Merlin Technology, Inc.

Patent Trials and Appeals Board

Sep 25, 2020

2019002503 (P.T.A.B. Sep. 25, 2020)

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.
13/946,611 07/19/2013 Albert W. Chau DCI-67A 4296
21833 7590 09/25/2020
PRITZKAU PATENT GROUP, LLC
16162 Olive St
Brighton, CO 80602
EXAMINER
MURPHY, JEROLD B
ART UNIT PAPER NUMBER
2687
NOTIFICATION DATE DELIVERY MODE
09/25/2020 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):
USPTO@dockettrak.com
mpritz@msn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALBERT W. CHAU,
BENJAMIN JOHN MEDEIROS, and CRAIG CASWELL
____________________

Appeal 2019-002503
Application 13/946,611
Technology Center 2600
____________________

Before JOHN D. HAMANN, MATTHEW J. McNEILL, and
MICHAEL T. CYGAN, Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 6–12. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Merlin
Technology, Inc. Appeal Br. 3.
2 Our Decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
May 29, 2018) and Specification (“Spec.,” filed July 19, 2013), as well as
the Examiner’s Answer (“Ans.,” mailed Dec. 4, 2018) and the Final Office
Action (“Final Act.,” mailed Aug. 30, 2017).
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CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to performing inground
operations, including systems and methods which initiate a response to
detection of an adverse operational condition involving a system including a
drill rig and an inground tool. Spec. ¶ 2, code (57). Claim 1 is
representative of the subject matter on appeal and is reproduced below.
1. In a system for performing an inground operation at least
which utilizes a drill string extending from a drill rig to an
inground tool and a walkover locator at least for receiving a
locating signal that is transmitted from the inground tool, a
communication system comprising:
an uphole transceiver located proximate to the drill rig;
a portable transceiver forming part of the walkover locator
and configured for receiving said locating signal to at least
periodically update a depth reading of the inground tool;
a telemetry link at least for unidirectional communication
from the portable transceiver of the walkover detector to the
uphole transceiver via a walkover locator telemetry signal for
periodically transmitting at least said depth reading to the uphole
transceiver; and
a processor configured for monitoring the telemetry link
to detect signal degradation of said walkover locator telemetry
signal and, responsive to detecting such signal degradation, for
switching the periodic transmission of the depth reading to a
different communication path for reception by the uphole
transceiver.

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REJECTIONS3
(1) The Examiner rejected claims 1, 2, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Alft (US
2002/0020561 A1, published Feb. 21, 2002) and Gee (US 2013/0138508
A1, published May 30, 2013).
(2) The Examiner rejected claims 6–11 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Alft, Gee, and Brand (US
6,408,952 B1, issued June 25, 2002).
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner errs. We address as necessary the Examiner’s
findings and Appellant’s arguments below.
A. Alft Combined With Gee — Claims 1, 2, and 12
Appellant argues that the combination of Alft and Gee fails to teach or
suggest “switching the periodic transmission of the depth reading to a
different communication path for reception by the uphole transceiver,” as
recited in independent claims 1 and 12. Appeal Br. 7–12.
First, Appellant argues that “one of ordinary skill in the art would
have no reason to look to Gee to cure a problem that is neither recognized
nor suggested by Alft.” Appeal Br. 10. Appellant argues that there is no
“suggestion in Gee that would lead one of ordinary skill in the art to
conclude that his teachings reasonably could even be applied to a

