Ex Parte Olsson

Patent Trial and Appeal Board

Feb 24, 2017

12939591 (P.T.A.B. Feb. 24, 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.
12/939,591 11/04/2010 Mark S. Olsson SEEK 09-168-201 5695
13235 7590
Steven C. Tietsworth
3527 Talbot St.
San Diego, CA 92106
EXAMINER
HOLLOWAY III, EDWIN C
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
tietsworth@cox.net
steven. tietsworth @ seescan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK S. OLSSON
Appeal 2016-002531
Application 12/939,591
Technology Center 2600
Before MAHSHID D. SAADAT, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—3, 5—10, 15, 16, 18, and 19.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is SeeScan, Inc.
App. Br. 1.
2 Claims 11—14 and 20 are indicated as containing allowable subject matter.
Final Act. 5. Claims 4 and 17 are cancelled. App. Br. 14, 17.
Appeal 2016-002531
Application 12/939,591
STATEMENT OF THE CASE
The Invention
According to the Specification, the “invention relates generally to
electronic personal communication devices and in particular to their
adaptation as user-interface nodes in underground utility locating and pipe
inspection systems.” Spec. 1:9—12.3 The Specification explains that “[a]
personal communication device or ‘smart phone’ is connected to a utility
locator system or pipe inspection system and serves as a user interface,
communication interface, and control system for such systems.” Abstract.
Exemplary Claim
1. An underground utility locating system, comprising:
a portable locator including a plurality of omnidirectional
antennas for detecting emissions from a buried utility;
a personal communication device operatively connected
to the portable locator for receiving information from the
portable locator representing a location of the buried utility; and
programming in the personal communication device for
storing and transmitting the location of the buried utility;
wherein the portable locator has a receptacle for
removably receiving the personal communication device and
a first connector for mating with a second connector of the
portable communication device.
App. Br. 14 (Claims App.).
3 This decision uses the following abbreviations: “Spec.” for the
Specification, filed November 4, 2010; “Final Act.” for the Final Office
Action, mailed September 2, 2014; “App. Br.” for the Appeal Brief, filed
August 3, 2015; “Ans.” for the Examiner’s Answer, mailed October 29,
2015; and “Reply Br.” for the Reply Brief, filed December 29, 2015.
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Application 12/939,591
The Prior Art Supporting the Rejections on Appeal
Taylor, Jr. et al. US 2003/0164789 Al Sept. 4, 2003
(“Taylor”)
Nielsen et al. US 2011/0191058 Al Aug. 4, 2011
(filed Aug. 11,2010)(“Nielsen ’058
publication”)
The Rejections on Appeal
Claims 1—3, 5—10, 15, 16, and 19 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by the Nielsen ’058 publication. Final Act. 2-4.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the Nielsen ’058 publication and Taylor. Final Act. 5.
We have reviewed the rejections of claims 1—3, 5—10, 15, 16, 18, and
19 in light of Appellant’s arguments that the Examiner erred. For the
reasons explained below, we are persuaded by Appellant’s contention that
the prior art fails to disclose a “system” comprising (1) “a portable locator”
that detects “emissions for a buried utility” and (2) “a personal
communication device operatively connected to the portable locator,”
as required by independent claims 1, 15, 16, and 19.
The Nielson ’058 publication is based on Application 12/854,370
(“Nielson ’370 application”) filed in August 2010 with a 198-page
specification and 45 drawing pages. See App. Br. 9; Nielson ’058 Publ’n
Cover Page. The Nielson ’058 publication claims priority to two provisional
ANALYSIS
The Rejection of Claims 1—3, 5—10,
15, 16, and 19 Under 35 U.S.C. § 102(e)
Background Regarding Filing Dates
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Application 12/939,591
applications: (1) Provisional Application 61/233,105 (“Nielson ’105
provisional”) filed in August 2009 with a 77-page specification and
14 drawing pages and (2) Provisional Application 61/291,017 (“Nielson
’017 provisional”) filed in December 2009 with a 138-page specification and
31 drawing pages. See App. Br. 9-10; Nielson ’058 Publ’n || 2—3.
Appellant’s Application 12/939,591 claims priority to Provisional
Application 61/259,519 filed in November 2009. Spec. 1:5—7. That date
falls between the August 2009 filing data for the Nielson ’105 provisional
and the December 2009 filing date for the Nielson ’017 provisional.
Therefore, our analysis focuses on whether the Nielson ’ 105 provisional
includes sufficient support for the Nielson ’058 publication, as relied upon
by the Examiner.
“Portable Locator” Together with
“Personal Communication Device”
Independent claims 1, 15, 16, and 19 each require a “system”
comprising (1) “a portable locator” that detects “emissions for a buried
utility” and (2) “a personal communication device operatively connected to
the portable locator.” App. Br. 14, 16—17 (Claims App.). Appellant argues
that the Nielson ’105 provisional concerns a paint marker rather than a
utility locator and that the locator-related disclosure in the Nielson ’058
publication was added after Appellant’s November 2009 priority date, e.g.,
in the December 2009 Nielson ’017 provisional or the August 2010 Nielson
’370 application. App. Br. 4—6, 8—11; Reply Br. 1—2, 4—5. Appellant also
argues that the Nielson ’105 provisional does not describe an invention
according to claims 1, 15, 16, and 19. Reply Br. 3^4; see App. Br. 10-11.
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Application 12/939,591
The Nielson ’058 publication explains that “[t]he term ‘locate device’
refers to any apparatus and/or device, used alone or in combination with any
other device, for detecting and/or inferring the presence or absence” of an
underground facility, such as oil, gas, water, and sewer pipes, as well as
power and telephone lines. Nielson ’058 Publ’n || 42-43. A “locate
device” may be called a “utility locator.” See App. Br. 5, 10; Ans. 6.
The Nielson ’058 publication also explains that “[t]he term ‘marking
device’ refers to any apparatus, mechanism, or other device that employs a
marking dispenser” for dispensing a marking material, such as paint, chalk,
or dye in various colors. Nielson ’058 Publ’n 144. A “marking device”
may be called a “marking paint applicator” or simply “paint marker.” See
App. Br. 4—5.
The Examiner finds that the Nielson ’105 provisional discloses a
portable marking device with a location tracking system and a cellular phone
or personal digital assistance coupled to the device. Ans. 4—7, 9-12 (citing
Nielson ’105 Prov. 10, 74, 79, 118, 129, Fig. 3). The Examiner reasons
that “the device has a locating operation and may be called a Locator.” Id.
at 4, 8—9.
Based on the record before us, we agree with Appellant that the
Nielson ’105 provisional does not describe an invention according to
claims 1, 15, 16, and 19. More specifically, that provisional does not
disclose a “system” comprising (1) “a portable locator” that detects
“emissions for a buried utility” and (2) “a personal communication device
operatively connected to the portable locator.”
The Nielson ’105 provisional explains that the location tracking
system is used to generate an electronic record of a marking operation. See,
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Application 12/939,591
e.g., Nielson ’105 Prov. Tflf 36—38, 129. For instance, when an operator
causes the marking device to dispense marking material on the ground, the
location tracking system determines geo-location data (latitude and
longitude) for the marked location, e.g., with a GPS receiver. See, e.g., id.
1171, 87, 119, 127. Thus, when an operator finishes a marking operation,
an electronic record of all marked locations will exist. The Nielson ’105
provisional notes that an electronic record provides documentation of where
physical locate marks were dispensed and, therefore, facilitates ensuring the
accuracy of a marking operation. Id. 24—25.
The Examiner has not adequately explained how the location tracking
system (or any other component) in the Nielson ’105 provisional detects
“emissions for a buried utility” as required by claims 1, 15, 16, and 19.
Consequently, we do not sustain the anticipation rejection of claims 1,15,
16, and 19. Claims 2, 3, and 5—10 depend from claim 1. For the reasons
discussed regarding claim 1, we do not sustain the anticipation rejection of
these dependent claims.
Because this determination resolves the appeal with respect to
claims 1—3, 5—10, 15, 16, and 19, we need not address Appellant’s other
arguments regarding Examiner error.
The Rejection of Claim 18 Under 35 U.S.C. § 103(a)
Independent claim 18 requires a “system” comprising (1) “a portable
tripod locator” that detects “emissions for a buried utility” and (2) “a
personal communication device operatively connected to the portable
locator.” App. Br. 17 (Claims App.). Based on the record before us, the
Examiner has not identified any teaching in the additionally cited Taylor
reference that overcomes the deficiency in the Nielson ’105 provisional
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Application 12/939,591
discussed above for claims 1, 15, 16, and 19. Thus, we do not sustain the
obviousness rejection of claim 18.
DECISION
We reverse the Examiner’s decision to reject claims 1—3, 5—10, 15,
16, 18, and 19.
REVERSED
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