Darren Levy et al.Download PDFPatent Trials and Appeals BoardAug 23, 20212020005823 (P.T.A.B. Aug. 23, 2021) Copy Citation 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. 15/966,852 04/30/2018 Darren Levy LEVY-004.CIP2CON2 1076 21884 7590 08/23/2021 WELSH FLAXMAN & GITLER LLC 1451 Dolley Madison Blvd., Suite 210 McLean, VA 22101 EXAMINER CHORBAJI, MONZER R ART UNIT PAPER NUMBER 1798 MAIL DATE DELIVERY MODE 08/23/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DARREN LEVY and FRANK LEVY Appeal 2020-005823 Application 15/966,852 Technology Center 1700 Before TERRY J. OWENS, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claim 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Darren Levy and Frank Levy. Appeal Br. 1. Appeal 2020-005823 Application 15/966,852 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to a case for a tattoo artist allowing for convenient and reliable transport and sanitization of tattoo machines. Spec. 2–3. Claim 1 is the only claim on appeal, and we reproduce it below while emphasizing a key recitation for this appeal: 1. A storage, transport, and sterilizing case, comprising: a storage, transport, and sterilizing case shaped and dimensioned for storing a tattoo machine; the case has a cover and a base, the base includes a concave construction such that when the case is closed the cover and base define an enclosed space, the cover being connected to the base via a hinge securing the cover to the base along adjacent edges thereof such that the cover may be selectively moved between an open configuration where contents of the case are exposed and a closed configuration where contents of the case are fully enclosed within the case, wherein the base includes a tray for supporting the tattoo machine within the case; the case further includes an electronic circuit board, a battery, a retractable power cord, and at least one ultraviolet light, wherein the at least one ultraviolet light includes a ultraviolet bulb within a casing. Appeal Br. 11 (Claims App.) (emphasis added). REJECTION AND REFERENCES The Examiner maintains the rejection of claim 1 as obvious under 35 U.S.C. § 103 as obvious over Roberts, US 6,039,928, Mar. 21, 2000 2 In this Decision, we refer to the Final Office Action dated October 17, 2019 (“Final Act.”), the Appeal Brief filed March 16, 2020 (“Appeal Br.”), the Examiner’s Answer dated June 8, 2020 (“Ans.”), and the Reply Brief filed August 7, 2020 (“Reply Br.”). Appeal 2020-005823 Application 15/966,852 3 (“Roberts”) in view of Giering et al., US 4,301,372, Nov. 17, 1981 (“Giering”). Final Act. 3. OPINION 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), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. The Examiner finds that Roberts teaches a writing implement sterilization apparatus including, for example, a sterilizing case, ultraviolet light, and associated electronic components. Final Act. 3–4 (citing Roberts). The Examiner finds that Roberts is silent as to the cord being a retractable- type cord. Id. at 4. The Examiner finds that Giering teaches a portable fluorescence instrument that includes a UV lamp and retractable charging cord. Id. (citing Giering). The Examiner determines that it would have been obvious to substitute the power cord of Roberts with that of Giering to provide a compact sterilizing case. Id. Appellant argues that the Examiner improperly combines the teachings of Roberts and Giering because the two references are not analogous art. Appeal Br. 7–9; Reply Br. 1–3. In particular, Appellant argues that Roberts is a device for sterilizing writing instruments and Appeal 2020-005823 Application 15/966,852 4 Giering is a device for field analysis of oil samples. Appeal Br. 8. Appellant’s argument does not persuade us of Examiner error for the reasons explained below. Our reviewing court enumerated two separate tests for determining whether prior art is analogous: [t]wo separate tests define the scope of analogous prior 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 reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted). When applying these tests, we remain cognizant of the adage that “the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citing Giles Sutherland Rich, Extent of Protection and Interpretation of Claims—American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)); cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (explaining that “neither the particular motivation nor the avowed purpose of the patentee controls” an obviousness determination).. Turning to the issues at hand, claim 1 recites, in part, “[a] storage, transport and sterilizing case” having, for example, an ultraviolet bulb within the casing. Appeal Br. 11 (Claims App.). The Specification describes the invention as a case allowing for transport and sanitization of tattoo machines. Spec. 2–3. Roberts is from the same field of endeavor as claim 1 and as the Specification. Also, similar to claim 1 and the Specification, Roberts addresses problems of providing a case for writing instruments (for example, a tattoo pen) along with built-in sterilization apparatus. Final Act. Appeal 2020-005823 Application 15/966,852 5 2–3. Thus, Roberts is analogous art under either of the In re Bigio tests enumerated above. Claim 1 also recites, in part, that the case has “a retractable power cord.” Appeal Br. 11 (Claims App.). The Specification describes the invention as a case provided with “retractable power cord 152” where “electronic circuit board 154 is connected to . . . the power cord 152.” Spec. 13, Figs. 1, 3, 4. Based on this intrinsic evidence, we determine that the inventor was involved with the problem of providing power to ultraviolet lights of a portable case. Giering addresses this same problem and is, thus, also analogous art. Thus, all cited art is analogous. Appellant does not persuasively dispute the Examiner’s stated reason why a person of skill in the art would have combined the teachings of these references. Final Act. 4. A person of skill in the art would have recognized that the retractable cord of Giering would improve the Roberts device in the same manner it improves the Giering device. KSR Int’l v. Teleflex Inc., 550 U.S. at 401 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill.”). Because Appellant has not identified Examiner error, we sustain the Examiner’s rejection. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Roberts, Giering 1 Appeal 2020-005823 Application 15/966,852 6 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation