Ex Parte Barker et al

Patent Trial and Appeal Board

Apr 27, 2017

12295750 (P.T.A.B. Apr. 27, 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.
12/295,750 10/02/2008 Philip A. Barker LSN-36-2212 1424
23117 7590 05/01/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SHAKERI, HADI
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP A. BARKER and GRAHAM A. LAIDLER
Appeal 2014-004998
Application 12/295,750
Technology Center 3700
Before WILLIAM A. CAPP, RICHARD H. MARSCHALL, and
ARTHUR M. PESLAK, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Philip A. Barker and Graham A. Laidler (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims
44-46 and 48—55. Appeal Br. 8. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2014-004998
Application 12/295,750
THE CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to the installation of fiber
optic cables, and the blowing of those cables through pre-laid conduits.
Spec. 1 \2—\. Claims 44, 52, and 53 are independent. Claim 44 is illustrative
of the claimed subject matter and is reproduced below.
44. A device for detecting presence of a cable provided
with a metallic attribute at a remote end of a conduit, the device
comprising:
a housing, comprising an air-porous barrier, the housing
being configured in use to enable a cable entering the housing
to be contained within the housing; and
a sensing unit configured to sense the metallic attribute of
the cable contained within the housing, by sensing a change in
inductance levels of the sensing unit.
Appeal Br. 14 (Claims App.).
THE EVIDENCE
The Examiner relied upon “Applicant’s Admitted Prior Art”
(“AAPA”) at pages 3—5 of the specification and the following prior art
references in rejecting the claims on appeal:
Barker US 6,364,290 B1 Apr. 2, 2002
Fee US 7,562,861 B2 July 21, 2009
Final Act. 2—5; Ans. 5—9.
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 44-46 and 48—55 under 35 U.S.C. § 102(b) as anticipated
by AAPA.
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Application 12/295,750
2. Claims 44-46 and 48—55 under 35 U.S.C. § 103(a) as unpatentable
over AAPA and Barker.
3. Claims 44-46 and 48—55 under 35 U.S.C. § 103(a) as unpatentable
over Fee and AAPA.
ANALYSIS
Appellants direct arguments to claim 44 in the Appeal Brief, and state
that “similar comments apply to independent claims 52—53.” Appeal Br. 8.
Appellants do not set forth any separate arguments regarding claims 52, 53,
or any of the dependent claims. Id. at 8—12. Accordingly, Appellants’
arguments regarding those claims rise or fall with the arguments made with
respect to claim 44.
Anticipation
The Examiner’s anticipation rejection relied on AAPA, including
pages 3—5 of the specification and several prior art references referred to in
the specification. See Final Act. 2—3. With respect to the limitation
requiring a “sensing unit configured to sense the metallic attribute ... by
sensing a change in inductance levels,” the Examiner found that
“WO/9812588 or its related USP Barker (6,364,290) also teaches using non-
optical sensors to measure variations in inductance or capacitance for lines
having metallic members 05:59—63, which may be considered for AAPA to
anticipate the claims.” Id. at 3. Appellants argue that none of the references
or AAPA discloses all of the limitations of claim 44. Appeal Br. 8—11;
Reply Br. 2—6.
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Appeal 2014-004998
Application 12/295,750
We agree with Appellants that the Examiner did not adequately
support the anticipation rejection. First, the Examiner relied exclusively on
AAPA at pages 3—5 of the specification, but that section of the specification
contains no mention of sensing a change in inductance levels caused by a
metallic attribute. Spec. 3—5. The Examiner relied on Barker as part of
AAPA, but the specification does not directly cite to Barker or mention the
use of sensing metallic attributes—in Barker or other prior art—for any
purpose. See id.', Final Act. 3. Second, the anticipation rejection does not
address the claimed “housing,” or point to any teaching in AAPA, Barker, or
other references that discloses this limitation. See Final Act. 2—3. Based on
the foregoing, we do not sustain the Examiner’s anticipation rejection of
claims 44-46 and 48—55.
Obviousness
The first obviousness rejection relied on AAPA in combination with
Barker in the event that the AAPA failed to disclose “providing a housing
and a cable with a metallic attribute and detecting the arrival by sensing a
change in inductance levels of the sensing means at the housing that has an
