F.R. § 4I.37(c)(l)(iv) (2013). Appellant does not present separate
arguments for claims 2, 3, 5-8, 10, and 11 which depend from claim 1, and
they therefore stand or fall with claim 1. See id.
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Application 14/271,852
Horwinski describes that to detect certain "abnormal conditions" of a
cable - such as "excessive stresses and the like" - "a conductor network"
may be included in the cable. 1: 12-15, 40-42. Such conductor network
may take various forms including "a printed circuit grid." Id. at 1 :44.
Horwinski describes that when "[ e ]xcessive stress breaks the conductor of
low ductility," a trigger circuit connected to the conductor network will be
triggered "setting off an indication of abnormal conditions." Id. at 1 :62---66
( cited in Final Act. 8). Horwinski specifically describes "tamperproof cable
lOa" having "low ductility, high tensile strength strain wires 77." Id. at
3: 15-22, 3:33; see Ans. 4--5 (discussing Horwinski cable 10 or 10a). Wires
77 "are adapted to break in response to excessive strain" "for the purpose of
providing indication of the strain or tensile stress of the cable." Id. at 3:20-
23 ( cited in Ans. 5). Figure 3 of Horwinski shows cable 1 Oa and its
components such as wires 77 and insulated signal wires A, B, C, and D.
Horwinski Fig. 3, 3:35.
Appellant distinguishes the recited structure from that of the prior art
by arguing that the prior art does not teach or suggest a "non-twisted
conductor" because the Examiner relied "on a small part" of the prior art
figure. App. Br. 10. Appellant, however, does not identify reversible error
in the Examiner's finding that the "parallel connected wires" included in
Horwinski's cable would have taught or suggested the recited "non-twisted
conduct" to a skilled artisan. Ans. 6 (citing Horwinski 4:42--44).
Structures such as machines and articles of manufacture must be
distinguished from the prior art on the basis of structure, and where there is
reason to believe that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
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that the claimed function patentably distinguishes the claimed structure from
the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Hallman, 655 F.2d 212,215 (CCPA 1981).
Here, Appellant acknowledges that Horwinski describes a cable such
that "[ e ]xcessive stress breaks the conductor of low ductility" and does not
address the remaining teachings of Horwinski. App. Br. 9 ( citing Horwinski
1 :63---64 without discussing other portions of the prior art). Given the
Examiner's finding that the prior art cable is structurally identical to the
recited cable and that the prior art cable has wires indicative of the strain or
tensile stress of the cable, Appellant's argument does not address why the
recited function patentably distinguishes the recited structure from the prior
art structure. No reversible error has been identified in this aspect of the
obviousness analysis.
Appellant also argues that Horwinski' s cable lacks a "section" within
which the "non-twisted conductor [is] disposed" as recited in claim 1. App.
Br. 11. Appellant construes the term "section" to mean "one portion of the
cable that connects to other portions for forming the entire cable" or "one
physical part of the cable that can be attached or detached from other
sections." Id.
From the outset, we note that Appellant does not point us to the
Specification for a definition of the term "section." "[D]uring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification." In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000). We do not agree that Appellant's construction is the broadest
reasonable interpretation and construe "section" to mean "part, piece, or
segment." We further find, however, that even under Appellant's
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construction of the term, the Examiner shows that Horwinski's cable has
various portions such as "braid and outer portions" that together form the
prior art cable. Ans. 8 (citing Horwinski 3: 10-13, 3:34--41 and various
Figures). Appellant does not address these teachings of Horwinski. No
reversible error has been identified.
In rejecting claim 1, the Examiner finds that Goldner teaches a marine
cable having a strength member and a skilled artisan would have found it
obvious to combine the references to provide "a sensor system in connection
with a marine vessel" as taught in Goldner ,r 23. Final Act. 8.
Appellant argues that a skilled artisan would not have combined the
security cable in Horwinski with the marine cable in Goldner because doing
so would be "a possible security violation, which will defeat the purpose of
the security cable in Horwinski." App. Br. 12.
