Ex Parte YU

Patent Trials and Appeals Board

Mar 31, 2016

12432130 - (D) (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/432,130 0412912009 XIONG YU
68705 7590 04/04/2016
TAROLLI, SUNDHEIM, COVELL & TUMMINO, LLP
1300 EAST NINTH STREET
SUITE 1700
CLEVELAND, OH 44114
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.
CWR-018397US ORD 6488
EXAMINER
BALDRIDGE, BENJAMIN M
ART UNIT PAPER NUMBER
2866
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
rkline@tarolli.com
dkinder@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIONG YU
Appeal2014-006175
Application 12/432,130
Technology Center 2800
Before MAHSHID D. SAADAT, JOYCE CRAIG,
and MATTHEW J. McNEILL, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
non-final rejection of claims 1-24, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Case W estem Reserve
University (App. Br. 3).
Appeal2014-006175
Application 12/432,130
STATEMENT OF THE CASE
Introduction
Appellant's invention relates to a sensor probe and system for time
domain reflectometry (Spec. if 2). Claim 1 is illustrative of the invention
and reads as follows:
1. A sensor probe for time domain reflectometry,
compnsmg:
a plurality of flexible elongated strips of an electrically
conductive material extending from a proximal end portion of
the probe to a distal end portion thereof, each of the elongated
strips being substantially coplanar relative to each other along a
path that is transverse to a longitudinal axis of the probe, the
plurality of elongated strips also being in a substantially parallel
arrangement along a length of the probe and each of the
plurality of elongated strips being at least 10 centimeters in
length;
a flexible substrate of an insulating material
encapsulating the plurality of elongated strips to maintain the
plurality of elongated strips in the substantially parallel and
coplanar arrangement; and
a connector electrically coupled to each of the plurality of
elongated strips for providing communication of electrical
signals relative to the plurality of elongated strips to a time
domain reflectometry apparatus;
wherein the probe is configured to be in contact with and
conform to a shape of a contour of one of an engineering
structure and a natural structure over a substantially full-length
of the probe.
The Examiner's Rejections
The Examiner rejected claims 1-3, 13, and 21-23 under 35 U.S.C.
§ 103(a) as unpatentable over Dahan (US 2003/0071637 Al; Apr. 17, 2003),
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Dmevich (US 2004/0201385 Al; Oct. 14, 2004), and Schoor (US
2003/0196485 Al; Oct. 23, 2003) (see Ans. 3---6.)
The Examiner further added Kamitani (US 200710029990 Al; Feb. 8,
2007) to reject claims 9-12, 14-16, and 24; Stegens (US 4,365,195; Dec. 21,
1982) to reject claims 4, 7, 8, and 19; Kamitani and Stegens to reject claims
17 and 20; Kamitani and Faulkner (US 6,023,209; Feb. 8, 2000) to reject
claim 18; Stegens and Faulkner to reject claim 5; and Faulkner to reject
claim 6 under 35 U.S.C. § 103(a) (see Ans. 6-19).
In rejecting claim 1, the Examiner relied on Dahan as disclosing the
recited probe structure including flexible elongated strips (Ans. 4 (citing
Dahan Fig. 2, i-fi-17, 27)). The Examiner further relied on Dmevich as
disclosing a connector that is electrically coupled to each of the strips and on
Schoor as disclosing a substrate made of flexible insulating material that
encapsulates the strips (Ans. 4-5). The Examiner concluded that it would
have been obvious to one of ordinary skill in the art to provide the electrical
connector of Dmevich and the encapsulating substrate of Schoor in
combination with Dahan in order to protect the sensor from the elements the
sensor is exposed to (Ans. 5).
Appellant's Contentions
Appellant contends the Examiner erred in finding the disclosures of
Dahan, Dmevich, and Schoor teach or suggest the recited features of claim 1
because:
1. The flexible waveguides of Dahan are different from the
recited flexible strips that are in a substantially parallel arrangement
and "would be forced into a non-coplanar and non-parallel
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Application 12/432,130
arrangement when the liquid filling material 15 is poured" (App. Br.
10).
2. Inclusion of a flexible substrate, that encapsulates
Dahan's flexible waveguide and maintains them in a substantially
parallel and coplanar arrangement, would render the system of Dahan
unsatisfactory for its intended purpose (App. Br. 11 ).
3. Schoor describes encapsulating a single "sheet-like
sensor" in a flexible encapsulation material without providing any
teaching or suggestion to encapsulate the claimed plurality of
elongated strips (App. Br. 12).
4. The Examiner used hindsight reconstruction for
modifying the flexible waveguides of Dahan because they are used for
a different purpose (App. Br. 13).
5. One of ordinary skill in the art that is employing the
system described in Dahan would have no reason to modify the
connector of the flexible strips described in Dahan to employ the
connector described by Dmevich (App. Br. 15).
Appellant further contends the Examiner erred in finding the
disclosures of Dahan, Dmevich, and Schoor, in combination with Kamitani
teach or suggest the recited features of claim 24 because:
6. Employing the rigid connectors described in Kamitani in
the flexible probe structure of Dahan would render the system of
Dahan unsatisfactory for its intended purpose (App. Br. 21 ).
Regarding claim 14, Appellant presents similar arguments made for
claim 1 and contends the patentability of the remaining claims based on their
dependency from their base claim and the failure of the other applied prior
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Application 12/432,130
art references to cure the alleged deficiencies of the combination of Dahan
with Dmevich and Schoor (App. Br. 17-25).
