Ex Parte Dunne

Patent Trial and Appeal Board

Sep 5, 2017

13615172 (P.T.A.B. Sep. 5, 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.
13/615,172 09/13/2012 Jeremy G. Dunne LTI0044 5511
25235 7590 09/07/2017
HOGAN LOVELLS US LLP - Colorado Springs
TWO NORTH CASCADE AVENUE
SUITE 1300
COLORADO SPRINGS, CO 80903
EXAMINER
ABRAHAM, SAMANTHA K
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
09/07/2017 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):
patentcoloradospring @ hoganlo veils, com
HLU S Docke ting @ hoganlovells. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY G. DUNNE
Appeal 2016-006983
Application 13/615,1721
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—38. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the “invention relates to a system and method
for superimposing a virtual aiming mechanism with a projected system beam
in a compact laser-based rangefinding instrument^] such as a laser-based
tape measure.” Spec. 1,11. 20-24. Claims 1,9, 16, and 30 are the
1 According to Appellant, Laser Technology, Inc. is the real party in
interest. Br. 1.
Appeal 2016-006983
Application 13/615,172
independent claims on appeal. We reproduce claim 1, below, as illustrative
of the appealed claims.
1. A rangefmding instrument comprising:
a system beam source operative for directing a
rangefmding beam toward a target;
a reflected beam receiver operative for receiving a
reflected portion of said rangefmding beam from said target; and
a visible light emitting source operative for directing a first
portion of a visible light beam towards said target and a second
portion of said visible light beam towards a user of said
instrument.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. claims 1—4, 9, 10, 13, 30, and 34 under 35 U.S.C. § 103(a) as
unpatentable over Grauslys (US 2012/0140201 Al, pub. June 7,
2012) and Hahn (US 2006/0247608 Al, pub. Nov. 2, 2006);
II. claims 6, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Grauslys, Hahn, and Hayashi (US 2011/0216305 Al, pub.
Sept. 8,2011);
III. claims 5, 14, 16, 19, 27, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Grauslys, Hahn, and Ray (US 6,608,677 Bl,
iss. Aug. 19, 2003);
IV. claims 17, 18, 20—22, 25, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Grauslys, Hahn, Ray, and Hayashi;
V. claims 23 and 24 under 35 U.S.C. § 103(a) as unpatentable over
Grauslys, Hahn, Ray, Hayashi, and Ou (US 4,533,224, iss.
Aug. 6, 1985);
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Application 13/615,172
VI. claims 7, 15, 35, 36, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Grauslys, Hahn, and Foley
(US 7,301,616 B2, iss. Nov. 27, 2007);
VII. claims 29 and 37 under 35 U.S.C. § 103(a) as unpatentable over
Grauslys, Hahn, Ray, and Foley;
VIII. claim 33 under 35 U.S.C. § 103(a) as unpatentable over
Grauslys, Hahn, and Hayashi; and
IX. claims 8, 31, and 32 under U.S.C. § 103(a) as unpatentable over
Grauslys, Hahn, and Johnson (US 5,477,321, iss. Dec. 19,
1995).
ANALYSIS
Rejection I
Based on our review of the record, including the Examiner’s Final
Office Action and Answer, and Appellant’s Appeal Brief, for the reasons
discussed below, we do not sustain the Examiner’s obviousness rejection of
claims 1—4, 9, 10, 13, 30, and 34.
Independent claim 1 recites, among other recitations, “directing a first
portion of a visible light beam towards said target and a second portion of
said visible light beam towards a user of said instrument.” Br., Claims App.
Each of independent claims 9 and 30 recites a similar recitation. Id.
With respect to claims 1, 9, and 30, the Examiner determines that
Hahn . . . teaches a laser source operative for directing a first
portion of a light beam towards said target and a second portion
of said light beam in a second direction [0034], It would [have]
be[en] obvious ... to modify the rangefmding instrument of
Grauslys to include the beam splitting function of Hahn in order
to efficiently direct portions of laser beam in different directions.
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Appeal 2016-006983
Application 13/615,172
Final Action 5—7. Appellant argues, however, that the Examiner’s rejection
is in error because the Examiner’s rationale for combining Grauslys and
Hahn is based on impermissible hindsight. Br. 9. Based on our review, we
agree with Appellant.
Grauslys teaches a laser rangefinder comprising three light sources, as
disclosed in Figure 1: laser rangefinder transmitter 106, boresight laser 110,
and red dot laser 112. Grauslys 112. Grauslys’s laser transmitter 106A
“sends a signal out of the front end of the laser range finder 100 and receives
the reflected signal with a range receiver 108A and the distance to target
information is calculated in a signal processor and displayed.”2 Id. 114.
The boresight laser 110 and red dot laser 112 are used for aiming the device
at a target. See id. 13.
The Examiner proposes to eliminate one of Grauslys’s three lasers,
and to use Hahn’s beam-splitter to provide a replacement for the omitted
laser beam, thereby resulting in “a more efficient and compact laser
[instrument].” Answer 6. However, there is no explanation how one would
arrive at the idea of eliminating a laser from Grauslys based on the teachings
of Hahn, which uses a split beam to enable comparison of incident and
reflected beams from the same laser, during eye surgery, to determine tissue
ablation progress. Hahn 128 (“The computer or data processor generates a
cross-correlation function using a plurality of discrete points which digitally
represent a waveform representation of the reflected beam and a plurality of
reference points associated with a digital representation of the incident
beam.”) The Examiner also does not explain adequately which of
2 Laser transmitter 106A in Figure 3 is equivalent to laser transmitter 106 in
Figure 1.
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Appeal 2016-006983
Application 13/615,172
Grauslys’s lasers is to be eliminated based on Hahn’s teaching, and it
appears that any of Grauslys’ three lasers could be split and directed in a
different direction. Therefore, it appears that using “a visible light emitting
source operative for directing a first portion of a visible light beam towards
said target and a second portion of said visible light beam towards a user of
said instrument,” as specifically claimed, is based solely on impermissible
hindsight. Br., Claims App.
Thus, based on the foregoing, we do not sustain the rejection of
independent claims 1, 9, and 30. We also do not sustain the rejection of
claims 2-4, 10, 13, and 34 that depend from the independent claims,
inasmuch as the Examiner does not rely on any other reference to remedy
the deficiency in the independent claims’ rejection.
Rejection II
Claims 6, 11, and 12 depend from claim 1. Because the Examiner
does not establish that Hayashi remedies the deficiency in claim 1 ’s
rejection, we do not sustain the rejection of claims 6, 11, and 12.
Rejection III
Similar to independent claims 1, 9, and 30, independent claim 16
recites “directing at least a portion of said visible light beam toward an
aperture in which said target and said at least a portion of said visible light
beam are viewable by a user of said instrument.” Br., Claims App.
The Examiner’s rejection of independent claim 16 is substantially the
same as the rejection of claim 1. Final Action 10. Thus, for reasons similar
to those set forth above for claim 1, and because the Examiner does not
establish that Ray remedies the above deficiency in claim 1 ’s rejection, we
do not sustain the rejection of claim 16. We also do not sustain the rejection
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Application 13/615,172
of claims 19, 27, and 28, which depend from claim 16, or the rejection of
claims 5 and 14, which depend from claims 1 and 9.
Rejections IV—IX
Claims 7, 8, 15, 17, 18, 20-26, 29, 31, 32, and 35—38 depend from
independent claims 1,9, 16, and 30. Because the Examiner does not
establish that any reference remedies the above-discussed deficiencies in the
independent claims’ rejections, we do not sustain any of the rejections of
claims 7, 8, 15, 17, 18, 20-26, 29, 31, 32, and 35—38.
DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1—38.
REVERSED
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