Ex Parte Coleman et al

Patent Trial and Appeal Board

May 17, 2016

13633955 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/633,955 10/03/2012 Edward S. Coleman
34704 7590 05/17/2016
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
09-187-2 8579
EXAMINER
BANNAN, TIJLIE A
ART UNIT PAPER NUMBER
2875
MAILDATE DELIVERY MODE
05/1712016 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 EDWARD S. COLEMAN and QIU JIANPING
Appeal2014-008619 1
Application 13/633,955
Technology Center 2800
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
JOHN R. KENNY, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-11. App. Br. 4. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appellants' Invention
Appellants' invention is directed to a lighted inspection tool for
illuminating and inspecting darkened areas. In particular, the inspection tool
includes a mirror (104) enclosed in a housing (110) having mounted thereon
a light (112) powered by a battery inside the housing having a rigid handle
1 Appellants identify the real party in interest as Ullman Devices Corp. App.
Br. 2.
Appeal2014-008619
Application 13/633,955
(102) pivotably mounted thereon opposite the mirror (104). Spec. i-fi-135-38,
Fig. 9.
Illustrative Claim
Independent claim 1 is illustrative, and reads as follows:
1. A lighted inspection tool, comprising:
a mirror;
a housing attached to the mirror;
a light mounted in the housing;
a power source housed in the housing and operatively connected to
the light; and
a substantially rigid handle pivotably mounted relative to the
mirror and the housing, wherein the handle extends from one
side of the mirror and the housing, and wherein the light is
mounted in the housing substantially opposite to the handle.
Gems back
Koller
Hallbauer
Dieterle
Meyer
Prior Art Relied Upon
us 1,057 ,820
us 1,774,331
us 2,185,149
us 4,745,528
US 2007/0293316 Al
Rejections on Appeal
Apr. 1, 1913
Aug. 26, 1930
Dec. 26, 1939
May 17, 1988
Dec. 20, 2007
The Examiner rejects the claims on appeal as follows:
Claims 1--4 and 8-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dieterle and Gemsback.
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Application 13/633,955
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dieterle, Gems back, and Koller.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dieterle, Gemsback, Koller, and
Hallbauer.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dieterle, Gems back, and Meyer.
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 9-15, and the Reply Brief, pages 1---6.2
First, Appellants argue modifying Dieterle with Gemsback's teaching
of positioning the light atop the mirror housing opposite the handle, as
proposed by the Examiner, would not be desirable because it would increase
the size of Dieterle' s lighted travel mirror, and would thereby vitiate the
purpose of the device. App. Br. 10. According to Appellants, adding a light
opposite the handle would not only increase the size of the device, but it
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed March 24, 2014), the Reply Brief (filed
August 4, 2014), and the Answer (mailed June 4, 2014) for the respective
details. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(vii).
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Application 13/633,955
would also impact the stability thereof because the light would add weight to
the top of the device. Id. This argument is not persuasive.
Appellants correctly note that Gemsback discloses a handheld lighted
mirror device with a mirror housing having mounted thereon a light opposite
the handle. While we agree with Appellants that the position of the light
atop the mirror housing does impact the stability and the size of Gemsback's
portable device, we do not agree with Appellants that a similar configuration
of Dieterle' s portable device would somehow destabilize it and increase its
size. Id. Although the pivotable handle disclosed in the Dieterle's device
does serve as a base for supporting the mirror, we find no evidence on this
record that merely relocating the light from the mirror to the housing top
thereof, as proposed by the Examiner, would somehow exceed the support
capacity of the base. Id. (citing Dieterle 1:56-58, Fig. 4). In particular,
Appellants have not shown that replacing Dieterle' s two lights with a
Gemsback's single light, and relocating the replacement light to a higher
point on the device would destabilize the device. Reply Br. 1-2. Likewise,
we find no evidence on this record that the proposed modification would
somehow negatively impact the travel size of the device. Because
Appellants' naked allegations cannot serve as evidence, we are not
persuaded that the proposed modification would have more than a mere
negligible impact over the net weight and size of the portable device to
presumably interfere with the purpose and stability of the Dieterle device.
Accordingly, we agree with the Examiner's conclusion that the proposed
combination would result in merely rearranging known elements in Dieterle
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Application 13/633,955
and Gems back to produce the predictable result of illuminating the mirror,
and would thereby provide the benefit of taking up less space in the mirror,
as well as consume less power with a single light instead of two. Ans. 9-10.
Second, Appellants argue that the evidence of commercial success
provided in the Coleman declaration is sufficient to establish non-
obviousness. App. Br. 10 (citing Coleman Deel., App. C). In particular,
Appellants contend the declaration set forth that the current apparatus has
experienced a great deal of commercial success due to the features of the
claimed invention. Id. 10-11, Reply Br. 2-3. Appellants also argue that the
