Ex Parte Marcus

Patent Trial and Appeal Board

Nov 14, 2017

13474618 (P.T.A.B. Nov. 14, 2017)

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.
13/474,618 05/17/2012 Robert Marcus ROTOP002X1 3093
22434 7590 11/16/2017
Weaver Austin Villeneuve & Sampson LLP
P.O. BOX 70250
OAKLAND, CA 94612-0250
EXAMINER
CHIN-SHUE, ALVIN CONSTANTINE
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
USPTO@wavsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT MARCUS
Appeal 2015-004949
Application 13/474,618
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Marcus (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 10—16, 18—20, and 22-40.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies the inventor, Robert Marcus, as the real party
in interest. Appeal Br. 4.
2 Claims 1—9, 17, and 21 are cancelled. Appeal Br. 47-49 (Claims App.).
Appeal 2015-004949
Application 13/474,618
CLAIMED SUBJECT MATTER
Claims 34 and 40 are independent. Claim 34 is illustrative of the
claimed subject matter, and reads:
34. A system comprising:
a deployable descent device, the deployable descent
device having a first end and a second end; and
an aerial vehicle configured to:
deliver the deployable descent device to an elevated
location at the side of a building,
anchor the first end of the deployable descent device
to a feature that is on the side of the building at the elevated
location or to a feature that is accessible through the side
of the building via an opening in the side of the building
at the elevated location while the first end of the
deployable descent device is supported by the aerial
vehicle, and
release the first end of the deployable descent
device after the first end of the deployable descent device
is anchored to the feature that is on the side of the building
at the elevated location or to the feature that is accessible
through the side of the building via the opening in the side
of the building at the elevated location.
Appeal Br. 51—52 (Claims App.).
REJECTIONS
The Final Action includes the following rejections:
I. Claims 34 and 40 are rejected under 35 U.S.C. § 102(b) as
anticipated by Sellards (US 4,256,199, issued Mar. 17, 1981).
II. Claims 34 and 40 are rejected under 35 U.S.C. § 102(b) as
anticipated by Xia (US 2003/0116380 Al, published June 26, 2003).
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III. Claims 10-12, 15, 16, 18-20, 25, 29, 32, 34, 37, and 40 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Goossen (US
8,251,307 B2, issued Aug. 28, 2012) and Sellards.
IV. Claim 35 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Sellards and Weinandt (US 1,242,286, issued Oct. 9, 1917).
V. Claims 13 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goossen, Sellards, and Weinandt.
VI. Claims 14 and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goossen, Sellards, and Andrews (US 3,741,340, issued
June 26, 1973).
VII. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Goossen, Sellards, and Huff (US 966,447, issued Aug. 9, 1910) or
Douglas (US 5,605,205, issued Feb. 25, 1997).
VIII. Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goossen, Sellards and Huang (US 2004/0031646 Al,
published Feb. 19, 2004).
IX. Claims 22, 23, 30, and 31 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Goossen, Sellards, and Protesto (US 2005/0242602 Al,
published Nov. 3, 2005).
X. Claims 26 and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goossen, Sellards, and Stewart (US 3,490,547, issued Jan.
20, 1970).
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Application 13/474,618
XI. Claims 38 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goossen, Sellards, and Wing Shee (US 2,538,719, issued
Jan. 16, 1951).3
ANALYSIS
I. Claims 34 and 40 anticipated by Sellards
As to claim 34, the Examiner finds that Sellards discloses a
deployable descent device 11 (cable 11) and an aerial vehicle (helicopter 15)
that is “capable to” meet the “deliver,” “anchor,” and “release” limitations.
Final Act. 2—3. Claim 40 is directed to an aerial vehicle and recites
substantially the same limitations as those in claim 34 pertaining to the aerial
vehicle. Appeal Br. 53 (Claims App.). The Examiner relies on the same
findings for claim 40 as those made for claim 34. Final Act. 2—3.
Figure 1 of Sellards depicts a building rescue system comprising cable
11 having an upper end attached to a roof of a building. Sellards, col. 2,11.
36—38. Sellards discloses two ways to attach cable 11 to the building. First,
cable 11 may be attached to the building by “an anchoring device placed on
the roof of the building by a helicopter 15,” and “[ajfter placing the cable
anchoring device on the roof, the helicopter can move backwardly to the
position shown by the dashed lines 15 and drop the cable 11 to ground level
and the free end thereof can be affixed to the wench [sic, winch].” Id. at col.
2,11. 41—44, 48—52 (emphasis added), Fig. 1. Second, “the upper end of the
cable 11 may be attached to the building by firing a projectile such as shown
3 Appellant notes that the Final Action refers to this reference as “Weinberg”
although the first-named inventor is “G.F. Wing Shee.” Appeal Br. 10;
Final Act. 17. For consistency, we refer to this reference as “Wing Shee.”
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in FIG. 2 from the helicopter through a window of the building.” Id. at
col. 2,11. 52-55, Fig. 2.
Appellant contends that neither of the two options disclosed by
Sellards anticipates claim 34. Appeal Br. 13. As to the first option,
Appellant contends that Sellards describes the helicopter simply as “placing”
an anchoring device on the roof of the building, but does not indicate that the
helicopter is “configured to” do anything but place the anchoring device on
the roof, where, presumably, humans located on the roof would then need to
actually “anchor” the anchoring device in place. Id. Thus, Appellant
contends, Sellards’ helicopter is not disclosed as being “configured to”
“anchor the first end of the deployable descent device to a feature that is on
the side of the building ... or to a feature that is accessible through the side
of the building via an opening in the side of the building at the elevated
location while the first end of the deployable descent device is supported by
the aerial vehicle.” Id. (emphasis added).
As to the second option, Appellant acknowledges that the cable is
anchored by firing a projectile through a window in the side of a building.
Id. at 14. However, Appellant contends, the anchoring mechanism (i.e., the
projectile) is fired from the helicopter, and, thus, is no longer supported by
the helicopter after being fired. Id. Consequently, Appellant contends, the
helicopter does not “anchor the first end of the deployable descent device . . .
while the first end of the deployable descent device is supported by the aerial
vehicle,” as claimed. Id. (emphasis added).
The Examiner responds that Sellards discloses that “the cable may be
attached to the building by any suitable means, such as an anchoring device
placed on the roof of the building by a helicopter 15.” Ans. 25 (emphasis
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omitted). The Examiner finds that “any suitable means” and “such as an
anchoring device” could be the one shown in Figure 2, or a “known window
anchoring hook, etc., with such an anchoring device being carried by the . . .
aerial device, such is capable/configured to be able to be anchored to the
side of a building such as to a window at the side of a building just as
Appellant’s J-hook being attached to a side of the building at the window.”
Id. at 25—26 (emphasis omitted). The Examiner also states that Sellards
describes that “after placing the cable anchoring device” on the roof of the
building, or “the capable attachment to a window at the side of the building,”
the helicopter moves backwardly to the position shown by dashed lines 15
and drops cable 11 to ground level. Id. at 26 (emphasis omitted). According
to the Examiner, it is after anchoring the first end of the deployment device
to the building by the helicopter, that the helicopter is moved backwardly to
the position shown by dashed lines 15, and, thus, the first end of the descent
device is still attached to the aerial vehicle, and is only released from the
aerial vehicle when cable 11 is dropped when the aerial vehicle reaches the
dashed lines 15. Id.
Appellant replies that the Examiner does not explain how such
helicopter, having a rotor wash that prevents it from approaching anywhere
close enough to the side of the building to facilitate placing a J-hook over a
window ledge, would be able to place such a J-hook on the building. Reply
Br. 4.
Appellant also contends, “[i]f the first end of Sellards’ descent
device/cable is anchored to the building, how is it possible for the helicopter
to then move into the position indicated by the dashed lines while the
helicopter is still attached to the first end?" Id. at Reply Br. 5. Appellant
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also contends that Figure 1 of Sellards “clearly shows that there is no
connection between the helicopter and the roof anchor point that is shown
underneath the solid-outline helicopter,” and, as such, Figure 1 does not
disclose the actual operation of Sellards’ anchoring system. Id.
We agree with Appellant that Sellards does not disclose that
helicopter 15 is “configured” to meet the “deliver,” “anchor,” and “release”
limitations of claim 34. Figure 1 of Sellards does not show an anchoring
device anchored to a feature that is on the side of building 12, or accessible
through the side of building 12. Sellards does not disclose how the
anchoring device is “placed on the roof of the building” by helicopter 15, or
how the anchoring device is secured to the upstanding structure on the roof,
as shown in Figure 1. Appellant’s contention that humans located on the
roof would need to actually “anchor” the anchoring device in place is
plausible.
In Figure 2 of Sellards, the anchoring device is propelled from the
helicopter. We agree with Appellant that it is not apparent how the upper
end of cable 11 would be anchored to “a feature that is accessible through
the side of the building via an opening in the side of the building” by
helicopter 15 while the upper end is supported by helicopter 15, as required
by claim 34. See Reply Br. 5. Nor is it clear how helicopter 15 would then
“release” the first end of cable after it is anchored to the feature. Thus, we
agree with Appellant that the Examiner has not shown with evidence that
Sellards meets each of the limitations of claim 34, which the Examiner
characterizes as “intended use.” Ans. 27.
For these reasons, we do not sustain the rejection of claims 34 and 40
as anticipated by Sellards.
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II. Claims 34 and 40 anticipated by Xia
As to claim 34, the Examiner finds that Xia discloses a deployable
descent device 12 (wind chute 12) and an aerial vehicle (helicopter 60) that
is “capable to” meet the “deliver,” “anchor,” and “release” limitations. Final
Act. 3. The Examiner relies on the same findings for claim 40. Id.
Figure 2 of Xia shows a helicopter-assisted setup of a wind chute
escape system. See Xia 134. As shown, helicopter 60 uses cable 62 to pick
up chute entrance 64 and wind chute 12 and lift them to emergency floor
level 3 of building 2. See id. 145, Fig. 2. Chute entrance 64 is then
“fastened quickly to the emergency floor level [3].” Id.
Appellant contends that Xia does not indicate that the helicopter is
configured to grab the top of wind chute 12, guide it into place, and then
perform the fastening. Appeal Br. 16. Rather, Appellant contends,
“[g]iven that the end of the wind chute is dangling at the end of a long cable
from the bottom of the helicopter, it is logical to assume that there are
humans on the building roof that grab the top of the wind chute, guide it into
place, and then perform the fastening.” Id.
The Examiner responds that, in Xia, the first end of deployment
device 12 is anchored to the side of the building by chute entrance 64, which
is brought to the building by aerial vehicle 60, and aerial vehicle 60 is
capable/configured to release the first end of deployment device 12 after the
first end is anchored by the release of pick up means 62. Ans. 28.
Appellant replies that Figure 2 of Xia relates to a descent device that
is anchored to the top of the building, not to the side. Reply Br. 6.
Appellant’s contentions are persuasive. Xia does not disclose that
helicopter 60 is configured to “anchor” the first end of wind chute (at chute
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entrance 64) to any location of building 2. Xia discloses that one function of
the chute entrance “is to provide a measure to fasten itself to the emergency
floor easily and quickly.” See Xia 36 (emphasis added). Emergency floor
level 3 is located on the top of building 2. Accordingly, it appears that chute
entrance 64 can fasten itself to emergency floor level 3 located on the top of
building 2. Xia does not discloses that helicopter 60 is configured to anchor
chute entrance 64, or any other portion of wind chute 12, to a feature located
on the side of building 2, or that is accessible through the side of building 2,
as required by claim 34.
For these reasons, we do not sustain the rejection of claims 34 and 40
as anticipated by Xia.
III. Claims 10-12, 15, 16, 18-20, 25, 29, 32, 34, 37, and40
unpatentable over Goossen and Sellards
Claims 10-12, 15, 16, 18—20, 25, and 37 depend directly, or
indirectly, from claim 34, claim 29 depends from claim 40 and recites the
same limitations as claim 10, and claim 32 depends from claim 29. Appeal
Br. 47—53 (Claims App.).
The Examiner finds that Goossen discloses an aerial vehicle having a
framework at a front of the body with at least one mechanical manipulator
arm 1 mounted to the body, wherein mechanical manipulator arm 1 is
capable of anchoring the first end of a first deployable descent device to a
feature on a side of a building at an elevated location. Final Act. 4. The
Examiner finds that Sellards discloses a deployable descent device 11
having a first end and a second end. Id. at 4—5. The Examiner concludes
that it would have been obvious to provide the system of Goossen with a
deployable descent device, as taught by Sellards, because this would have
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provided the predictable result of facilitating evacuation of a building. Id. at
5.
Appellant argues that the Examiner provides no explanation as to how
Goossen and Sellards are combined to teach all the limitations of
independent claims 34 and 40. Appeal Br. 23. However, Appellant does not
identify any specific limitation recited in claim 34 or 40 that is not disclosed
or suggested by the proposed combination. Accordingly, Appellant’s
contention against the rejection of claims 34 and 40 does not apprise us of
any error.
Appellant challenges the Examiner’s stated rationale for combining
the teachings of Goossen and Sellards. Appeal Br. 21. Appellant contends
that Sellards’ system already accomplishes the purpose stated by the
Examiner without needing to combine Sellards with the teachings of another
reference. Id. at 21—22.
This contention is not persuasive. The Examiner’s combination of
Goossen and Sellards effectively substitutes Sellards’ aerial vehicle with
another known aerial vehicle (i.e., Goossen’s UAV) to result in the claimed
system. “[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We are not
apprised of any error in the Examiner’s reasoning in regard to claim 34 or
40.
Appellant addresses the Examiner’s findings in relation to the subject
matter recited in claim 10. Appeal Br. 18—20. These contentions do not
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apprise us of any error in the Examiner’s findings as they relate to claim 34
or 40.
In regard to claim 10, Appellant contends that “there is no structure
depicted in Figure 1 of Goossen, or described elsewhere in Goossen, that can
be reasonably described as a rigid external framework configured to support
the first deployable descent device in front of the body during flight of the
aerial vehicle,” as recited in claim 10. Appeal Br. 20.
The Examiner responds that Goossen does show a “rigid frame work.”
Ans. 32. In support, the Examiner provides a definition of “frame work”
and an annotated version of Figure 10 of Goossen in which a “rigid
framework” is identified. Id. at 32—33.
Appellant replies that claim 10 recites a “rigid external framework,”
not a “rigid framework.” Reply Br. 7 (emphasis added). Appellant contends
that the claimed rigid framework is mounted to, and, thus, external to, the
“body” of the aerial vehicle, whereas Goossen’s aerial vehicle has a “body”
that appears to be provided by biplane airfoils 6. Reply Br. 7. Appellant
contends that these biplane airfoils cannot be “external” to, or “mounted to,”
themselves. Id. Thus, Appellant contends, Goossen’s biplane airfoils do not
meet the limitation of a “rigid external framework.” Id.
Appellant’s contentions are persuasive. Figure 1 of Goossen shows
upper biplane airfoils 7 and lower biplane airfoils 6, which are also shown in
Figure 10. As far as we can determine, the Examiner’s annotated Figure 10
of Goossen identifies portions of the UAV that correspond to an upper
biplane airfoil 7 and a lower biplane airfoil 6 as a “rigid framework.” Ans.
33. As shown more clearly in Figure 10 of Goossen, manipulator arm 1
includes a pivot 18 attached to UAV 3. See Goossen, col. 5,11. 48—50. As
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noted, the Examiner finds that Goossen’s manipulator arm 1 is mounted to
the “body.” Assuming this finding is correct, the “rigid framework” in
annotated Figure 10 of Goossen appears to correspond to the “body.” We
agree with Appellant that it is not apparent how the “rigid framework” is
mounted to the “body.” It is also not apparent how upper biplane airfoils 7
or lower biplane airfoils 6 can be considered a “framework.” It is further not
apparent how the “rigid framework” identified in annotated Figure 10 is
“configured to support the first deployable descent device in front of the
body during flight of the aerial vehicle.” In fact, the Examiner makes no
finding that Goossen’s “rigid framework” in annotated Figure 10 would
support the first deployable descent device in front of the body of the UAV
during its flight, as required by claim 10. In the UAV shown in Figure 10, it
is manipulator arm 1 that is configured to support a payload.
For these reasons, we sustain the rejection of claim 34, but do not
sustain the rejection of claim 10, or claims 11, 12, 15, 16, 18—20, 25, and 37
depending therefrom, as unpatentable over Goossen and Sellards. For the
same reasons, we sustain the rejection of claim 40, but do not sustain the
rejection of claims 29 and 32, as unpatentable over Goossen and Sellards.
IV Claim 35 unpatentable over Sellards and Weinandt
The Examiner’s application of Weinandt to reject claim 35, which
depends from claim 34, does not cure the deficiency in the rejection of claim
34 as anticipated by Sellards (Rejection I). Final Act. 7—8.
V. Claims 13 and 35 over Goossen, Sellards, and Weinandt
The Examiner’s application of Weinandt to reject claim 13, which
depends from claim 11, does not cure the above-discussed deficiency in the
rejection of claim 11 (Rejection III). Final Act. 7—8. Accordingly, we do
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not sustain the rejection of claim 13 as unpatentable over Goossen, Sellards,
and Weinandt.
