Darren Levy et al.

Patent Trials and Appeals Board

Aug 23, 2021

2020005823 (P.T.A.B. Aug. 23, 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.
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.
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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.”).
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(“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
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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.
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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

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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