Ex Parte Chau et al

Patent Trial and Appeal Board

Aug 21, 2018

14213644 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/213,644 03/14/2014
21833 7590 08/23/2018
PRITZKAU PATENT GROUP, LLC
16162 Olive St
Brighton, CO 80602
FIRST NAMED INVENTOR
Albert W. Chau
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.
DCI-69 7294
EXAMINER
PHAM,QUANG
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
PPGpatents@comcast.net
mpritz@msn.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT W. CHAU and JASON POTHIER
Appeal2018-000657
Application 14/213, 644
Technology Center 2600
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and JOYCE CRAIG,
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b ). We reverse.
1 According to Appellants, Merlin Technology, Inc. is the real party in
interest. Appeal Br. 3.
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Application 14/213, 644
Invention
The invention is directed to an inground device with advanced
transmit power control. Spec. ,r 2. Specifically, the device includes a
housing that receives a battery having one of two different voltages. Spec.
,r,r 7, 24, 29--30 and Table 1. The device further includes a transmitter that
receives power from the battery and transmits at least one signal from the
apparatus using at least two different power levels. The transmitter selects
the transmit levels based on a detected battery voltage. Spec. ,r,r 7, 28, 31.
The transmitter adjusts the power level by utilizing a different duty cycle
modulation of the signal for each power level. Spec. ,r,r 8, 33-34, 36, and
Fig. 6.
Claims 1 and 11 are illustrative of the invention and are reproduced
below.
Claim 1. An apparatus for use with a system for performing an
inground operation supported at least proximate to the inground tool during
the inground operation, said apparatus comprising:
a housing that is configured for receiving a battery having one of at
least two different battery voltages; and
a transmitter supported within the housing for receiving electrical
power from the battery and configured for (i) transmitting at least one signal
from the apparatus using at least two different transmit power levels for at
least one of locating the transmitter and characterizing an orientation of the
transmitter, (ii) detecting the battery voltage, and (iii) selecting one of the
transmit power levels based on the detected battery voltage.
Claim 11. An apparatus for use with a system for performing an
inground operation in which a drill string extends from a drill rig to an
inground tool with the apparatus supported at least proximate to the
inground tool during the inground operation, said apparatus comprising:
a transmitter configured for transmitting at least one signal from the
transmitter using one of at least two different transmit power levels at least
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Application 14/213, 644
by utilizing a modulation duty cycle of the signal that is different for each
different transmit power level.
Independent claims 10 and 19 recite similar limitations as claim
1 and 11, respectively. Supp. Appeal Br. 3---6. 2
Examiner's Rejection3
(1) The Examiner rejected claims 1, 4, 7, and 10 under 35 U.S.C.
§ I03(a) as being unpatentable over Brune et al. (US 2002/0105331 Al,
published Aug. 8, 2002, hereinafter "Brune") and Mack (US 7,805,263 B2,
granted Sep. 28, 2010, hereinafter "Mack"). Final Act. 12-17; Ans. 3.
(2) The Examiner rejected claim 2 under 35 U.S.C. § I03(a) as being
unpatentable over Brune, Mack and Amann et al. (US 2013/0162402 Al,
published June 27, 2013, effective filing date Sept. 14, 2012, hereinafter
"Amann"). Final Act. 17-19; Ans. 3.
(3) The Examiner rejected claim 3 under 35 U.S.C. § I03(a) as being
unpatentable over Brune, Mack, Amann and Lusted (US 2013/0272449 Al,
published Oct. 17, 2013, effective filing date Apr. 16, 2012, hereinafter
"Lusted"). Final Act. 19-21; Ans. 3.
2 Appellants filed a supplemental Appeal Brief on May 23, 2017, to submit a
corrected copy of the Claims Appendix.
3 Throughout this Decision we refer to the Appeal Brief ("Appeal Br.") filed
Apr. 6, 2017, Final Office Action ("Final Act.") mailed Aug. 10, 2016, and
the Examiner's Answer ("Ans.") mailed Aug. 25, 2017. In addition, we
will refer to the supplemental Appeal Brief ("Supp. Appeal Br.") filed on
May 23, 2017 in response to the notice of defective Appeal Brief submitting
a corrected copy of the Claims Appendix.
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Application 14/213, 644
(4) The Examiner rejected claims 5, 6, 8, 9, 11-16, and 19 under
35 U.S.C. § I03(a) as being unpatentable over Brune, Mack, and Lusted.
Final Act. 21-39; Ans. 3.
(4) The Examiner rejected claims 17 and 18 under 35 U.S.C. § I03(a)
as being unpatentable over Brune, Mack, Lusted Watanabe (US
2010/0090530 Al, published Apr. 15, 2010, hereinafter "Watanabe") and
Kill et al. (US 2006/0122473 Al, published June 8, 2006, hereinafter
"Kill"). Final Act. 39-42; Ans. 3.
Analysis
We have reviewed the Appellants' arguments in the Briefs (Appeal
Br. 7-12; Reply Br. 2-5), the Examiner's rejections (Final Act. 12--42), the
Advisory Action (Adv. Act. 2-3), and the Examiner's response to
Appellants' arguments (Ans. 3-9). Appellants' arguments have persuaded
us of error in the Examiner's rejection of claims 1 through 19.
Independent Claim 1
Appellants argue that independent claim 1 recites a transmitter to
detect the battery voltage and select the power level for the transmission of
the signal based on the detected voltage, which is not taught in either Brune
or Mack. Appeal Br. 7-9; Reply Br. 2--4. Brune, Appellants argue, teaches
a transmitter for transmitting the battery status using one or more carrier
frequencies and power levels, however, claim 1 does not require the battery
status to be transmitted to a separate location. Appeal Br. 7-8. Further,
Appellants argue that Mack teaches determining a battery status based on the
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battery voltage, however, it is silent with respect to selecting a transmitting
power based on the voltage detected. Appeal Br. 8.
The Examiner in the Final Action finds that Brune teaches the
transmitter can transmit at more than one power level, but is silent as to
selecting the transmit power levels based on the detected battery voltage.
Final Act. 12-14. For the teaching of the missing limitation, the Examiner
relies upon Mack stating
However, it has been known in the art of monitoring battery level
to implement the transmitter for selecting one of the transmit
power levels based on the detected battery voltage, as suggested
by Mack, which discloses the transmitter for selecting one of the
transmit power levels based on the detected battery voltage
(Abstract, column 3 lines 29-column 4 lines 62 and FIG. 2 the
voltage/charge monitor 16: The battery status monitor 34 at least
includes software that compares the current operating voltage of
the battery 12 to pre-determined percentage thresholds .... )
Final Act. 14. The Examiner further states, in response to Appellants'
arguments, that Brune changes the power level of the transmission in order
to conserve the battery life whereas Mack teaches a battery status monitor
that compares the current operating voltage to predetermined thresholds to
determine the battery status. Ans. 3-5. However, we find no disclosure in
either Brune or Mack that supports the Examiner's determination that the
combination teaches detecting the voltage of a battery and selecting a power
level for a transmitter based on the detected voltage.
Brune teaches a battery sensing section wherein the transmitter output
is tailored to drilling conditions to conserve battery power by stopping
transmissions during idle periods of a drilling operation. Brune ,r,r 62, 65.
Mack, on the other hand, teaches a voltage monitor that collects the voltage
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data that is transmitted by a transmitter to a receiver of a diagnostic data
processor. The processor has a battery status monitor that then interprets the
voltage data by comparing the data to the rated output of the battery to
determine the battery's status. Mack, col. 3, 11.28--4:62. Based on our
reading of Brune and Mack, neither disclosure relied upon by the Examiner
teaches a transmitter detecting the voltage of the battery and selecting the
transmitter power level based on the detected voltage. Instead, Brune' s
transmitter output is regulated based on drilling conditions and Mack's
transmitter is simply a passive conduit for the data that transmits the voltage
of the battery to a processor for the data's evaluation. Neither discloses
adjusting the power level of a transmission based on the detected battery
voltage. Therefore, we concur with Appellants' arguments (Appeal Br. 7-8;
Reply Br. 2-3) that the Examiner has not shown the combination of Brune
and Mack teaches or suggests a transmitter that detects the battery voltage
and adjusts the transmitter power level based on the detected voltage.
Accordingly, we do not sustain Examiner's rejection of independent claim 1
and the claims which depend from claim 1.
Independent claim 10
Appellants argue that independent claim 10 includes similar
limitations to those discussed with respect to claim 1 and, as such, the
rejection is in error for the same reasons. Appeal Br. 8-9; Reply Br. 3--4.
We concur and similarly do not sustain the Examiner's rejection of
independent claim 10.
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Independent Claim 11
Appellants argue that independent claim 11 recites a transmitter that
changes power levels utilizing a modulation duty cycle of a signal that is
different at each power level, which is not taught by Brune, Mack, or Lusted.