Claim 35 depends from claim 34. Appellant relies on the contentions
made for the rejection of claim 34 over Goossen and Sellards (Rejection III)
for patentability of claim 35. See Appeal Br. 28. As those contentions are
not persuasive, we sustain the rejection of claim 35 as unpatentable over
Goossen, Sellards, and Weinandt.
VI. Claims 14 and 36 unpatentable over Goossen, Sellards, and Andrews
Claim 14 depends from claim 10, and claim 36 depends from claim
14. The Examiner’s application of Andrews to reject claims 14 and 36 does
not cure the deficiency in the rejection of claim 10. Final Act. 9—11.
Accordingly, we do not sustain the rejection of claims 14 and 36 as
unpatentable over Goossen, Sellards, and Andrews.
VII. Claim 24 unpatentable over Goossen, Sellards, and Huff or Douglas
The Examiner’s application of Huff or Douglas to reject claim 24,
which depends from claim 10, does not cure the above-discussed deficiency
in the rejection of claim 10. Final Act. 11—12. Accordingly, we do not
sustain the rejection of claim 24 as unpatentable over Goossen, Sellards, and
Huff or Douglas.
VIII. Claims 27 and 28 unpatentable over Goossen, Sellards and Huang
Claim 27 depends from claim 10, and claim 28 depends from claim
27. The Examiner’s application of Huang to reject claims 27 and 28 does
not cure the deficiency in the rejection of claim 10. Final Act. 12—14.
Accordingly, we do not sustain the rejection of claims 27 and 28 as
unpatentable over Goossen, Sellards, and Huang.
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IX. Claims 22, 23, 30, and 31 unpatentable over Goossen,
Sellards, and Protesto
Claim 22 depends from claim 10, claim 23 depends from claim 22,
claim 30 depends from claim 29, which recites the same limitations as claim
10, and claim 31 depends from claim 30. The Examiner’s application of
Protesto to reject claims 22, 23, 30, and 31 does not cure the deficiency in
the rejection of claims 10 and 29. Final Act. 14—15. Accordingly, we do not
sustain the rejection of claims 22, 23, 30, and 31 as unpatentable over
Goossen, Sellards, and Protesto.
X. Claims 26 and 33 unpatentable over Goossen, Sellards, and Stewart
Claim 26 depends from claim 12, and claim 33 depends from claim
29. The Examiner’s application of Stewart to reject claims 26 and 33 does
not cure the deficiency in the rejection of claims 12 and 29. Final Act. 16—
17. Accordingly, we do not sustain the rejection of claims 26 and 33 as
unpatentable over Goossen, Sellards, and Stewart.
XI. Claims 38 and 39 unpatentable over Goossen, Sellards, and Wing Shee
Claim 38 depends from claim 10 and claim 39 depends from claim 38.
The Examiner’s application of Wing Shee to reject claims 38 and 39 does
not cure the deficiency in the rejection of claim 10. Final Act. 17—18.
Accordingly, we do not sustain the rejection of claims 38 and 39 as
unpatentable over Goossen, Sellards, and Wing Shee.
DECISION
We reverse the rejection of claims 34 and 40 as anticipated by
Sellards.
We reverse the rejection of claims 34 and 40 as anticipated by Xia.
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We affirm the rejection of claims 34 and 40, and reverse the rejection
of claims 10-12, 15, 16, 18—20, 25, 29, 32, and 37, as unpatentable over
Goossen and Sellards.
We reverse the rejection of claim 35 as unpatentable over Sellards and
Weinandt.
We reverse the rejection of claim 13, and affirm the rejection of claim
35, as unpatentable over Goossen, Sellards, and Weinandt.
We reverse the rejection of claims 14 and 36 as unpatentable over
Goossen, Sellards, and Andrews.
We reverse the rejection of claim 24 as unpatentable over Goossen,
Sellards, and Huff or Douglas.
We reverse the rejection of claims 27 and 28 as unpatentable over
Goossen, Sellards and Huang.
We reverse the rejection of claims 22, 23, 30, and 31 as unpatentable
over Goossen, Sellards, and Protesto.
We reverse the rejection of claims 26 and 33 as unpatentable over
Goossen, Sellards, and Stewart.
We reverse the rejection of claims 38 and 39 as unpatentable over
Goossen, Sellards, and Wing Shee.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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