Ex Parte Balquist et al

Patent Trial and Appeal Board

Aug 23, 2017

13080731 (P.T.A.B. Aug. 23, 2017)

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.
13/080,731 04/06/2011 ROSS BALQUIST H29103-HON10513P00420US 2429
93730 7590 08/25/2017
HONEYWELL/WOOD PHILLIPS
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
CHIN-SHUE, ALVIN CONSTANTINE
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
ksanderson@woodphillips.com
patentservices-us @ honey well, com
docketing @ woodphillips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSS BALQUIST, ERIC M. MANSON,
STEVE J. SHARP, and HUGH SMITH
Appeal 2015-007496
Application 13/080,731
Technology Center 3600
Before: STEVEN D.A. MCCARTHY, CHARLES N. GREENHUT, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
5—22 and 24—26, but seek our review of only the rejection of claims 5—9 and
15—20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2015-007496
Application 13/080,731
CLAIMED SUBJECT MATTER
The claims are directed to a retracting lifeline systems for use in
tie-back anchoring. Claim 5, reproduced below, is illustrative of the claimed
subject matter:
5. A retracting lifeline system, comprising:
a housing;
a first connector attached to the housing, a lifeline;
a hub to which the lifeline is attached at a first end of the
lifeline and around which the lifeline is coiled within the
housing, the housing comprising an opening through which the
lifeline exits the housing, the hub being tensioned to rotate in a
first direction to cause retracting of the lifeline and coiling of the
lifeline around the hub; and
a second connector attached to a second end of the lifeline;
wherein at least a section of the lifeline has an initial
ultimate tensile load of at least 8000 pounds and is abrasion
resistant such that the section of the lifeline is available for tie-
back anchoring using the second connector, the section of the
lifeline being at least partially retractable within the housing; and
further comprising an energy absorbing system positioned at
least partially within the housing, the energy absorbing system
comprising a first retaining member and a second retaining member,
the first retaining member being connected to a connector extending
from the housing so that the connector extending from the housing is
rotatable relative to the first retaining member, the connector
extending from the housing being connected to the first connector, the
second retaining member being operatively connected to the hub, the
first retaining member being connected to the second retaining
member by at least one energy absorbing member that increases in
effective length upon activation thereof so that the distance between
the first retaining member and the second retaining member increases
upon activation of the energy absorbing system.
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Appeal 2015-007496
Application 13/080,731
REJECTIONS
Appellants seek review of the following rejections:
Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones (US 2009/0032785 Al) and Anderson
(US 5,771,993).
Claims 17—19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones, Anderson, and Ellis (US 5,400,868).
Claims 5, 6, 9, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones, Anderson, Franks (US 4,928,790) and Taylor
(US 2003/0188495).
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones, Anderson, Franks, Taylor, and Ellis.
Appellants waive appeal of the following rejections (App. Br. 2),
which we summarily sustain {Hyatt v. Dudas, 551 F. 3d 1307, 1314 (Fed.
Cir. 2008) (“the applicant can waive appeal of a ground of rejection”); In re
Berger, 279 F.3d 975 (Fed. Cir. 2002)):
Claims 10-14 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 21, 22, 24, and 25 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Wolner (US 2010/0224448).
Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wolner and either Kucher (US 4,640,384) or Clark (US 5,704,669).
Claims 10-14, 21, 22, 24, and 25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wolner and Jones.
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Application 13/080,731
Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wolner, Jones, Franks and Taylor
Claims 10-14, 21, 22, 24, and 25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Betcher (US 7,946,387) and Jones.
Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Betcher, Jones, Franks and Taylor.
OPINION
“It is well-established that a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements.” In reMouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012). Nevertheless, it is incumbent upon the Examiner to explain how or
why the precise subject matter claimed would have been obvious in view of
the cited prior-art teachings. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir.
2001). There is no legally recognizable essential gist or heart of the
invention. W.L. Gore &Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548
(Fed. Cir. 1983). All words in a claim must be considered in judging the
obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970).
The Examiner initially states, “[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to have combined,
provided, substituted or modify Jones to comprise a connector connected
between his first connector 14 and his retainer member 15d.” Final Act. 14.
This statement, however, does not explain why the presence of the proposed
additional connector between Jones’s 14 and 15d components would have
yielded the claimed subject matter, including, as required by independent
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Appeal 2015-007496
Application 13/080,731
claim 5: “a first retaining member and a second retaining member, the first
retaining member being connected to a connector extending from the
housing so that the connector extending from the housing is rotatable
relative to the first retaining member, the connector extending from the
housing being connected to the first connector.” Independent claim 15
recites a similar limitation.
The Examiner repeats the assertion above in the Answer (Ans. 10) and
states, “the first retainer of Jones is the top portion of Jones housing to which
his absorbing member 15 is attached.” Ans. 11, 13. However, this is an
inaccurate description of Jones because the top portion of Jones’s housing,
or yolk 12, is 12d, whereas the energy absorber 15 is attached (at 15d) to the
bottom of eye 14. Jones para. 27. The Examiner goes on to state, “one of
ordinary skill in the art at the time of the invention would know how to
modify the connection between 14 and 12d (approximately at 15d, since the
connection point is not identified in the reference) to have a swivel joint
even if that means that an additional structural modification, such as an
upper housing plate, needs to be made to allow the connection 14 to be a
swivel connection 360, 370 as taught by Jones [sic Anderson].” Ans. 15—16
(reproducing Figures 3A, 3B of Anderson).
It is not clear from the Examiner’s statements exactly how the
Examiner is proposing to modify Jones. Anderson lacks any energy
absorber deployable from the top of the housing as in Jones’s and
Appellants’ arrangement, so simply providing Anderson’s swivel joint at the
top of Jones’s housing would not appear to be a possibility, nor would that
appear to yield the claimed subject matter. The Examiner also does not
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Application 13/080,731
explain or provide any evidentiary basis for the proposed additional
connector or upper housing plate.
Claims 5 and 15 include specific structure that does not appear to be
present in either Jones or Anderson to enable a swivel connection to work
with a deployable energy absorber. In asserting, “Jones’s connector 14 is
admittedly fixed, but Examiner does not believe it is an inventive concept to
change a lifeline housing to have a rotatable connector” (Ans. 14), the
Examiner addresses a more generic concept but fails to address the express
language of claims 5 and 15. Appellants correctly point out that independent
claims 5 and 15 require more than simply allowing Jones’s eye 14 to swivel.
Reply Br. 2—3. The Examiner has not shown the recited structure in the
prior art cited, nor explained why the specific subject matter claimed would
have been obvious in view of Jones and Anderson. The remaining
references are not applied by the Examiner in any manner that would cure
this deficiency. Accordingly, we cannot sustain the rejections of claims 5
and 15, or the rejections of those claims depending therefrom, on the basis
set forth by the Examiner.
DECISION
The Examiner’s rejections of claims 5—9 and 15—20 are reversed.
The Examiner’s rejections of claims 10—14, 21, and 24—26 are
affirmed.
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)(l)(iv).
AFFIRMED-IN-PART
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