Regarding claim 18, Appellant contends the Examiner erred in finding
the disclosures of Dahan, Dmevich, and Schoor, in combination with
Kamitani and Faulkner teach or suggest the recited features of claim 18
because:
7. "By virtue of claim 18' s dependence from claim 14, the
elongated strips recited in claim 18 are at least 10 cm in length"
whereas the connectors disclosed in Faulkner have a length of about
4.5 mm (App. Br. 21 (citing Faulkner, Col. 8, Lines 35-40)).
ANALYSIS
With respect to Appellant's contention 1, we agree with the Examiner
that the flexible waveguides of Dahan remain in a substantially parallel and
coplanar arrangement along the length of the waveguides even after the
filling material 15 presses the flexible waveguides against the internal
diameter of borehole 12 to conform to the shape and irregularities of the
borehole wall (Ans. 21-22; see also Dahan Fig. 2, i-fi-17, 30, 32). As further
explained by the Examiner and contrary to Appellant's argument (Reply Br.
3), the extent of change in the parallel configuration of Dahan's waveguides
is similar to Appellant's description of the claimed flexible strips that are
flexible enough to "conform to a shape of a contour of one of an engineering
structure and a natural structure" (Ans. 22; see also Spec. i129).
Regarding Appellant's contention 2, we also agree with the Examiner
that modifying Dahan to include a flexible substrate would not render Dahan
unsatisfactory for its intended purpose because the modification results in
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Application 12/432,130
flexible probes that could conform to the underlying surface contour (see
Ans. 23-26). That is, the flexible encapsulation taught by Schoor, which
encapsulates a sensing grid, is sufficiently flexible so that the sensors or
waveguides would still conform to the shape of a contour of the structure
beneath the sensors.
With respect to Appellant's contention 3, as explained by the
Examiner (Ans. 27), the rejection is based on the combination of references
where Schoor is relied on for teaching a flexible encapsulation, and not for
the shape of the probe. In other words, one of ordinary skill in the art would
have used layers of the flexible encapsulation disclosed in Schoor to
encapsulate flexible waveguide probes of Dahan in a manner similar to
Schoor's encapsulating a "sheet-like sensor" or a sensing grid (see Schoor
ii 74).
Regarding Appellant's contention 4, we agree with the Examiner that
the proposed combination is based on the teachings of the applied
references, and not based on hindsight reconstruction. In KSR, the Supreme
Court stated that "[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning." KSR Int'! v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (citing
Graham v. John Deere Co., 383 U.S. 1, 36 (1966)). Nevertheless, the Court
also qualified the issue of hindsight by stating that "[r]igid preventative rules
that deny factfinders recourse to common sense, however, are neither
necessary under our case law nor consistent with it." Id. at 421. Cognizant
of this precedent and contrary to Appellant's contentions (Reply Br. 7-8),
we are satisfied that the Examiner's proposed combination of Dahan with
Dmevich and Schoor involve nothing other than combining prior art
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elements that perform their ordinary functions to predictably result in the
claimed method (see Ans. 3-6).
Appellant's contention 5 is similarly unpersuasive of Examiner error
in combining Dahan with Dmevich and Schoor. As stated by the Examiner
(Ans. 28), protecting the flexible waveguide probes of Dahan from corrosive
elements and the need to conform to an irregularly shaped surface provide
sufficient reason for the ordinary skilled artisan to rely on Dmevich and
Schoor for improving the flexible waveguide probes of Dahan (see Dahan i-f
3). We, therefore, find that the Examiner has articulated how the claimed
features are met by the reference teachings with some rational underpinning
to combine the teachings of Dmevich and Schoor with Dahan. See KSR, 550
U.S. at 418.
Regarding Appellant's contention 6, as explained by the Examiner
(Ans. 36) and contrary to Appellant's arguments that no rigidity may be
added to Dahan;s probes (Reply Br. 11), the connector disclosed in Kamitani
would not constrain the flexibility of the probes of Dahan because the
connector is designed to be affixed to the upper end portion of the
waveguides. As such, modifying the flexible probe structure of Dahan with
the rigid connectors described in Kamitani would not render the system of
Dahan unsatisfactory for its intended purpose.
With respect to Appellant's contention 7, we also agree with the
Examiner that Faulkner was cited only for disclosing that the relationship
among the length, width, and thickness of the elongated strips, whereas the
length of the strips as being at least ten centimeters is taught by Dahan (Ans.
37). Therefore, we are unpersuaded of Examiner error in finding the
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disclosures of Dahan, Dmevich, and Schoor, in combination with Kamitani
and Faulkner teach or suggest the recited features of claim 18.
CONCLUSION
As discussed herein, Appellant's arguments have not persuaded us
that the Examiner erred in finding the combination of Dahan, Dmevich, and
Schoor teaches or suggests the disputed limitations of claims 1, 14, 18, and
24, as well as the remaining claims which are not argued separately or based
on reasoning different from those discussed above (see App. Br. 16, 21-25).
Therefore, we sustain the 35 U.S.C. § 103(a) rejections of claims 1-24.
DECISION
The decision of the Examiner to reject claims 1-24 is affirmed.
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
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