Ex Parte Reichert et al

Patent Trial and Appeal Board

Oct 29, 2018

13391955 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/391,955 02/23/2012 Rainer Reichert
23869 7590 10/29/2018
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
UNITED ST A TES OF AMERICA
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.
1479-91 PCT/US/RCE 8321
EXAMINER
BEASLEY, DEIRDRE L
ART UNIT PAPER NUMBER
2482
MAIL DATE DELIVERY MODE
10/29/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER REICHERT, THOMAS F ALBL, JOHANNES RIEGL,
and MARTIN PFENNIGBAUER
Appeal2017-001957
Application 13/391,955
Technology Center 2400
Before JENNIFER S. BISK, IRVINE. BRANCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants,2 listed above, seek our review under 35 U.S.C. § 134(a) of
the Examiner's rejection of claims 1---6 and 8-20. Claim 7 is objected to as
being dependent upon a rejected base claim, but would be allowable if
rewritten in independent form including all of the limitations of the base
1 Throughout this Decision we have considered the Specification filed
February 23, 2012 ("Spec."), the Final Rejection mailed October 20, 2015
("Final Act."), the Appeal Brief filed February 29, 2016 ("Appeal Br."), the
Examiner's Answer mailed September 16, 2016 ("Ans."), and the Reply
Brief filed November 16, 2016 ("Reply Br.").
2 Appellants identify the real party in interest as RIEGL Laser Measurement
Systems GmbH. Appeal Br. 2.
Appeal2017-001957
Application 13/391,955
claim and any intervening claims. Final Act. 16. We have jurisdiction
under 35 U.S.C. § 6(b ). We reverse.
STATEMENT OF THE CASE
Appellants' invention is a ground terrain mapping laser scanning
device for mounting on the roof rack of a vehicle. Spec. ,r,r 1-2.
Claim 1, reproduced below with indentation added, is illustrative of
the claimed subject matter:
1. A laser scanning device for mounting on a roof rack of a vehicle,
compnsmg:
a base support configured in the shape of a substantially flat
"X" having four arms meeting a common, central apex, each arm
including a clamp for mounting the base support to the vehicle roof
rack, each adjacent two arms forming a fork therebetween,
a laser scanning module removably mounted on the base
support, wherein the laser scanning module is mounted to transversely
span only one of the forks of the "X" shaped base support.
THE REJECTIONS
Claims 1, 8, 11-14, 17, and 18 stand rejected under 35 U.S.C.
§ I03(a) as being obvious over NPL 1 (Eyeballing the Google Street Spy
(July 7, 2008), http://frank.geekheim.de/?p=406), Jones (US 7,789,356 Bl;
Sept. 7, 2010), and Gardner (US 2008/0149002 Al; June 26, 2008). Final
Act. 5-11.
Claims 2-6 and 20 stand rejected under 35 U.S.C. § I03(a) as being
obvious over NPL 1, Jones, Gardner, and Nielsen (WO 92/19811; Nov. 12,
1992). Final Act. 11-14.
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Application 13/391,955
Claims 9, 10, 15, and 16 stand rejected under 35 U.S.C. § I03(a) as
being obvious over NPL 1, Jones, Gardner, Nielsen, and DeLorme (US
7,834,910 B2; Nov. 16, 2010). Final Act. 14--16.
Claim 19 stand rejected under 35 U.S.C. § I03(a) as being obvious
over NPL 1, Jones, Gardner, and Breed (US 2009/0140887 Al; June 4,
2009). Final Act. 16.
ANALYSIS
Appellants argue the Examiner erred in rejecting claim 1. In
particular, Appellants argue a person of ordinary skill in the art would not
have reason to combine the disclosures of the prior art cited in the Office
Action. Appeal Br. 9. We agree that the Examiner did not sufficiently
explain how and why a person of ordinary skill in the art would have
combined NPL 1, Jones, and Gardner such that the claimed invention would
have been obvious.
The Examiner cites to Gardner, which discloses a "tiltable space
saving table" ( Gardner ( 54) ( emphasis omitted)), as disclosing a base that is
a substantially flat "X" shape. Final Act. 6 ( citing Gardner ,r 16, Fig. 6).
According to the Examiner, applying Gardner's substantially flat "X" shape
to NPL 1 is merely an obvious change in shape and cites to In re Dailey as
support for the conclusion that substituting Gardner's substantially flat "X"
shaped base is an obvious design choice. Id. at 6-7 (citing 357 F.2d 669
(CCPA 1966)). The Examiner also finds that in light of the I-shaped base
disclosed by NPL 1 and the X-shaped based disclosed by Jones "the
configuration of the claimed flat X shaped base is not significant to the
invention." Id. at 7.
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Application 13/391,955
Appellants contend that Dailey does not apply to this case and the
Examiner used impermissible hindsight reconstruction to show obviousness.