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious," the answer depends on "whether the improvement is more
than the predictable use of prior art elements according to their established
functions." Id. at 417.
In this case, the Examiner provides the requisite "articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness" - namely, Golden teaches "to provide 'a sensor system in
connection with a marine vessel'" which the skilled artisan would have
combined with Horwinski's stress sensors. Final Act. 8; see also Ans. 9-10.
Appellant's argument does not address the purpose of Horwinski to provide
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Application 14/271,852
an "indication of the strain or tensile stress of the cable" (Horwinski 3: 17-
19) and does not show why the combined teaching would render the prior art
unsatisfactory for detecting excessive strain on the cable.
Claim 204
Appellant argues that the Examiner reversibly erred in finding that the
prior art teaches or suggests an apparatus having "an overstress indicator
cable ... wrapped helically around the strength member within a cabling
layer in the electromechanical cable" as recited in claim 20. App. Br. 14.
Appellant, however, does not address the Examiner's finding that
Horwinski's figures show wires (e.g., components A, B, C, D, 77, 79, and
62) wrapped around mylar web 60, nor does Appellant address the
Examiner's finding that both Goldner and Wagner teach or suggest the
limitation at issue. See Ans. 12 (citing various portions of Horwinski,
Goldner, and Wagner). Because Appellant does not dispute these prior art
teachings, no reversible error has been identified here.
Appellant next argues that the Examiner reversibly erred in finding
that the prior art teaches or suggests "a first connector and a second
connector ... , wherein one end of the non-twisted conductors are connected
to the first connector and the other end of the non-twisted conductors are
connected to the second connector." App. Br. 13. Appellant argues that the
prior art illustrations do not show conductors such as 77, 70, or A, B, C, and
D being connected to connectors 26a and 28a in the configuration recited in
4 Although listed under a separate heading for "claim 12," Appellant
presents the same arguments for the patentability of claim 12 as those for
claim 20 and therefore claim 12 stands or falls with claim 20. App. Br. 16;
see Ans. 15-16 (the Examiner's findings with regard to claim 12 are not
addressed by Appellant); see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Application 14/271,852
claim 1. Id. Appellant's argument, solely directed to whether Horwinski
explicitly discloses the limitation at issue, does not address the relevant issue
of whether a skilled artisan would have found the limitation obvious in light
of the prior art. See KSR, 550 U.S. at 418 ("[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ."). We further note that
Appellant does not respond to the Examiner's findings and explanation why
a skilled artisan would have found the limitation obvious based on
Horwinski's teachings. See Ans. 12-13 (citing various portions of
Horwinski and explaining, for example, that "unbraided wires 77a and 79a
are brought to terminals for connection to the bridge 81; sections of
resistance wires 84, 86, 88 and 90 are included in four legs of a bridge
having junctures 26a, 28a, 30a and 32a").
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner's rejections. See 37
C.F.R. § 4I.37(c)(l) (iv) (2012); see also In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011). Disagreement with the Examiner's findings, without
specifically identifying reversible error in the Examiner's findings, does not
provide sufficient factual evidence to support Appellant's argument.
In this case, other than stating the disagreement with the Examiner's
conclusion, Appellant does not identify reversible error in the Examiner's
finding. For example, Appellant does not address the Examiner's finding
that a skilled artisan would have found the recited "ohmmeter" obvious
based on Horwinski's teaching that "galvanometer or responsive instrument
3 6 will indicate a null or zero setting, signifying that there is no breakage of
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Application 14/271,852
any resistance wire in the cable 10, nor any short circuiting of one resistance
wire to another, or short cutting of resistance wires to the signal wires or to
ground." Ans. 13 (citing Horwinski, 2:70-75, Figs. 1 and 2). Appellant has
not identified reversible error in the Examiner's findings here.
Appellant's remaining arguments are identical to those presented with
regard to claim 1 which have been analyzed in detail supra.
