Ex Parte Olsson et al

Patent Trial and Appeal Board

Feb 20, 2018

12704808 (P.T.A.B. Feb. 20, 2018)

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.
12/704,808 02/12/2010 Mark S. Olsson SEEK 09-147-201 6984
13235 7590
Steven C. Tietsworth
3855 Ruffin Road
San Diego, CA 92123
EXAMINER
VAZQUEZ COLON, MARIA E
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
tietsworth@cox.net
steven. tietsworth @ seescan.com
susan.hammons@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, ERIC M. CHAPMAN,
DAWN E. SHAFFER, LONI M. CANEPA,
JAMES F. KLEYN, and LISA E. LATIMER
Appeal 2017-001609
Application 12/704,808
Technology Center 2400
Before JOSEPH L. DIXON, SCOTT E. BAIN, and
ALEX S. YAP, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-001609
Application 12/704,808
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1—29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a pipe inspection system with replaceable
cable storage drum. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A pipe inspection system, comprising:
a substantially round-shaped cable storage drum;
a substantially round-shaped housing configured to
removably receive and rotatably support the cable storage drum;
a push-cable with a plurality of conductors, the push-cable
being stored in the cable storage drum in a plurality of coils;
a camera head operatively connected to a distal end of the
push-cable;
a removable handheld display and image capture device
coupled to the push-cable conductors for displaying images or
video provided from the camera head; and
a slip-ring assembly having first and second mating
portions that when mated provide conductive paths from the
plurality of conductors at a proximal end of the push cable, the
first portion of the slip-ring assembly being mounted on the
housing and the second portion of the slip-ring assembly being
mounted on the removable cable storage drum.
1 Appellants indicated that SeeScan, Inc. is the real party in interest. App.
Br. 1.
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Application 12/704,808
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ganthier US 5,076,794 Dec. 31, 1991
Olsson et al. (“Olssonl”) US 6,545,704 B1 Apr. 8, 2003
Arbuckle US 6,793,415 B2 Sept. 21,2004
Olsson et al. (“01sson3”) US 7,298,126 B1 Nov. 20, 2007
Kaplan US 7,359,611 B1 Apr. 15,2008
Crunkilton et al. US 2008/0243003 Al Oct. 2, 2008
Jayko et al. US 2009/0320279 Al Dec. 31,2009
Olsson et al. (“01sson2”) US 8,264,226 B1 Sept. 11,2012
REJECTIONS
The Examiner made the following rejections:
Claims 1—6, 11—15, 20, 22, 25, and 26 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Olssonl in view of Kaplan
further in view of 01sson2 further in view of Crunkilton.
Claims 7, 16, and 21 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Olssonl in view of Kaplan further in view of
Crunkilton.
Claims 8, 9, 17, and 18 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Olssonl view of Kaplan further in view
of 01sson2 further in view of Crunkilton et al. further in view of Olsson 3.
Claims 10 and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Olssonl in view of Kaplan further in view of
01sson2 further in view of Crunkilton et al. further in view of Ganthier.
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Claims 23, 24, and 28 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Olssonl view of Kaplan further in view
of 01sson2 further in view of Crunkilton et al. further in view of Arbuckle.
Claim 27 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Olssonl in view of Kaplan further in view of 01sson2
further in view of Crunkilton et al. further in view of Jayko.
Claim 29 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Olssonl in view of Kaplan further in view of Crunkilton
et al. further in view of Arbuckle.
ANALYSIS
Claims 1 and 11
With respect to independent claims 1 and 11, the Examiner relies
upon the combination of the Olssonl, Kaplan, 01sson2, and Crunkilton
patents. (Final Act. 6). We select independent claim 1 as the illustrative
claim for the group and address Appellants’ arguments thereto.
37C.F.R. §41.37(c)(l)(iv).
Appellants contend:
[the] combination is improper for the reason that
combination of the disparate references Kaplan and Crunkilton
with Applicant's co-assigned patents would not lead to an
operative device or system, would not address the specific
purposes of the presently claimed invention, and/or are not
analogous art for the purposes of 35 U.S.C. § 103.
