Ex Parte 4910652 et alDownload PDFBoard of Patent Appeals and InterferencesAug 24, 201090005694 (B.P.A.I. Aug. 24, 2010) 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. 90/005,694 04/03/2000 4910652 5965-021 5900 7590 08/25/2010 James F Porcello Jr Emch Schaffer Schaub and Porcello Co LPA One Seagate Suite 1980 Toledo, OH 43604 EXAMINER HUSAR, STEPHEN F ART UNIT PAPER NUMBER 2875 MAIL DATE DELIVERY MODE 08/25/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GARY E. RHINE, Appellant and Patent Owner ____________ Appeal 2010-006734 Reexamination Control 90/005,694 1 Patent 4,910,652 Technology Center 2800 Before SALLY GARDNER LANE, JAMESON LEE, and JEFFERY B. ROBERTSON, Administrative Patent Judges. LANE, Administrative Patent Judge DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.25, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this decision. Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 2 I. STATEMENT OF THE CASE Gary E. Rhine (“Appellant”)2 appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1 and 4. Claims 2-3 and 5-8, the only other claims of U.S. Patent 4,910,652 (“the ‘652 patent”), have been indicated as patentable. (Office Action mailed June 15, 2005, p. 6). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm. This proceeding arose from a request for ex parte reexamination filed by Casio, Inc. on April 3, 2000 (see App. Br., p. 5), in the ‘652 patent, issued to Appellant on March 20, 1990, and based on United States Application 07/380,586, filed July 17, 1989. Appellant reports that the ‘652 patent was the subject of an infringement suit by Appellant against Casio Incorporated, Inc. in the Northern District of Ohio. See Rhine v. Casio Inc., Inc., No. 3:96CV7524 (N.D. Ohio May 12, 1998). Although the court granted summary judgment to Casio, that decision was reversed and the case remanded on appeal. See Rhine v. Casio, Inc., 183 F.3d 1342 (Fed. Cir. 1999). We have not been informed of any other concurrent or prior proceedings that would impact our decision. (See App. Br.; Related Proceedings App’x). 2 Mr. Rhine is the real party in interest and the current owner of the patent under reexamination. Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 3 Appellant’s invention relates to a combination wristwatch and flashlight for viewing the face of the wristwatch in the dark. (‘652 patent, col. 1, ll. 7-12). Claim 1 of the ‘652 patent, recites3: A time keeping and displaying wrist mountable watch having a flashlight mounted in the case thereof, said flashlight comprising a power supply for supplying electrical power to said flashlight, said power supply electrically connected to at least one light source, and time delay means for automatically extinguishing said light source after a time delay following the energization of said light source by the electrical deenergization of said light source. (App. Br., Claims App’x). The Examiner relied on the following patents: Wegner 2,916,871 December 15, 1959 Mallory 3,535,282 October 20, 1970 Sakata 3,633,355 January 11, 1972 Brien 4,705,407 November 10, 1987 The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as unpatentable over Wegner and Mallory and also over Brien and Mallory. (Ans. 5 and 6). The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as unpatentable over Wegner, Mallory, and Sakata, and also over Brien, Mallory, and Sakata. (Ans. 6 and 7). Appellant relied on an affidavit under 37 C.F.R. § 1.132 by sole 3 Indentations have been added between the elements of claim 1. See 37 C.F.R. § 1.75(i). Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 4 inventor Gary E. Rhine. (App. Br., Evidence App’x). II. ISSUES Would Mallory, which relates to a time delay shut-off mechanism in a flashlight, have been considered by those in the art as relevant prior art along with Wegner and Brien, which relate to wristwatches with lights? Has Appellant provided sufficient evidence of secondary considerations to support a conclusion of non obviousness despite the teachings of Mallory, Wegner and Brien? III. FINDINGS OF FACT 1. Wegner teaches a wristwatch housing an incandescent lamp that is powered by a battery. (Wegner col. 1, ll. 15-17, col. 2, ll. 10-12, and Figs. 1 and 6). 2. Brien teaches a wristwatch with a light located above the dial face of the watch and a switch on the outside of the watch to turn the light on. (Brien col. 1, ll. 33-44). 3. Neither Brien nor Wegner teaches a “time delay means for turning off the light as recited in Appellant’s claim 1. 4. Mallory teaches a flashlight that turns off with an automatic, time-delay cut-off switch. (Mallory col. 1, ll. 47-60). 5. Figure 1 of Mallory is reproduced below. Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 5 Figure 1 depicted above shows a longitudinal view of a flashlight assembly that has a time delay mechanism (22) comprising a tubular element (50) with a valve system (58) and springs (54 and 56), creating a bellows to control the ingress of air into the bellows. After the tube fills with air over a period of time, it elongates, opening the switch and turning off the light. (Mallory col. 1, l. 61, through col. 2, l. 19, and col. 3, ll. 12-27, 42-49). 6. Mallory teaches that the time delay mechanism prevents the flashlight battery from being exhausted. (Mallory col. 1, ll. 52-55). IV. ANALYSIS The Examiner rejected claim 1 under 35 U.S.C. § 103(a) over the combination of Wegner and Mallory or Brien and Mallory. (Ans. 5 and 6- 7). Wegner and Brien were cited for teaching wristwatches with lights. (FFs 1-2; Wegner col. 1, ll. 15-17, col. 2, ll. 10-12, and Figs. 1 and 6, Brien col. 1, ll. 33-44). According to the Examiner, those of skill in the art would have had reason to combine these watches with the time-delay shutoff mechanism taught in Mallory (FF 4 and 5; Mallory col. 1, ll. 47-60, Fig. 1, col. 1, l. 61, through col. 2, l. 19, and col. 3, ll. 12-27) because Mallory Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 6 teaches that the mechanism saves battery power. (FF 6; Mallory col. 1, ll. 52-55). See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). Appellant argues that it would not have been feasible to miniaturize the components of the mechanism taught in Mallory to put them into a wristwatch and still allow them to function. (App. Br. 9 and 13). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). Appellant does not provide sufficient evidence that those of skill in the art could not have made a smaller version similar to the mechanism of Mallory to work in a watch. Indeed, Wegner teaches using springs in a wristwatch. (Wegner col. 2, ll. 47-50; Fig. 1, element 22). Thus, the Examiner had a reasonable basis for considering that the mechanism of Mallory, which relies on springs and valves, could have been successfully used in a watch. (Ans. 9). Appellant does not point to evidence to the contrary. Thus, we are not persuaded that the Examiner erred. Appellant also argues that Mallory was improperly cited because it relates to the non-analogous field of flashlights. (App. Br. 11; Reply Br. 3). Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 7 Two criteria are relevant in determining whether prior art is analogous: “(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.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Wyers v. Master Lock Co., App. No. 2009-1412, 2010 WL 2901839, at *4 (Fed. Cir. July 22, 2010). Mallory is directed to the problem of creating an automatic time-delay shutoff switch that saves battery life, the same problem said to be solved by Appellant’s claimed watch. Thus, Mallory addresses the same problem as Appellant’s claimed watch and is analogous art. Appellant argues that Mallory does not teach a means for extinguishing a light source after a fixed time delay, but only after an adjustable time delay. (App. Br. 9-10; Reply Br. 4). The term “fixed” was added to the claim of the ‘652 patent by amendment during this reexamination proceeding (see Amendment of August 27, 2002, p. 9), but the ‘652 patent has since expired. “[N]o amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent.” 37 C.F.R. § 1.530(j). Furthermore, “[a]lthough the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.” 37 Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 8 C.F.R. § 1.530(k).4 We do not review the rejection in light of claim 1 as amended since the amendment would not be effective in the ‘652 patent. Appellant provides evidence of secondary considerations in response to the Examiner’s prima facie case. (App. Br. 14-17). Appellant asserts that others failed to develop the claimed watch, even though the art cited was available before 1987 and Casio knew of this art. (App. Br. 13-16; Declaration of Gary E. Rhine Pursuant to 37 C.F.R. § 1.132 (“Declaration”), ¶¶ 5 and 11). “Absent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). See also In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, not withstanding knowledge of the references, the art tried and failed to solve the problem.”). Appellant has not directed us to evidence that Casio or any other entity tried and failed to make the claimed watch. “Argument of counsel cannot take the place of evidence lacking in the record.” Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Appellant also attempts to show that the commercial success of Casio’s and Timex’s lighted watches is an indicia of nonobvious. (App. Br. 15-16; Declaration ¶¶ 12 and 13). Evidence of commercial success requires 4 Appellants have not directed us to authority supporting an exception in the case of Patent Office delay. (Contra Owner’s Supplemental Response to Examiner’s Supplemental Answer Filed March 31, 2010). Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 9 a showing not only of sales numbers, but also “proof that the sales were a direct result of the unique characteristics of the claimed invention – as opposed to other economic and commercial factors unrelated to the qualify of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Appellant provides neither sales numbers nor evidence that sales of watches by Casio and Timex were a direct result of the claimed characteristics, but only a statement by the inventor that “my invention has achieved great commercial success.” (Declaration ¶ 13). Indeed, the copies of advertisements that Appellant provides (see Declaration Exhibits), are evidence that factors other than the claimed characteristics, for example marketing efforts, led to any commercial success enjoyed by Casio and Timex. Appellant has not provided persuasive evidence to convince us that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over Wegner and Mallory or over Brien and Mallory. The Examiner also rejected claim 4 under 35 U.S.C. § 103(a) over Wegner, Mallory, and Sakata or over Brien, Mallory, and Sakata. (Ans. 6 and 7-8). Claim 4 depends on claim 1 and recites: “The watch of claim 1 having symbols indicative of the time of day embossed on the crystal face of the watch.” (App. Br.; Claims App’x). Appellant does not argue that Sakata fails to teach the added limitations recited in claim 4, only that Sakata fails to cure the deficiencies of the combinations of Wegner and Mallory and of Brien and Mallory. (App. Br. 12). For the reasons provided above, Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 10 Appellant has not persuaded us that there are any deficiencies in these combinations of references. Accordingly, Appellant has not persuaded us that the Examiner erred in rejecting claim 4. V. CONCLUSIONS Mallory would have been considered by those in the art as relevant prior art along with Wegner and Brien. Appellant has not provided sufficient evidence of secondary considerations to support a conclusion of non obviousness despite the teachings of Mallory, Wegner and Brien. VI. ORDER Upon consideration of the record and for the reasons given, the rejection of claim 1 under 35 U.S.C. § 103(a) as being rendered obvious by Wegner and Mallory is AFFIRMED; the rejection of claim 1 under 35 U.S.C. § 103(a) as being rendered obvious by Brien and Mallory is AFFIRMED; the rejection of claim 4 under 35 U.S.C. § 103(a) as being rendered obvious by Wegner, Mallory, and Sakata is AFFIRMED; and the rejection of claim 4 under 35 U.S.C. § 103(a) as being rendered obvious by Brien, Mallory, and Sakata is AFFIRMED. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED rvb Appeal No. 2010-006734 Reexamination Control 90/005,694 Patent 4,910,652 11 cc: Patent Owner James F. Porcello, Jr. Emch Schaffer, Schaub and Porcello Co LPA One Seagate Suite 1980 Toledo, OH 43604 Third Party Requester Scott Simpson Sills, Cummis & Gross, P.C. One Rockefeller Plaza, 25th Floor New York, NY 10020 Copy with citationCopy as parenthetical citation