Ex Parte Skultety-Betz et al

Board of Patent Appeals and Interferences

Feb 21, 2012

10502411 (B.P.A.I. Feb. 21, 2012)

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.
10/502,411 07/23/2004 Uwe Skultety-Betz 3040 5780
7590 02/22/2012
Striker Striker & Stenby
103 East Neck Road
Huntington, NY 11743
EXAMINER
RATCLIFFE, LUKE D
ART UNIT PAPER NUMBER
3662
MAIL DATE DELIVERY MODE
02/22/2012 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 UWE SKULTETY-BETZ and TOBIAS CLAUDIUS
________________

Appeal 2010-002417
Application 10/502,411
Technology Center 3600
________________

Before JOHN C. KERINS, WILLIAM V. SAINDON and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002417
Application 10/502,411

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 3 and 6-12. Claims 2, 4 and 5 have been cancelled
(App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The Claimed Subject Matter
The claimed subject matter pertains to a laser distance measuring
device and a position sensor connected to a signal transducer. The position
sensor determines spacial orientation and the signal transducer is an optical
transducer, an acoustic transducer or a tactile transducer. Independent claim
1 is illustrative of the claims on appeal and is reproduced below:

1. Handheld laser distance measuring device, with a
position sensor (22) for determining the spacial orientation of
the distance measuring device, wherein the position sensor (22)
is connected with a signal transducer (12, 28, 30, 32), whereby
the signal transducer (12, 28, 30, 32) is capable of being
triggered by the position sensor (22) to emit a perceptible signal
which depends on the spacial orientation, wherein the signal
transducer is an optical signal transducer (12, 30), an acoustic
signal transducer (28) or a tactile signal transducer (32) and
wherein the optical signal transducer is a laser (12) that emits
light in the visible wavelength range and serves to measure
distance.

References Relied on by the Examiner
Dunne US 5,949,529 Sep. 7, 1999
Heironimus US 6,037,874 Mar. 14, 2000

Appeal 2010-002417
Application 10/502,411

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The Rejections on Appeal
1. Claims 1, 6, 8, 9 and 11 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Dunne (Ans. 3).
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dunne (Ans. 4).
3. Claims 3, 10 and 121 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dunne and Heironimus (Ans. 4).

ISSUES
Does Dunne anticipate a laser distance measuring device and a
position sensor connected to a signal transducer in which the signal
transducer is an optical transducer, an acoustic transducer or a tactile
transducer as set forth in claim 1?
Does Dunne anticipate a laser integrated in a housing whereby the
position sensor and the signal transducer are also integrated in this housing
as set forth in claim 11?

ANALYSIS
Claims 1, 6, 8, 9 and 11 are rejected as being anticipated by Dunne
(Ans. 3). Appellants argue claims 1, 6, 8 and 9 as a group and present
separate arguments for claim 11 (App. Br. 7, 9). Claims 1 and 11 are
separately addressed below, with claims 6, 8 and 9 standing or falling with
claim 1 (37 C.F.R. § 1.37(c)(1)(vii) (2011)).

1 The Examiner rejected claims 3-5, 10 and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Dunne and Heironimus but claims 4 and 5 are
cancelled (App. Br. 2).
Appeal 2010-002417
Application 10/502,411

4
Appellants dispute that Dunne anticipates claim 1 because “the
Examiner did not recite the feature of the optical transducer” and hence “the
patent to Dunne does not disclose each and every element of the present
invention as defined in claim 1” (App. Br. 7-8, see also Reply Br. 4). The
Examiner notes that Appellants claim an optical transducer, an acoustic
transducer and a tactile transducer “in the alternative such that a single one
of the optical transducer, acoustic transducer, or a tactile transducer would
read on the claim” (Ans. 6). We agree with this claim construction. The
Examiner finds that “Dunne shows an acoustic signal transducer” and
“because the claim was made in the alternative,” the Examiner need not also
disclose the other types of transducers (Ans. 6). Appellants do not dispute
that Dunne teaches an acoustic transducer and accordingly, we sustain the
Examiner’s rejections of claims 1, 6, 8 and 9 (App. Br. 9).
Independent claim 11 also claims in the alternative as does claim 1.
Claim 11 further requires a laser “being integrated in a housing” and the
position sensor and the signal transducer also “integrated in said housing2.”
Appellants contend that these limitations are lacking in Dunne because
Dunne teaches separate modular components, each having their own housing
and power source (App. Br. 9, Reply Br. 2). The Examiner finds that when
these separate components are coupled together, they share “a single housing

2 Appellants’ Specification does not define or suggest a particular meaning
for either “integrated” or “housing” and thus it is appropriate to consult a
general dictionary for their meaning. “Integrated” is defined as “to form or
blend into a whole,” “to unite with something else” and “to incorporate into
a larger unit.” “Housing” is defined as “something that covers or protects.”
WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY OF THE ENGLISH
LANGUAGE 595, 550 (1989). These definitions are consistent with
Appellants’ Specification (Spec. 1:23, 6:6, 6:26).
Appeal 2010-002417
Application 10/502,411

5
when in use, the single housing being all of the exterior portion of the
system” (Ans. 7).
The Examiner’s reading of the laser’s housing in Dunne as
incorporated in the same housing as the transducer is unreasonable. Dunne
teaches separate modular components, each in their own housing, which are
coupled and uncoupled via connection 16 (Dunne Abstract, 2:62-67, 5:7,
6:42-44, 5:1-6 and 7:4-6). Dunne does not describe these separate
components integrated in the same housing as these terms are defined. In
fact, Dunne provides a specific reason to keep the components separate, i.e.,
“so as to minimize distortion or corruption of the earth’s magnetic field
being sensed by the compass” (Dunne 3:7-10). Accordingly, we are not
persuaded that Dunne anticipates all the limitations of claim 11. We reverse
the rejections of claim 11 and its dependent claim 12, in that, for claim 12,
the combination of Dunne with Heironimus does not overcome the
aforenoted deficiency in the Dunne disclosure.
Claim 7 depends from claim 1 and is rejected as being unpatentable
over Dunne (Ans. 4). Appellants present no new arguments and instead
contend that this claim should be allowed because it “shares the allowable
features of claim 1” (App. Br. 10). We are not persuaded for the reasons
stated above and accordingly we sustain the rejection of claim 7.
Claims 3 and 10 depend from claim 1 and are rejected as being
unpatentable over Dunne and Heironimus (Ans. 11). Appellants present no
new arguments other than that these claims share the features of claim 1
(App. Br. 11). We are not persuaded and we sustain the rejections of claims
3 and 10.

Appeal 2010-002417
Application 10/502,411

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CONCLUSIONS
Dunne anticipates a laser distance measuring device and a position
sensor connected to a signal transducer in which the signal transducer is an
optical transducer, an acoustic transducer or a tactile transducer as set forth
in claim 1.
Dunne does not anticipate a laser integrated in a housing whereby the
position sensor and the signal transducer are also integrated in this housing
as set forth in claim 11.

DECISION
The rejections of claims 1, 3 and 6-10 are affirmed.
The rejections of claims 11 and 12 are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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