Theodore J. Vornbrock et al.

Patent Trials and Appeals Board

Sep 18, 2019

13688628 - (D) (P.T.A.B. Sep. 18, 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.
13/688,628 11/29/2012 Theodore J. Vornbrock 10-0847-US-NP 1423
18227 7590 09/18/2019
Cantor Colburn LLP - Raytheon
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
ALSOMIRI, ISAM A
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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):
USPTOPatentMail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THEODORE J. VORNBROCK, AARON M. FOULK,
NELSON A. GOMEZ, JESSEE L. KOPCZYNSKI, MARK OLENDER,
and RICHARD PITRE
____________

Appeal 2017-011787
Application 13/688,628
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, 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 1–5, 7–11, and 13–19. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2012). Appellant identifies Raytheon Company as the real
party in interest. Appeal Br. 2.
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The invention relates to detecting subterranean voids (e.g., tunnels or
pipes) using acoustic or seismic sensors, which sense vibratory or acoustic
emissions from the voids. Spec. ¶ 2.
Claimed Subject Matter
There are four independent claims on appeal. Claim 1 is illustrative
and reproduced below:
1. A system for detecting subterranean voids, the system
comprising:
a sensor array comprising a plurality of sensors that are
each disposed in respective subterranean locations defined
along a substantially horizontal bore hole;
energy emitting devices respectively disposed on
positions on a surface of terrain, each of the energy emitting
devices being operative to emit wave patterns that propagate in
a subterranean region proximate to the energy emitting devices;
and
a control system communicatively connected to the
sensor array, the control system operative to receive signals
from each sensor of the sensor array indicative of the direction
and intensity of wave patterns emitted from each of the energy
emitting devices and output an indication to a user indicative of
the location of a subterranean void,
wherein the indication to the user includes a plurality of
graphical representations of sensed refraction of each of the
wave patterns respectively associated with each of the energy
emitting devices by the subterranean void.
Appeal Br. 11 (Claims App’x).
Rejections
The Examiner made the following three rejections under 35 U.S.C.
§ 103(a):
I. Claims 1, 4, 5, 7, 9, 11, 13–15, and 17 over Stolarczyk et al.
(US 2014/0043183 A1, pub. Feb. 13, 2014) (“Stolarczyk ’183”),
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Stolarczykz2 (US 5,185,578, issued Feb. 9, 1993) (“Stolarczykz ’578”), and
Khan (US 6,175,536 B1, issued Jan. 16, 2001) (“Khan”)3;
II. Claims 8 and 16 over Stolarczyk ’183 and Khan; and
III. Claims 2, 3, 10, 18, and 19 over Stolarczyk ’183,
Stolarczykz ’578, Khan, and Kisner et al. (US 2013/0286778 A1, pub.
Oct. 31, 2013) (“Kisner”).
Summary of Decision
We AFFIRM.
ANALYSIS
Rejection I
The Examiner finds that Stolarczyk ’183 discloses most of the
limitations of claim 1, but “does not explicitly teach a sensor array
comprising a plurality of sensors that are each disposed in respective
subterranean locations defined along a substantially horizontal bore hole.”
Final Act. 3.4 The Examiner, however, finds that Khan “teaches a sensor

2 The Examiner and Appellant refer to this reference as “Stolarczyk,”
omitting the “z” at the end of the inventor’s last name as listed on the face of
U.S. Patent No. 5,185,578.
3 The Examiner’s heading for this rejection only lists independent claims 1
and 11. Final Act. 2 (mailed Oct. 10, 2016). The rejection, however, also
addresses dependent claims 4, 5, 7, 9, 13–15, and 17. See id. at 5–7. These
dependent claims are not subject to the Examiner’s other rejections.
Appellant recognizes that these dependent claims were rejected. See Appeal
Br. 10 (referring to the rejections of claims 1–5, 7–11, and 13–19).
Accordingly, Appellant understood that dependent claims 4, 5, 7, 9, 13–15,
and 17 are subject to this rejection and we treat them as such.
4 The Examiner finds that Stolarczyk ’183 “implicitly teaches a sensor array
comprising a plurality of sensors that are each disposed in respective
subterranean locations.” Final Act. 3 (citing Stolarczyk ’183 ¶ 22).
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array comprising a plurality of sensors disposed in respective subterranean
locations.” Id. (citing Khan, 3:20–35, Fig. 1). The Examiner also finds that
Stolarczykz ’578 teaches “a plurality of sensors (36) that are each disposed
in respective . . . subterranean locations defined along a substantially
horizontal bore hole.” Id. (citing Stolarczykz ’578, Fig. 10, 16:3–5, 16:22–
25) (identifying reference numeral 120 from Stolarczykz ’578 as teaching a
substantially horizontal bore hole). The Examiner determines
it would be obvious to one of ordinary skill in the art at the time
of the invention to modify the sensor array of Stolarczyk [’]183
with a plurality of sensors disposed in a subterranean location,
as taught by Stolarczyk [’]183 and Khan, the subterranean
location defined along a substantially horizontal bore hole, as
taught by Stolarczyk[z ’]578, for the purpose of having multiple
components to receive signals in multiple directions.
Id. at 3–4.
Appellant contends that the rejection is based on “the apparently
faulty notion that the plural subterranean sensors disclosed by Khan and
implicitly (Examiner’s wording) disclosed by Stolarczyk [’]183 can be
provided in a horizontal well bore as taught by the ‘plurality of sensors’ in

Paragraph 22 of Stolarczyk ’183 states: “A tool 102, represented at multiple
locations 104-106, . . . . is variously located on the ground surface 110 or a
nearby wellbore 112, serially at what can easily be a hundred different
vantage points.” Stolarczyk ’183 ¶ 22. After reviewing the reference and
the arguments made with respect thereto, it is unclear whether this disclosure
teaches or suggests a plurality of sensors (i.e., a sensor array) or whether it
teaches placing a single sensor in different locations, one location after the
other. For the purposes of this decision, we need not decide which is the
case because the Examiner also relied upon Khan as disclosing a sensor
array. Therefore, we need not decide whether Stolarczyk ’183 also discloses
a sensor array.
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the horizontal bore hole 120 of Stolarczyk[z ’]578.” Appeal Br. 7–8.
Appellant asserts that Stolarczyk ’183 only discloses a single subterranean
sensor in a vertical bore hole.5 Id. Appellant also argues that Khan
discloses a plurality of sensors in a vertical bore hole so that their depth can
be changed between measurements. Id. Appellant asserts that because Khan
requires its sensors be placed in a vertical bore hole (to make depth
changes), “Khan’s disclosure actually teaches away from the suggested
combination proposed by the Examiner.” Id. Further, Appellant contends
Stolarczykz ’578 teaches only a single sensor 36 in a horizontal bore hole.
Id. Thus, Appellant argues “the resulting combination clearly fails to teach
or suggest anything corresponding to the claimed feature of ‘a plurality of
sensors that are each disposed in respective subterranean locations defined
along a substantially horizontal bore hole.’” Id. (citing Claims App’x).
Additionally, Appellant contends that the references do not teach
structure necessary to perform the modifications required by the Examiner’s
proposed combination or the structure necessary to use the teachings as
combined. Appeal Br. 8–9.
Appellant’s arguments are not persuasive to show reversible Examiner
error. First, the Examiner does not rely upon a single reference as teaching a
plurality of sensors “disposed in respective subterranean locations defined
along a substantially horizontal bore hole,” as recited in claim 1. Rather, the
Examiner relies upon a combination of the teachings of several references—
Khan (for a plurality of sensors in subterranean locations) and

5 We need not decide whether Stolarczyk ’183 discloses a single or a
plurality of sensors for the reasons explained above.
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Stolarczykz ’578 (for a sensor6 placed in a substantially horizontal bore
hole). Final Act. 3.
Second, the Examiner provided a reason with rational underpinning
(to have multiple components receive signals in multiple directions) as to
why one of ordinary skill in the art would have been motivated to modify
Stolarczyk ’183 with a plurality of sensors (as taught by Khan) in a
subterranean location defined along a substantially horizontal bore hole (as
taught by Stolarczykz ’578). Id. at 3–4. Appellant argues that Khan teaches
away from the proposed combination, but Appellant fails to point to any
disclosure in Khan that would discourage or otherwise lead one of ordinary
skill in the art away from the combination/modification proposed by the
Examiner. See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, . . . would be led in a direction divergent from the path
that was taken by the applicant.” (quoting Tec Air, Inc. v. Denso Mfg. Mich.
Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999))). In other words, that Khan
teaches a vertical bore hole, does not discourage or otherwise lead one of
ordinary skill in the art away from a horizontal bore hole or from modifying
Stolarczyk ’183 as proposed by the Examiner.

6 The Examiner finds that Stolarczykz ’578 teaches a “plurality of
sensors (36)” (Final Act. 3), but Stolarczykz ’578 discloses a single
“receiver 36´,” not multiple receivers (i.e., sensors). See Stolarczykz ’578,
16:3–5 (describing “[a] plurality of horizontal drillholes 120”), 16:22–23
(describing a single receiver that is “inserted into at least one of the
drillholes 120”). The Examiner’s error is harmless because the Examiner
also relies upon Khan as disclosing a plurality of sensors.
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Third, Appellant’s arguments regarding the alleged physical
requirements of a combination that includes Khan’s teachings are
unpersuasive. See Appeal Br. 8–9. In particular, Appellant’s arguments are
akin to arguing bodily incorporation. See In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (“It is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” (citations omitted)). Additionally,
Appellant does not contend that making the modifications proposed by the
Examiner would have been beyond the level of ordinary skill in the art at the
time of the invention or that one of ordinary skill would not have had a
reasonable expectation of success.
In the Reply Brief, Appellant reiterates what each individual reference
does and does not disclose, but Appellant does not raise any additional
arguments directed to the Examiner’s proposed combination or reason to
combine. Reply Br. 1–2; see In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” (citing In re Keller, 642 F.3d 413, 425 (CCPA
1981))).
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant argues claims 1, 4, 5, 7, 9, 11, 13–15, and 17 as a group and does
not raise any other argument in response to this rejection. Appeal Br. 7–9;
Reply Br. 1–2. Accordingly, claims 4, 5, 7, 9, 11, 13–15, and 17 fall with
claim 1 and we sustain Rejection I. See 37 C.F.R. § 41.37(c)(1)(iv) (2012).
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Rejection II
Independent claim 8 is similar to claim 1, but claim 8 does not recite a
horizontal bore hole, and instead recites that “the subterranean void is
disposed at a subterranean depth that is less than a subterranean depth of the
sensor array.” Appeal Br. 12 (Claims App’x). The Examiner finds that
Stolarczyk ’183 discloses most of the claim limitations, but “does not
explicitly teach a sensor array comprising a plurality of sensors disposed in a
subterranean location” and “does not explicitly teach the subterranean void
is disposed at a subterranean depth that is less than a subterranean depth of
the sensor array.” Final Act. 7–8. The Examiner finds that Khan teaches “a
sensor array comprising a plurality of sensors disposed in a subterranean
location.” Id. at 8 (citing Khan, 3:30–35, Fig. 1). The Examiner
additionally finds that Stolarczyk ’183 “implicitly teaches that having the
sensor at a greater depth than the void is a possible arrangement (FIG 4,
tool 406 is deeper than void 416, also implied in [0022][)].” Id. The
Examiner also finds that Khan “implicitly teaches the subterranean void is
