Ex Parte Gudat

Patent Trial and Appeal Board

Dec 28, 2017

11139788 (P.T.A.B. Dec. 28, 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.
11/139,788 05/31/2005 Adam John Gudat 08350.4527 3644
58982 7590 01/02/2018
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON, DC 20001-4413
EXAMINER
NGUYEN, MAI T
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
01/02/2018 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):
regional-desk @ finnegan. com
us_docket_clerk@cat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM JOHN GUDAT
Appeal 2016-000082
Application 11/139,78s1
Technology Center 3600
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision rejecting claims 1, 2, 4—10, 13—16, 26, 29—34, and 37—
43. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, “Caterpillar Inc. is the real party in interest.”
Br. 3.
Appeal 2016-000082
Application 11/139,788
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1,10, and 29 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A boundary tracking system for a work site, comprising:
a plurality of signal transmitting devices configured to be
positioned at underground locations and to originate signals to be
transmitted from the underground locations to aboveground
having frequencies ranging from about 900 MHz to about 2.4
GHz, wherein the plurality of signal transmitting devices are
configured to be activated by a query signal;
a receiving device configured to be located aboveground
and to receive the signals having frequencies ranging from about
900 MHz to about 2.4 GHz that originate from the plurality of
signal transmitting devices and to generate an output based on
the received signals; and
a controller configured to determine the underground
locations of the plurality of signal transmitting devices based on
the output from the receiving device.
Rejections
I. Claims 1, 2, 5—7, 10, 13, 14, 26, 38, and 40 stand rejected under
35 U.S.C. § 103(a) as unpatentable over La Rosa et al. (US 2005/0012499
Al, published Jan. 20, 2005) (“La Rosa”), Price (US 6,437,726 Bl, issued
Aug. 20, 2002), Cesulka (US 6,456,240 Bl, issued Sept. 24, 2002), and
Delalat (US 6,414,633 Bl, issued July 2, 2002).
II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over La Rosa, Price, Cesulka, Delalat, and Mullins (US
6,044,316, issued Mar. 28, 2000).
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Application 11/139,788
III. Claims 8, 9, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over La Rosa, Price, Cesulka, Delalat, and Hawkins (US
2,513,320, issued July 4, 1950).
IV. Claims 29 and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Price, La Rosa, Cesulka, and Delalat.
V. Claims 30, 31, and 37 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Price, La Rosa, Cesulka, Delalat, and Rooney et al. (US
6,597,992 B2, issued July 22, 2003) (“Rooney”).
VI. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Price, La Rosa, Cesulka, Delalat and Hawkins.
VII. Claim 34 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Price, La Rosa, Cesulka, Delalat, Hawkins, and Rooney.
VIII. Claims 39 and 41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over La Rosa, Price, Cesulka, Delalat, and Seifert (US
2005/0012635 Al, published Jan. 20, 2005).
IX. Claim 43 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Price, La Rosa, Cesulka, Delalat, and Seifert.
ANALYSIS
Rejections I—III and VIII
Independent claim 1 is directed to a boundary tracking system, which
includes, “a plurality of signal transmitting devices configured to be
positioned at underground locations,” “a receiving device configured to be
located aboveground,” and “a controller configured to determine the
underground locations of the plurality of signal transmitting devices based
on the output from the receiving device.” Br., Claims App. Notably, signals
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Application 11/139,788
sent from the transmitting devices to the receiving device have a claimed
frequency range “from about 900 MHz to about 2.4 GHz.” Id. Independent
claim 10 is similar to claim 1. See id.
The Examiner finds that La Rosa discloses a boundary tracking
system, which includes a plurality of signal transmitting devices and a
receiving device. Final Act. 2 (citing La Rosa Tflf 89, 102, 109, 110, 124).
The Examiner finds Price’s system is similar to La Rosa’s system and
teaches the use of controller. Id. at 3.
The Examiner also finds that “[t]he claimed frequency range falls
within a range of frequencies that are commonly known as ultra high
frequencies (UHF) which range from 300 MHz and 3GHz” and “Cesulka
teaches using a UHF signal in a beacon system for locating the position of
test military munitions that become buried underground.” Id. (citing
Cesulka, col. 1,11. 18-21, 5A-62).
The Examiner does not find that either La Rosa or Cesulka teaches the
claimed frequency range “from about 900 MHz to about 2.4 GHz.” See
Final Act. 2-4.2 Indeed, La Rosa discloses signals in a much lower
frequency range, i.e., 1—300 kHz; and Cesulka discloses signals in a
frequency range of 400 to 450 MHz. La Rosa 14, 89; Cesulka, col. 15,
11. 6-7.
The Examiner relies on legal precedent to remedy the deficiency of
the applied prior art. See Final Act. 3^4 (citing In re Alter, 220 F.2d 454,
456 (CCPA 1955)). In particular, the Examiner determines that the general
conditions of claim 1 are disclosed in the prior art and discovering the
2 The Examiner does not rely on Price or Delalat to teach the claimed
frequency range. See Final Act. 2—5.
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workable ranges involves only routine skill in the art. See id. Thereafter,
the Examiner concludes:
[I]t would have been obvious to one of ordinary skill in the art
... to replace the signal frequency of the boundary tracking
system of La Rosa with an ultra high frequency as taught by
Cesulka to perform the same function of signaling the position
of a buried device through the ground, wherein the range of about
900 MHz to about 2.4 GHz includes a finite number of identified,
predictable frequencies that would have been obvious because
one of ordinary skill in the art could have pursued the known
potential frequency options with a reasonable expectation of
success.
Final Act. 4 (emphasis added).
We acknowledge that “[w]hen there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp.” KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). Yet, the Examiner has not
identified a design need or market pressure to solve a problem such that a
person of ordinary skill would have had a good reason to pursue the claimed
frequency range, i.e., from about 900 MHz to about 2.4 GHz. See Br. 16—
18.
In the Answer, the Examiner finds that “Cesulka specifically teaches
using the UHF range which again encompasses all of the claimed range, the
only thing left to decide is what part of that range is to be used.” Ans. 20.
Thereafter, the Examiner determines that the Appellant’s arguments suggest
that “different parts of the frequency range will work different based on the
other variables, depth, type of oil etc” and “[i]n applying the teaching of
Cesulka, one of ordinary skill in the frequency art understands that ultra high
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frequencies encompass 300MHz to 3GHz and could be used as potential
frequencies for locating underground objects regardless of the actual
frequencies used by Cesulka.” Ans. 20, 21 (emphasis added).
Initially, we note that Cesulka teaches using a UHF signal and a
frequency range of 400 to 450 MHz. Cesulka, col. 1,11. 54—62, col. 15,
11. 6-7 ; see Br. 15. As pointed out by the Appellant, Cesulka does not teach
using frequencies in the claimed range, i.e., from about 900 MHz to about
2.4 GHz. See Br. 16. Nor does Cesulka teach using all frequencies in the
UHF range, i.e., 300 MHz and 3 GHz. Additionally, the Appellant points
out that “La Rosa’s devices operate at much lower frequencies under 300
kHz,” and “La Rosa’s methods specifically avoid using high frequency
signals underground because of their attenuation.” Br. 20, n. 4, 5 (citing
La Rosa Tflf 14, 15 (“A low frequency signal is preferred because it is
attenuated to a lesser extent by the surrounding rock than a high frequency
signal.”)).
Although the Examiner determines that one of ordinary skill in the art
could have used a particular frequency range, the Examiner falls short by not
offering a reason why a person of ordinary skill would have used and, more
to the point, would have a good reason to pursue, the claimed frequency
range, i.e., from about 900 MHz to about 2.4 GHz. For example, the
Examiner does not explain what depth and/or type of soil or oil would work
for the claimed frequency range. Accordingly, we determine that the
Examiner does not persuasively explain how the La Rosa and Cesulka
references — as well as the other applied art — demonstrate a problem such
that a person of ordinary skill would have had a good reason to pursue the
claimed frequency range, i.e., from about 900 MHz to about 2.4 GHz.
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Further, the Specification describes, among other things, that
“[transmitting devices 30 may be configured to transmit more than one
frequency for long-range and/or short-range communication.” Spec. 119.
This description suggests that the Appellant regarded the claimed frequency
range as critical to their invention.
Thus, we do not sustain the Examiner’s rejection of claims 1, 2, 5—7,
10, 13, 14, 26, 38, and 40 as unpatentable over La Rosa, Price, Cesulka, and
Delalat (Rejection I).
As for the rejections based on La Rosa, Price, Cesulka, and Delalat in
combination with Mullins, Hawkins, or Seifert, each rejection relies on the
same reasoning as discussed above. As such, we do not sustain the
rejections under 35 U.S.C. § 103(a) of claims 4, 8, 9, 15, 16, 39, and 41
(Rejections II, III, VIII).
Rejections IV—VII and IX
Independent claim 29 is directed to a machine and is similar to
claim 1. See Br., Claims App. The Examiner’s rejection of independent
claim 29 suffers from similar errors as those discussed above. Thus, we do
not sustain the Examiner’s rejection of claims 29 and 42 as unpatentable
over Price, La Rosa, Cesulka, and Delalat (Rejection IV). As for the
rejections based on Price, La Rosa, Cesulka, and Delalat in combination
with Rooney, Hawkins, Hawkins and Rooney, or Seifert, each rejection
relies on the same reasoning as discussed above. As such, we do not sustain
the rejections under 35 U.S.C. § 103(a) of claims 30-34, 37, and 43
(Rejections V—VII and IX).
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 2, 4—10,
13-16, 26, 29-34, and 37—43.
REVERSED
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