Intraco, Inc.

Patent Trials and Appeals BoardJan 25, 2021

2019004080 (P.T.A.B. Jan. 25, 2021)

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. 14/725,089 05/29/2015 Eric L. Nicholson 2-5078-055 6198 803 7590 01/25/2021 STURM & FIX LLP 666 Walnut Street, Suite 1552 Des Moines, IA 50309 EXAMINER HASAN, MAINUL ART UNIT PAPER NUMBER 2485 NOTIFICATION DATE DELIVERY MODE 01/25/2021 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): fix@hsllp.com pdfix@hsllp.com sturm@hsllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC L. NICHOLSON ____________ Appeal 2019-004080 Application 14/725,089 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, ADAM J. PYONIN, and SCOTT RAEVSKY, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 12–19 and 21. Claims 1–11 and 20 are canceled. See Claim Appendix. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Intraco, Inc. Appeal Br. 1. Appeal 2019-004080 Application 14/725,089 2 The present invention relates generally to a diagnostic device for viewing problems, via a camera, occurring inside of a circuitous tube in a flexible member conveyor system. See Spec., Abstr. Claims 12 and 21 are illustrative: 12. A diagnostic apparatus for use in a disc conveyor system having a flexible member and a plurality of more than three discs operably attached to the flexible member and movable through a tube to convey material disposed within interior of walls of the tube, wherein at least some of the plurality of the discs are equally spaced from each adjacent disc, the diagnostic apparatus comprising: a camera operably attached to the flexible member and being disposed within the interior walls of the tube while the conveyor is operating. 21. The diagnostic apparatus of claim 12, wherein the plurality of discs are substantially identical. Appellant appeals the following rejections: R1. Claims 12–19 and 21 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Final Act. 2–3. R2. Claim 21 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. Final Act. 3–4. R3. Claims 12, 16–19, and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over McGoun (US 6,267,227 B1; iss. July 31, 2001), Olsson (US 5,457,288; iss. Oct. 10, 1995), and Sterner (US 2012/0279829 A1; pub. Nov. 8, 2012). Final Act. 4–9. R4. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over McGoun, Olsson, Sterner, and Tassic (US 2007/0182953 A1; pub. Aug. 9, 2007). Final Act. 9. R5. Claim 14 is rejected under 35 U.S.C. § 103(a) as being Appeal 2019-004080 Application 14/725,089 3 unpatentable over McGoun, Olsson, Sterner, and Horger (US 6,138,200; iss. Oct. 13, 2000). Final Act. 10. R6. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over McGoun, Olsson, Sterner, Tassic, and Olsson ‘661 (US 8,395,661; iss. Mar. 12, 2013). Final Act. 11–12. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Rejection under § 112, 1st paragraph, written description Claims 12–19, 21 The Examiner finds that “[a]ccording to the language of the claim limitation, not all discs are equally spaced from the adjacent disc, but rather some of the discs are equally spaced. However, the Examiner could not find any mention or description of this specific claim limitation.” See Final Act. 3. As such, the Examiner concludes that “this limitation results in a new matter added to the claims and disclosure.” Id. In the Appeal Brief, Appellant contends that “[t]his issue is believed to be resolved as shown in an ‘Applicant Initiated Interview Summary of 01/16/2018’ wherein the Examiner stated: ‘The Examiner concurs with the Applicant’s explanation and agrees to withdraw the rejection.’” Appeal Br. 8 (emphasis omitted). However, it appears that the Examiner has taken a second look at the rejection upon reviewing the MPEP and concludes that “[s]ince the alleged Fig. 5 of the original disclosure is not drawn to . . . scale . . . there is no way of determining that Appellant was in possession of the feature of equal spacing of some of the discs at the time of filing the Appeal 2019-004080 Application 14/725,089 4 invention.” See Ans. 3–4. As a result, the Examiner maintains this rejection. In the Reply Brief, Appellant contends that “[l]ooking at the drawings of U.S. patent application Ser. No. 14/290,229, . . . now U.S. Pat. No. 9,1[3]2,965, [which is incorporated by reference,] it is clear that the lugs of the drive wheel 101 are equally spaced from each other and . . . the discs must be equally spaced in proportion to equal spacing between adjacent lugs on the drive wheel 101.” Reply Br. 2 (citing Spec. ¶ 23). We disagree with Appellant. Under certain circumstances, drawings alone may provide a written description of an invention as required by 35 U.S.C. § 112, first paragraph. E.g., Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1322 (Fed. Cir. 2002). However, “absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). In addition, “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Because we cannot say with certainty that the lugs of the drive wheel 101 are equally spaced from each other, i.e., absent an explicit quantitative teaching in the disclosure of Pat. No. 9,192,965 (or in the instant disclosure), we also cannot conclude that the discs must be equally spaced in proportion to the equal spacing between adjacent lugs on the drive wheel. The drawings in the instant application, and in Pat. No. 8,132,965, are concededly not drawn to scale, therefore, one cannot determine any Appeal 2019-004080 Application 14/725,089 5 quantitative details about the spacing except that a space exists. Here, Appellant’s claim 12 requires that the disclosure define precise proportions, i.e., equally spaced, which it does not. As a result, we find that the drawings do not disclose the claimed equal spacing, but merely that a spacing exists. Appellant further contends that “[t]he Examiner ignores that one of ordinary skill in the cable conveyor art, at the time that this application was filed, would know that the [Appellant’s] Fig. 5 structure would not work unless the discs are equally spaced from each other.” Reply Br. 2 (emphasis added). However, in contemplating the aforementioned contention, it is questionable that “[Appellant’s] Fig. 5 structure would not work unless the discs are equally spaced from each other,” as proffered by Appellant (see Reply Br. 2), because Appellant’s claimed invention recites only “at least some of the plurality of the discs are equally spaced,” i.e., less than all discs are equally spaced. We agree with the Examiner that claim 12 recites a workable structure wherein “not all discs are equally spaced from adjacent disc, but rather some of the discs are equally spaced.” See Final Act. 3. Thus, Appellant’s aforementioned argument, even if it were correct about “not working,” appears to place the claimed invention in jeopardy of having enablement issues. In any case, we find Appellant’s assertion unpersuasive, as mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appeal 2019-004080 Application 14/725,089 6 Accordingly, we affirm that Examiner’s rejection of claims 12–19 and 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Rejection under § 112, 2nd paragraph, indefinite Claim 21 The Examiner finds that “[t]he term ‘substantially identical’ in claim 21 is a relative term which renders the claim indefinite” because the “term ‘substantially’ is not defined by the claim.” Final Act. 3. Appellant contends that “‘substantially identical’ is just broad, not indefinite.” See Appeal Brief 12. We agree with Appellant. The test for definiteness under 35 U.S.C. § 112, second paragraph is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc., v. Safety Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). We also point out that “[i]t is well established that when the term ‘substantially’ serves reasonably to describe the subject matter so that its scope would be understood by persons in the field of the invention, and to distinguish the claimed subject matter from the prior art, it is not indefinite.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002); see also Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1368 (Fed. Cir. 2004) (the term “substantial” implies “approximate” rather than “perfect”). Here, we find that Appellant’s use of the term “substantially identical” for describing the discs relative to each other is employed in a manner such that the bounds of the term would have been reasonably ascertainable by those skilled in the art. Appeal 2019-004080 Application 14/725,089 7 Accordingly, we reverse the Examiner’s § 112, second paragraph, rejection of claim 21. Rejections under § 103 Claims 12–18 and 21 Appellant contends “Olsson does not teach or suggest using a camera in a conveying system.” Appeal Br. 13. Appellant further contends that “Olsson teaches away from putting [the] structure on McGoun’s continuously moving cable 6 and discs 5 . . . [because] [p]ushing McGoun’s flexible cable will not work, since it would be similar to trying to push a rope through a pipe.” Id. We disagree with Appellant. Here, Appellant’s argument against Olsson separately from McGoun does not persuasively rebut the combination made by the Examiner because one cannot show non-obviousness by attacking references individually, where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425–26 (CCPA 1981). For example, the Examiner relies upon McGoun, not Olsson, to teach a pipe conveyor system having a flexible member and a plurality of discs attached to the flexible member and movable through a tube while the conveyor is operating. See Final Act. 4–5; see also Ans. 8; McGoun’s Abstract and 1:11–14 (“Slow speed drag conveyors . . . are of tubular construction and include a tensioned wire rope or chain to which are fitted a plurality of spaced plastics discs running between terminal sprockets”). The Examiner imports Olsson merely to teach that it is known to inspect the interior of a pipe with a camera attached to a flexible member. See Final Act. 5; see also Ans. 8; Olsson 2:32–50 (“the push-cable 12 can be played Appeal 2019-004080 Application 14/725,089 8 out to allow a user to manually push the cable 12 to force the video camera head 16 down the interior of a pipe 20 to be inspected”). As such, Appellant’s arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner’s reasonable prima facie case of obviousness. See In re Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (citations omitted). This reasoning is applicable here because not only does Appellant argue Olsson separately from McGoun, but Appellant is also attempting to bodily incorporate Olsson’s structure into McGoun’s conveyor assembly, which is not the standard for persuasively arguing obviousness. As for Appellant’s aforementioned teaching away argument, we do not find, and Appellant does not establish, that McGoun criticizes, discredits, or otherwise discourages the use of a camera for inspecting a tube. “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternative because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Olsson teaches both “pushing” and “pulling” the cable down the interior of a pipe. See Olsson 2:31–37. As such, we find unavailing Appellant’s contention that “[p]ushing McGoun’s flexible cable will not work, since it Appeal 2019-004080 Application 14/725,089 9 would be similar to trying to push a rope through a pipe” (see Appeal Br. 13), given that Olsson is not limited to “pushing” the cable, and even if it was, McGoun does not discredits such a procedure. Accordingly, we sustain the Examiner’s rejection of claim 12. Also, except for claim 19, Appellant does not argue separate patentability for the dependent claims. See Appeal Br. 12–16. We, therefore, also sustain the Examiner’s rejection of claims 13–18 and 21. Claim 19 Appellant contends that “neither [the McGoun or Sterner] references show a cable connector . . . [and] Olsson clamp 54 would not be flexible enough to attach to those alleged cable connectors of McGoun and Sterner.” Appeal Br. 15. The Examiner finds that “Olsson already teaches that the camera 16 is connected to the flexible member 26 through a connector in between 16 and 26 as shown in Fig. 1.” Ans. 9 (citing Olsson’s Fig. 1) (emphasis omitted). In other words, the Examiner is not relying on McGoun and/or Sterner to teach the claimed “the camera is connected to the flexible member via the cable connector,” but rather Olsson. As such, Appellant’s arguments against McGoun and/or Sterner teaching the camera being connected to the flexible member via the cable connector is misplaced and does not persuasively rebut the combination made by the Examiner. As noted supra, one cannot show non-obviousness by attacking references individually, where the rejections are based on combinations of references. Accordingly, we sustain the Examiner’s rejection of claim 19. Appeal 2019-004080 Application 14/725,089 10 CONCLUSION The Examiner’s rejection of claims 12–19 and 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description is affirmed. The Examiner’s rejection of claim 21 under 35 U.S.C. § 112, second paragraph, as being indefinite is reversed. The Examiner’s rejections of claims 12–19 and 21 as being unpatentable under 35 U.S.C. § 103 is affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 12–19, 21 112 Written description 12–19, 21 21 112 Indefinite 21 12, 16–19, 21 103 McGoun, Olsson, Sterner 12, 16– 19, 21 13 103 McGoun, Olsson, Sterner, Tassic 13 14 103 McGoun, Olsson, Sterner, Horger 14 15 103 McGoun, Olsson, Sterner, Tassic, Olsson ‘661 15 Overall Outcome 12–19, 21 Because at least one rejection encompassing all claims on appeal is affirmed, the decision of the Examiner is affirmed. No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED