Ex Parte Eul et al

Patent Trial and Appeal BoardMar 9, 2017

13193829 (P.T.A.B. Mar. 9, 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. 13/193,829 07/29/2011 Achim Eul 27602-0049001 8718 26211 7590 03/13/2017 FISH & RICHARDSON P.C. (NY) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER TARKO, ASMAMAW G ART UNIT PAPER NUMBER 2482 NOTIFICATION DATE DELIVERY MODE 03/13/2017 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ACHIM EUL and HORST RAMB Appeal 2016-002987 Application 13/193,829 Technology Center 2400 Before BRADLEY W. BAUMEISTER, DENISE M. POTHIER, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 4—9, 11—13, 15, and 18. App. Br. I.1 Claims 2, 3, 10, 14, 16, and 17 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Throughout this opinion, we refer to (1) the Final Action (“Final Act.”) mailed December 1, 2014, (2) the Appeal Brief (“App. Br.”) filed June 30, 2015, (3) the Examiner’s Answer (“Ans.”) mailed December 14, 2015, and (4) the Reply Brief (“Reply Br.”) filed January 26, 2016. Appeal 2016-002987 Application 13/193,829 THE INVENTION Appellants’ invention is a sensor arrangement for a construction machine. Spec. 1. The invention illuminates and gathers measurement data from a sampling region or point. Id. For example, the arrangement’s sensor can be mechanical, inductive, capacitive, or ultrasonic. Id. at 2. Claim 1 is reproduced below: 1. Sensor arrangement for a construction machine comprising a sensor set up to gather measurement data from a sampling region or a sampling point, an illumination device integrated into the sensor arrangement for illuminating the sampling region or the sampling point and wherein the sensor is a mechanical sensor, an inductive sensor, a capacitive sensor, or an ultrasonic sensor. THE REJECTIONS The Examiner relies on the following as evidence: Savard US 2003/0226290 A1 Dec. 11, 2003 Buschmann US 2010/0296867 A1 Nov. 25,2010 Claims 1, 4—9, 11—13, 15, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Savard and Buschmann. Ans. 3—5. CLAIMS 1, 4—9, 11, and 12 Contentions The Examiner finds that Savard discloses every recited element of claim 1, except for the recited sensor. Ans. 3. In particular, the Examiner finds that Savard’s laser source 38 corresponds to the recited illumination device. Id. In concluding that claim 1 would have been obvious, the Examiner relies on Buschmann to teach an ultrasonic sensor. Id. Specifically, the Examiner concludes that it would have been obvious to 2 Appeal 2016-002987 Application 13/193,829 combine Savard and Buschmann “to obtain an efficient sensor arrangement to gather accurate measurement to use on construction machines.” Id. Appellants argue that the Examiner has not provided a rationale why one of ordinary skill in the art would have substituted Buschmann’s ultrasonic sensor into Savard’s arrangement having an optical sensor. App. Br. 7—8. According to Appellants, a skilled artisan would not have used Buschmann’s ultrasonic sensor for capturing images illuminated by Savard’s laser source. Id. at 8. Appellants further contend that substituting Buschmann’s ultrasonic sensors for Savard’s sensor would result in an ultrasonic sensor without the illumination device required by claim 1. Id. at 9. 3 Appeal 2016-002987 Application 13/193,829 Analysis In the Examiner-cited embodiment, Savard’s camera 28 captures an image produced by laser source 38. Savard 128, cited in Ans. 3. Savard’s Figure 1 is shown below. Fig. 1 Figure 1 of Savard showing a construction apparatus with camera 28 and laser source 38. Savard directs a non-rotating laser beam from source 38 toward surface S. Savard 121, cited in Ans. 3. Camera 28 captures illuminated image I produced by laser source 38. Savard 121. From the captured image, shape- recognition software determines the location of teeth 50. Id. 124, cited in Ans. 3. The Examiner finds that Savard lacks the recited sensor but proposes to combine Buschmann’s ultrasonic sensor with Savard’s sensor arrangement. Ans. 3. Upon review, we are unsure whether the rejection 4 Appeal 2016-002987 Application 13/193,829 proposes (1) to add Buschmann’s ultrasonic sensor to Savard’s system yielding a system with both a camera having a sensor and a separate ultrasonic sensor or (2) to replace Savard’s camera-based system with Buschmann’s ultrasonic sensor. See id. In any event, either proposal is not supported by articulated reasoning with some rational underpinning. Specifically, Savard applies shape- recognition software to laser-illuminated images from camera 28. Savard 124. Buschmann uses ultrasonic sensors with reflective reference elements to measure distances. Buschmann 120. The Examiner does not explain sufficiently why replacing Savard’s camera 28 with an ultrasonic sensor would have led to an “efficient sensor arrangement” and “accurate measurement[s,]” as stated. See Ans. 3,7. Also, apart from stating that these teachings can be combined by known techniques, the Examiner does not explain how these different sensors are combined together to arrive at the claimed invention. See id. On this record, Appellants’ arguments (id. at 7—9) are persuasive. Accordingly, we do not sustain the Examiner’s rejection of (1) independent claim l2 and (2) dependent claims 4—9, 11, and 12 for similar reasons. 2 Because the Examiner finds that Savard lacks the recited sensor in claim 1 (Ans. 3), we do not reach the issue of whether Savard teaches this limitation. Rather, we leave this for the Examiner to determine. See MPEP § 1214.03 (“If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, he or she should submit the matter to the Technology Center (TC) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection.”). Specifically, we leave to the Examiner to consider whether 5 Appeal 2016-002987 Application 13/193,829 CLAIMS 13, 15, and 18 Unlike claim 1, independent claims 13 and 18 further recite that “the sensor and light source are independently operable.” The Examiner, however, concludes that claim 13 “is rejected for the same reasons of obviousness as used above.” Ans. 4—5; Final Act. 3. Similarly, the Examiner concludes that claim 18’s limitations “are met by the references as discussed above.” Ans. 5; Final Act. 3^4. That is, as best understood, the Examiner addresses the limitations of claims 13 and 18 by referring to the obviousness rejection of claim 1. Appellants argue that the Examiner’s rejection should not be sustained because the Examiner has not addressed the limitation that the sensor and light source are “independently operable,” as recited in claims 15 and 18— not claim 1. App. Br. 10—11. Appellants’ argument (id.) is persuasive. The Examiner does not explain how Savard and Buschmann teach or suggest a sensor and light source that are “independently operable.” See Ans. 4—5; Final Act. 3^4. Indeed, the limitation at issue is recited expressly in claims 13 and 18. Yet the Examiner’s instruction to add “independently operable” to the claim suggests that the Examiner did not regard the claim to be limited in this way. See Final Act. 4—5, quoted in App. Br. 11. Because the Examiner has not the recited “capacitive sensor” of claim 1, under the broadest reasonable construction, can be interpreted to encompass not only non-camera systems for measuring capacitance, but also a camera having focusing optics 44 and capacitive elements, like Savard’s charge-coupled device (CCD) or metal- oxide-semiconductor (MOS) imaging sensors 28, 28’, and 28” (Savard Tflf 22—23, Figs. 3a—c). 6 Appeal 2016-002987 Application 13/193,829 addressed the “independently operable” limitation, the Examiner has not established a prima facie case of obviousness for claims 13 and 18. Accordingly, we do not sustain the Examiner’s rejection of (1) independent claims 13 and 18, and (2) claim 15, which depends from claim 13. DECISION We reverse the Examiner’s rejection of claims 1, 4—9, 11—13, 15, and 18. REVERSED 7