Appeal Br. 7, 10. Appellants argue that unlike the present invention, "the
stand assembly in [Jones] is designed to hold a hand-held camera, possibly
with a large lens, not a dynamic load" and Gardner "discloses a typical
folding type table which does not support either a heavy load or encounter
the forces produced by a moving vehicle." Id. at 9. According to
Appellants, both Jones and Gardner "are designed only for static loads and
to support light objects" and therefore "a person of ordinary skill in the art
designing a vehicle roof rack for a heavy object would not refer to either the
Jones or Gardner references to solve the problems overcome by the present
invention." Id. Appellants also contend that "[a] static table leg [as
disclosed by Gardner] is very different from a roof rack support for a laser
scanner which is subjected to forces produced by a moving vehicle." Reply
Br. 3.
A "design choice" rationale may be appropriate where the Examiner
proposes substituting one prior art element or property for another that
achieves the same purpose. Cf In re Gal, 980 F.2d 717, 719 (Fed. Cir.
1992) ("The Board held that Gal had simply made an obvious design choice.
However, the different structures of Gal and Matsumura achieve different
purposes."); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (upholding
rejection of a dependent claim where the limitation added by the dependent
claim "solve[ d] no stated problem" and "present[ ed] no novel or unexpected
result"). In Dailey, the Federal Circuit stated that "Appellants have
presented no argument which convinces us that the particular configuration
of [ the claimed invention] is significant or is anything more than one of
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Application 13/391,955
numerous configurations a person of ordinary skill in the art would find
obvious." Dailey, 357 F.2d at 672-73 (citation omitted).
Here, in contrast to Dailey, the Specification supports Appellants'
argument that the substantially flat "X" shape of the base is significant to the
claimed invention. Appeal Br. 8 (citing Spec. ,r,r 3, 6). According to the
Specification, mounting a laser scanning device on a vehicle requires (1) the
mounting be as high as possible to avoid the laser scanning being impacted
negatively by vehicles parked on the side of the road, (2) the mounting be
only high enough so that the system can travel under lines, bridges, and
through tunnels, (3) air resistance of the vehicle not be unduly increased,
(4) the laser scanning device be dismountable for storage, and (5) the mount
to maintain stability and handling of several laser scanner that can weigh up
to 100 kg. Spec. ,r 3. The Specification also explains that "[ t ]he
construction in the shape of an 'X' ... produces an exceptionally stable,
torsionally resistant anchoring to the vehicle roof," contributes to "high
static and dynamic stability," and provides for the laser scanner module to
"be easily removed for transport and storage." Id. ,r 6.
Thus, the record before us provides a technical reason why the
substantially flat "X" shape of the claimed mounting base might present a
novel and non-obvious result, thereby potentially serving a different purpose
than the depicted "I" shape of the base disclosed by NPL 1 or the elevated
"X" shape of the base disclosed by Jones. See NPL 1, at 2; Jones, Figs. 1, 3.
The Examiner has not indicated why a person of ordinary skill in the art
would have been motivated to alter the shape of the mounting bases
disclosed by NPL 1 or Jones to more closely conform to that of Gardner,
which does not contemplate being mounted on a movable platform such as a
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car roof. Thus, the Examiner's rejection of claims 1 and 17 is not supported
by "some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
Accordingly, we do not sustain the rejection of independent claim 1.
Independent claim 17 recites similar limitations to claim 1, including "an x-
shaped base support" comprising "two substantially flat v-shaped forks
which meet at a common, central apex." The rejection of claim 17 suffers
from the same problems discussed with respect to claim 1. See Final Act. 9--
11. The pending dependent claims stand with their respective independent
claims, and the Examiner does not find that the additional references relied
upon for rejections of certain dependent claims cure the deficiencies
discussed above.
DECISION
The Examiner's decision rejecting claims 1---6 and 8-20 is reversed.
REVERSED
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