Alexis Lewis

Patent Trials and Appeals Board

Jun 7, 2021

2020006377 (P.T.A.B. Jun. 7, 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.
14/595,326 01/13/2015 Alexis D. Lewis 33999/01083 7580
27530 7590 06/07/2021
Nelson Mullins Riley & Scarborough LLP
IP Department
One Wells Fargo Center, Suite 2300
301 South College Street
Charlotte, NC 28202
EXAMINER
SIPPEL, RACHEL T
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
06/07/2021 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):
ip@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte ALEXIS D. LEWIS
____________

Appeal 2020-006377
Application 14/595,326
Technology Center 3700
____________

Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
MICHAEL L. WOODS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 14/595,326
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THE INVENTION
Appellant’s invention relates to emergency escape devices. Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. An emergency escape breathing system, comprising:
a delivery container including a first portion and a second
portion that are releasably secured to each other, the delivery
container defining an interior compartment and being
comprised of a translucent material;
a smoke filtration mask disposed within the interior
compartment of the delivery container; and
an activated light source disposed within the interior
compartment of the delivery container, the activated light
source being a light stick that is visible through the delivery
container,
wherein the delivery container is configured so that the
emergency escape breathing system may be grasped and thrown
by a hand of a user, and
wherein the first portion and the second portion are formed
entirely of a heat resistant material.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Templeton US 5,033,142 July 23, 1991
Dosch US 5,113,854 May 19, 1992
Lindqvist US 2006/0076186 A1 Apr. 13, 2006
Shea US 2010/0051616 A1 Mar. 4, 2010
Brister US 8,202,291 B1 June 19, 2012
Lam US 2015/0210432 A1 July 30, 2015
Orion US 2016/0001918 A1 Jan. 7, 2016
Appeal 2020-00006377
Application 14/595,326
3
The following rejections are before us for review:
1. Claims 1, 4, 5, 13, 18, and 19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Dosch, Brister, and Templeton.
2. Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable
over Dosch, Brister, Templeton, Orion, and Lam.
3. Claims 3, 9, 10, and 14–17 are rejected under 35 U.S.C. § 103 as
being unpatentable over Dosch, Brister, Templeton, and Orion.
4. Claims 6 and 8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Dosch, Brister, Templeton, and Lam.
5. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable
over Dosch, Brister, Templeton, Lam, and Shea.
6. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Dosch, Brister, Templeton, and Lindqvist.
OPINION
Appellant argues claims 1–12 as a group and raises no arguments with
respect to claims 13–19 other than arguments asserted against the rejection
of claim 1. Appeal Br. 7–8. We select claim 1 as representative and the
remaining claims fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Dosch discloses the invention substantially
as claimed except for: (1) being made of heat resistant and translucent
material, for which the Examiner relies on Brister; and (2) an activated light
source, for which the Examiner relies on Templeton. Non-Final Act. 3–4.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to combine the teachings
of the prior art to achieve the claimed invention. Id. According to the
Examiner, a person of ordinary skill in the art would have done this to
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Application 14/595,326
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prevent heat damage and allow the contents to be viewed, even in the dark.
Id.
Appellant first argues that there is no reason to make Dosch
translucent. Appeal Br. 8. Appellant argues that, since Dosch does not
disclose a light source in storage container 58, there is no need to make
container 58 translucent to allow light to emanate from the container. Id.
In response, the Examiner explains that the reason for making the
container translucent is to allow the user to view the contents of the
container. Ans. 13. This is a sufficient reason for combining Dosch and
Brister. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(requiring an
obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning) cited with approval in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
Next, Appellant argues that a person of ordinary skill in the art would
not combine Dosch and Brister because Brister is non-analogous art. Appeal
Br. 8. Appellant argues that Brister is directed to devices for treating
obesity, which is a different field of endeavor from Dosch and the
application under review. Id. In response, the Examiner points out that
Brister is reasonably pertinent to the problem of providing a heat resistant,
translucent storage container. Ans. 13.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
Two separate tests define the scope of analogous art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
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Application 14/595,326
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reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The “field of endeavor”
test asks if the structure and function of the prior art is such that it would be
considered by a person of ordinary skill in the art because of similarity to the
claimed invention. Id. at 1325-26. A reference is “reasonably pertinent” if
it logically would have commended itself to an inventor's attention when
considering the problem. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
“If a reference disclosure has the same purpose as the claimed invention, the
reference relates to the same problem, and that fact supports use of that
reference in an obviousness rejection.” Id. Appellant’s non-analogous art
argument is limited to whether Brister is from the same field of endeavor as
Appellant’s invention and fails to consider whether Brister is reasonably
pertinent to the problem at hand. See generally Appeal Br. We agree with
the Examiner that Brister is reasonably pertinent to the problem of allowing
a user to view the contents of a closed container.
Appellant next argues that Templeton is non-analogous art because it
is directed to an apparatus for use by undersea divers. Appeal Br. 8. As
with the argument over Brister, Appellant considers only whether Templeton
is from the same field of endeavor and otherwise fails to consider whether it
is “reasonably pertinent” to the problem faced by the inventor. Id.,
Bigio, 381 F.3d at 1325. The Examiner points out, correctly, that Templeton
is reasonably pertinent to the problem of illumination in a darkened
environment. Appeal Br. 13.
Appellant’s invention is little more than a football shaped container
that separates into two pieces at the waist and defines an interior volume that
holds a smoke inhalation mask and a light. Appellant’s device is delivered
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Application 14/595,326
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to a user in a smoke filled environment such as a burning building. Spec.
¶ 19, Fig. 6. The use of a translucent container with a light inside helps the
user find the container in the darkened environment of a smoke filled room.
There are many diverse environments where the level of illumination is
limited. Templeton’s undersea diving environment is but one of many low
illumination environments. We agree with the Examiner that it is obvious to
place contents in a translucent container provided with a light source to
facilitate use in a low illumination environment.
We sustain the Examiner’s rejection of claims 1–19.
CONCLUSION
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 5, 13,
18, 19
103 Dosch, Brister, Templeton 1, 4, 5, 13,
18, 19

2 103 Dosch, Brister, Templeton,
Orion, Lam
2
3, 9, 10,
14-17
103 Dosch, Brister, Templeton,
Orion
3, 9, 10,
14-17

6, 8 103 Dosch, Brister, Templeton,
Lam
6, 8
7 103 Dosch, Brister, Templeton,
Lam, Shea
7
11, 12 103 Dosch, Brister, Templeton,
Lindqvist
11, 12
Overall
Outcome
1-19
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED