Ex Parte Olsson et alDownload PDFPatent Trial and Appeal BoardFeb 20, 201812704808 (P.T.A.B. Feb. 20, 2018) 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. 12/704,808 02/12/2010 Mark S. Olsson SEEK 09-147-201 6984 13235 7590 Steven C. Tietsworth 3855 Ruffin Road San Diego, CA 92123 EXAMINER VAZQUEZ COLON, MARIA E ART UNIT PAPER NUMBER 2482 NOTIFICATION DATE DELIVERY MODE 02/22/2018 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): tietsworth@cox.net steven. tietsworth @ seescan.com susan.hammons@seescan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK S. OLSSON, ERIC M. CHAPMAN, DAWN E. SHAFFER, LONI M. CANEPA, JAMES F. KLEYN, and LISA E. LATIMER Appeal 2017-001609 Application 12/704,808 Technology Center 2400 Before JOSEPH L. DIXON, SCOTT E. BAIN, and ALEX S. YAP, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-001609 Application 12/704,808 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—29. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a pipe inspection system with replaceable cable storage drum. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A pipe inspection system, comprising: a substantially round-shaped cable storage drum; a substantially round-shaped housing configured to removably receive and rotatably support the cable storage drum; a push-cable with a plurality of conductors, the push-cable being stored in the cable storage drum in a plurality of coils; a camera head operatively connected to a distal end of the push-cable; a removable handheld display and image capture device coupled to the push-cable conductors for displaying images or video provided from the camera head; and a slip-ring assembly having first and second mating portions that when mated provide conductive paths from the plurality of conductors at a proximal end of the push cable, the first portion of the slip-ring assembly being mounted on the housing and the second portion of the slip-ring assembly being mounted on the removable cable storage drum. 1 Appellants indicated that SeeScan, Inc. is the real party in interest. App. Br. 1. 2 Appeal 2017-001609 Application 12/704,808 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ganthier US 5,076,794 Dec. 31, 1991 Olsson et al. (“Olssonl”) US 6,545,704 B1 Apr. 8, 2003 Arbuckle US 6,793,415 B2 Sept. 21,2004 Olsson et al. (“01sson3”) US 7,298,126 B1 Nov. 20, 2007 Kaplan US 7,359,611 B1 Apr. 15,2008 Crunkilton et al. US 2008/0243003 Al Oct. 2, 2008 Jayko et al. US 2009/0320279 Al Dec. 31,2009 Olsson et al. (“01sson2”) US 8,264,226 B1 Sept. 11,2012 REJECTIONS The Examiner made the following rejections: Claims 1—6, 11—15, 20, 22, 25, and 26 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Olssonl in view of Kaplan further in view of 01sson2 further in view of Crunkilton. Claims 7, 16, and 21 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Olssonl in view of Kaplan further in view of Crunkilton. Claims 8, 9, 17, and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Olssonl view of Kaplan further in view of 01sson2 further in view of Crunkilton et al. further in view of Olsson 3. Claims 10 and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Olssonl in view of Kaplan further in view of 01sson2 further in view of Crunkilton et al. further in view of Ganthier. 3 Appeal 2017-001609 Application 12/704,808 Claims 23, 24, and 28 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Olssonl view of Kaplan further in view of 01sson2 further in view of Crunkilton et al. further in view of Arbuckle. Claim 27 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Olssonl in view of Kaplan further in view of 01sson2 further in view of Crunkilton et al. further in view of Jayko. Claim 29 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Olssonl in view of Kaplan further in view of Crunkilton et al. further in view of Arbuckle. ANALYSIS Claims 1 and 11 With respect to independent claims 1 and 11, the Examiner relies upon the combination of the Olssonl, Kaplan, 01sson2, and Crunkilton patents. (Final Act. 6). We select independent claim 1 as the illustrative claim for the group and address Appellants’ arguments thereto. 37C.F.R. §41.37(c)(l)(iv). Appellants contend: [the] combination is improper for the reason that combination of the disparate references Kaplan and Crunkilton with Applicant's co-assigned patents would not lead to an operative device or system, would not address the specific purposes of the presently claimed invention, and/or are not analogous art for the purposes of 35 U.S.C. § 103. (App. Br. 5). Appellants further contend: In summary, there would simply be no reason for one of ordinary skill in the art to combine the teachings of Kaplan and/or Crunkilton with those of Olssonl and 01sson2 as the Examiner has done in the instant office action, such a 4 Appeal 2017-001609 Application 12/704,808 combination would not be desirable as it would not provide an improvement over the individual references alone, and [and] their combination would not result in operable system for solving the problems addressed by the presently claimed invention. In this rejection the Examiner has merely resorted to picking and choosing pieces from other disclosures and “gluing” them together in a non-operative way to attempt to get to the presently claimed invention. Such hindsight reasoning is improper, and therefore the associated rejection is also improper. Appellant’s invention recognizes various novel and non-obvious ways of combining elements such as storage boxes, which Appellant does not claim are in themselves at all new in the art (Appellant acknowledges that the basic idea of storing cable in a box is old and well known), but rather Appellant’s particular combination of elements that are or have been well known (cable storage boxes, Appellant’s own older disclosures) in a novel and non- obvious way to achieve an inventive result. While many of the elements of Appellant’s claimed invention have been in existence for some time (e.g., cable storage boxes, slip-ring connectors, push-cables, camera heads, display devices), the specific combination of elements as recited in the pending claims have not all been combined. (App Br. 6—7). In supporting the proffered combination, the Examiner identifies Appellants’ Specification setting forth the description of Appellants’ invention. (Final Act. 8; p.5, lines 25—27 and p.6, line 1.) The Examiner then concludes: Therefore, it would have been obvious to one of ordinary skill in the art and at the time the invention of Olssonl was made to incorporate a housing configured to removably receive a cable storage drum as taught by Kaplan in order to have a housing in which a drum may be rapidly replaced with a drum holding a longer cable, or a more flexible cable, among other alternatives. It is further noted Kaplan is used to demonstrate it is known in the art to have a housing capable of receiving a cable storage device that can be removed. 5 Appeal 2017-001609 Application 12/704,808 (Final Act. 8). We disagree with the Examiner and find that the Kaplan reference is only configured to removably receive a cable storage drum when the drum is empty, but when the drum contains a cable, the cable storage drum has limited removability because the cable enters the housing through the plurality of openings 28—30 in the sidewalls or opening 31 in the enclosure bottom. (Kaplan 3:4—7). The Examiner further maintains that In the instant case the reference to Crunkilton is reasonably pertinent to the particular problem with which the applicant was concerned, which is to provide an electrical connection in order to obtain an image (p.6, lines 9-12). Therefore, it would have been obvious to one of ordinary skill in the art and at the time the invention of Olssonl, as modified, was made to incorporate a slip-ring assembly having first and second mating portions as taught by Crunkilton in order to provide conductive paths from a plurality of conductors when both mating portions are mated. It is further noted the Examiner relied on Crunkilton because Olssonl is silent on the specifics and components of the disclosed slip-ring. It is known in the art for slip-rings to have mating portions to provide a conductive path in order to transfer electrical signals from one end to another. (Final Act. 10—11; referencing Olssonl 5:56—59 “A conventional slip ring coupling 28 is mounted inside the central hub portion 22a and is used to provide an electrical connection between one end of a short cable 29 and one end of another short cable 30.”) Although we generally agree with the Examiner regarding a slip ring coupling, the Examiner has not shown that the Crunkilton reference would have taught or suggested the two mating portions as claimed because the Examiner has not shown that Kaplan teaches the two relative portions of the claimed “drum” and “housing” nor has the 6 Appeal 2017-001609 Application 12/704,808 Examiner provided a persuasive line of reasoning for combining Kaplan with Olssonl and 01sson2 to meet the claimed limitations. Obviousness requires mapping the claim limitations to the corresponding portions of the reference, which the Examiner must identify with particularity. On the record before us, the Examiner’s obviousness rejection is not supported by the express disclosures of Kaplan and Crunkilton in combination with Olssonl and 01sson2 and relies on conjecture, which would require us to resort to improper speculation, unfounded assumptions, or hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We will not resort to such speculation or assumptions