Examiner's peremptory dismissal of the declaration for lack of nexus
between the evidence of commercial success and the claimed invention is
conclusory. According to Appellants, because the declaration establishes
that sales and demand for the tool featured in the claimed invention have
increased, whereas pre-inventive tools without the claimed features had poor
sales despite similar advertising and sales effort, the submitted evidence
carries sufficient nexus factually and legally between the commercial
success and the claimed invention. App. Br. 11-12. In Appellants' view, it
is the repositioning of the light from the handle of the inspection mirror to
the actual mirror that has led to the dramatic increase in sales for the purpose
of inspecting tight dark areas. Reply Br. 4 (citing Deel. Exhibits A, C). This
argument is not persuasive. 3
3 As set forth in MPEP 716.03(b): In considering evidence of
commercial success, care should be taken to determine that the commercial
success alleged is directly derived from the invention claimed, in a
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Application 13/633,955
At the outset, we note the evidence of commercial success proffered
in the declaration and Exhibits is not commensurate in scope with the
claims. Although the claims are directed to positioning the light in the
mirror itself, as opposed to the handle thereof, they are not limited to an
marketplace where the consumer is free to choose on the basis of objective
principles, and that such success is not the result of heavy promotion or
advertising, shift in advertising, consumption by purchasers normally tied to
applicant or assignee, or other business events extraneous to the merits of the
claimed invention, etc. In re Mageli, 470 F.2d 1380 (CCPA 1973)
( conclusory statements or opinions that increased sales were due to the
merits of the invention are entitled to little weight); In re Noznick, 478 F.2d
1260 (CCPA1973). In ex parte proceedings before the Patent and
Trademark Office, an applicant must show that the claimed features were
responsible for the commercial success of an article if the evidence of
nonobviousness is to be accorded substantial weight. See In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996) (Inventor's opinion as to the purchaser's
reason for buying the product is insufficient to demonstrate a nexus between
the sales. and the claimed invention.). Merely showing that there was
commercial success of an article, which embodied the invention, is not
sufficient. Ex parte Remark, 15 USPQ2d 1498, 1502-02 (Bd. Pat. App. &
Inter. 1990). Compare Demaco Corp. v. F. Von Langsdorjf LicensingLtd.,
851 F.2d 1387 (Fed. Cir. 1988).
Further as set forth in MPEP 716.03(a): A declaration attributing
commercial success to a product or process "constructed according to the
disclosure and claims of [the] patent application" or other equivalent
language does not establish a nexus between the claimed invention and the
commercial success because there is no evidence that the product or process
which has been sold corresponds to the claimed invention, or that whatever
commercial success may have occurred is attributable to the product or
process defined by the claims. Ex parte Standish, 10 USPQ2d 1454, 1458
(Bd. Pat. App. & Inter. 1988).
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apparatus for inspecting tight dark areas. Rather, they encompass an
inspection tool having a mirror with a light mounted thereon opposite to the
handle thereof, similar to conventional lighted mirror inspection tools, as
described in Gemsback, taken in combination with Dieterle. Therefore,
despite the probative value of reported success regarding the inspection tool
depicted in the Declaration and Exhibits, we agree with the Examiner that
the record before us does not particularly support the allegation that such
success is particularly attributed to the invention as broadly claimed. Ans.
10.
It follows Appellants have not shown error in the Examiner's
obviousness rejection of claim 1. Likewise, Appellants have not shown
error in the Examiner's rejections of claims 2--4 and 8-10, not separately
argued.
Regarding the rejections of claims 5-7, Appellants argue in Koller's
disclosure of a light fixture that pivots relative to the housing, the disclosed
pivot serves only the purpose of facilitating changing the burnt out light
bulb. Appellants contend Koller is not otherwise combinable with Dieterle
and Bemsback. App. Br. 13-14. This argument is not persuasive because it
is not commensurate with the scope of the claim. In particular, there is
nothing in the claim that precludes the disclosed pivot from serving the
recited purpose. It suffices, and Appellants admit, that the recited light
fixture is pivotable relative to the housing. Accordingly, we agree with the
Examiner, and Appellants have not shown, that the proposed combination is
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merely a combination of familiar elements to produce a predictable result.
We therefore sustain the rejections of claims 5-7.
Regarding claim 11, Appellants argue that Meyer is non-analogous art
because it is directed to a handheld controller for a gaming device, whereas
Dieterle and Gemsback are directed to a handheld vanity with mirrors. App.
Br. 15. This argument is not persuasive. Because Meyers, Gemsback, and
Dieterle are all directed to adding light to a mirror to illuminate the surface
thereof to thereby enable the use of such mirror in the dark, they are within
the same field of endeavor as Appellants' invention and are analogous.
DECISION
We affirm the Examiner's obviousness rejections of claims 1-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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