Ex Parte Detrick

Patent Trial and Appeal Board

Sep 14, 2018

13875268 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/875,268 05/01/2013
78442 7590 09/18/2018
GENERAL (Berwyn/Philadelphia)
Pepper Hamilton LLP
400 Berwyn Park
899 Cassatt Road
Berwyn, PA 19312-1183
FIRST NAMED INVENTOR
Kevin Detrick
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.
145769.00101 1717
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
bwdocket@pepperlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN DETRICK
Appeal2017---001852
Application 13/875,268
Technology Center 1700
Before CATHERINE Q. TIMM, A VEL YN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-16. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 In this Decision, we refer to the Specification filed May 1, 2013 ("Spec."),
the Final Office Action dated October 7, 2015 ("Final Act."), the Appeal
Brief filed February 25, 2016 ("Appeal Br."), the Examiner's Second or
Subsequent Answer dated September 27, 2016 ("Ans."), and the Reply Brief
filed November 14, 2016 ("Reply Br.").
2 Appellant is the Applicant, Innovative Control Systems, Inc., which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 3.
Appeal2017---001852
Application 13/875,268
The subject matter of the claims on appeal relate to a method for
washing a vehicle. Spec. ,r 2. Claims 1 and 13, reproduced below from the
Claims Appendix of the Appeal Brief, with emphasis to highlight key
disputed limitations, are illustrative of the claims on appeal.
1. A method of operating wash equipment in an automated
vehicle wash system comprising:
a) determining a contour of a vehicle;
b) moving a piece of wash equipment attached to a
support into position to wash the vehicle using a
primary actuator, wherein the primary actuator
applies a constant amount of force to the piece of
wash equipment; and
c) maintaining the piece of wash equipment at a
predetermined position relative to the vehicle with
a secondary actuator that is independent of the
primary actuator and is positioned based on the
contour of the vehicle,
d) wherein the piece of wash equipment and the
secondary actuator are slidably positionable
relative to each other.
13. A method of operating a cleaning equipment in an
automated vehicle wash system comprising:
a) determining a contour of a vehicle;
b) engaging a vehicle with a piece of wash equipment
under control of a primary actuator; and
c) based on a position of the vehicle relative to the
piece of wash equipment, activating a secondary
actuator to maintain the wash equipment at a
predetermined position relative to the vehicle; and
d) based on a position of the vehicle relative to the
piece of wash equipment, de-activating the
secondary actuator to release the piece of wash
2
Appeal2017---001852
Application 13/875,268
equipment from the predetermined position
relative to the vehicle;
e) wherein the piece of wash equipment and the
secondary actuator are slidably positionable
relative to each other.
Appeal Br. 22, 24 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1-12 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement (Ans. 2) 3;
Rejection 2: Claims 1, 2, and 13 under 35 U.S.C. § I02(a)(l) as
anticipated by Ahmad (US 2009/0211605 Al, published August 27, 2009)
(id.);
Rejection 3: Claims 3-10 and 14 under 35 U.S.C. § 103 as
unpatentable over Ahmad in view of Belanger et al. (US 4,985,957, issued
January 22, 1991) ("Belanger") (id.); and
Rejection 4: Claims 11, 12, 15, and 16 under 35 U.S.C. § 103 over
Ahmad in view of Belanger, and further in view of Liao et al. (US 6,523,451
Bl, issued February 25, 2003) ("Liao") and Moore et al. (US 2004/0232585
Al, published November 25, 2004) ("Moore") (id.).
3 The rejection of claim 15 under 35 U.S.C. § 112(a) regarding the recitation
"a laser bonded to a first end of the cylinder with an optically transmissive
bond" has been withdrawn by the Examiner. Ans. 6. We note that contrary
to the Examiner's statements (Final Act. 3; Ans. 6), claim 12 does not
appear to include the recitation "a laser bonded to a first end of the cylinder
with an optically transmissive bond."
3
Appeal2017---001852
Application 13/875,268
DISCUSSION
Rejection 1 - Written Description
The Examiner finds that the recitation "the primary actuator applies a
constant amount of force to the piece of wash equipment" of claim 1 is not
supported by the original disclosure. Final Act. 2 ( emphasis added).
"[T]he test for [compliance with the written description requirement]
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Possession means
"possession as shown in the disclosure" and "requires an objective inquiry
into the four comers of the specification from the perspective of a person of
ordinary skill in the art." Id.
Appellant points to paragraphs 79-86 of the Specification, as well as
FIGS. 9A-D of the application as supporting the use of a primary actuator
that applies a constant amount of force to a piece of wash equipment.
Appeal Br. 10. In particular, Appellant points to paragraph 82 of the
Specification, which states "In one embodiment, the primary pneumatic
actuator 340 is a traditional piston-cylinder that applies a controlled amount
of force against the mechanical arm 300 to position the cleaning wrap 310
relative to the vehicle 112 based on vehicle parameters" (emphasis added).
Id. Appellant contends that those of ordinary skill in the art of car wash
systems would understand from Appellant's disclosure that the "controlled
amount of force" described in paragraph 82 "could be constant." Id. IO
( emphasis added); see also Reply Br. 5 ("Those of ordinary skill in the art of
4
Appeal2017---001852
Application 13/875,268
car wash systems would understand that [the controlled amount of] force is
likely to be constant.") ( emphasis added).
Although it may be true that the "controlled amount of force" can be
constant, as the Examiner points out, Appellant has not directed us to
sufficient evidence to establish that Appellant, at the time the application
was filed, was conveying possession of a primary actuator that applies a
constant amount of force to the piece of wash equipment. Ans. 7. As stated
in Ariad, "it is the specification itself that must demonstrate possession" and
"while the description requirement does not demand any particular form of
disclosure," or demand the use of the same words, a description that merely
renders the invention obvious does not satisfy the requirement. Ariad,
598 F.3d at 1352.
Accordingly, we sustain the rejection under 35 U.S.C. § 112(a) of
claims 1-12.
Rejection 2 -Anticipation
The Examiner finds that Ahmad teaches claim 1 's method. Final
Act. 4. Specifically, the Examiner finds that Ahmad's Figures IOA-F, and
the related description at paragraphs 203 through 209, teach the recited
actuators-part 1027 corresponding to claim 1 's first actuator, and part 1012
corresponding to claim 1 's second actuator ( moving arm 910, corresponding
to claim 1 's piece of wash equipment), which are shown in Figures IOA, IO--
Al, and I0-A2 reproduced below. Ans. 12.
5
Appeal2017---001852
Application 13/875,268
FIG. lOA
Figures lOA, lOA-1, and lOA-2 provide details of one possible
arrangement of mechanical components for implementing an arm and
platform in Ahmad's washing system.
The Examiner finds that the first and second actuators, 102 7 and
1012, respectively, "are slidably positioned with respect to each other and
the arm (910)." Ans. 13 (emphasis added); see also id. at 14 ("Ahmad
clearly shows that the arm (910, 1040) is slidably moved by the second
actuator (1012) (at least Figures lOA, lOB, and lOF).
Appellant persuasively argues arm 910, and electric motor 1012, are
not shown or described in Ahmad as being "slidably positionable relative to
each other." Appeal Br. 17; see also Reply Br. 7-8. Rather, Ahmad teaches
that 1012 (the second actuator) is an "[e]lectric motor and gear combo to
mesh with item 1011 to swing wand [91 OJ through 180° during various wash
6
Appeal2017---001852
Application 13/875,268
cycles." Ahmad ,r 204 (Table 1 C). Ahmad further teaches that 1011 is a
"[h]alf round gear attached to spray nozzles wand to swing wand through
180° during various wash cycles." Id. Thus, Ahmad's arm 910 (the piece of
wash equipment) and motor 1012 (the second actuator) are positionable
relative to each other via half round gear 1011, but they are not slidably
positionable. Gears do not slide past one another, but have teeth that engage
each other.
The Examiner bears the initial burden of presenting a prima facie case
ofunpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To
serve as an anticipatory reference, "the reference must disclose each and
every element of the claimed invention." In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009). For the reason discussed above, on this record before us,
we are persuaded that the Examiner has failed to meet the burden to
establish that independent claims 1 and 13 are anticipated by Ahmad.
Appellant having identified a reversible error, we do not sustain the rejection
of claims 1, 2, and 13.
Rejections 3 & 4 - Obviousness
The Examiner relies upon the factual determinations made in the
anticipation rejection of independent claims 1 and 13 in each of the
obviousness rejections. Final Act. 6. Because the anticipation rejection is
based on erroneous factual determinations, as discussed above, we reverse
the additional obviousness rejections over Ahmad and Belanger alone or
further in view of Liao and Moore.
DECISION
The rejection of claims 1-12 under 35 U.S.C. § 112(a) is affirmed.
7
Appeal2017---001852
Application 13/875,268
The rejection of claims 1, 2, and 13 under 35 U.S.C. § 102(a)(l) as
anticipated by Ahmad, the rejection of claims 3-10 and 14 under 35 U.S.C.
§ 103 over Ahmad in view of Belanger, and the rejection of claims 11, 12,
15, and 16 under 35 U.S.C. § 103 over Ahmad in view of Belanger, Liao,
and Moore are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
8