Ex Parte Balquist et al

Patent Trial and Appeal BoardAug 23, 2017

13080731 (P.T.A.B. Aug. 23, 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. 13/080,731 04/06/2011 ROSS BALQUIST H29103-HON10513P00420US 2429 93730 7590 08/25/2017 HONEYWELL/WOOD PHILLIPS Patent Services 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 EXAMINER CHIN-SHUE, ALVIN CONSTANTINE ART UNIT PAPER NUMBER 3634 NOTIFICATION DATE DELIVERY MODE 08/25/2017 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): ksanderson@woodphillips.com patentservices-us @ honey well, com docketing @ woodphillips .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROSS BALQUIST, ERIC M. MANSON, STEVE J. SHARP, and HUGH SMITH Appeal 2015-007496 Application 13/080,731 Technology Center 3600 Before: STEVEN D.A. MCCARTHY, CHARLES N. GREENHUT, and ERIC C. JESCHKE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 5—22 and 24—26, but seek our review of only the rejection of claims 5—9 and 15—20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2015-007496 Application 13/080,731 CLAIMED SUBJECT MATTER The claims are directed to a retracting lifeline systems for use in tie-back anchoring. Claim 5, reproduced below, is illustrative of the claimed subject matter: 5. A retracting lifeline system, comprising: a housing; a first connector attached to the housing, a lifeline; a hub to which the lifeline is attached at a first end of the lifeline and around which the lifeline is coiled within the housing, the housing comprising an opening through which the lifeline exits the housing, the hub being tensioned to rotate in a first direction to cause retracting of the lifeline and coiling of the lifeline around the hub; and a second connector attached to a second end of the lifeline; wherein at least a section of the lifeline has an initial ultimate tensile load of at least 8000 pounds and is abrasion resistant such that the section of the lifeline is available for tie- back anchoring using the second connector, the section of the lifeline being at least partially retractable within the housing; and further comprising an energy absorbing system positioned at least partially within the housing, the energy absorbing system comprising a first retaining member and a second retaining member, the first retaining member being connected to a connector extending from the housing so that the connector extending from the housing is rotatable relative to the first retaining member, the connector extending from the housing being connected to the first connector, the second retaining member being operatively connected to the hub, the first retaining member being connected to the second retaining member by at least one energy absorbing member that increases in effective length upon activation thereof so that the distance between the first retaining member and the second retaining member increases upon activation of the energy absorbing system. 2 Appeal 2015-007496 Application 13/080,731 REJECTIONS Appellants seek review of the following rejections: Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones (US 2009/0032785 Al) and Anderson (US 5,771,993). Claims 17—19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones, Anderson, and Ellis (US 5,400,868). Claims 5, 6, 9, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones, Anderson, Franks (US 4,928,790) and Taylor (US 2003/0188495). Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones, Anderson, Franks, Taylor, and Ellis. Appellants waive appeal of the following rejections (App. Br. 2), which we summarily sustain {Hyatt v. Dudas, 551 F. 3d 1307, 1314 (Fed. Cir. 2008) (“the applicant can waive appeal of a ground of rejection”); In re Berger, 279 F.3d 975 (Fed. Cir. 2002)): Claims 10-14 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 21, 22, 24, and 25 are rejected under 35 U.S.C. § 102(b) as being anticipated by Wolner (US 2010/0224448). Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Wolner and either Kucher (US 4,640,384) or Clark (US 5,704,669). Claims 10-14, 21, 22, 24, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wolner and Jones. 3 Appeal 2015-007496 Application 13/080,731 Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Wolner, Jones, Franks and Taylor Claims 10-14, 21, 22, 24, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Betcher (US 7,946,387) and Jones. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Betcher, Jones, Franks and Taylor. OPINION “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In reMouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Nevertheless, it is incumbent upon the Examiner to explain how or why the precise subject matter claimed would have been obvious in view of the cited prior-art teachings. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). There is no legally recognizable essential gist or heart of the invention. W.L. Gore &Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983). All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The Examiner initially states, “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to have combined, provided, substituted or modify Jones to comprise a connector connected between his first connector 14 and his retainer member 15d.” Final Act. 14. This statement, however, does not explain why the presence of the proposed additional connector between Jones’s 14 and 15d components would have yielded the claimed subject matter, including, as required by independent 4 Appeal 2015-007496 Application 13/080,731 claim 5: “a first retaining member and a second retaining member, the first retaining member being connected to a connector extending from the housing so that the connector extending from the housing is rotatable relative to the first retaining member, the connector extending from the housing being connected to the first connector.” Independent claim 15 recites a similar limitation. The Examiner repeats the assertion above in the Answer (Ans. 10) and states, “the first retainer of Jones is the top portion of Jones housing to which his absorbing member 15 is attached.” Ans. 11, 13. However, this is an inaccurate description of Jones because the top portion of Jones’s housing, or yolk 12, is 12d, whereas the energy absorber 15 is attached (at 15d) to the bottom of eye 14. Jones para. 27. The Examiner goes on to state, “one of ordinary skill in the art at the time of the invention would know how to modify the connection between 14 and 12d (approximately at 15d, since the connection point is not identified in the reference) to have a swivel joint even if that means that an additional structural modification, such as an upper housing plate, needs to be made to allow the connection 14 to be a swivel connection 360, 370 as taught by Jones [sic Anderson].” Ans. 15—16 (reproducing Figures 3A, 3B of Anderson). It is not clear from the Examiner’s statements exactly how the Examiner is proposing to modify Jones. Anderson lacks any energy absorber deployable from the top of the housing as in Jones’s and Appellants’ arrangement, so simply providing Anderson’s swivel joint at the top of Jones’s housing would not appear to be a possibility, nor would that appear to yield the claimed subject matter. The Examiner also does not 5 Appeal 2015-007496 Application 13/080,731 explain or provide any evidentiary basis for the proposed additional connector or upper housing plate. Claims 5 and 15 include specific structure that does not appear to be present in either Jones or Anderson to enable a swivel connection to work with a deployable energy absorber. In asserting, “Jones’s connector 14 is admittedly fixed, but Examiner does not believe it is an inventive concept to change a lifeline housing to have a rotatable connector” (Ans. 14), the Examiner addresses a more generic concept but fails to address the express language of claims 5 and 15. Appellants correctly point out that independent claims 5 and 15 require more than simply allowing Jones’s eye 14 to swivel. Reply Br. 2—3. The Examiner has not shown the recited structure in the prior art cited, nor explained why the specific subject matter claimed would have been obvious in view of Jones and Anderson. The remaining references are not applied by the Examiner in any manner that would cure this deficiency. Accordingly, we cannot sustain the rejections of claims 5 and 15, or the rejections of those claims depending therefrom, on the basis set forth by the Examiner. DECISION The Examiner’s rejections of claims 5—9 and 15—20 are reversed. The Examiner’s rejections of claims 10—14, 21, and 24—26 are 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 6