Ex Parte Falcone

Patent Trial and Appeal Board

Nov 21, 2013

12195999 (P.T.A.B. Nov. 21, 2013)

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.
12/195,999 08/21/2008 Pat R. Falcone YOR920080308US1 9520
59144 7590 11/22/2013
CAHN & SAMUELS, LLP
1100 17th STREET, NW
SUITE 401
WASHINGTON, DC 20036
EXAMINER
DUCKWORTH, BRADLEY
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
11/22/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte PAT R. FALCONE 7
___________ 8
9
Appeal 2012-001437 10
Application 12/195,999 11
Technology Center 3600 12
___________ 13
14
15
Before JOSEPH A. FISCHETTI, GAY ANN SPAHN, and 16
THOMAS F. SMEGAL, Administrative Patent Judges. 17
18
Opinion for the Board filed by SMEGAL, Administrative Patent Judge. 19
20
Opinion concurring filed by SPAHN, Administrative Patent Judge. 21
22
SMEGAL, Administrative Patent Judge. 23
24
DECISION ON APPEAL 25
26
27
STATEMENT OF THE CASE1 28
Pat R. Falcone (Appellant) seeks review under 35 U.S.C. § 134 of a 29
final rejection of claim 1, 3-7, 15, 17, 19-21, 23-28 and 30-36, the only 30

