Ex Parte TrzcinskiDownload PDFPatent Trial and Appeal BoardDec 14, 201613039596 (P.T.A.B. Dec. 14, 2016) Copy Citation 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. 13/039,596 03/03/2011 Frank J. Trzcinski PA16734U;67097-1426PUS1 1203 54549 7590 12/16/2016 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER FINDLEY, CHRISTOPHER G ART UNIT PAPER NUMBER 2482 NOTIFICATION DATE DELIVERY MODE 12/16/2016 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): ptodocket @ cgolaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK J. TRZCINSKI Appeal 2015-004020 Application 13/039,596 Technology Center 2400 Before CAROLYN D. THOMAS, JASON V. MORGAN, and SHARON FENICK, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—13 and 16—22. See Claim Appendix. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to a portable boroscope assembly for inspecting passages within a turbomachine blade, the assembly including a boroscope probe and a display screen. See Abstract. Appeal 2015-004020 Application 13/039,596 Claim 1 is illustrative: 1. A portable horoscope assembly for inspecting passages within a turbomachine blade, comprising: a horoscope probe; a display screen configured to show images of areas inspected by the horoscope probe; a battery that powers the display screen; and a protective case including a lid hingeably attached to a base, the lid and the base providing a cavity configured to hold at least the display and the battery, the protective case defining an aperture, wherein at least portion of the display screen is viewable through the aperture. Appellant appeals the following rejection: Claims 1—13 and 16—22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yarush (US 6,554,765 Bl, Apr. 29, 2003), Dube (US 2006/0291998 Al, Dec. 28, 2006), and Richardson (US 7,158,376 B2, Jan. 2, 2007). ANALYSIS Claims 1—6, 8, 12, 13, and 16—22 Issue 1: Did the Examiner err in finding that Yarush, Dube, and Richardson collectively teach or suggest a protective case, as set forth in claim 1? Appellant contends that “[a] person having skill in the art would not modify Yarush to include the protective case of Richardson since Yarush already includes display means and power supply means contained within a first housing’’ and therefore “[t]he protective case of Richardson would be a superfluous addition” (App. Br. 4). Appellant further contends that “Yarush 2 Appeal 2015-004020 Application 13/039,596 makes clear that introducing additional equipment, such as the suggested protective case of Richardson, is undesirable” (id.). The Examiner finds “[i]t is well known in the art to deploy a protective cover around an otherwise self-contained device to protect from drops and destructive elements such as liquids (Ans. 10) and “the proposed combination does not teach away . . . because the components would still be contained in a single unit as disclosed by Yarush” (id.). We agree with the Examiner. We refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. Yarush discloses that “the endoscopic camera contains all of the necessary equipment required to perform endoscopic procedures in a single, hand-held housing” (see 3:30-32). However, we find that such a disclosure fails to suggest that “introducing additional equipment, such as the suggested protective case of Richardson, is undesirable,” as proffered by Appellant (see App. Br. 4). Yarush merely states that its camera has all necessary equipment required for producing images of an object, not that any protective case is to be avoided. In fact, we note that Yarush discloses that “a variety of additional components are connected to or mounted integrally within the hand-held housing” (see 3:54—56), which could reasonably include an additional protective case. For example, as highlighted by the Examiner, “it is common for consumers to cover their otherwise self-contained and fully functional phones with a protective cover to protect the phone if dropped” (see Ans. 10). Similarly, the Examiner finds, and we agree, that Yarush’s hand-held 3 Appeal 2015-004020 Application 13/039,596 portable camera could benefit from a protective case, as taught in Richardson (see Richardson 2:11—16). Furthermore, we do not find, and Appellant does not establish, that Yarush criticizes, discredits, or otherwise discourages the use of an additional protective case, and thus Yarush does not teach away from such a protective case. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant also contends that “the protective enclosure of Richardson is specifically designed for an interactive flat-panel control device. ... At least the battery and the video camera of Yarush would not include the flat panels” (App. Br. 5). In response, the Examiner notes, and we agree, that “the display, battery and video camera are in a single self-contained unit according to Yarush” (see Ans. 10; see also Yarush 3:30-32) and that Yarush’s arrangement is a space saving configuration (see Ans. 10; see also Yarush 21:52—64). In other words, Appellant has not shown that Yarush’s self-contained and small sized endoscopic camera could not be accommodated in a protective enclosure, as taught by Richardson. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007), especially if the combination would not be “uniquely challenging or difficult for one of ordinary skill in the artf Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Accordingly, we sustain the Examiner’s rejection of claim 1. Appellant’s arguments regarding the Examiner’s rejection of independent claims 8 and 13 rely on the same arguments as for claim 1, and Appellant does not argue separate patentability for the dependent claims, except as 4 Appeal 2015-004020 Application 13/039,596 noted below (see App. Br. 3—9). We, therefore, also sustain the Examiner’s rejection of claims 2—6, 8, 12, 13, and 16—22. Claims 7 and 9—11 Issue 2: Did the Examiner err in finding that the clamed diameter ranges are a matter of design choice? Appellant contends that “[t]he rejection fails to show a teaching or suggestion of a probe tip having dimensions within the claimed range” (App. Br. 5) and that Appellant’s Specification in paragraph [0040] show the benefits of such dimensions {id. at 7). The Examiner finds that Appellant’s “dimensions merely constitute design choice” (see Final Act. 5) and cites exemplary disclosures that establish knowledge “that horoscope tip dimensions are recognized in the art as being design constraints chosen to meet the particular intended needs of a given scope (see Final Act. 2; see also Ans. 12). We agree with the Examiner. Again, we refer to, rely on, and adopt the Examiner’s findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. As noted supra by Appellant, the claimed “diameter” is mentioned in paragraph [0040] of Appellant’s Specification. However, such diameters are described as “example” and “typically,” which we find leaves to speculation as to what the benefit of such ranges are and whether any unexpected results are associated with such values. Appellant’s Specification merely states that such diameter “facilitates insertion of the probe tip 70 into the internal passages of the blade 50” (140). The relevant issue is whether the alleged 5 Appeal 2015-004020 Application 13/039,596 differences between the invention and the prior art “result in a difference in function or give unexpected results” or whether they are “no more than obvious variations consistent with the principles known in that art.” See In re Rice, 341 F.2d309, 314 (CCPA 1965). Here, Appellant does not dispute in the principle Brief the Examiner’s findings “that horoscope tip dimensions are recognized in the art as being design constraints chosen to meet the particular intended needs of a given scope” (see Final Act. 2), and only dispute the obviousness of the specific claimed diameter range. However, Appellant has not shown that the claimed diameter range either (1) results in a difference in function or (2) provides unexpected results. See In re Rice, 341 F.2d at 314. Regardless of whether the prior art recognized the precise diameter range claimed, the prior art cited by the Examiner (see Final Act. 2) shows that design choices were made as to the dimensions of the horoscope tips making up the respective claimed relationships. Further, absent any evidence from Appellant of criticality of the claimed range, we find the Examiner’s position to be reasonable. See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“The outcome of optimizing a result-effective variable may still be patentable if the claimed ranges are ‘critical’ and ‘produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.’”) (internal citations omitted). Therefore, Appellant’s purported benefits of the claimed range (App. Br. 7, citing Spec. 140) does not amount to a sufficiently specific argument or evidence against the Examiner’s finding that the claimed range would have been obvious as a matter of design choice and well known in the art (see Ans. 12). 6 Appeal 2015-004020 Application 13/039,596 Accordingly, we sustain the Examiner’s rejection of claim 7. Appellant’s arguments regarding the Examiner’s rejection of dependent claims 9—11 rely on the same arguments as for claim 7. We therefore also sustain the Examiner’s rejection of claims 9—11. DECISION We affirm the Examiner’s § 103(a) rejection of claims 1—13 and 16— 22. 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 7 Copy with citationCopy as parenthetical citation