Ex Parte MillerDownload PDFPatent Trial and Appeal BoardJan 31, 201815066499 (P.T.A.B. Jan. 31, 2018) Copy Citation 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. 15/066,499 03/10/2016 Lee Miller 043020-9065-US02 1092 23409 7590 02/02/2018 MICHAEL BEST & FRIEDRICH LLP (Mke) 100 E WISCONSIN AVENUE Suite 3300 MILWAUKEE, WI 53202 EXAMINER KING, CURTIS J ART UNIT PAPER NUMBER 2684 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEE MILLER1 Appeal 2017-008419 Application 15/066,499 Technology Center 2600 Before ERIC B. CHEN, IRVIN E. BRANCH, and MATTHEW R. CLEMENTS, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1—4, 6—10, 12—16, and 18. Claims 5, 11, and 17 have been indicated to be allowable if rewritten in independent form. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s claimed subject matter relates to tracking heavy machine teeth, which includes an active RFID tag coupled to a heavy machine tooth to move with the tooth, and the RFID reader configured to provide an 1 The real party in interest is Hamischfeger Technologies, Inc. (App. Br. 2.) Appeal 2017-008419 Application 15/066,499 indication regarding the location of the tooth when the tooth separates from the bucket. (Abstract.) Claim 1 is exemplary, with disputed limitations in italics: 1. A system comprising: a heavy machine tooth; a mounting bracket coupling the heavy machine tooth to a bucket of a heavy machine, the mounting bracket separate from the bucket of the heavy machine and having a first end attachable to the heavy machine tooth and a second end attachable to the bucket of the heavy machine; an RFID tag positioned between the mounting bracket and the heavy machine tooth, the RFID tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket; and an RFID reader configured to receive at least one signal from the RFID tag and detect separation of the heavy machine tooth from the bucket based on the at least one signal received from the RFID tag. Claims 1—3, 7—9, and 13—15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lujan (US 2004/0227645 Al; published Nov. 18, 2004), Menke (US 2006/0226984 Al; published Oct. 12, 2006), Ebert (US 2012/0098654 Al; published Apr. 26, 2012), and Bentley (US 2008/0000114 Al; published Jan. 3, 2008). Claims 4, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lujan, Menke, Ebert, Bentley, and Collins (US 2010/0079288 Al; published Apr. 1, 2010). Claims 6, 12, and 18 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Lujan, Menke, Ebert, Bentley, and Hall (US 2013/0035875 Al; published Feb. 7, 2013). 2 Appeal 2017-008419 Application 15/066,499 ANALYSIS §103 Rejection—Lujan, Menke, Ebert, and Bentley We are unpersuaded by Appellant’s arguments (App. Br. 7, 10-11) that the combination of Lujan, Menke, Ebert, and Bentley would not have rendered obvious independent claim 1, which includes the limitation “the mounting bracket separate from the bucket of the heavy machine and having a first end attachable to the heavy machine tooth and a second end attachable to the bucket of the heavy machine.” The Examiner found that the mining bucket of Lujan, which supports the tooth of the mining machine of Lujan, as illustrated in Figure 1, corresponds to the limitation “a mounting bracket coupling the heavy machine tooth to a bucket of a heavy machine.” (Final Act. 2; see also Ans. 2—3.) The Examiner further found that the adapter of Bentley, which attaches an excavation tooth to a dipper bucket, corresponds to the limitation “the mounting bracket separate from the bucket of the heavy machine and having a first end attachable to the heavy machine tooth and a second end attachable to the bucket of the heavy machine.” (Final Act. 4; see also Ans. 3.) The Examiner concluded that “it would have been obvious ... to allow the heavy machine tooth of Lujan, Menke, and Ebert to be connected to a mounting bracket which is connected to a bucket of a heavy machine, as taught by Bentley” because such combination is “use [of] a known alternative technique in which a tooth may be attached to a bucket of a heavy machine.” (Final Act. 4.) We agree with the Examiner. Lujan relates to control of heavy mining equipment (| 2), in particular, “[a] motion detector and signal transmitter for use in an apparatus for detecting and reporting dislocation of heavy mining equipment” 3 Appeal 2017-008419 Application 15/066,499 (Abstract). Figure 1 of Lujan illustrates a cross-sectional view of an end portion of a mining bucket with a tooth assembly (| 7), such that “a mining bucket 14 normally supports an adapter or tooth 22 which is part of one of the tooth assemblies carried by a mining machine” (| 12). Bentley relates to excavating equipment, in particular, “bucket tooth and adaptor assemblies for use on dipper buckets.” (12) Figure 1 of Bentley illustrates tooth/adaptor assembly 10, in which “[tjooth 12 is seated onto adaptor 14 and secured by retainer pin 16” and “[ajdaptor 14 comprises elongated U-shaped member 15 that attaches to dipper bucket 18.” (149.) Because Figure 1 of Bentley illustrates that tooth 12 is secured to dipper bucket 18 via adaptor 14, Bentley teaches the limitation “the mounting bracket separate from the bucket of the heavy machine and having a first end attachable to the heavy machine tooth and a second end attachable to the bucket of the heavy machine.” The combination of Lujan, Menke, Ebert, and Bentley is nothing more than incorporating the known adaptor of Bentley for securing the tooth to the dipper bucket, with the known mining bucket of Lujan that supports a tooth, to yield predictable results. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we agree with the Examiner (Final Act. 4) that modifying Lujan to include known adaptor of Bentley would have been obvious. Appellant argues that “Lujan discloses coupling the tooth 22 directly to the bucket 14” and 4 Appeal 2017-008419 Application 15/066,499 [accordingly, Lujan fails to teach or suggest “a mounting bracket separate from a bucket of a heavy machine and coupling the heavy machine tooth to the bucket of the heavy machine, the mounting bracket having a first end attachable to the heavy machine tooth and a second end attachable to the bucket of the heavy machine,” as recited in Claim 1. (App. Br. 7.) However, the Examiner cited to Bentley, rather than Lujan, for teaching the limitation “the mounting bracket having a first end attachable to the heavy machine tooth and a second end attachable to the bucket of the heavy machine.” (Final Act. 4.) Appellant further argues that “it appears that FIG. 5 [of Ebert] only shows the positions of the two transmitters within each tooth 51 and fails to provide any information regarding the position of the adapters” (App. Br. 10) and Ebert fails to teach or suggest “a mounting bracket separate from a bucket of a heavy machine and coupling the heavy machine tooth to the bucket of the heavy machine, the mounting bracket having a first end attachable to the heavy machine tooth and a second end attachable to the bucket of the heavy machine ...” (id. at 11). However, the Examiner cited to Bentley, rather than Ebert, for teaching the limitation “the mounting bracket having a first end attachable to the heavy machine tooth and a second end attachable to the bucket of the heavy machine.” (Final Act. 4.) Thus, we agree with the Examiner that the combination of Lujan, Menke, Ebert, and Bentley would have rendered obvious independent claim 1, which includes the limitation “the mounting bracket separate from the bucket of the heavy machine and having a first end attachable to the heavy machine tooth and a second end attachable to the bucket of the heavy machine.” 5 Appeal 2017-008419 Application 15/066,499 We are also unpersuaded by Appellant’s arguments (App. Br. 7—9, 11—12; see also Reply Br. 3 4) that the combination of Lujan, Menke, Ebert, and Bentley would not have rendered obvious independent claim 1, which includes the limitation “an RFID tag positioned between the mounting bracket and the heavy machine tooth, the RFID tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket.” The Examiner found that the RFID transponder device of Menke, for detecting wear in mining machines, corresponds to the limitation “RFID tag.” (Final Act. 3; see also Ans. 5.) The Examiner further found that the transmitters of Ebert, which are mounted to the teeth of a bucket, correspond to the limitation “tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket.” (Final Act. 3; see also Ans. 9.) The Examiner concluded that “it would have been obvious ... to implement RFID devices in the system of Lujan to detect wear or separation, as taught by Menke” (Final Act. 3) because “one of ordinary skill in the art may substitute an RFID for the transducer, since both utilize wireless technology to deliver an alert in regards to the heavy machine” (Ans. 5). The Examiner further concluded that “it would have been obvious ... to allow the tag of Lujan and Menke to be placed in the tooth, as taught by Ebert” for “detect[ing] when a tooth has broken away from the heavy machine and avoid jamming the milling operation and shutting down the whole process.” (Final Act. 4). We agree with the Examiner. Figure 2 of Lujan illustrates a cross-sectional elevation view of transducer assembly 50. (12). Figure 2 of Lujan further illustrates that 6 Appeal 2017-008419 Application 15/066,499 recess 17 is formed in an upper surface of mining bucket 14 for receiving transducer assembly 50, such that transducer assembly 50 is in contact with tooth 22. (See ^14.) Menke relates “to a system for the detection of the wear state of machine parts which are subject to mechanical wear.” (| 2.) In one example, Menke explains that “in the field of. . . mining machines, large feed or processing apparatuses such as drills or worm feeds are used, which are subject to relatively rapid wear, in which case the wear state and/or the reaching of a wear limit must be indicated reliably in order that the worn machine part can be replaced in good time.” (| 4.) Menke further explains that “the transponder device operates with amplitude modulation (AM)” and “[t]he transponder devices according to the invention preferably operate on the RFID (radio frequency identification) principle.” (| 11.) Thus, Menke teaches the limitation “RFID tag.” Ebert relates to “monitor[ing] for lost teeth from the scoop using another sensor/transmitter combination and warns the operator i[f] a tooth is lost.” (Abstract.) Figure 5 of Ebert illustrates teeth 51 having transmitters 52 such that “[tjhese transmitters 52 are monitored ... to determine if a tooth and/or adapter has been broken from the bucket.” (| 47.) Thus, Ebert teaches the limitation “tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket.” Combining Lujan, Menke, Ebert, and Bentley is no more than the simple substitution of the known RFID transponder devices of Menke, for the known transponder of Lujan, to yield predictable results. See KSR, 550 U.S. at 417. Similarly, combining Lujan, Menke, Ebert, and Bentley is nothing more than incorporating the known method of Ebert for placing 7 Appeal 2017-008419 Application 15/066,499 transmitters on the teeth to determine if teeth have broken from a bucket, with the known mining bucket of Lujan, to yield predictable results. See id. at 416. This combination would result in the RFID transponder of Menke contacting tooth 22 of Lujan, such that tooth 22 is attached to mining bucket 14 via adaptor 14 of Bentley, with the RFID transponder of Menke used to determine if the tooth 22 has broken from bucket 14. Accordingly, the combination of Lujan, Menke, Ebert, and Bentley teaches the limitation “an RFID tag positioned between the mounting bracket and the heavy machine tooth, the RFID tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket.” Thus, we agree with the Examiner (Final Act. 3—4) that modifying Lujan to include Menke, Ebert, and Bentley would have been obvious. Appellant argues that “Lujan fails to teach or suggest ‘an RFID tag positioned between the mounting bracket and the heavy machine tooth, the RFID tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket’” (App. Br. 7) because “the transducer assembly 50 is not positioned between a mounting bracket and a tooth as recited in Claim 1 but is positioned within a recess of the bucket 14” and “[i]n this configuration, the transducer assembly 50 does not and cannot ‘move with the heavy machine tooth when the tooth is separated from the bucket’” {id. at 8). Similarly, Appellant argues that “the transducer assembly 50 disclosed in Lujan is positioned within the bucket 14 and nothing is positioned within the space separating the tooth 22 and the bucket 14” and “the transducer assembly 50 disclosed in Lujan is not positioned ‘between the mounting bracket and the heavy machine tooth.’” (Reply Br. 4 (emphases omitted).) However, the Examiner cited to Bentley, 8 Appeal 2017-008419 Application 15/066,499 rather than Lujan, for teaching the limitation “the mounting bracket” (Final Act. 4) and cited to Ebert, rather than Lujan, for teaching the limitation a “tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket” {id. at 3). Moreover, as discussed previously, the combination of Lujan, Menke, Ebert, and Bentley would result in the RFID transponder of Menke contacting tooth 22 of Lujan, such that tooth 22 is attached to mining bucket 14 via adaptor 14 of Bentley, and thus, teaches the limitation “an RFID tag positioned between the mounting bracket and the heavy machine tooth.” Next, Appellant argues that “there is no motivation to combine the teachings of Lujan with the teachings of Menke” because “Lujan and Menke disclose contrasting uses of transmitting signals, which makes the combination of their technologies illogical and, in fact, impossible.” (App. Br. 8.) However, the Examiner’s articulated reasoning for combining Lujan and Menke is based upon the simple substitution of the RFID transponder of Menke for transducer assembly 50 of Lujan, rather than incorporating the RFID transponder of Menke with transducer assembly 50 Lujan. (Ans. 5.) Appellant also argues that “the disclosure of Menke relates to detecting wear of components included in a compactor handling sewage waste and is completely unrelated to a heavy machine including a bucket and at least one tooth.” (App. Br. 9 (citation omitted).) Contrary to Appellant’s arguments, Menke provides an example in which an RFID transponder device is used for mining machines, in order to detect worn machine parts. (14.) Appellant argues further that “even if the transmitting device taught by Menke could be used within the transducer assembly 50 taught by Lujan 9 Appeal 2017-008419 Application 15/066,499 . . . the transmitting device would still not be positioned between ‘the mounting bracket and the heavy machine tooth, the RFID tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket’” because “the transducer assembly 50 disclosed in Lujan is contained within a mining bucket 14.” (App. Br. 9 (emphasis omitted).) However, as discussed previously, the combination of Lujan, Menke, Ebert, and Bentley would result in the RFID transponder of Menke contacting tooth 22 of Lujan, such that tooth 22 is attached to mining bucket 14 via adaptor 14 of Bentley with the RFID transponder of Menke used to determine if the tooth 22 has broken from bucket 14, and thus, teaches the limitation “an RFID tag positioned between the mounting bracket and the heavy machine tooth, the RFID tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket.” Appellant argues that “Ebert also fails to solve the deficiencies of Lujan and Menke” (App. Br. 9) because “the system disclosed in Lujan indicates a part has separated from a piece of machinery when a signal is transmitted” and “the system disclosed in Ebert is configured to indicate that a tooth has separated from a dipper when a signal is not transmitted” {id. at 10 (emphases omitted)). However, the Examiner cited to Ebert solely for the teaching of “tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket,” rather than for its teaching of signal transmission from the transmitter. (Final Act. 3.) Appellant also argues that “Ebert fails to teach or suggest an RFID tag ‘positioned between the mounting bracket and the heavy machine tooth, ’ as 10 Appeal 2017-008419 Application 15/066,499 recited in Claim 1” but “merely states that a tooth is equipped with two transmitters but provides no details regarding the specific positions of these transmitters with respect to the tooth or the adapters.” (App. Br. 11.) Again, as discussed previously, the combination of Lujan, Menke, Ebert, and Bentley would result in the RFID transponder of Menke contacting tooth 22 of Lujan, such that tooth 22 is attached to mining bucket 14 via adaptor 14 of Bentley, and thus, teaches the limitation “an RFID tag positioned between the mounting bracket and the heavy machine tooth.” Finally, Appellant argues “Bentley makes no mention whatsoever of positioning any type of transmitting device with respect to the disclosed mounting adaptor” and “Bentley clearly fails to teach or suggest ‘an RFID tag’ or, in particular, ‘an RFID tag positioned between the mounting bracket and the heavy machine tooth, the RFID tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket.’” (App. Br. 12.) Again, as discussed previously, the combination of Lujan, Menke, Ebert, and Bentley would result in the RFID transponder of Menke contacting tooth 22 of Lujan, such that tooth 22 is attached to mining bucket 22 via adaptor 14 of Bentley, and thus teaches the limitation “an RFID tag positioned between the mounting bracket and the heavy machine tooth.” Thus, we agree with the Examiner that the combination of Lujan, Menke, Ebert, and Bentley would have rendered obvious independent claim 1, which includes the limitation “an RFID tag positioned between the mounting bracket and the heavy machine tooth, the RFID tag coupled to the heavy machine tooth to move with the heavy machine tooth when the tooth is separated from the bucket.” 11 Appeal 2017-008419 Application 15/066,499 Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a). Claims 2 and 3 depend from claim 1, and Appellant has not presented any additional substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 2 and 3 under 35 U.S.C. § 103(a), for the same reasons discussed with respect to independent claim 1. Independent claims 7 and 13 recite limitations similar to those discussed with respect to independent claim 1, and Appellant has not presented any additional substantive arguments with respect to these claims. We sustain the rejection of claims 7 and 13, as well as dependent claims 8, 9, 14, and 15, for the same reasons discussed with respect to claim 1. §103 Rejection—Lujan, Menke, Ebert, Bentley, and Collins Although Appellant nominally argues the rejection of dependent claims 4, 10, and 16 separately (App. Br. 12), the arguments presented do not point out with particularity or explain why the limitations of these dependent claims are separately patentable. Instead, Appellant argues that “Claims 4, 10, and 16 are allowable for at least the reasons set forth above with respect to Claims 1,7, and 13” and “Collins fails to solve the deficiencies of Lujan, Menke, Ebert, and Bentley.” (Id.) We are not persuaded by these arguments for the reasons discussed with respect to claim 1, 7, and 13, from which claims 4, 10, and 16 depend. Accordingly, we sustain this rejection. §103 Rejection—Lujan, Menke, Ebert, Bentley, and Hall Although Appellant nominally argues the rejection of dependent claims 6, 12, and 18 separately (App. Br. 12—13), the arguments presented 12 Appeal 2017-008419 Application 15/066,499 do not point out with particularity or explain why the limitations of these dependent claims are separately patentable. Instead, Appellant argues that “Claims 6, 12, and 18 are allowable for at least the reasons set forth above with respect to Claims 1, 7, and 13, respectively” and “Hall fails to solve the deficiencies of Lujan, Menke, Ebert, and Bentley.” (Id. at 12.) We are not persuaded by these arguments for the reasons discussed with respect to claim 1, 7, and 13, from which claims 6, 12, and 18 depend. Accordingly, we sustain this rejection. DECISION The Examiner’s decision to reject claims 1—4, 6—10, 12—16, and 18 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)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation