Ex Parte Denney et al

Patent Trial and Appeal BoardDec 12, 2012

11401116 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PAUL E. DENNEY, JAY R. EASTMAN, PAUL M. FALLARA, ANDREW P. JOSEPH, JOHN S. PHILLIPS, MICHAEL N. PATENA, TIM BURNHAM, and PAUL COLEMAN ____________________ Appeal 2010-009453 Application 11/401,116 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, LINDA E. HORNER, and LYNNE H. BROWNE, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009453 Application 11/401,116 2 STATEMENT OF THE CASE Paul E. Denney et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 18-35. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on December 6, 2012. We REVERSE. The Claimed Subject Matter Claim 18, reproduced below, is illustrative of the claimed subject matter.1 18. A manipulation system for controllably positioning a head relative to a surface of an inhabitable structure and irradiating the surface with energy waves from the head, the manipulation system comprising: a positioning mechanism releasably coupled to the head, and an anchoring mechanism releasably coupled to the positioning mechanism and releasably coupled to the structure. Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Primbsch Uraki Freiwald US 4,137,778 US 5,977,515 US 6,693,255 B2 Feb. 6, 1979 Nov. 2, 1999 Feb. 17, 2004 Rejections Appellants request our review of the following rejections. The Examiner rejected claims 18-25 and 29-35 under 35 U.S.C. § 103(a) as unpatentable over Uraki and Freiwald. 1 Claim 29, the only other independent claim involved in this appeal, is substantially similar to claim 18, except that claim 29 specifically requires a “laser” head, uses “means” language, and uses the term “affixed” in place of “coupled.” Appeal 2010-009453 Application 11/401,116 3 The Examiner rejected claims 26-28 under 35 U.S.C. § 103(a) as unpatentable over Uraki, Freiwald, and Primbsch. OPINION Appellants argue that “neither Uraki nor Freiwald discloses or suggests a positioning mechanism ‘releasably coupled’ to the ‘anchoring mechanism’ and ‘releasably coupled to the head’ as recited by Claim 18.” App. Br. 7. Appellants also argue that “neither Uraki nor Freiwald disclose or render obvious ‘positioning means releasably affixed to the laser head’ and releasably affixed to the ‘anchoring means’ as recited by Claim 29.” App. Br. 10. Appellants additionally argue that the combination of Uraki and Freiwald fails to render obvious a positioning mechanism releasably coupled to the head, as called for in claim 18, or a positioning means releasably affixed to the laser head, as called for in claim 29. Reply Br. 5-6, 8. The Examiner’s rejection identifies the laser torch driving mechanism 11 of Uraki as the claimed “anchoring mechanism” and does not identify any structure in Uraki that corresponds to the “positioning mechanism” of claims 18 and 29. See Final Rej. 2; Ans. 3-4. The Examiner’s rejection does not identify any structure in Freiwald that corresponds to the “positioning mechanism” of claim 18 and “means for positioning” of claim 29, or propose any modification of Uraki to provide a “positioning mechanism [or means] releasably coupled [or affixed] to the head [or laser head].” See Final Rej. 2-3; Ans. 4-5. In responding to Appellants’ argument, the Examiner identifies the laser torch driving mechanism 11 of Uraki as the “positioning mechanism,” but seems to acknowledge that Uraki fails to disclose that the laser torch driving mechanism 11 is releasably coupled or affixed to the laser torch 6. Appeal 2010-009453 Application 11/401,116 4 Ans. 7. To account for this “releasably” coupled or affixed limitation, the Examiner admonishes Appellants for purportedly attacking Uraki individually and quotes the disclosure in column 12 of Freiwald directed to the lazy-susan component shown in figures 11A, 11B, and 12. Id. at 7-8. The Examiner posits that “if the laser head is releasably coupled from the positioning mechanism as taught by the combination of” Uraki and Freiwald, the anchoring mechanism would also somehow be releasably coupled to the positioning mechanism by virtue of the head and anchoring mechanism being connected to each other. Id. at 8. However, the Examiner does not explain how the lazy-susan component of Freiwald is to be combined with Uraki to arrive at the claimed invention, much less articulate an apparent reason to do so. For the above reasons, the Examiner has not satisfied the initial burden to establish a prima facie case that Uraki and Freiwald render obvious the subject matter of independent claims 18 and 29 and their dependent claims 19-25 and 30-35. We do not sustain the rejection of these claims. We also do not sustain the Examiner’s rejection of claims 26-28 as unpatentable over Uraki, Freiwald, and Primbsch, which suffers from the same deficiency as the rejection of claim 18. DECISION The Examiner’s decision rejecting claims 18-35 is reversed. REVERSED hh