Inspectron, Inc.

Patent Trials and Appeals Board

Mar 25, 2021

2019006816 (P.T.A.B. Mar. 25, 2021)

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.
15/412,532 01/23/2017 Brent F. Lyons 14836-111 3182
168384 7590 03/25/2021
Dickinson Wright PLLC - Ann Arbor
350 S. Main Street
Suite 300
Ann Arbor, MI 48104
EXAMINER
RAHMAN, MOHAMMAD J
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
03/25/2021 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):
DWPatents@dickinson-wright.com
tgarrett@dickinsonwright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte BRENT F. LYONS, TYE L. NEWMAN, and
SHEPHERD H. WHITCOMB

Appeal 2019-006816
Application 15/412,532
Technology Center 2400

Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 23 and 25–35. Appeal Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Inspectron,
Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to a “portable inspection unit
having a work channel for interchangeable accessories.” Spec. ¶ 2. The
work channel provides a path for any “accessory that may be commonly
used for fluid delivery, cleaning, scraping, polishing, etc.” Id. ¶ 32. The
work channel may comprise a fluid dispersion tube that “may be compatible
with many standard aerosol canisters.” Id. ¶ 31.
Independent claim 23 is illustrative, with the limitations at issue
emphasized in italics:
23. A portable inspection unit comprising:
a unit body;
a flexible cable having a proximal end portion and a distal end
portion, the proximal end portion extending from the unit body;
an imager housing disposed at the distal end of the flexible
cable; and
a fluid dispersion tube extending from the unit body to the
imager housing through an internal passageway in the flexible
cable;
an aerosol canister connected to the fluid dispersion tube
located within the unit body configured to propel fluid or gas
through the fluid dispersion tube and out of an opening in the
imager housing.
Appeal Br. 11 (Claims App.). Dependent claims 25–35 each
incorporate the limitations of claim 23. Id. at 11–12.

REFERENCES
Name Reference Date
Taniguchi et al.
(“Taniguchi”)
US 5,364,031 Nov. 15, 1994
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Covert et al.
(“Covert”)
US 2002/0017362 A1 Feb. 14, 2002
Bendall US 2003/0212308 A1 Nov. 13, 2003
Suwald et al.
(“Suwald”)
EP 2,667,156 A1 Nov. 27, 2013
Pease US 2006/0155168 A1 July 13, 2006

REJECTIONS
Claims 23 and 29–35 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Pease and
Taniguchi.
Claim 26 is rejected under 35 U.S.C. § 103(a) as being obvious over
the combined teachings and suggestions of Pease, Taniguchi, and Covert.
Claims 25, 27 and 28 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Pease and
Taniguchi.
Claims “23–35” [sic] were rejected under 35 U.S.C. § 112, first
paragraph as lacking enablement, and claim 25 was rejected under 35 U.S.C.
§ 112, second paragraph as being indefinite. Final Act. 2–4. However, we
presume those rejections were withdrawn in the Advisory Action of
November 2, 2018, which states that rejections based on “35 USC 112, 2nd”
are withdrawn based on the after-final submission, including claim
amendments that were entered in that Advisory Action. A summary of an
after-final interview, conducted on September 25, 2018, states that the 112,
2nd paragraph rejection is withdrawn due to an amendment to claim 23 to
indicate that the claimed dispersion tube, not the tube-to-canister connection,
is located within the body of the claimed apparatus. Applicant-Initiated
Interview Summary 1 (September 25, 2018). Because the location of the
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connection being inside the body of the apparatus was the reason for the
enablement rejection, and because claim 23 was rejected due to enablement,
not indefiniteness, and further because no mention of the enablement
rejection occurs during the remaining briefing of the appeal, we presume
that the Examiner withdrew the enablement rejection of claims 23 and 25–
35, as well as the indefiniteness rejection of claim 25.

OPINION
Appellant contests the Examiner’s obviousness rejections of claims 23
and 25–35. Appeal Br. 9. Appellant argues that the rejections fail to teach
each and every limitation of the claims, and moreover, fail to provide
adequate motivation to combine the references to arrive at the claimed smart
card device having the claimed features. Id. at 5–8. Appellant further
argues that the Examiner has made only conclusory findings with respect to
the subject matter set forth in dependent claims 29–31 and 33–35. We are
not persuaded of error in the Examiner’s rationale supporting the
obviousness rejection of claim 23, but are persuaded of error in the
Examiner’s findings with respect to claims 29–31 and 33–35. We begin
with Appellant’s argument concerning the rejection of claim 23.
1. Claims 23, 25–28, and 32
The Examiner applies the combination of Pease and Taniguchi to
teach or suggest the limitations of claim 23. Final Act. 5–6. The Examiner
relies solely on Pease for the majority of the limitations of claim 23, with the
exception of the “canister” limitations. Id. at 5. The Examiner states,
“Pease does not particularly disclose an aerosol canister connected to the
fluid dispersion tube within the unit body configured to propel fluid or gas
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through the fluid dispersion tube and out of an opening in the imager
housing as specified in claim 23.” Id. at 5–6.
For those “canister” limitations, the Examiner states, “Taniguchi et al
teaches that ‘Aerosol delivery systems can be prepared by fitting a canister
and dip tube with a nozzle of the present invention and charging the delivery
system with the composition to be delivered and a suitable propellant.’” Id.
at 6 (quoting Taniguchi 2:43–47). The Examiner provides the following
rationale to combine Taniguchi and Pease:
it would have been obvious to one of ordinary skilled in the art
at the time the invention was made to have an aerosol delivery
systems whereas an aerosol canister can be prepared by fitting a
canister to the fluid dispersion tube within the unit body at the
proximal end 3 of the flexible cable 1 of Pease and dispense gas
or fluid from the distal end 2 of the system or fitting fluid
dispersion tube extends from a port in the unit body and
connects with the aerosol canister or fitting fluid dispersion
tube extends from a port in the unit body and connects with a
nozzle of the aerosol canister as an obvious solution to connect
the dispersion tube to the aerosol canister. Doing so would help
to improve the applicability of the system in delivering liquid
from any canister.
Id. The Examiner further pointed to Appellant’s Specification as
characterizing an aerosol canister as a standard or known way to dispense
fluid from a nozzle. Ans. 4 (citing Spec. ¶ 31). The Examiner further finds
that one having ordinary skill in the art would understand that Taniguchi
teaches an aerosol container as a well-known system for dispensing fluid as
a pressure delivery mechanism. Id. Additionally, the Examiner clarified
that the fluid dispersion tube relied upon in Pease is the “conduit for the
hydraulic lines or pneumatic lines,” whose purpose is “to dispense liquid or
gaseous fluid from an outlet or nozzle.” Id. (citing Spec. ¶¶ 27, 31).
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Appellant first argues that the Examiner’s arrangement of Taniguchi
and Pease would not result in the claimed invention. Appeal Br. 5; Reply
Br. 5. Appellant argues that neither Pease nor Taniguchi teaches an aerosol
canister connected to a fluid dispersion tube forcing fluid out of an opening
in an imager housing. Id. With respect to the combined teachings,
Appellant argues that the pneumatic/hydraulic lines of Pease are used for
controlling gripper actuation, not for providing fluid dispersion. Id. (citing
Pease ¶ 29). Appellant argues that the closed-loop hydraulic and pneumatic
lines are purposed for slow, controlled, gripping or cutting motion. Id.
Appellant further argues that such a combination would not provide the
beneficial foaming properties of Taniguchi’s apparatus, thus frustrating the
purpose of Taniguchi. Id. (citing Taniguchi, Abstr.).
We are persuaded by Appellant’s argument that a hydraulic/pneumatic
line for controlling a gripper would not dispense fluid from an opening. The
Examiner appears to have conflated Pease’s hydraulic/pneumatic lines with
Pease’s separate embodiment of a fluid dispersion line that will “dispense
gas or fluid” from the distal end” of the system. Pease ¶¶ 27, 41. Such
dispensed fluid may be, for example, “sealing or insulating material,” rather
than hydraulic or pneumatic fluid, supporting Appellant’s position that the
hydraulic/pneumatic lines are not dispensing the fluid. Pease ¶ 41. To the
extent that the Examiner relies upon Pease’s hydraulic or pneumatic lines as
also dispensing fluid from an opening in Pease’s imager housing, we are
persuaded of error in that finding.
However, the Examiner has also relied more generally on Pease as
dispensing fluid from its distal end. Final Act. 5 (quoting Pease ¶ 41 (“a
fluid passageway is provided so that a liquid or gaseous fluid can be
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dispensed from an outlet at the distal end 2” so that material can be
dispensed by “applying pressure to a reservoir of fluid at or coupled to the
proximal end” of the cable). We further agree with the Examiner that the
distal end of Pease is the imager housing, because the distal end 2 of Pease
includes the housing for the imaging components of lens and LED(s). Pease
¶ 32. Thus, we agree that Pease supports the Examiner’s finding of a fluid
dispersion tube that is configured to propel fluid through the tube and out of
an opening in the imager housing.
With respect to Appellant’s argument that the rejection fails to
provide proper motivation for modifying Pease with the teachings or
suggestions of Taniguchi, we do not agree with the Examiner’s motivation
based upon modifying Pease’s hydraulic or pneumatic lines for the reasons
discussed above. However, the Examiner provides an alternative motivation
of providing a well-known pressure source in the form of Taniguchi’s
aerosol canister as a rationale for such combination.
An Examiner (or the Board) may rely on common sense to provide
motivation “without any specific hint or suggestion in a particular
reference,” although such common sense must be supported by a “reasoned
explanation that avoids conclusory generalizations.” Arendi S.A.R.L. v.
Apple, Inc., 832 F.3d 1355, 1362, 1366 (Fed. Cir. 2016) (internal citations
omitted). The Supreme Court has found that “if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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Here, the Examiner finds that connecting a well-known aerosol
canister, as taught by Taniguchi, to Pease’s fluid dispersion tube would
“help improve the applicability of the system in delivering liquid from any
canister.” Final Act. 6. The Examiner further finds that an “aerosol canister
is a standard or known way to dispense liquid or gaseous fluid from an outlet
or nozzle,” citing to Appellant’s Specification and to Taniguchi. Ans. 4
(citing Spec. ¶ 31; Taniguchi 2:43–47). The Examiner’s rationale for
combining Pease and Taniguchi is, in part, based on the aerosol canister
being a “predictable variation” such that it the use of the canister for the
pressure source would have been obvious. Id. (citing MPEP 2141).
The Examiner’s finding is supported by Taniguchi, which states,
“[p]ressurized aerosol delivery systems are also well-known in the art,”
wherein the art is described as relating “generally to dispensing nozzles and
dispensers employing said nozzles.” Taniguchi 1:6–7; 2:43–47. The
Examiner describes Pease as having a pressurized fluid delivery system, i.e.,
“applying pressure to a reservoir of fluid at or coupled to the proximal end 3
of the flexible cable 1.” Final Act. 5, quoting Pease ¶ 41.
Appellant states that the “inventors discovered that there may be
benefits to expelling fluid with more flow than is available through hand
control” in an industrial setting. However, Appellant has not provided
evidence in the Specification, or via affidavit or declaration, showing
unexpected results from the claimed invention. See 37 C.F.R. § 1.132
(“When any claim of an application or a patent under reexamination is
rejected or objected to, any evidence submitted to traverse the rejection or
objection on a basis not otherwise provided for must be by way of an oath or
declaration under this section.”). Based on the record before us, we find no
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error in the Examiner’s determination that one having ordinary skill in the
art at the time the invention was made would have found the use of an
aerosol canister as a predictable variation of a pressure source to dispense
fluid through a nozzle, and thus its use would have been obvious combined
with Pease’s teaching of pressurized fluid delivery through a nozzle.
With respect to Appellant’s contention that the combination would not
provide the “beneficial foaming properties of Taniguchi’s apparatus, thus
frustrating the purpose of Taniguchi,” we are not persuaded of error in the
combination. In the obviousness determination, the reason for combining
references is not limited to the purpose or problem addressed by Appellant,
but “any need or problem known in the field and addressed by the patent can
provide a reason for combining the elements in the manner claimed . . . a
person of ordinary skill often will be able to fit the teachings of multiple
patents together like a puzzle.” KSR, 550 U.S. at 402. Furthermore, the test
for obviousness is “not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference,” or vice
versa, but instead “what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Because the Examiner has provided a sufficient explanation of the
motivation to combine Pease and Taniguchi, we are not persuaded of error in
the Examiner’s obviousness rejection of claim 23. Appellant argues against
the rejections of claims 25–28 and 32 on the same reasoning. Appeal Br. 7–
9. For the reasons expressed above, we are not persuaded by that reasoning,
and are not persuaded of error in the Examiner’s obviousness rejections of
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claims 25–28 and 32. Accordingly, we affirm the Examiner’s rejection of
claims 23, 25–28, and 32.
2. Claims 29–31 and 33–35
Claims 29, 30, and 31 contain the further limitations of “a lubricant,”
“a pesticide,” and “a cleaner,” respectively. Appeal Br. 11–12 (Claims
App.). Appellant argues that the Examiner has not pointed to any teachings
in the art, but has merely stated in a conclusory manner that these teachings
would have been obvious. Appeal Br. 6–7; Reply Br. 6. Claims 33, 34, and
35 contain the further limitations of “the opening in the imager housing is
located such that the aerosol canister propels a fluid within the field of view
of an imager in the imager housing,” “wherein said dispersion tube extends
from a port in the unit body and connects with the aerosol canister,” and
“wherein the fluid dispersion tube extends from a port in the unit body and
connects with a nozzle of the aerosol canister,” respectively. Appeal Br. 12
(Claims App.). Appellant argues that the Examiner has generally pointed to
the references as teaching these limitations, but that the references do not
provide any suggestion of those limitations, such that the Examiner has
merely provided a conclusory statement in support of the rejections. Id. at
7–8.
The Federal Circuit has identified “conclusory statements” as
insufficient articulations of motivation to combine. In re Nuvasive, 842 F.3d
1376, 1383 (Fed. Cir. 2016). Nor can the Examiner rely solely on common
knowledge, common sense, or the level of skill in the art as a “wholesale
substitute for reasoned analysis and evidentiary support.” Id. Further, “[i]t
is never appropriate to rely solely on ‘common knowledge’ in the art without
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evidentiary support in the record, as the principal evidence upon which a
rejection was based.” In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001).
With respect to claims 29–31 and 33–35, the Examiner states that they
“would be known to the ordinary skill in the art and common sense, e.g.,
‘canister contains lubricant.’ It is obvious that a canister can contain any
liquid.” Ans. 5. With respect to claims 29–31, the Examiner further states
that because Pease teaches the use of a sealing or insulating material being
dispensed from the nozzle, it would have been obvious to dispense lubricant
or a pesticide or a cleaner as a matter of designer’s choice. Final Act. 7.
With respect to claim 33, the Examiner further reasons that the placement of
the imager housing opening would have been obvious to further Pease’s
purpose in imaging activities at the distal end of the system. Id. For claims
34 and 35, the Examiner finds Pease to lack those teachings, and relies on
Taniguchi solely for the teaching of well-known aerosol canisters, without
any mention of a fluid dispersion tube extending from a port in the unit
body. Id. at 5–6. We are persuaded by Appellant’s argument that the
Examiner has improperly relied upon “common knowledge” or “common
sense” in the art as the principal evidence upon which the rejections of
claims 29–31 and 33–35 are based. Consistent with the binding precedent of
our reviewing court, such reliance is insufficient to support an obviousness
rejection, and we reverse the Examiner’s rejection of claims 29–31 and 33–
35.
CONCLUSION
For the above-described reasons, we affirm the Examiner’s
obviousness rejections of claims 23, 25–38, and 32, and reverse the
Examiner’s obviousness rejection of claims 29–31 and 33–35 as being
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obvious over the applied references under 35 U.S.C. § 103(a), as detailed
below.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23, 29–35 103(a) Pease, Taniguchi 23, 32 29–31,
33–35
26 103(a) Pease, Taniguchi,
Covert
26
25, 27, 28 103(a) Pease, Taniguchi,
Bendall
25, 27, 28
Overall
Outcome
23, 25–28,
32
29–31,
33–35

AFFIRMED IN PART