(App. Br. 5). Appellants further contend:
In summary, there would simply be no reason for one of
ordinary skill in the art to combine the teachings of Kaplan
and/or Crunkilton with those of Olssonl and 01sson2 as the
Examiner has done in the instant office action, such a
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combination would not be desirable as it would not provide an
improvement over the individual references alone, and [and]
their combination would not result in operable system for solving
the problems addressed by the presently claimed invention. In
this rejection the Examiner has merely resorted to picking and
choosing pieces from other disclosures and “gluing” them
together in a non-operative way to attempt to get to the presently
claimed invention. Such hindsight reasoning is improper, and
therefore the associated rejection is also improper. Appellant’s
invention recognizes various novel and non-obvious ways of
combining elements such as storage boxes, which Appellant does
not claim are in themselves at all new in the art (Appellant
acknowledges that the basic idea of storing cable in a box is old
and well known), but rather Appellant’s particular combination
of elements that are or have been well known (cable storage
boxes, Appellant’s own older disclosures) in a novel and non-
obvious way to achieve an inventive result.
While many of the elements of Appellant’s claimed
invention have been in existence for some time (e.g., cable
storage boxes, slip-ring connectors, push-cables, camera heads,
display devices), the specific combination of elements as recited
in the pending claims have not all been combined.
(App Br. 6—7).
In supporting the proffered combination, the Examiner identifies
Appellants’ Specification setting forth the description of Appellants’
invention. (Final Act. 8; p.5, lines 25—27 and p.6, line 1.) The Examiner
then concludes:
Therefore, it would have been obvious to one of ordinary
skill in the art and at the time the invention of Olssonl was made
to incorporate a housing configured to removably receive a cable
storage drum as taught by Kaplan in order to have a housing in
which a drum may be rapidly replaced with a drum holding a
longer cable, or a more flexible cable, among other alternatives.
It is further noted Kaplan is used to demonstrate it is known in
the art to have a housing capable of receiving a cable storage
device that can be removed.
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(Final Act. 8). We disagree with the Examiner and find that the Kaplan
reference is only configured to removably receive a cable storage drum
when the drum is empty, but when the drum contains a cable, the cable
storage drum has limited removability because the cable enters the housing
through the plurality of openings 28—30 in the sidewalls or opening 31 in the
enclosure bottom. (Kaplan 3:4—7).
The Examiner further maintains that
In the instant case the reference to Crunkilton is reasonably
pertinent to the particular problem with which the applicant was
concerned, which is to provide an electrical connection in order
to obtain an image (p.6, lines 9-12). Therefore, it would have
been obvious to one of ordinary skill in the art and at the time the
invention of Olssonl, as modified, was made to incorporate a
slip-ring assembly having first and second mating portions as
taught by Crunkilton in order to provide conductive paths from a
plurality of conductors when both mating portions are mated.
It is further noted the Examiner relied on Crunkilton
because Olssonl is silent on the specifics and components of the
disclosed slip-ring. It is known in the art for slip-rings to have
mating portions to provide a conductive path in order to transfer
electrical signals from one end to another.
(Final Act. 10—11; referencing Olssonl 5:56—59 “A conventional slip ring
coupling 28 is mounted inside the central hub portion 22a and is used to
provide an electrical connection between one end of a short cable 29 and one
end of another short cable 30.”) Although we generally agree with the
Examiner regarding a slip ring coupling, the Examiner has not shown that
the Crunkilton reference would have taught or suggested the two mating
portions as claimed because the Examiner has not shown that Kaplan teaches
the two relative portions of the claimed “drum” and “housing” nor has the
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Examiner provided a persuasive line of reasoning for combining Kaplan
with Olssonl and 01sson2 to meet the claimed limitations.
Obviousness requires mapping the claim limitations to the
corresponding portions of the reference, which the Examiner must identify
with particularity. On the record before us, the Examiner’s obviousness
rejection is not supported by the express disclosures of Kaplan and
Crunkilton in combination with Olssonl and 01sson2 and relies on
conjecture, which would require us to resort to improper speculation,
unfounded assumptions, or hindsight reconstruction. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). We will not resort to such speculation or
assumptions to cure the deficiencies in the factual basis in order to support
the Examiner’s obviousness rejection.