disposed at a subterranean depth that is less than a subterranean depth of the
sensor array.” Id. (citing Khan, 3:5–20). The Examiner determines that
it would be obvious to one of ordinary skill in the art at the time
of the invention to modify the system of Stolarczyk [’]183
wherein the subterranean void is disposed at a subterranean
depth that is less than a subterranean depth of the sensor array,
as taught by Khan, for the purpose of having the void located in
direct acoustic line-of-sight from the source to the sensor array.
Id.
Appellant contends that Khan does not teach a subterranean void or a
sensor or sensor array deeper than a subterranean void. Appeal Br. 9.
Appellant also asserts that Stolarczyk ’183 teaches a sensor, tool 406, but
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not a sensor array and, thus, “it is impossible to state with any confidence or
certainty that the voids 416 and 417 are less deep than a sensor array which
doesn’t exist.” Id.
In the Answer, the Examiner responds by noting that “the issue in
question is line of sight. Khan teaches this concept in the fact that it is
measuring the depths of different layers, thus rendering it obvious to one of
ordinary skill in the art that this would be required for the invention to
function.” Ans. 4. Additionally, the Examiner finds that Stolarczyk ’183
“teaches this feature explicitly in FIG 4, which depicts voids 416 and 417
above tool 406.” Id.
We agree with Appellant that neither Stolarczyk ’183 nor Khan
individually teaches a sensor array at a depth greater than a subterranean
void. Khan shows a sensor array, but does not illustrate a void. See Khan,
Fig. 1. Khan teaches raising and lowering the sensor array, but the
Examiner has not identified any explicit disclosure of lowering the sensor
array to a depth greater than a subterranean void. See, e.g., Kahn, 3:5–20.
Stolarczyk ’183 fails to disclose a sensor array, but does disclose a sensor
placed at a subterranean depth greater than a subterranean void. See
Stolarczyk ’183, Fig. 4 (illustrating tool 406 at a subterranean depth greater
than voids 416 and 417).
Those findings, however, do not end the inquiry because the rejection
is based on obviousness, not anticipation. As we understand, the Examiner
proposes modifying Stolarczyk ’183 such that it includes a sensor array
disposed at a depth greater than a subterranean void. Final Act. 8. To
accomplish this modification, however, the only change needed based on the
Examiner’s findings that are supported by a preponderance of evidence is to
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use a sensor array instead of a single sensor (tool 406). The Examiner
provided a reason as to why one would have located the sensor array at a
depth greater than a subterranean void, but that was not required as
Stolarczyk ’183 already discloses a sensor in said position—the only
modification needed was to use an array. Duplication of the sensor, such
that it exists as an array, where there is no new or unexpected result, has “no
patentable significance.” In re Harza, 274 F.2d 669, 671 (CCPA 1960).
Accordingly, we sustain the Examiner’s rejection of claim 8.
Appellant argues claims 8 and 16 as a group and does not raise any other
argument in response to this rejection. Appeal Br. 9; Reply Br. 2.
Accordingly, claim 16 falls with claim 8 and we sustain Rejection II. See
37 C.F.R. § 41.37(c)(1)(iv) (2012).
Rejection III
The Examiner rejected claims 2, 3, 10, 18, and 19 based on the
combined teachings of Stolarczyk ’183, Stolarczykz ’578, Khan, and Kisner.
Final Act. 10–12. Appellant relies upon the previous arguments directed to
independent claims 1 and 11, from which claims 2, 3, 10, 18, and 19
depend.7 Because we sustain the rejection of claims 1 and 11, we sustain the
rejection of dependent claims 2, 3, 10, 18, and 19 for the same reasons.
Accordingly, we sustain Rejection III.

7 Claims 2, 3, and 10 depend from claim 1; claims 18 and 19 depend from
claim 11. Appeal Br. (Claims App’x).
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CONCLUSION
In summary:
Claims Rejected Basis Affirmed Reversed
1, 4, 5, 7, 9, 11,
13–15, 17
§ 103
Stolarczyk ’183,
Stolarczykz ’578,
Khan
1, 4, 5, 7, 9, 11,
13–15, 17

8, 16 § 103
Stolarczyk ’183,
Khan
8, 16
2, 3, 10, 18, 19 § 103
Stolarczyk ’183,
Stolarczykz ’578,
Khan,
Kisner
2, 3, 10, 18, 19
Overall Outcome 1–5, 7–11, 13–19

DECISION
We AFFIRM the rejections of claims 1–5, 7–11, and 13–19 under
35 U.S.C. § 103(a).
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).

AFFIRMED