Kevin J. Foley et al.

Patent Trials and Appeals Board

Aug 13, 2019

14514465 - (D) (P.T.A.B. Aug. 13, 2019)

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.
14/514,465 10/15/2014 Kevin J. Foley NSD 2014-003 1055
26353 7590 08/13/2019
WESTINGHOUSE ELECTRIC COMPANY, LLC
1000 Westinghouse Drive
Suite 141
Cranberry Township, PA 16066
EXAMINER
NATH, SUMAN KUMAR
ART UNIT PAPER NUMBER
2861
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
coldrerj@westinghouse.com
guerral@westinghouse.com
spadacjc@westinghouse.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN J. FOLEY,
NATHAN A. BROWN, and CHARLES R. BARRETT
____________

Appeal 2017-010774
Application 14/514,4651
Technology Center 2800
____________

Before JEFFREY T. SMITH, ELIZABETH M ROESEL,
and BRIAN D. RANGE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

1 Westinghouse Electric Company LLC is the applicant and real party in
interest. (See App. Br. 1).
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Application 14/514,465

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STATEMENT OF THE CASE
This decides an appeal under 35 U.S.C. § 134(a) from the March 31,
2017 final rejection of claims 1–17.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
Appellants’ invention is directed generally to nondestructive
inspection tools used for inspecting difficult to access locations such as
around the welds on jet pumps of boiling water reactors. (Spec. ¶ 2). Claim
1 is illustrative of the subject matter on appeal and is reproduced below:
1. An automated inspection assembly that includes a
number of subassemblies
comprising:
a frame subassembly, having a first side and a second side
having a length and width with the width substantially larger than
a thickness of the frame subassembly between the first side and
the second side, and the length having a first end and a second
end along a longitudinal dimension of the length, the frame
subassembly being configured to form the main support structure
for the automated inspection assembly;
a positioning arms subassembly, coupled to the frame
subassembly, including a support arm remotely operable to
extend out from or retract toward the first side of the frame
subassembly;
a kicker arm remotely operable to extend out from or
retract toward the second side of the frame subassembly, the
support arm and the kicker arm in an extended position being
operable to wedge the frame subassembly between a member to
be inspected and a surface opposed to the member to be
inspected, with the support arm and the kicker arm configured to

2 Claims 18–20 have been withdrawn from consideration.
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Application 14/514,465

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support the entire weight of the automated inspection assembly
when in the extended position;
a scanning subassembly supported from the frame
subassembly and configured to scan at least a portion of the
member; and
wherein at least one of the kicker arm or the support am1
is operable to move hydraulically.
The following rejections are presented for our review.
I. Claims 1–17 are rejected under 35 U.S.C. § 112(a)3 as failing to
comply with the written description requirement.
II. Claims 1–6 and 9–16 are rejected under 35 U.S.C. § 103 as
unpatentable over Collins (US 6,169,776 B1, issued Jan. 2, 2001) in view of
Hastings (US 2015/0200025 A1, filed Jan. 15, 2014).
III. Claims 7 and 8 are rejected under 35 U.S.C. § 103 as obvious over
Collins, Hastings, and further in view of Hatley (US 6,222,897 B1, issued
Apr. 24, 2001).
IV. Claim 17 is rejected under 35 U.S.C. § 103 as obvious over Collins,
Hastings, and further in view of Pearce (US 4,785,819, issued Nov. 22,
1988).

OPINION
Rejection under 35 U.S.C. § 112(a)
(written description)

We REVERSE.

3 The America Invents Act (AIA) versions of the patent statutes are
applicable to the subject application.
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The test for determining compliance with the written description
requirement of 35 U.S.C. § 112(a), is whether the disclosure of the
application as originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter. In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (addressing pre-AIA statute).
The Examiner bears the initial burden of establishing that the original
application disclosure as a whole would not have reasonably conveyed to
those skilled in the art that the inventors had possession of the claimed
subject matter at the time the instant application was filed. Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); In re
Alton, 76 F.3d 1168, 1172, 1175–76 (Fed. Cir. 1996) (citing In re Wertheim,
541 F.2d 257, 262–64 (CCPA 1976)); In re Wright, 866 F.2d 422, 425 (Fed.
Cir. 1989).
The Examiner finds the claim 1 limitation “with the support arm and
the kicker arm configured to support the entire weight of the automated
inspection assembly when in the extended position” is not adequately
described by the original Specification. (Final Act. 3).
It is well-settled that “the test for sufficiency [of written description]
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad, 598 F.3d at 1351. To show
possession, “the specification must describe an invention understandable to
[the] skilled artisan and show that the inventor actually invented the
invention claimed.” Id. at 1351. Nevertheless, “the description requirement
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does not demand any particular form of disclosure, or that the specification
recite the claimed invention in haec verba.” Id. at 1352 (citation omitted).
We agree with Appellants that the Specification provides descriptive
support for the terms positioned and positioning. Appellants point out
Specification paragraphs 34 and 39 and figures 6 and 7 describe and depict
arms 98 and kicker arm 102 are configured to support the entire weight of
the automated inspection assembly when in the extended position. (App. Br.
5–6). Specification paragraph 33 discloses that frame subassembly 84
serves as the main support structure for the apparatus and the other attached
subassemblies. Specification paragraph 34 states:
The fork arms 98 (i.e., positioning arms) can rotate from a flat
position substantially against the frame assembly 84 to at least
an approximately vertical position. This can be seen from the
side view in Figure 4. A kicker arm 102 that extends from the
opposite side of the frame subassembly 84 and is operated by a
pneumatic cylinder 104 to rotate from a substantially flat
position parallel to the frame subassembly 84 to a substantially
vertical position as shown in the side view in Figure 4, and
works with the positioning arms 98 to support the inspection
assembly 82.
In view of the disclosure that frame subassembly 84 serves as the
main support structure for the apparatus and the other attached
subassemblies, the written description reasonably conveys to a person of
ordinary skill in the art that attached arms 98 and kicker arm 102 are
configured to support the entire weight of the automated inspection
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assembly when in the extended position. Accordingly, we agree with
Appellants that the Examiner’s rejection is not well-founded.
In sum, the rejection under 35 U.S.C. § 112(a) as failing to comply
with the written description requirement is reversed.

Rejections under 35 U.S.C. § 103

We REVERSE.
We limit our discussion to independent claim 1, the only independent
claim on appeal.
The Examiner finds Collins teaches an automated inspection
assembly that includes support arms (fig.7; elements 118, 138, 132A
and 132B) and a kicker arm (fig.7; element 114). (Final Act. 5). The
Examiner finds the automated inspection assembly of Collins includes
a number of subassemblies that differs from the claimed invention by
failing to teach
a frame subassembly having a width with the width
substantially larger than a thickness of the frame subassembly
between the first side and the second side, with the support arm
and the kicker arm configured to support the entire weight of
the automated inspection assembly when in the extended
position; and wherein at least one of the kicker arm or the
support arm is operable to move hydraulically.
(Final Act. 5).
The Examiner relies upon Hastings to address these differences.
(Final Act. 5–6). The Examiner concludes that it would have been obvious
to size the frame subassembly including the support arm and the kicker arm
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as required by the claimed invention based on the teachings of Collins and
Hastings. (Final Act. 6).
Appellants argue the claimed invention is not obvious over the
teachings of Collins and Hastings. Specifically, Appellants argue Collins
does not have an equivalent to the positioning arms subassembly required by
independent claim 1 and Hastings’ side supports 230 bear the entire weight
of the inspection apparatus. (App. Br. 7).
We cannot sustain the Examiner’s rejection. In response to
Appellants’ arguments, the Examiner asserts for the first time Collins’ “drive
assemblies 34A, 34C and 34D, which are parts of the mast assembly,
support the weight and move [the] apparatus 22 relative to the shroud.”
(Ans. 6). Consequently, the Examiner is now relying on different
components of Collins’ inspection apparatus than were relied upon in the
final action. Notwithstanding this change, the Examiner has not established
that Collins’ drive assemblies 34A, 34C, and 34D teach or suggest the
support arm and the kicker arm configured to support the entire weight of
the automated inspection assembly when in the extended position, as
required by the claimed invention. The Examiner has not directed us to
evidence that establishes Collins’ drive assemblies 34A, 34C, and 34D are
extendable to a different position. (See Collins col. 4, ll. 10–49). The
Examiner has not directed us to evidence that Collins’ support arms (fig.7;
elements 118, 138, 132A and 132B) and a kicker arm (fig.7; element 114)
are configured to support the entire weight of the automated inspection
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assembly when in the extended position as required by the claimed
invention.
Accordingly, we reverse the Examiner’s rejections of independent
claim 1 for the reasons presented by Appellants and given above. We
likewise reverse the Examiner’s decision to reject dependent claims 2–17
since the rejection of these claims is premised on the Examiner’s
unsupported combination of Collins and Hastings. We need not reach
whether the Examiner’s reliance on other references in addition to Collins
and Hastings for the rejection of the dependent claims was supported by the
evidence of record because the base combination of Collins and Hastings
cannot stand.
ORDER
The rejection of claims 1–17 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement is reversed.
The rejections of claims 1–17 under 35 U.S.C. § 103 are reversed.

REVERSED