Ex Parte NGO et al

Patent Trial and Appeal Board

Aug 25, 2017

13969758 (P.T.A.B. Aug. 25, 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.
13/969,758 08/19/2013 Kiet NGO 60249-028 PUS1 3525
26096 7590 08/29/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
CLARKE, ADAM S
ART UNIT PAPER NUMBER
2867
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIET NGO and MICHAEL REEVE
Appeal 2016-007368
Application 13/969,7581
Technology Center 2800
Before JEFFREY T. SMITH, JULIA HEANEY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
11—15,3 22, 23, and 25—33. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify OES, Inc. as the real party in interest. Appeal Br. 1.
2 In our Opinion, we refer to the Final Action issued February 3, 2015
(“Final Act.”); the Appeal Brief filed July 27, 2015 (“Appeal Br.”); the
Examiner’s Answer issued May 25, 2016 (“Ans.”); and the Reply Brief filed
July 25, 2016 (“Reply Br.”).
3 Appellants did not appeal the rejection of claim 16 in the briefing. We
address this issue at the end of our Opinion.
Appeal 2016-007368
Application 13/969,758
BACKGROUND
The subject matter of the claimed invention is detection of damage to
electrical conductors, such as insulated wires, used in a variety of situations,
including vehicle systems for providing power to electrically powered
components and communicating information among components. Spec. 11.
Applicants describe a device and method for detecting both (1) a desired
contact with a conductor, such as by a cutting blade cutting through an
insulated wire, and (2) an undesired contact with a conductor, such as by an
insulation stripper blade improperly touching the wire, possibly damaging
the wire.
Figure 8 of the application is reproduced below:
Figure 8 schematically illustrates a condition during a stage of a wire
handling operation in which conductive wires are contacted by a stripping
blade during an insulation stripping portion of the operation. Spec. 119.
Element 564 is an electrically conductive cutting blade; element 60 is an
4 In our Opinion, all elements of figures are bolded, irrespective of their
treatment in the application and cited references.
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Application 13/969,758
electrically conductive stripping blade configured to strip insulation from the
exterior of the conductor wire 24. Id. 136. When stripping blade 60 makes
undesirable contact with a conductive wire, a signal drop is output to
detector 26, indicating that the wire should be rejected. Id. 145.
The claims are directed to a conductor monitor device and method.
Claim 1, reproduced below with the disputed terms emphasized, is
illustrative of the claimed subject matter:
1. A conductor monitor device, comprising:
a first generally flat plate electrode that induces a signal
in a conductor without any electrically conductive, physical
connection between the first electrode and the conductor;
a second generally flat plate electrode that detects at least
some of the induced signal from the conductor without any
electrically conductive, physical connection between the second
electrode and the conductor; and
a processor that provides an output indication that an
electrically conductive wire handling machine component
contacts the conductor, wherein the output indication has a first
characteristic when there is a desired contact between the wire
handling machine component and the conductor and the
indication has a second, different characteristic when there is
an undesired contact between the wire handling machine
component and the conductor, wherein the undesired contact is
subsequent to the desired contact and the second characteristic
of the indication is subsequent to the first indication.
Appeal Br. 10 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Luratietal. US 2007/0121796 A1 May 31, 2007
(“Lurati”)
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Appeal 2016-007368
Application 13/969,758
Goshima et al. JP 407 227022 A Aug. 22, 1995
(“Goshima”)5
REJECTIONS
The Examiner maintains and Appellants seek review of the rejection
of claims 11—15, 22, 23, and 25—33 under 35 U.S.C. § 103(a) over Lurati in
view of Goshima. Final Act. 4. The Examiner rejects claim 16 under 35
U.S.C. § 103(a) over Lurati in view of Goshima, and further in view of
Campbell. Id. at 13. Appellants did not appeal the rejection of claim 16.
See Appeal Br. 3—9.
OPINION
The dispositive issue in this case is whether the Examiner provides
some articulated reasoning with some rational underpinning to combine
Lurati and Goshima in order to support a legal conclusion of obviousness.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner relies on Lurati which is concerned with determining
the diameter of a wire handled by a wire-processing device. Lurati,
Abstract. The Examiner relies on Goshima as teaching an arrangement for
monitoring a conductor (wire) during the stripping of insulation from wire.
Final Act. 5. The Examiner determines that it would have been obvious to
one of ordinary skill in the art at the time of the invention to modify the wire
diameter determination device of Lurati with cutting blades and insulation
stripping blades, such as disclosed in Goshima, to provide a first
characteristic when there is a desired contact between the machine and the
wire (conductor) and a second, different characteristic when there is an
5 The Examiner relies on the English language machine translation of
Goshima of record in the file and to which Appellants have not objected.
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Appeal 2016-007368
Application 13/969,758
undesired contact between the machine and the wire. Id. at 6. The
Examiner concludes that this combination would minimize the motion and
time required to cut and strip the conductor and, with subsequent analysis,
discriminate between different types of conductor contact that may affect the
output and accurately detect a damaged conductor. Id.
Appellants persuasively argue that the Examiner has not provided the
required articulated rationale for the proposed modification. Appeal Br. 4—5,
8. The Examiner fails to provide a rationale of why a skilled artisan, starting
with Lurati, which concerns measuring the diameter of a wire, would seek to
attach cutting and stripping blades, as required by claim 11.
In addition, the Examiner finds that neither Lurati nor Goshima
teaches a processor output that indicates both desired contact and undesired
contact. Final Act. 7; Ans. 3. The Examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
provide such an output by omitting certain elements of Goshima, which
involves only routine skill in the art. Final Act. 7; Ans. 3^4. The Examiner
explains this further modification of Lurati as obvious because it would
allow the sensitive detection of core damage by the stripping blades. Final
Act. 7; Ans. 4. However, the Examiner fails to provide a rationale of why a
skilled artisan, starting with Lurati, would look for ways to avoid damage by
stripping blades. Appellants persuasively argue that the Examiner engages
in hindsight in combining the references. Appeal Br. 5.
The Examiner reversibly erred in rejecting claim 11 as obvious. We
do not sustain the rejection of claim 11. For the reasons provided above, we
also do not sustain the rejection of claims 12—15, 22, 23, and 25—33.
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Application 13/969,758
Claim 16, which depends from claim 11, was rejected as obvious over
Lurati in view of Goshima, and further in view of Campbell. Final Act. 14.
The additional Campbell reference does not remedy the deficiency of the
Examiner’s proposed combination of Lurati and Goshima in the rejection of
claim 11. Although Appellants did not argue separately against the rejection
of claim 16 (see Appeal Brief 3—9), we do not sustain the rejection of its
parent claim, and, therefore, do not sustain the rejection of claim 16.
DECISION
For the above reasons, the Examiner’s rejection of claims 11—16, 22,
23, and 25—33 is reversed.
REVERSED
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