Dependent Claim 4
Claim 4 depends from claim 1 and additionally recites: "wherein the
non-twisted conductor is further adapted to break when the tension in the
non-twisted conductor is both greater than the allowable working load of the
electro-mechanical cable and less than the tension required to break twisted
pair conductors disposed in the electro-mechanical cable."
In rejecting claim 4, the Examiner finds that Register describes cable
20 having "stranded conductors which provide tensile strength to the cable."
Final Act. 16 (citing Register ,r 22). The Examiner reasons that "Register's
teaching of twisted conductors providing additional tensile strength to the
cable makes it obvious that it has more tensile strength than non-twist
conductors. Otherwise, it would not provide additional tension bearing
capability." Ans. 14. Appellant does not address the Examiner's rationale.
We further note that, similar to the arguments for claim 1, Appellant does
not structurally distinguish the prior art and does not argue that the claimed
function patentably distinguishes the claimed structure from the prior art
structure. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("The
discovery of a new property or use of a previously known composition, even
when that property and use are unobvious from the prior art, can not impart
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patentability to claims to the known composition."). No reversible error has
been identified here.
Dependent Claim 13
Appellant's arguments with regard to claim 13 are similar to those for
claim 1. For example, Appellant argues that Horwinski does not teach or
suggest "non-twisted conductors" or "section." Compare App. Br. 10, 11,
with App. Br. 17. Appellant also makes arguments similar to those for claim
20. See App. Br. 17 ("As discussed with regard to Claim 20, a bridge shown
in Figure 1 of Horwinski includes resistors" but they are not connectors and
not located in different sections). For reasons provided with regard to claims
1 and 20 supra (see Ans. 17-18), no reversible error has been identified
here.
Claim 14
Appellant argues that the Examiner reversibly erred in finding claim
14 anticipated by Horwinski because the prior art does not disclose a method
"measuring at least one characteristic of a circuit ... ," comparing the
measured characteristic to an expected value for the characteristic," and "if
the measured characteristic varies from the expected value for the
characteristic by more than a predetermined amount, indicating that an
overstress condition has occurred in the electro-mechanical cable" as recited
in claim 14. App. Br. 19.
"[U]nless a prior art reference discloses within the four comers of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
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anticipate under 35 U.S.C. § 102." Net MoneyIN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
In the Final Action in this case, Horwinski 2:70-73 is cited for both
the "comparing" step and the conditional "indicating" step. Final Act. 5.
This particular passage in Horwinski states:
Once the bridge is balanced, the galvanometer or responsive
instrument 36 will indicate a null or zero setting, signifying that
there is no breakage of any resistance wire in the cable 10, nor
any short circuiting of one resistance wire to another, or short
circuiting of resistance wires to the signal wires or to ground, etc.
Based on this prior art teaching, the Examiner finds that a skilled artisan
"would consider galvanometer null or zero value as [the] expected measured
value and any non-zero value as the unexpected measured value in
Horwinski's circuit arrangements which is equivalent to Appellant's broad
claim limitation." Ans. 19--20. The anticipation rejection, however, does
not specify why Horwinski discloses the "comparing" and "indicating"
steps. We find that a preponderance of the evidence does not support the
anticipation rejection of claim 14, and therefore, cannot sustain the
rejection. 5
5 Because they were not presented by the Examiner or developed in the
record below, we have not considered other issues regarding the scope of
claim 14 including: (1) the entity (or entities, e.g., an apparatus or a human
operator or both) carrying out the steps of claim 14; (2) whether the
"wherein" clause applies to any of the recited steps or the entity ( or entities)
carrying out the steps or both; and (3) whether a skilled artisan would find
the scope of claim 14 vague as to whether it covers a process or an
apparatus.
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DECISION
The Examiner's rejections of claims 1-13 and 20 are affirmed.
The Examiner's rejections of claims 14--19 are 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, REVERSED-IN-PART
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