Ex Parte Boyd

Patent Trial and Appeal Board

Aug 31, 2018

14744383 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/744,383 06/19/2015
15671 7590 09/05/2018
Gardner, Linn, Burkhart & Ondersma LLP
2851 Charlevoix Dr., SE, Suite 207
Grand Rapids, MI 49546
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
William K. Boyd
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BOYOl P-lOOA 2088
EXAMINER
SHAH, TANMAY K
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
clark@gardner-linn.com
patents@gardner-linn.com
Vredeveld@ gardner-linn. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM K. BOYD
Appeal 2018-002830
Application 14/7 44,383 1
Technology Center 2600
Before CARL W. WHITEHEAD JR., NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-17. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellant identifies William K. Boyd as the real party in interest. (App.
Br. 3.)
Appeal2018-002830
Application 14/744,383
THE INVENTION
Appellant's disclosed and claimed invention is directed to a game
tracking device for tracking a target that has been hit by a projectile.
(Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A game tracking device comprising:
a transmitter operable to emit a locating signal capable of
detection by a remote receiving device;
a power source for providing electrical power to the
transmitter;
a housing containing the transmitter and power source
therein; and
a catching member having one or more hooking elements
for attaching the housing containing the transmitter, and the
power source to a target; wherein the catching member is
configured to inertially project from a retracted position where
the hooking elements are generally concealed within the
housing to a deployed position where the hooking elements
protrude external to the housing.
REJECTIONS
The Examiner rejected claims 1-7 and 13-17 under 35 U.S.C. § 103
as being unpatentable over Zusman et al. (US 2013/0176175 Al, pub. July
11, 2013) (hereinafter "Zusman") and Goosey (US 2013/0036654 Al, pub.
Feb. 14, 2013.) (Final Act. 3.2)
2 Although the heading of the rejection does not list claim 14, claim 14 is
included in the rejection. See Final Act. 3, 7.
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Application 14/744,383
The Examiner rejected claim 8 under 35 U.S.C. § 103 as being
unpatentable over Zusman, Goosey, and Aubin et al. (US 2007/0109656 Al,
pub. May 17, 2007) (hereinafter "Aubin"). (Final Act. 8.)
The Examiner rejected claim 9 under 35 U.S.C. § 103 as being
unpatentable over Zusman, Goosey, and Chen (US 6,373,469 Bl, iss. Apr.
16, 2002). (Final Act. 9.)
The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103 as
being unpatentable over Zusman, Goosey, and Adams et al. (US
2009/0044758 Al, pub. Feb. 19, 2009) (hereinafter "Adams"). (Final Act.
10.)
The Examiner rejected claim 12 under 35 U.S.C. § 103 as being
unpatentable over Zusman, Goosey, and Duke (US 2012/0322587 Al, pub.
Dec. 20, 2012). (Final Act. 11.)
ISSUES ON APPEAL
Appellant's arguments in the Appeal Brief present the following
issues 3:
Issue One: Whether the Examiner erred in finding the combination
of Zusman and Goosey teaches or suggests the independent claim 1
limitation,
the catching member is configured to inertially project from a
retracted position where the hooking elements are generally
3 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Aug. 23, 2017); the Reply
Brief (filed Jan. 24, 2018); the Final Office Action (mailed Jan. 17, 2017);
the Advisory Action (mailed April 19, 2017); and the Examiner's Answer
(mailed November 30, 2017) for the respective details.
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Application 14/744,383
concealed within the housing to a deployed position where the
hooking elements protrude external to the housing,
and the commensurate limitation recited in independent claim 15. (App. Br.
7-10.)
Issue Two: Whether the Examiner erred in finding the combination of
Zusman and Goosey teaches or suggests the limitation if dependent claims 4
and 5, "wherein the power source is the mass." (App. Br. 10-11.)
Issue Three: Whether the Examiner erred in finding the combination
of Zusman, Goosey, and Aubin teaches or suggests the dependent claim 8
limitation, "wherein the radio frequency transmitter includes a
microelectromechanical system oscillator." (App. Br. 11.)
Issue Four: Whether the Examiner erred in finding the combination
of Zusman, Goosey, and Chen, Adams, or Duke, teaches or suggests the
limitations of dependent claims 9-12. (App. Br. 11-13.)
ANALYSIS
First Issue
In finding the combination of Zusman and Goosey teaches or suggests
the claim 1 limitation at issue, the Examiner relies on the disclosure of
Zusman of hook device 56 configured with one or more prongs used to snag
on a target object. (Final Act. 4; Zusman ,r,r 30-31, Fig. 3.) The Examiner
further relies on the disclosure of Goosey of an inertia activated hook system
having one or more hooks attached to a pendulum mass that pivot from a
hidden position to an exposed position. (Final Act. 4; Adv. Act. 6; Ans. 11;
Goosey ,r,r 67---68, 87, Figs. 5(a), 5(c).)
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Application 14/744,383
Appellant argues the Examiner errs because the operation of Goosey's
hooks in combination with Zusman:
would at best disclose a hook system that would momentarily
project from a retracted positon to a deployed position when the
arrow is released, but would pivot back to the hidden position by
the time the arrow engaged the target. Once pivoted back to the
hidden position, the hook system would stay retracted even when
the arrow decelerates upon striking the game.
(App. Br. 8, citing Goosey ,r 69.) Appellant contends it is only the present
application "that recognizes the danger of the catching members
inadvertently catching on a user or other unwanted object and minimizes the
effect of catching members on the aerodynamics of projectile 10" and "[t]his
problem is not addressed by either Zusman or Goosey." (App. Br. 9.)
We do not agree with Appellant. The Examiner finds, and we agree,
that "the secondary reference Goosey teaches having [a] hidden hook system
