Ex Parte Smith et al

Patent Trial and Appeal Board

May 19, 2016

13197418 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/197,418 08/03/2011
33727 7590 05/23/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
FIRST NAMED INVENTOR
Brandon Lee Smith
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.
249098-1 5733
EXAMINER
KWAN,MATTHEWK
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
05/23/2016 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):
dcmailroom@hdp.com
pshaddin@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANDON LEE SMITH, COLIN F. KELEMEN, and
VLADIMIR V. GHITA
Appeal2014-009482
Application 13/197,418
Technology Center 2400
Before ROBERT E. NAPPI, NATHAN A. ENGELS, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1---6 and 10-33, which constitute all of the claims pending in this
application. Claims 7-9 have been cancelled. App. Br. 18. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify General Electric Company as the real party in interest.
App. Br. 1.
Appeal2014-009482
Application 13/197,418
THE INVENTION
The claimed invention is directed to a system and apparatus for visual
inspection of a nuclear vessel using a submersible remotely operated vehicle
including a maneuverable inspection camera assembly. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for visual inspection of a nuclear reactor, the
system comprising:
a submersible remotely operated vehicle (SROV) system
that is movable to an area within a nuclear vessel, the SROV
system including a maneuverable inspection camera assembly
for visual inspection of nuclear vessel components, the
inspection camera assembly being maneuverable in relation to
the SROV system;
a control system located in an area remote from the area
within the nuclear vessel, the control system configured to
control the movement of the SROV system and the maneuvering
of the inspection camera assembly;
a cable suspending the inspection camera assembly from
the SROV; and
a first motor configured to vertically raise and lower the
inspection camera assembly on the cable to and from the SROV.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Blackstone
Iwamoto
Stevens
Oomichi
us 4,169,758
us 4,311,556
us 4,502,407
us 5,193,405
2
Oct. 2, 1979
Jan. 19, 1982
Mar. 5, 1985
Mar. 16, 1993
Appeal2014-009482
Application 13/197,418
REJECTIONS
Claims 1-5, 12-15, 18-20, 22-24, 27-29, 31, and 33 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Stevens in view of
Iwamoto. Final Act. 2-10; Adv. Act. 2.
Claims 6, 10-11, 21, 25, 26, and 32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stevens in view of Iwamoto and
Oomichi. Final Act. 10-23; Adv. Act. 2.
Claims 16, 17, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stevens in view of Iwamoto and Blackstone. Final
Act. 13-14.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants. We disagree
with Appellants' arguments regarding claims 1---6, 10-31, and 33.
Claims 1-6 and 10--31
The Examiner made two sets of findings on how Stevens teaches
several limitations of claim 1. In the first set of findings, the Examiner finds
vehicle 32 to be the SROV recited in claim 1. See Final Act. 2-3. In the
second set of findings, the Examiner finds launching cage 30 to be the
SROV and vehicle 32 to be the camera assembly recited in claim 1. Final
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Application 13/197,418
Act. 14--15; Adv. Act. 2; Ans. 15-16. We address the second set of findings
in this Opinion.2
Appellants argue the Examiner erred because the launching cage 30 of
Stevens is not a vehicle. Reply Br. 2-3. Based on dictionary definitions,
Appellants argue a vehicle must be a self-propelled mechanized vessel and
launching cage 30 is not self-propelled. Reply Br. 2-3. Appellants also
argue that if the launching cage 30 is considered the SROV, it is not
remotely controlled and, therefore, is not a remotely operated vehicle. Reply
Br. 3--4.
The Examiner finds Stevens teaches using a SROV (launching cage
30) and a camera assembly (vehicle 32) suspended by a cable 34 from the
SROV. Adv. Act. 2; Final Act. 14--15; Ans. 15-16. The Examiner further
finds Stevens teaches using a reel 36 inside the launching cage, which is a
remotely controlled motor. Adv. Act. 2; Ans. 15-16. The Examiner also
finds "[ o ]ne of ordinary skill in the art would be able to operate a reel with a
motor as opposed to manually for a vehicle as large as an SROV." Adv.
Act. 2; Final Act. 14--15; Ans. 15-16.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Absent an express
intent to impart a novel meaning to a claim term, the words take on the
ordinary and customary meanings attributed to them by those of ordinary
2 Because, as discussed infra, we agree with and adopt the Examiner's
second set of findings, the arguments regarding the first set of findings are
moot.
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Appeal2014-009482
Application 13/197,418
skill in the art. Brookhill-Wilk 1, LLC v. lntuitive Surgical, Inc., 334 F.3d
1294, 1298 (Fed. Cir. 2003).
A vehicle is "a machine that is used to carry people or goods from one
place to another." Vehicle, Merriam-Webster Dictionary,
http://www.merriam-webster.com/ dictionary/vehicle (last visited May 19,
2016); see also Vehicle, Webster's Universal College Dictionary (1997)
("any means in or by which someone or something is carried or conveyed;
means of conveyance or transport: a motor vehicle."). That definition is
consistent with at least one of the definitions cited by Appellants. See Reply
Br. 2-3 (defining vehicle as "any device or contrivance for carrying or
conveying persons or objects, esp. over land or in space, as an automobile,
bicycle, sled, or spacecraft."). Accordingly, we conclude the broadest
reasonable interpretation of the term vehicle is not limited to a self-
propelled, mechanized vessel. Because Appellants' arguments are not
commensurate with the scope of the claims, they are unpersuasive. In re
Self, 671F.2d1344, 1348 (CCPA 1982).
Instead, we agree with and adopt the Examiner's finding that
launching cage 30 is a vehicle under a reasonable interpretation of the claim
language viewed in light of Appellants' Specification. As shown in Figure 1
and described in Stevens, launching cage 30 is used to carry device 32 from
boat 21 to a specific location under the water. Stevens Fig. 1, 3:3-7, 3:36-