Appeal Br. 10-12; Reply Br. 4--5. Brune, Appellants argue, teaches a
transmitter for transmitting the battery status using one or more carrier
frequencies and power levels. However, claim 11 does not require the
battery status to be transmitted to a separate location. Appeal Br. 10. In
addition, Appellants argue against the rejection's inclusion of Mack because
the claim does not require detecting battery voltage or determining battery
status and, therefore, the reliance on Mack is improper. Appeal Br. 10.
The Examiner, in response to Appellants' arguments, states that the
reliance on Brune and Mack is appropriate because the combination reads on
the limitation of a transmitter configured for sending a signal using one of
two different power levels. Ans. 8. The Examiner in the Final Action
determines the combination of Brune and Mack teaches the transmitter for
transmitting battery status to a locator using one or more power levels.
However, the Examiner finds the combination is silent as to the utilizing a
different duty cycle modulation of the signal for each power level. Final
Act. 27-30. For the teaching of the missing limitation the Examiner relies
upon Lusted stating:
depending upon the particular protocol used in this
embodiment, one or more signals that may be communicated
via backplane 50 and/or one or more links 51 may comprise one
or more of a plurality of possible voltage levels ( e.g., as set
forth in, and/or in accordance with the communication protocol
employed), and by appropriately selecting these one or more
levels and/ or maintaining the one or more selected levels for
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one or more appropriate time periods, particular data and/ or
command values may be encoded in and/ or by the one or more
signals, in accordance with such protocol).
Final Act. 30.
Regarding the Lusted reference, Appellants argue that the
passages relied upon by the Examiner merely involve changing
waveforms that are used to test protocols on a communication
interface without a reference to power levels. Appeal Br. 10.
Specifically, Appellants argue that Lusted deals with changing the
characteristic of the data that is being modulated onto the carrier
waveform not the duty cycle, and that the duty cycle of the carrier is
invariant to any change to the data. Appeal Br. 11.
The Examiner, in response to Appellants' arguments against
Lusted, states that Appellants are arguing limitations that are not
claimed, and that the reference renders obvious the modulation of the
duty cycle. Ans. 9. However, we find no disclosure in either Brune,
Mack, or Lusted that supports the Examiner's determination that the
combination teaches or suggests a transmitter that transmits at more
than one power level by means of duty cycle modulation.
Neither the disclosure of Brune nor Mack, based on our reading
as recited above, teaches a transmitter that transmits at more than one
power level by means of duty cycle modulation. We concur with
Appellants' arguments that the rejection based in part on the Mack
reference is misplaced since the recitation of voltage is not a
limitation recited within the claim. Lusted teaches a signal having a
waveform onto which data may be encoded at various encoding levels
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for retrieval by a receiver. Lusted ,r,r 15-17. Based on our reading of
Lusted, it does not cure the deficiencies in the combination of Brune
and Mack because power adjustment by modulation of the duty cycle
is not disclosed or taught therein. Therefore, we concur with the
Appellants' arguments (Appeal Br. 10-12; Reply Br. 4--5) that the
Examiner has not shown that the combination of Brune, Mack, and
Lusted teaches or suggests a transmitter that transmits at more than
one power level by means of duty cycle modulation. Accordingly, we
do not sustain the Examiner's rejection of independent claim 11 and
the claims which depend on claim 11.
Independent claim 19
Appellants argue that independent claim 19 includes similar
limitations to that discussed with respect to claim 11 and, as such, the
rejection is in error for the same reasons. Appeal Br. 12; Reply Br. 5. We
concur and similarly do not sustain the Examiner's rejection of independent
claim 11.
DECISION
(1) The Examiner's rejection of claims 1, 4, 7, and 10 under
35 U.S.C. § 103(a) as being unpatentable over Brune and Mack is reversed.
(2) The Examiner's rejection of claim 2 under 35 U.S.C. § 103(a) as
being unpatentable over Brune in view of Mack and further in view of
Amann is reversed.
(3) The Examiner's rejection of claim 3 under 35 U.S.C. § 103(a) as
being unpatentable over Brune, Mack, and Amann further in view of Lusted
is reversed.
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(4) The Examiner's rejection of claims 5, 6, 8, 9, 11-16, and 19 under
35 U.S.C. § 103(a) as being unpatentable over Brune, Mack, and Lusted is
reversed.
(4) The Examiner's rejection of claims 17 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Brune, Mack, and Lusted in further
view of Watanabe is reversed.
REVERSED
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