Ex Parte Olsson et al

Patent Trial and Appeal Board

Aug 2, 2016

12947503 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/947,503
13235 7590
Steven C. Tietsworth
3527 Talbot St.
FILING DATE
11/16/2010
08/04/2016
San Diego, CA 92106
FIRST NAMED INVENTOR
Mark S. Olsson
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.
SEEK 09-169-201 2040
EXAMINER
REN, ZHUBING
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
tietsworth@cox.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MARKS. OLSSON, PAUL G. STUART, MICHAEL J. MARTIN,
PAUL V. WISECA VER, and RAY MEREWETHER
Appeal2015-001836
Application 12/947,503
Technology Center 2400
Before ERIC S. FRAHM, CATHERINE SHIANG, and
SCOTT B. HOWARD, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-31, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Introduction
The present invention relates to an image-based mapping locating
system. See generally Spec. 1. Claim 1 is exemplary:
Appeal2015-001836
Application 12/947,503
1. A locating system, comprising:
at least one electromagnetic sensing antenna;
a display;
a processor;
a data storage device operatively connected to the processor;
programming at least partially stored in the data storage device for
enabling the processor to determine the location of a buried utility based on
signals generated by the sensing antenna and to generate buried utility
positional data that can be viewed on the display; and
an image sensor operatively connected to the processor for generating
signals representing images captured by the image sensor during a locating
process to substantially include an area being mapped.
References and Rejections
Siedlarczyk US 6,349,653 Bl Feb.26,2002
Waite US 7,113,124 B2 Sept. 26, 2006
Merewether US 7,443,154 Bl Oct. 28, 2008
Holmes US 7,656,311 B2 Feb.2,2010
Nielsen US 2011/0191058 Al Aug. 4, 2011
Nielsen II US 2011/0022433 Al Jan. 27, 2011
Claims 1, 3, 8, 11-15, 18-23, and 26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Waite and Nielsen.
Claim 2, 4--7, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waite, Nielsen and Holmes.
Claim 9, 16, 17, and 27-31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Waite, Nielsen, and Merewether.
Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Waite, Nielsen, and Siedlarczyk.
2
Appeal2015-001836
Application 12/947,503
Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Waite, Nielsen, and Nielsen II.
ANALYSIS 1
Claims 1-26
We have reviewed the Examiner's rejections in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
conclusion that the Examiner fails to show the cited prior art teaches "an
image sensor operatively connected to the processor for generating signals
representing images captured by the image sensor during a locating process
to substantially include an area being mapped," as recited in independent
claim 1. See App. Br. 3-10; Reply Br. 1-5.
The Examiner initially cites the published Nielsen Application's
Figure 14 and paragraph 486 for teaching the disputed claim limitation. See
Ans. 3.
Appellants contend the published Nielsen Application's Figure 14 and
paragraph 486 do not constitute prior art, as they are not disclosed in the
First Nielsen Provisional Application (Serial No. 61/233,105; filed August
11, 2009). See App. Br. 3-10. Appellants contend-and the Examiner does
not dispute-the published Nielsen Application itself was filed on August
11, 2010, which is later than the priority date of this application (November
19, 2009). See App. Br. 3.
1 Appellants raise additional arguments. Because the identified issues are
dispositive of the appeal, we do not reach the additional arguments.
3
Appeal2015-001836
Application 12/947,503
In response, the Examiner cites the First Nielsen Provisional
Application's Figure 14 and paragraph 181 for teaching the disputed claim
limitation. See Ans. 19.
We have examined the First Nielsen Provisional Application's Figure
14 and paragraph 181, and they are substantively different from the
published Nielsen Application's Figure 14 and paragraph 486. In particular,
the First Nielsen Provisional Application's paragraph 181 states: "In the
embodiment of Figure 14, a number of different image sources and image
types may be employed to provide the digital image on which a visual
representation of a marking operation may be overlaid ..... " Absent further
explanation from the Examiner, we do not see how the cited portions of the
First Nielsen Provisional Application teach "an image sensor operatively
connected to the processor for generating signals representing images
captured by the image sensor during a locating process to substantially
include an area being mapped," as required by the claim.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1, and corresponding dependent
claims 2-26.
Claims 27-31
We have reviewed the Examiner's rejections in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
conclusion that the Examiner fails to show the cited prior art teaches "an
image sensor disposed on or in the locator body; ... receive a plurality of
images from the image sensor of the locate area; associate ones of the
4
Appeal2015-001836
Application 12/947,503
images with simultaneously determined depth and positional information,"
as recited in independent claim 27. See App. Br. 3-10; Reply Br. 1-5.
Similar to the discussion above with respect to claim 1, the Examiner
initially cites the published Nielsen Application's Figure 14 and paragraph
486 for teaching the disputed claim limitation of claim 27. See Ans. 15.
Similar to the discussion above with respect to claim 1, Appellants contend
the published Nielsen Application's Figure 14 and paragraph 486 do not
constitute prior art. See App. Br. 3-10. As discussed above, it is undisputed
that the published Nielsen Application itself was filed on August 11, 2010,
which is later than the priority date of this application.
In response, the Examiner cites the First Nielsen Provisional
Application's Figure 14 and paragraph 181 for teaching the disputed claim
limitation of claim 2 7. See Ans. 19.
As discussed above with respect to claim 1, the First Nielsen
Provisional Application's Figure 14 and paragraph 181 are substantively
different from the published Nielsen Application's Figure 14 and paragraph
486. In particular, the First Nielsen Provisional Application's paragraph 181
states: "In the embodiment of Figure 14, a number of different image
sources and image types may be employed to provide the digital image on
which a visual representation of a marking operation may be overlaid ..... "
Absent further explanation from the Examiner, we do not see how the cited
portions of the First Nielsen Provisional Application teach "an image sensor
disposed on or in the locator body; ... receive a plurality of images from the
image sensor of the locate area; associate ones of the images with
simultaneously determined depth and positional information," as required by
the claim.
5
Appeal2015-001836
Application 12/947,503
Because the Examiner fails to provide sutlicient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 27, and corresponding dependent
claims 2 8-3 1.
DECISION
We reverse the Examiner's decision rejecting claims 1-31.
REVERSED
6