3 The Examiner withdrew the rejection of claims 3–5 and stated that
“[c]laims 3–[5] are objected to as being dependent upon a rejected base
claim, but would be allowable if rewritten in independent form including all
of the limitations of the base claim and any intervening claims.” Ans. 2.
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communication system in an overall system for performing an inground
operation in the manner recited by” the claims. Id.
Second, Appellant argues that “Gee is in the area of network media
communications in its use of cellular, WAN and WiFi data.” Id. at 11.
Appellant argues that Alft does not teach “that network communications
such as cellular data can serve as a substitute for telemetry data,” as used by
Alft “in its normal sense to refer to the transfer of measurements collected at
a remote or inaccessible point for transfer to dedicated receiving equipment
for monitoring.” Id. Appellant argues that “Gee is not ‘in the area of
telemetry’ but is instead in a different field of endeavor that is, therefore,
non-analogous art.” Id. Moreover, Appellant argues that its invention
“relates to reliable transfer of the depth reading in the region of the inground
operation by providing redundant communication paths when a telemetry
signal fails.” Id. According to Appellant, “[g]iven the criticality of the
depth readings, . . . one of ordinary skill in the art would dismiss as
completely unworkable any suggestion to use the network data of Gee as a
substitute for the telemetry of Alft at least for the reason that inground
operations could only be performed in the service area of a provider of
network communications.”
The Examiner finds that the combination of Alft and Gee teaches the
disputed limitation. Ans. 4–6; Final Act. 9–10. The Examiner finds that
Alft teaches “a direct wireless communication link f[ro]m the tracker unit to
the uphole controller.” Ans. 5 (citing Alft, Fig. 2, ¶ 81); see also Alft ¶ 81
(“[T]racker unit 28 transmits an information signal along a second loop
segment, LB_2, which is received by the central processor 25.”). The
Examiner also finds that this this transmission link provides the depth
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reading from the tracker unit to the central processor. Ans. 5 (citing Alft
¶ 115). As to Gee, the Examiner finds that Gee teaches “monitoring a
telemetry link to detect signal degradation for switching the periodic
transmission to a different communication path.” Id. at 4 (citing Gee ¶ 29).
The Examiner finds that “[t]he communications devices can be programmed
to automatically switch to another communications network as necessary
due to signal degradation or signal loss to permit the continuous
monitoring.” Id. The Examiner finds that one of ordinary skill in the art
would have found it obvious “to implement Alft with the known technique
of monitoring the telemetry link to detect signal degradation for switching to
a different communication path, as taught by Gee, since it is known
technique for permitting continuous monitoring in telemetry systems.” Id.
We agree with the Examiner that the combination of Alft and Gee
teaches this limitation. See Alft, Fig. 2, ¶¶ 81, 115; Gee ¶ 29. We also agree
with the Examiner and find that one of ordinary skill in the art would have
found it obvious to combine Alft’s and Gee’s relevant teachings. Ans. 4–6.
Alft teaches having a direct wireless communication link from the tracker
unit to the uphole controller. Alft, Fig. 2, ¶ 81. Gee teaches that its portable
displays monitor a link to detect signal degradation for switching to a
different communication path. Gee ¶ 29. We find that one of ordinary skill
in the art would have found it obvious to combine these teachings to provide
a redundant link for Alft’s communications path. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious . . . .”).
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We also find that Gee is analogous prior art because it is “reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). To determine what is “analogous prior
art” for the purpose of analyzing the obviousness of the subject matter at
issue, “any need or problem known in the field of endeavor at the time of the
invention and addressed by the . . . [application] at issue can provide a
reason for combining the elements in the manner claimed.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). We agree with the Examiner that a
problem Appellant faced in claims 1 and 12 concerns switching to a
different communication path when detecting signal degradation in the
current path. See Appeal Br. 20, 22 (claims 1 and 12); Spec. ¶ 13. Gee is
reasonably pertinent to this problem. See Gee ¶ 29.
Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claims 1 and 12. We also sustain the Examiner’s rejection of
dependent 2 as Appellant fails to provide separate arguments for its
patentability in the Appeal Brief. See Hyatt v. Dudas, 551 F.3d 1307, 1313–
14 (Fed. Cir. 2008) (finding that the Board may treat arguments the
appellant fails to make for a given ground of rejection as waived).
B. Alft Combined With Gee and Brand
1. Claim 6–9
Appellant argues that the combination of Alft, Gee, and Brand fails to
teach or suggest “wherein the processor is further configured for at least
periodically generating a confirmation responsive to receiving data from the
walkover locator on the telemetry link and for sending the confirmation for
reception by the walkover locator,” as recited in dependent claim 6. Appeal
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Br. 16–17. More specifically, Appellant argues, for example, that Brand
instead teaches “a verification that the drill rig has entered a remote lock-out
state, which disables certain functionality of the drill rig.” Id. (citing Brand,
Fig. 5, 14:41–52). Appellant argues that “[t]his verification is not a periodic
confirmation that telemetry is receivable at the drill rig,” as claimed. Id. at
17 (emphasis omitted).
The Examiner finds that the combination of Alft, Gee, and Brand
teaches the disputed limitation. Ans. 8–9. More specifically, the Examiner
finds that Brand teaches “periodically generating a confirmation that
telemetry is receivable at the drill rig.” Id. at 8 (citing Brand, 17:10–20).
The Examiner finds, for example, Brand teaches that “[v]arious . . . signaling
schemes known in the art may be employed to detect the occurrence of a
loss of communication condition arising between the remote unit and the
[horizontal directional drilling (HDD)] machine” (e.g., “a handshaking or
polling signaling scheme may be employed by which signals are transmitted
between the remote unit and the HDD” machine). Id. (quoting Brand,
17:10–16).
We find that the Examiner errs. The cited portion of Brand teaches
detecting a loss of communication based on known techniques, such as
handshaking. Brand, 17:10–20. Brand’s focus is on the integrity of the link,
e.g., by analyzing the strength or quality of the signal between remote unit
100 and drilling machine controller 50, rather than receiving data. Id. at
14:2–15, 17:10–20. However, the Examiner’s reliance on Brand’s
verification signal (Final Act. 16) is not “confirmation that telemetry is
receivable” as claimed, but instead, a verification of a successful “LOCK-
OUT” sequence at the drilling machine. Appeal Br. 16–17. Claim 6
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requires a periodically generated confirmation that telemetry is receivable,
not, as the Examiner finds, an occurrence of a loss of communication. Ans.
8. Likewise, Brand fails to teach that a confirmation “responsive to
receiving data” is sent, as a handshake (or the like) relates to the link’s
existence and not in response to receiving telemetry data. Id. Accordingly,
we do not sustain the Examiner’s rejection of claim 6, as well as claims 7–9,
which depend (directly or indirectly) therefrom.
2. Claims 10 and 11
Appellant argues that the combination of Alft, Gee, and Brand fails to
teach or suggest “wherein said processor is configured for monitoring at
least one characteristic of the walkover telemetry signal for detecting the
signal degradation,” as recited in dependent claim 10. Appeal Br. 18–19.
More specifically, Appellant argues that Brand’s teaching “involves the
remote unit detecting the signal strength from the drill rig, which
corresponds to an opposite direction” of what is claimed. Id. at 18. (citing
Brand 13:65–14:15). Appellant further argues that the cited “passage does
not appear to offer any reason to monitor communication in the opposite
direction or some manner in which this could reasonably be accomplished.”
Id.
The Examiner finds that Brand teaches this limitation. Ans. 9–10.
More specifically, the Examiner finds “that Brand disclose[s] monitoring for
both directions of the communications signal between the remote unit and
the HDD.” Id. at 9 (citing Brand, 17:10–30). The Examiner finds that
Brand teaches that “[v]arious . . . signaling schemes known in the art may be
employed to detect the occurrence of a loss of communication condition
arising between the remote unit and the HDD machine.” Id. (quoting Brand,
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17:10–13). Moreover, the Examiner finds that Brand also teaches that “[i]f a
loss of communication connectivity between the remote unit and HDD
machine is detected 320, the HDDM controller initiates 322 the LOCK-OUT
sequence to transition the HDD machine to a LOCK-OUT mode of
operation,” and “[t]he HDDM controller initiates 324 an audible and/or
visual warning indicative of the loss of communication condition.” Id.
(quoting Brand, 17:20–26).
We find that the Examiner errs. The cited portion of Brand teaches
that “the remote unit may evaluate the SNR of a polling signal transmitted
by the HDD machine and determine if the SNR of the received signal is
adequate.” Brand, 17:17–19. There is no teaching that a processor at the
HDD machine monitors or detects signal degradation. See Brand, 17:10–30.
Nor does Brand’s teachings that the HDD machine takes certain actions
based on signal loss demonstrate that it was a processor at the HDD machine
that detected a loss of communication based on known techniques. Brand,
17:10–20. As we discuss above, Brand’s focus is on the integrity of the link,
rather than receiving telemetry data. Id. Likewise, Brand fails to teach that
a confirmation “responsive to receiving data” is sent, as a handshake (or the
like) relates to the link’s existence and not in response to received telemetry
data. Id.
Accordingly, we do not sustain the Examiner’s rejection of claim 10,
as well as claim 11, which depends therefrom.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 12 103(a) Alft, Gee 1, 2, 12
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6–11 103(a) Alft, Gee, Brand 6–11
Overall
Outcome
1, 2, 12 6–11
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART