Ex Parte Davis

Board of Patent Appeals and Interferences

Mar 28, 2007

10464595 (B.P.A.I. Mar. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM P. DAVIS
____________

Appeal 2006-2253
Application 10/464,595
Technology Center 3600
____________

Decided: March 28, 2007

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and
STUART S. LEVY, Administrative Patent Judges.

MURRIEL E. CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This appeal involves claims 1 to 21, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b) (2002).

Appeal 2006-2253
Application 10/464,595

The claims are directed to a data protection device. Claim 1 is
illustrative:
1. A data protection device comprising:

a fire-resistant enclosure comprising an inner wall and an
outer wall and having a thermally resistant material between the
inner and outer walls, the inner wall defining an interior volume
for housing an electronic data storage device therein, and
having a closeable opening, said enclosure capable of
protecting contents from environmental hazard;

at least one electrical connector within said enclosure for
providing power inside said enclosure; and

at least one data link within said enclosure for providing
data communication between inside said enclosure and outside
said enclosure when said opening is open or closed;

said at least one electrical connector and said at least one
data link extending outside said enclosure for connection with
at least one power source and at least one data source;

wherein said at least one electrical connector and said at
least one data link extend between said inner and outer walls in
such manner to substantially prevent an environmental hazard
from affecting contents of said enclosure.

2

Appeal 2006-2253
Application 10/464,595

The Examiner relies on the following prior art references to show
unpatentability:
Robbins US 5,295,447 Mar. 22, 1994
Dhont US 5,397,237 Mar. 14, 1995

Appellant’s Prior Art Admission (“AAPA”) on page 5 of Specification

REJECTIONS
The rejections as presented by the Examiner are as follows:
Claims 1 to 9, 11 to 13 and 15 to 20 are rejected under 35 U.S.C
§ 103(a) as unpatentable over Dhont in view of Robbins.
Claims 10, 14 and 21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Dhont and Robbins and further in view of AAPA.
The Examiner contends that a person of ordinary skill in the art at the
time of the invention would have been motivated to modify the Dhont
device so as to be comprised of a thermally resistant material, as taught by
Robbins, in order to provide the device in Dhont with fire-resistant
properties that would safeguard any items located within the enclosure in the
event of a fire.
The Appellant contends that the Examiner has failed to cite a credible
or legitimate suggestion to modify the Dhont device so as to be comprised of
a thermally resistant material as taught by Robbins.

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Appeal 2006-2253
Application 10/464,595

ISSUE
The sole issue in this case is whether the Appellant has shown that the
Examiner erred in holding that a person of ordinary skill in the art at the time
of the invention would have been motivated to modify the Dhont device so
as to be comprised of a thermally resistant material, as taught by Robbins.

FINDINGS OF FACT
Dhont describes an apparatus for simulating respiratory conditions.
The apparatus includes a control device 3 which is housed in a carrying case
(col. 2, ll. 26 to 28). Dhont does not disclose the material of the carrying
case. Dhont is silent about the environment in which the control device 3 is
utilized.
Robbins discloses a fire resistant safe comprised of internal and
exterior walls that encapsulate a space filled with insulation 34 (col. 5, ll. 9
to 12). The insulation is a mixture of water, Portland cement, cellulose
fibers and a foaming agent (col. 5, ll. 15 to 20). The insulation 34 absorbs
heat energy by changing the water in the mix from liquid state to a vapor
state at 100 degrees centigrade (col. 5, ll. 16 to 20).

PRINCIPLES OF LAW
When it is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is any suggestion
or motivation in the prior art to make the selection made by the Appellants.
Obviousness cannot be established by combining the teachings of the prior
art to produce the claimed invention, absent some teaching, suggestion or
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Appeal 2006-2253
Application 10/464,595

incentive supporting the combination. The extent to which such suggestion
must be explicit in, or may be fairly inferred from, the references, is decided
on the facts of each case, in light of the prior art and its relationship to the
appellants' invention. As in all determinations under 35 U.S.C. § 103, the
decision maker must bring judgment to bear. It is impermissible, however,
simply to engage in a hindsight reconstruction of the claimed invention,
using the Appellants' structure as a template and selecting elements from
references to fill the gaps. The references themselves must provide some
teaching whereby the Appellants' combination would have been obvious. In
re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)
(citations omitted). That is, something in the prior art as a whole must
suggest the desirability, and thus the obviousness, of making the
combination. See In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040,
1042 (Fed. Cir. 1992); Lindemann Maschinenfabrik GmbH v. American
Hoist and Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir.
1984). In determining obviousness/nonobviousness, an invention must be
considered "as a whole," 35 U.S.C. § 103, and claims must be considered in
their entirety. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563,
1567, 220 USPQ 97, 101 (Fed. Cir. 1983).

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Appeal 2006-2253
Application 10/464,595

ANALYSIS
Dhont does not include any suggestion to make the carrying case fire
resistant. Robbins does not disclose that the materials utilized to form the
fire resistant safe can be used to form a carrying case. In fact, as the
insulation in Robbins in comprised at least in part of concrete, it would
appear that a person of ordinary skill in the art would not be motivated to
include the insulation in the carrying case because such inclusion would
increase the weight and thus reduce the portability of the case. We must
conclude that the only suggestion for combining such disparate structures in
the manner proposed by the Examiner stems from an impermissible
hindsight reconstruction of the Appellant's invention wherein the claims
have been used as a template to selectively piece together isolated
disclosures in the prior art.
CONCLUSION
In view of the foregoing, we will not sustain either of the Examiner’s
rejections of the appealed claims because both rejections rely on the
combination of Dhont/Robbins and we find no motivation or suggestion to
make the combination.
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Appeal 2006-2253
Application 10/464,595

ORDER
The Examiner’s decision is reversed.

REVERSED

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