58, 10:41-59, 11:29-36.
Similarly, we are not persuaded by Appellants' argument that
launching cage 30 is not a remotely operated vehicle as recited in claim 1.
The movement of the launching cage 30 is controlled from the boat 21, a
location that is remote from the launching cage 30. Stevens Fig. 1, 3:3-7,
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Appeal2014-009482
Application 13/197,418
3:36-58, 10:41-59, 11 :29-36. Specifically, the launch cage 30/SROV is
raised and lowered by means of a winch 25 which is controlled from the
boat 21. Id. In other words, launching cage 3 0' s vertical movement is
controlled from a location remote from the launching cage. As discussed
above, Appellants' attempt to require the vehicle be self-propelled is
inconsistent with the broadest reasonable interpretation of the claim
limitation.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claim 1, along with the rejection of claim 18, which
is argued on the same grounds, and claims 2-5, 12-15, 19, 20, 22-24, 27-
29, and 31, which are not argued separately.
With respect to dependent claims 6, 10, 11, 16, 17, 21, 25, 26, and 30,
Appellants contend that because the additional references used in the
rejection of these claims (Oomichi and Blackstone) do not cure the
deficiencies in claims 1 and 18, the Examiner failed to make a prima facie
case of obviousness for these claims. App. Br. 12, 15. Because we
determine there are no deficiencies associated with claim 1 for the reasons
discussed above, we sustain the rejections of these claims.
Claim 33
Claim 33 is a dependent claim which recites, inter alia, "a first camera
configured to view the visual inspection performed by the inspection camera
assembly [and] at least one second camera configured to view a position of
the SROV system within the nuclear vessel." App. Br. 23. Appellants argue
the Examiner erred in finding Stevens teaches two different cameras as
recited by claim 33 because the two items identified by the Examiner-
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Application 13/197,418
camera unit 58 and outer casing of camera 70---are the same camera. App.
Br. 11-12. Therefore, Appellants argue that Examiner has only identified a
single camera. Id.
The Examiner finds Stevens teaches two distinct cameras. Adv. Act.
2; Ans. 16-17. In addition to camera 58/70, the Examiner also finds the
system has a second camera 50 that satisfies the limitation of claim 33.
Final Act. 9-1 0 (first camera 5 8/7 0); Adv. Act. 2 (second camera 5 0); Ans.
16-17 (second camera 50).
We are not persuaded of error based on Appellants' argument because
it does not address the reasoning relied on by the Examiner (Adv. Act. 2;
Ans. 16-17) and, thus, does not adequately address the rejection on appeal.
See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ("If
an appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection-the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection."). Instead, we
agree with the Examiner in finding the above combination teaches two
cameras.
For the foregoing reasons, we sustain the Examiner's rejection of
claim 33.
Claim 32
Claim 32 is a dependent claim that recites, inter alia, "a suction
device configured to impart a suction force on a surface ... in order to
adhere the SROV system to the surface [and] at least one wheel configured
to impart a friction force on the surface in order to move the SROV while
the suction device is in operation." App. Br. 23. The Examiner finds
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Appeal2014-009482
Application 13/197,418
Stevens teaches a suction cup 60 for creating a suction force and Oomichi
teaches a wheel configuration for imparting a friction force for movement.
Final Act. 12-13; Ans. 17-18. Although the Examiner finds that a person of
ordinary skill in the art could have combined the suction device of Stevens
with the wheels of Oomichi (Adv. Act. 2; Ans 18-19), the Examiner does
not making any findings on why a person of ordinary skill in the art would
have been motivated to make such a combination.
Appellants argue, inter alia, the suction cup of Stevens cannot be
combined with the wheels of Oomichi to make an operable device:
Therefore, even if the wheels 3 7 of Oomichi were to be added to
vehicle 32 of Stevens, and it were assumed that wheels 37
provided enough friction force to "move the SROV while the
suction device is in operation.'' as recited in claim 32 (Appellant
does not concede that wheels 37 would even be capable of
accomplishing this feat), such sideways movement of vehicle 32
(caused by wheel 3 7 movement) would merely break the vacuum
seal imparted by cup 60 (as opposed to allowing cup 60 to stay
adhered to the surface as the \vheels 37 moved vehicle 32 along
the surface). For these reasons, even assuming that wheels 37
may be added to vehicle 32 in order to move vehicle 32, doing
so would not allow cup 60 to continue to adhere to a surface
while the wheels 37 move vehicle 37 (rather, this action would
merely break the vacuum seal that is imparted by cup 60).
App. Br. 13; see also Reply Br. 5-8.
Rejections based on obviousness must be 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),
cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). We agree with Appellants that the Examiner has failed to provide
adequate reasoning to combine the suction cups of Stevens with the wheels
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Application 13/197,418
of Oomichi to support the legal conclusion of obviousness of claim 32. The
reasoning provided by the Examiner does not support the conclusion of
obviousness because it does not provide a reasoning why a person of
ordinary skill in the art would have been motivated to combine the teachings
of the references. Instead, for the reasons given by the Appellants above,
based on the record before us we find that a person of ordinary skill in the
art would not have been motivated to combine the relevant features of the
references.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 32.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1---6, 10-31, and 33.
For the above reasons, we reverse the Examiner's rejection of claims
32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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