In the Answer, the Examiner further finds, that “the prior art of
Olssonl and Kaplan meets all of the structural limitations, and is therefore
capable of performing the claimed recitations set forth above.” (Ans. 5); see
also Ans. 4—10. Additionally, the Examiner maintains:
the recitation that an element is “configured to” perform a
function is not considered to be a positively recited structural
limitation, but only that the element has the ability to perform
such a function. The recitation “a substantially round-shaped
housing configured to removably receive and rotatably support
the cable storage drum” is a recitation of intended use.
(Ans. 5). But the Examiner does not identify how the correlated elements 22
and 22b of Olssonl (Final Act. 6) teach or suggest the claimed structure and
intended use. In response to the Appellants’ argument that the combination
of Kaplan with Olssonl would do nothing to improve upon the operation or
performance of Olssonl and 01sson2, the Examiner merely provides case
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law citations and a conclusion that Kaplan’s housing will provide removable
cable storage. (Ans. 6). We find the Examiner’s response to be conclusory
and not supported by the prior art teachings of the Kaplan reference.
Regarding the combination of the Crunkilton reference with the
systems of Olssonl and 01sson2, the Examiner merely provides a case law
citation without any substantive line of reasoning for combining the slip-ring
of the Crunkilton reference with the combination of the Kaplan reference
with the “substantially round-shaped cable storage drum;” and “a
substantially round-shaped housing configured to removably receive and
rotatably support the cable storage drum;” where the “push-cable with a
plurality of conductors, the push-cable being stored in the cable storage
drum in a plurality of coils,” as claimed in independent claim 1. (Ans. 6—8).
Regarding the Appellants’ argument that the Examiner’s obviousness
rejections are based upon improper hindsight, the Examiner merely provides
a case law citation without any further discussion or substantive response.
(Ans. 8). Therefore, the Examiner does not remedy the noted deficiency in
the rejection of illustrative claim 1, as discussed above.
Accordingly, Appellants have shown error in the conclusion of
obviousness, and we cannot sustain the obviousness rejection of illustrative
independent claim 1 and its corresponding dependent claims 2—6 20, 22, 25,
and 26.
The Examiner relies upon the same line of reasoning with respect to
the rejection of independent claim 11. (Final Act. 13—14). As a result, we
cannot sustain the obviousness rejection of independent claim 11 and its
corresponding dependent claims 12—15.
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Claims 7, 16, and 21
With respect to independent claims 7, 16, and 21, the Examiner relies
upon the combination of the Olssonl, Kaplan, and Crunkilton references.
(Final Act. 16). The Examiner further provides the same line of reasoning in
the combination for the Kaplan and Crunkilton references which we found to
be deficient above with respect to illustrative independent claim 1. (Final
Act. 18—27). As a result, we cannot sustain the Examiner’s rejections of
independent claims 7, 16, and 21 and their respective dependent claims.
Claim 8, 9, 17, and 18
With respect to independent claim 9 and dependent claims 8, 17, and
18, the Examiner relies upon the combination of the Kaplan and Crunkilton
with Olssonl, 01sson2, and 01sson3 references as set forth in regarding
independent claim 1. (Final Act. 27—28). Because the Examiner relies upon
the rejection of independent claim 1, we find of the rejection of independent
claim 9 and dependent claims 8, 17, and 18 contain the same deficiencies
discussed above with respect to illustrative independent claim 1. As a result,
cannot sustain the obviousness rejection of independent claim 9 and
dependent claims 8, 17, and 18 for the reasons discussed above.
Claims 10, 19, 23, 24, and 27—29
The Examiner does not identify how the additional teachings of the
Ganthier, Jayko, and Arbuckle references remedy the above-noted
deficiencies with respect to their parent claims. As a result, we cannot
sustain the Examiner’s obviousness rejections of claims 10, 19, 23, 24, and
27—29 for the reasons discussed above.
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CONCLUSION
The Examiner erred in rejecting claims 1—29 based upon obviousness
over the various combinations of prior art references.
DECISION
For the above reasons, we reverse the Examiner’s obviousness
rejections of claims 1—29.
REVERSED
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