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 16, 2011) and the Examiner’s Answer (“Ans.,” mailed July
18, 2011).
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claims pending in the application on appeal. We have jurisdiction over the 1
appeal pursuant to 35 U.S.C. § 6(b). 2
3
SUMMARY OF DECISION 4
We AFFIRM. 5
6
CLAIMED SUBJECT MATTER 7
Appellant’s claimed subject matter relates to “the field of wireless 8
local area network (LAN) survey carts” (Spec. 1, ¶ [0001]). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1. 11
1. An apparatus, comprising: 12
a platform; 13
at least one telescopic mast connected to said platform; 14
a boom connected to said telescopic mast; 15
a wireless local area network (LAN) detector connected 16
to said boom; and 17
a power supply connected to said detector. 18
19
EVIDENCE RELIED UPON 20
The Examiner relies upon the following prior art: 21
Dudar US 5,936,240 Aug. 10, 1999 22
23
REJECTION ON APPEAL 24
Claims 1, 3-7, 15, 17, 19-21, 23-28 and 30-36 stand rejected under 25
35 U.S.C. § 103(a) as unpatentable over Dudar. 26
27
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FINDINGS OF FACT 1
The findings of fact, which appear in the Analysis below, are 2
supported by at least a preponderance of the evidence. Ethicon, Inc. 3
v.Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 4
evidentiary standard for proceedings before the Office). 5
The following enumerated Findings of Fact (FF) are believed to be 6
supported by a preponderance of the evidence. 7
Facts Related to Appellant’s Disclosure 8
FF1. Appellant’s Specification states that it is known to perform a 9
survey for wireless LAN signals by attaching the access point of a LAN 10
detector at an elevated location such as to a ceiling grid. Spec. 1, ¶ [0002]. 11
Facts Related to the Prior Art 12
Dudar 13
FF2. Dudar teaches laser 8 and ethernet antenna 9 attached to an arm 14
(boom) at an elevated location above the mobile platform. Dudar, col. 4, l. 15
62-col. 5, l. 5 and Fig. 3. 16
FF3. Dudar teaches a mechanism for height adjustment is part of the 17
mobile platform. Dudar, col. 6, ll. 8-11. 18
19
ANALYSIS 20
Claims 1, 15 and 21 21
Appellant argues independent claims 1, 15 and 21 as a group (App. 22
Br. 6). We select claim 1 as the representative claim for this group and the 23
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c) (1) (vii) 24
(2011). 25
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“Section 103 forbids issuance of a patent when ‘the differences 1
between the subject matter sought to be patented and the prior art are such 2
that the subject matter as a whole would have been obvious at the time the 3
invention was made to a person having ordinary skill in the art to which said 4
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U. S. 398, 406 5
(2007). It is well established that ordinary creativity is presumed on the part 6
of one of ordinary skill in the art. Id. at 421, (“[a] person of ordinary skill is 7
also a person of ordinary creativity, not an automaton.”). 8
We are not persuaded by Appellant’s arguments that the Examiner 9
failed to establish a prima facie showing of obviousness in rejecting claim 1 10
over Dudar. In particular, Appellant argues that while Dudar may disclose 11
an antenna 9, “the antenna does not detect LAN signals” (App. Br.6). 12
Although devices such as an antenna 9 mounted at an elevated 13
location above the platform of Dudar may not perform the same function as 14
a LAN detector, Appellant concedes in the Specification that it is known to 15
attach LAN detectors at elevated locations. (FF1). Furthermore, Dudar 16
teaches that mobile platforms are known for supporting electronic devices 17
such as lasers and antennas at elevated locations (FF2) and that a mechanism 18
for height adjustment forms part of the platform. (FF3). 19
Given Appellant’s concession and the teachings of Dudar, we find 20
that it would have been obvious to one of ordinary skill in the art would to 21
modify Dudar to arrive at the claimed apparatus, where an electronic device 22
such as a LAN detector is attached to the boom of a mobile platform, as it is 23
nothing more than the simple substitution of one known element for another 24
to yield the predictable result of positioning the element at an elevated 25
location. See KSR, 550 U.S. at 416 (“when a patent claims a structure 26
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already known in the prior art that is altered by the mere substitution of one 1
element for another known in the field, the combination must do more than 2
yield a predictable result.” (citation omitted)). 3
In addition, we find that Appellant’s argument is nothing more than a 4
naked assertion of what the prior art does not show which is insufficient to 5
overcome an obviousness rejection. The mere existence of differences 6
between the prior art and the claim does not establish nonobviousness. 7
Dann v. Johnston, 425 U.S. 219, 230 (1976). The issue is “whether the 8
difference between the prior art and the subject matter in question ‘is a 9
differen[ce] sufficient to render the claimed subject matter unobvious to one 10
skilled in the applicable art.’” Dann, 425 U.S. at 228 (citation omitted) 11
(finding system for automatic record keeping of bank checks and deposits 12
obvious in view of nature of extensive use of data processing systems in 13
banking industry and “closely analogous” patent for an automatic data 14
processing system used in a large business organization for keeping and 15
updating system transaction files for each department of the organization). 16
For the foregoing reasons, we sustain the Examiner’s rejection of 17
claim 1, and claims 15 and 21 which stand or fall therewith, as being 18
unpatentable over Dudar. 19
Claims 35 and 36 20
We are not persuaded by Appellant’s arguments that the Examiner 21
failed to establish a prima facie showing of obviousness in rejecting claims 22
35 and 36 over Dudar. Appellant contends the claims recite that “said 23
wireless LAN detector . . . measures strengths of signals emitted to and 24
from wireless electronic devices” (App. Br. 8). However, this distinction is 25
without merit because a recitation of what the device does in an article claim 26
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does not further limit the claim. “[A]pparatus claims cover what a device is, 1
not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 2
F.2d 1464, 1468 (Fed, Cir. 1990). 3
For the foregoing reason, we sustain the Examiner’s rejection of 4
claims 35 and 36 as being unpatentable over Dudar. 5
Claims 3-7, 17, 19, 20, 23-28 and 30-34 6
We will also sustain the Examiner’s rejection of claims 3-7, 17, 19, 7
20, 23-28 and 30-34 because Appellant has not argued the separate 8
patentability of these dependent claims (App. Br. 9). 9
10
11
DECISION 12
The rejection of claims 1, 3-7, 15, 17, 19-21, 23-28 and 30-36 is 13
affirmed. 14
No time period for taking any subsequent action in connection with 15
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 16
§ 1.136(a)(1)(iv) (2011). 17
18
AFFIRMED 19
20
21
22
Klh 23
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SPAHN. Administrative Patent Judge, concurring. 1
I do not join in any part of the opinion of my colleagues; however, I 2
concur in the result. 3