Ex Parte 4910652 et al

Board of Patent Appeals and Interferences

Aug 24, 2010

90005694 (B.P.A.I. Aug. 24, 2010)

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

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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.
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Patent 4,910,652

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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).
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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.
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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
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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).
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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
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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).
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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,
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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

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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