Ex Parte Olson et al

Patent Trial and Appeal Board

Sep 27, 2016

13326086 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/326,086 12/14/2011
34082 7590 09/29/2016
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
Michael R. Olson
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.
P07509US0-6059 1021
EXAMINER
GREENE, DANIEL LAWSON
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
swood@zarleylaw.com
kconrad@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. OLSON and JACK ZENG
Appeal2015---000514
Application 13/326,086 1
Technology Center 3600
Before THOMAS F. SMEGAL, LISA M. GUIJT, and
GORDON D. KINDER Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael R. Olson and Jack Zeng (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner's final rejection under 35 U.S.C. § 103(a)
of claims 1---6 as unpatentable over Colvard (US 2008/0253834 Al, pub.
Oct. 16, 2008) and Park (US 2008/0191875 Al, pub. Aug. 14, 2008). 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
1 According to Appellants, the real party in interest is Sauer-Danfoss
Inc. Appeal Br. 1.
2 Appellants' Amendment after Final filed on January 21, 2014 was not
entered. See Ans. 2. The correct version of claim 2 is found in the
Amendment filed September 20, 2013.
Appeal2015---000514
Application 13/326,086
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter.
1. A sensing system for road construction equipment
compnsmg:
a road construction vehicle;
a mounting bracket having a machine readable medium
affixed thereon;
a wireless sensor mounted on the mounting bracket and
having a reading device; and
wherein when the wireless sensor is mounted on the
mounting bracket the reading device scans the machine readable
medium.
ANALYSIS
Obviousness of Claims 1-6 over Colvard and Park
We are persuaded by Appellants' arguments that the Examiner fails
to establish a prima facie sho\~1ing of obviousness in rejecting claims 1-6
over Colvard and Park. See Appeal Br. 2-9; see also Reply Br. 2-7.
In rejecting claim 1, the Examiner finds that Colvard teaches a sensing
system for road construction equipment comprising "a road construction
vehicle (10), a mounting bracket (18) having a machine readable medium
( 16) affixed thereon, [and] a sensor ( 46) mounted on a mounting bracket
(50) and having a reading device [that scans the machine readable medium
(16)]," but "does not appear to expressly disclose a 'wireless' sensor
mounted on the mounting bracket [18]."3 Non-Final Act. 3.
3 The Final Action describes the rejection as being "for the reasons set
forth in section 7 of the previous 6/20/2013 Office Action [hereafter Non-
Final Act.]." Final Act. 4.
2
Appeal2015---000514
Application 13/326,086
However, the Examiner finds that Park teaches
a mounting bracket (not shown) having a machine readable
medium (220, 130, 132) affixed thereon: a 'wireless' sensor
(200) mounted on the mounting bracket (not shown) and having
a reading device (240); and wherein when the wireless sensor is
mounted on the mounting bracket (not shown) the reading device
scans the machine readable medium."
Id. at 3--4 (citing Park i-f 62).
Based on the foregoing, the Examiner reasons that "it would have
been obvious ... to replace the string line of Colvard with the wireless
sensors taught by Park as being no more 'than the predictable use of prior-art
elements according to their established functions."' Id. at 4--5.
We are not persuaded by Appellants' first contention that "the sensing
system of [Appellants'] invention is directed at the problem of providing a
plurality of wireless sensors that can be individually identified
automatically." Appeal Br. 3. Claim 1 is not limited to "a plurality of
wireless sensors that can be individually identified automatically," but
merely recites a wireless sensor "having a reading device [that] scans the
machine readable medium." 4 See Appeal Br. A-1, Claims App.
Appellants also contend that "[ c ]laim 1 requires . . . that both the
machine readable medium 30 and the wireless sensor 32 are attached to the
4 If there is further prosecution of this application, the Examiner may wish to
consider whether claim 1 should be rejected under U.S.C. § 112, first
paragraph, as not being enabled. It is unclear how the disclosure of a
"plurality of sensors 36 [that] provide signals that are received by the
wireless sensor 32 and sent to the master controller 20," would operate,
when claim 1 is limited to a single wireless sensor "mounted on the
mounting bracket" and also recites that machine readable medium 30 is
"affixed" to mounting bracket 26. See Specification at page 4, lines 7-27.
3
Appeal2015---000514
Application 13/326,086
same bracket 26," while Colvard "teaches a string line 16 that is separate
and apart from the sensors 42-50," and "Park teaches a tag mounting unit
220 mounted in a house 200 on the bottom surface of a door and not on a
bracket to which the reader unit 240 is mounted, as is clearly shown in
Figures 1and3 of Park." Id. at 9 (citing Park, i-fi-157, 58).
In response, the Examiner reasons that "Colvard clearly teaches a
mobile unit 201 that replaces string line 16," while "Park teaches an RFID
device and reader that replaces mobile unit 201 that replaces string line 16,"
so that "the combination of Colvard and Park renders obvious the claimed
invention." Ans. 12.
However, Appellants again point out that "claim 1 requires that the
machine readable medium and the reader be on the same bracket," while
"Park does not teach that the tag mounting unit 220 is mounted on the same
bracket as the reader unit 240, but rather that the tag mounting unit 220 is
located on a bottom surface of a door and the bracket the reader unit is
attached to [is at] some other place in the home 200." Reply Br. 7.
We agree with Appellants that neither Colvard nor Park disclose a
machine readable medium and reader on the same bracket, as recited by
claim 1. We therefore find that the Examiner's legal conclusion of
obviousness is not supported by evidence and, thus, cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal
conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.").
For the foregoing reasons, we do not sustain the Examiner's rejection
of claims 1---6 over Colvard and Parks.
4
Appeal2015---000514
Application 13/326,086
DECISION
We REVERSE the Examiner's rejection claims 1-6.
REVERSED
5