11248539 (B.P.A.I. Oct. 7, 2011)

Ex Parte Olsson et al

Board of Patent Appeals and InterferencesOct 7, 2011

11248539 (B.P.A.I. Oct. 7, 2011)

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. 11/248,539 10/12/2005 Mark S. Olsson 0009-067 9374 22298 7590 10/10/2011 MICHAEL H JESTER 505 D GRAND CARIBE CAUSEWAY CORONADO, CA 92118 EXAMINER AURORA, REENA ART UNIT PAPER NUMBER 2858 MAIL DATE DELIVERY MODE 10/10/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte MARK S. OLSSON, PAUL G. STUART, DAVID A. COX, RAY MEREWETHER, DAWN E. SHAFFER, RYAN B. LEVIN and MICHAEL J. MARTIN _____________ Appeal 2009-012086 Application 11/248,539 Technology Center 2800 ______________ Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and DEBRA K. STEPHENS, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012086 Application 11/248,539 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final rejection of claims 1 through 5, and 31 through 38. We affirm. INVENTION The invention is directed a portable apparatus to locate and trace buried objects. See pages 1, 6 and 7 of Appellants’ Specification. Claim 1 is representative of the invention and reproduced below: 1. A human-portable locator apparatus for locating a buried object characterized by an electromagnetic (EM) field emission, comprising: a housing; a sensor array connected to the housing including three substantially-identical EM field sensors each having at least one conductive coil with an outer side and an inner side disposed on a deformable annular wall having a radial centroid defining a sensing axis, said three EM field sensors each having a substantially identical longitudinal height dimension, a substantially identical radial thickness dimension, and a substantially identical circumference dimension; a structure for supporting the three substantially-identical EM field sensors such that the corresponding sensing axes are disposed in substantial mutual orthogonality and the corresponding conductive coils are disposed in substantial concentricity; and a circuit operatively coupled to the sensor array for detecting and reporting the EM field emission. REJECTIONS AT ISSUE The Examiner has rejected claims 1 through 5 and 31 through 38 under the judicially created doctrine of obviousness-type double patenting over claims 1 through 5 of co-pending Application No. 12/016,870, which Appeal 2009-012086 Application 11/248,539 3 issued to Olsson et al. as U.S. Patent No. 7,518,374 B1 on April 14, 2009 (hereinafter Olsson). Answer 4-101. ISSUES Appellants argue on pages 6 and 7 of the Brief that terminal disclaimers were presented during the prosecution of Olsson and that the Examiner should not construe the submission of the terminal disclaimers as an admission of obviousness of the later filed application. Brief 6-72. Thus, Appellants’ argument present us with the issue did the Examiner err in determining that claims 1 through 5 and 31 through 38 are obvious over claims 1 through 5 of Olsson. ANALYSIS We have reviewed the Examiners’ rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusion that the Examiner erred in determining that claims 1 through 5 and 31 through 38 are obvious over claims 1 through 5 of Olsson. Contrary to Appellants’ arguments, the Examiner is not reasoning that the differences between the claims are obvious because of the terminal disclaimer filed in the Olsson. Rather, the Examiner has found that the differences between the claims on appeal and the claims of Olsson are directed to a housing 1 Throughout this opinion we refer to the Examiner’s Answer mailed on February 27, 2009. 2 Throughout this opinion we refer to the Brief dated November 12, 2008, and the Reply Brief dated March 17, 2009. Appeal 2009-012086 Application 11/248,539 4 including a compartment for holding a battery and a handle. Based upon these findings the Examiner concluded that such a modification would be obvious. Answer 9. We concur with the Examiner, it is within the realm of the skilled artisan to include a handle, and a housing for a device and its battery. Such a modification is merely using known structures for their known purpose. We note that Appellants, on page 7 of the Brief, admit that the differences between the claims in appeal and the Olsson are directed to the housing. We additionally note on page 2 of the Reply Brief, Appellants provided additional arguments alleging error in the rejection of claims 1 through 5 and 31 through 38 . These arguments are deemed waived. Appellants have not explained why, nor is it apparent that, these arguments were necessitated by a new point in the Answer or any other circumstance constituting “good cause” for its belated presentation. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”3) (absent a showing of good cause, the Board is not required to address argument in Reply Brief that could have been presented in the principal Brief). Further, these arguments are not persuasive. Specifically, contrary to Appellants’ arguments, claim 1 of Olsson recites “a circuit” not a “circuit means”, and as such the circuit limitation of Olsson and the application on appeal are of the same scope. With respect to claim 31, while claim 1 of Olsson does not recite a flexible circuit board, as recited in claim 31 on appeal, claim 2 of Olsson does. With respect to claim 35, while claim 1 of Olsson does not include an electrostatic shield, as recited in claim 35, claim 3 of Olsson does. Appeal 2009-012086 Application 11/248,539 5 Therefore, Appellants’ arguments have not persuaded us of error in the Examiner’s rejection of claims 1 through 5, and 31 through 38 under the judicially created doctrine of obviousness-type double patenting over claims 1 through 5 of co-pending Application No. 12/016,870. ORDER The decision of the Examiner to reject claims 1 through 5, and 31 through 38 is affirmed. AFFIRMED ke 3 The “informative” status of this opinion is noted at the following Board website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.