to cure the deficiencies in the factual basis in order to support the Examiner’s obviousness rejection. In the Answer, the Examiner further finds, that “the prior art of Olssonl and Kaplan meets all of the structural limitations, and is therefore capable of performing the claimed recitations set forth above.” (Ans. 5); see also Ans. 4—10. Additionally, the Examiner maintains: the recitation that an element is “configured to” perform a function is not considered to be a positively recited structural limitation, but only that the element has the ability to perform such a function. The recitation “a substantially round-shaped housing configured to removably receive and rotatably support the cable storage drum” is a recitation of intended use. (Ans. 5). But the Examiner does not identify how the correlated elements 22 and 22b of Olssonl (Final Act. 6) teach or suggest the claimed structure and intended use. In response to the Appellants’ argument that the combination of Kaplan with Olssonl would do nothing to improve upon the operation or performance of Olssonl and 01sson2, the Examiner merely provides case 7 Appeal 2017-001609 Application 12/704,808 law citations and a conclusion that Kaplan’s housing will provide removable cable storage. (Ans. 6). We find the Examiner’s response to be conclusory and not supported by the prior art teachings of the Kaplan reference. Regarding the combination of the Crunkilton reference with the systems of Olssonl and 01sson2, the Examiner merely provides a case law citation without any substantive line of reasoning for combining the slip-ring of the Crunkilton reference with the combination of the Kaplan reference with the “substantially round-shaped cable storage drum;” and “a substantially round-shaped housing configured to removably receive and rotatably support the cable storage drum;” where the “push-cable with a plurality of conductors, the push-cable being stored in the cable storage drum in a plurality of coils,” as claimed in independent claim 1. (Ans. 6—8). Regarding the Appellants’ argument that the Examiner’s obviousness rejections are based upon improper hindsight, the Examiner merely provides a case law citation without any further discussion or substantive response. (Ans. 8). Therefore, the Examiner does not remedy the noted deficiency in the rejection of illustrative claim 1, as discussed above. Accordingly, Appellants have shown error in the conclusion of obviousness, and we cannot sustain the obviousness rejection of illustrative independent claim 1 and its corresponding dependent claims 2—6 20, 22, 25, and 26. The Examiner relies upon the same line of reasoning with respect to the rejection of independent claim 11. (Final Act. 13—14). As a result, we cannot sustain the obviousness rejection of independent claim 11 and its corresponding dependent claims 12—15. 8 Appeal 2017-001609 Application 12/704,808 Claims 7, 16, and 21 With respect to independent claims 7, 16, and 21, the Examiner relies upon the combination of the Olssonl, Kaplan, and Crunkilton references. (Final Act. 16). The Examiner further provides the same line of reasoning in the combination for the Kaplan and Crunkilton references which we found to be deficient above with respect to illustrative independent claim 1. (Final Act. 18—27). As a result, we cannot sustain the Examiner’s rejections of independent claims 7, 16, and 21 and their respective dependent claims. Claim 8, 9, 17, and 18 With respect to independent claim 9 and dependent claims 8, 17, and 18, the Examiner relies upon the combination of the Kaplan and Crunkilton with Olssonl, 01sson2, and 01sson3 references as set forth in regarding independent claim 1. (Final Act. 27—28). Because the Examiner relies upon the rejection of independent claim 1, we find of the rejection of independent claim 9 and dependent claims 8, 17, and 18 contain the same deficiencies discussed above with respect to illustrative independent claim 1. As a result, cannot sustain the obviousness rejection of independent claim 9 and dependent claims 8, 17, and 18 for the reasons discussed above. Claims 10, 19, 23, 24, and 27—29 The Examiner does not identify how the additional teachings of the Ganthier, Jayko, and Arbuckle references remedy the above-noted deficiencies with respect to their parent claims. As a result, we cannot sustain the Examiner’s obviousness rejections of claims 10, 19, 23, 24, and 27—29 for the reasons discussed above. 9 Appeal 2017-001609 Application 12/704,808 CONCLUSION The Examiner erred in rejecting claims 1—29 based upon obviousness over the various combinations of prior art references. DECISION For the above reasons, we reverse the Examiner’s obviousness rejections of claims 1—29. REVERSED 10 Copy with citationCopy as parenthetical citation