air-porous barrier.” Final Act. 3. The Examiner determined that it would
have been obvious to modify the known systems of the AAPA with Barker’s
teaching of metallic heads on the fiber cable and sensing changes in
induction levels. Id. In the second obviousness rejection, the Examiner
found that Fee discloses all of the limitations of the independent claims
“except for a housing with an air-porous barrier and for the detector to detect
the arrival of a cable with a metallic attribute by sensing a change in
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Application 12/295,750
inductance levels of the sensing means.” Final Act. 4. The Examiner found
that the AAPA discloses the remaining limitations and determined that it
would have been obvious to modify Fee to provide the limitations AAPA
discloses. Id.
Appellants assert that none of the references referred to by the
Examiner or the AAPA in the specification, alone or in combination with
one another, disclose all of the limitations of the claims. Appeal Br. 8—11;
Reply Br. 2—6. More specifically, Appellants argue that “Barker fails to
disclose a housing which comprises an air-porous barrier and which is
configured to contain a cable whose metallic attribute is sensed by a change
in inductance levels.” Appeal Br. 10. According to Appellants, “[e]ven if
Barker is modified to incorporate an air-porous barrier at the remote end of
the tube (such as incorporation of the other ‘known’ reference of the AAPA
described somewhere in pages 2—5 of the specification), the housing would
still not include the air porous barrier” because Barker’s housing remains at
the head end of the tube. Reply Br. 5. Appellants also argue that the
rejection based on Fee does not remedy the deficiencies in the first rejection.
Appeal Br. 11.
We agree with Appellants that the obviousness rejections fail to
adequately establish that AAPA or the prior art discloses the claimed
housing, or that it would have been obvious to modify the references to add
such a housing. In the first obviousness rejection, the Examiner found that
AAPA may fail to disclose the claimed housing but it would have been
obvious to modify AAPA to add it in light of Barker, while in the second
rejection the Examiner found that Fee fails to disclose the claimed housing
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Application 12/295,750
but it would have been obvious to modify Fee to add it in light of AAPA.
Neither rejection points to any disclosure in Barker, Fee, or other prior art,
or an admission in the specification, that teaches a “housing . . . configured
in use to enable a cable entering the housing to be contained within the
housing.” Claims App. 14 (quoting claim 44). The rejection relies on
Barker for sensing a change of inductance levels based on the presence of
metallic members, but not the housing, and the second rejection
acknowledges that Fee fails to disclose the claimed housing. See Final Act.
3^4. In addition, the portion of the specification relied on as AAPA in the
rejections does not appear to mention housings at all. See Spec. 3—5. The
specification later indicates that airstones were known, and that airstones
contain housings, but it does not appear that such housings are configured to
enable a cable to enter the housing and contain the cable, and the Examiner
did not make any findings to that effect. Compare id. at 11:26—12:1
(describing airstone housing as “compressed granular body” and seemingly
not hollow), with id. at 12:22—28 (describing claimed housing 32 with bore),
Fig. 3B.
The rejections do mention the word “housing” in the context of
determining that it would have been obvious to modify the base references
to include a housing, but do not point to any disclosure of a housing or
rationale for adding a housing to the art of record. Final Act. 3^4. In
addition, the “Response to Argument” in the Answer does not address the
housing limitation. Answer 5—9. Given that the obviousness rejections do
not establish that the relied-upon references or AAPA disclose the claimed
housing, explanation and evidence are necessary to establish that it would
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have been obvious to modify the base references (AAPA and Fee) to add
such a housing. Because the rejections lack that further analysis, we do not
sustain the obviousness rejections.
DECISION
We reverse the decision of the Examiner to reject claims 44-46 and
48-55 under 35 U.S.C. §§ 102(b) and 103(a).
REVERSED.
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