which [inertially] project[s] the hooking element" and "since the hook
system is hidden it also prevents accidently catching user which adds extra
security and since the system [inertially] project[s] the combination of
[Zusman] and Goosey makes the system more safer and convenient for the
user." (Adv. Act. 6, citing Goosey ,r 87, Figs. 5(a), 5(c).)
Appellant's argument regarding the operation of the combination of
the combination of the teachings of Zusman and Goosey is not
commensurate with the scope of the claim, which does not state when, or for
how long, the catching member projects. Further, we are not persuaded that
the substitution of Goosey's exemplary inertia hidden hook system 590 for
Zusman's hook device would "stay retracted even when the arrow
decelerates upon striking the game," as Appellant's argument is conclusory
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Application 14/744,383
and does not consider the severe deceleration acting on hook system 590
upon striking the target, which would cause hook system 590 to deploy, in
the combination of Zusman and Goosey. This deceleration is comparable to
that caused when a fisherman ends the hard jerk used to set the hook and the
hook is stopped by the flesh of the fish. See Goosey ,r 69.
The Examiner's findings regarding the safety afforded by the hidden
hook system is additionally confirmed by Goosey, stating that "the hidden
hook system 590 remains retracted, for example, to prevent snags." Goosey
,r 87. One skilled in the art would recognize the benefit of retracted hooks,
as snags with any material would at a minimum impair use of the device.
Accordingly, we sustain the Examiner's rejection of independent
claim 1 and independent claim 15 commensurate in scope, as well as
dependent claims 2, 3, 6, 7, 13, 14, 16, and 17 not argued separately.
Second Issue
Dependent claims 4 and 5 are dependent upon claim 2, which recites
"a mass movable relative to the housing, wherein inertial movement of the
mass is configured to project the catching member from the retracted
position to the deployed position." Appellant argues the Examiner errs,
because dependent claims 4 and 5 "specify that the power source is the
mass" (App. Br. 10), whereas in Zusman, "a separate weight 86 not battery
power supply 38 is the mass that responds to inertial movement." (App. Br.
11, citing Zusman ,r 36.)
We agree with Appellant. The portion of Zusman the Examiner cites
does not indicate the power source is used as the mass whose inertial
movement projects the catching members. See Ans. 13-14, quoting Zusman
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Application 14/744,383
,r,r 9, 30. Additionally, the Examiner has not provided any findings
regarding how a power source would be modified for use when Goosey' s
hidden hook system (which uses pendulum mass 594; see Goosey ,r 67) is
incorporated into the device of Zusman. As the Examiner has not shown
how the combination of Zusman and Goosey teaches or suggests using the
power source as the mass, we are constrained by the record to find the
Examiner errs in rejecting claims 4 and 5.
Third Issue
In finding the combination of Zusman, Goosey, and Aubin teaches or
suggests the claim 8 limitation at issue, the Examiner relies on the disclosure
of Aubin of microelectromechanical (MEMS) oscillators for supersensitive
force detection or as elements for radio frequency signal processing. (Final
Act. 8; Aubin ,r 26.)
Appellant argues the Examiner errs because "there is nothing in the
prior art that would motivate a POSA to modify Zusman so that the radio
frequency transmitter includes the Aubin microelectromechanical system
oscillator." App. Br. 11.
We do not agree with Appellant. The Examiner finds, and we agree,
that "[ o ]ne would be motivated to combine [ the MEMS oscillator of Aubin
with the RF system of Zusman] because the MEMS is sensitive to the force
detection[,] which is desired in the tracking device." Final Act. 8-9.
Appellant provides no support for the conclusory assertion that "there is
nothing in the prior art" that would motivate one skilled in the art to make
the combination, and Appellant fails to address the Examiner's findings.
Accordingly, we sustain the Examiner's rejection of claim 8.
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Fourth Issue
In finding the combination of Zusman, Goosey, and other references
teach or suggest the limitations of dependent claims 9-12 at issue, the
Examiner relies on the disclosures of:
(1) Chen, regarding a surface acoustic oscillator, in the rejection of claim
9 (Final Act. 9; Chen Abstract);
(2) Adams, regarding an infrared light source, in the rejection of claims
10 and 11 (Final Act. 1 O; Adams ,r 26); and
(3) Duke, regarding a wireless tracking system, in the rejection claim 12
(Final Act. 11; Duke ,r 65).
For each of these rejections, Appellant makes an identical argument
that the particular device disclosed in each reference only operates "at a
distance of inches," or "a few feet" (App. Br. 12-13), and thus a person of
ordinary skill in the art would not consult the reference, as Appellant's game
tracking device "must operate at a distance of hundreds or thousands of
feet." (App. Br. 12-13.)
We do not agree with Appellant. Appellant disparages the references
as being operable only within a small distance, but does not provide
objective evidence that one skilled in the art would not consider the
teachings identified by the Examiner, or that the teachings themselves are of
use only at small distances. Appellant's arguments are further not
commensurate with the scope of the claims, which do not specify operability
at any particular distance.
Accordingly, we sustain the Examiner's rejection of claims 9-12.
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CONCLUSION
For the reasons stated above, we affirm the obviousness rejections of
claims 1-3 and 6-17, and reverse the obviousness rejection of claims 4 and
5.
DECISION
The Examiner's decision rejecting claims 1-3 and 6-17 is affirmed.
The Examiner's decision rejecting claims 4 and 5 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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