Ex Parte Domel et al

Board of Patent Appeals and Interferences

Jun 30, 2004

09454723 (B.P.A.I. Jun. 30, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DOUGLAS R. DOMEL and WINSTON G. WALKER
____________
Appeal No. 2004-1448
Application No. 09/454,723
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ON BRIEF
____________
Before DIXON, GROSS, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s final
rejection of claims 37-40.
We affirm.
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BACKGROUND
The disclosed invention relates to a window covering (mini-blind) actuator having
an electric motor powered by a DC battery. Representative claim 37 is reproduced
below.
37. A window covering assembly with actuator, comprising:
a head rail, a rod rotatably disposed therein, and a window covering
engaged with the rod for moving the window covering when the rod is rotated,
the window covering being selected from the group of window coverings
consisting of: cellular shades, pleated shades, lift and tilt shades, horizontal
blinds, and vertical blinds;
at least one electric motor in the head rail and coupled thereto; and
at least one primary battery supported by the head rail for energizing the
motor to move the window covering when a control signal is received.
The examiner relies on the following references:
Shopp 5,274,499 Dec. 28, 1993
Riordan 5,552,769 Sep. 3, 1996
(filed Mar. 15, 1993)
Claims 37-40 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Riordan and Shopp.
Claims 41-44 have been allowed. Claims 2-36 have been canceled.
The status of instant claim 1 is unclear. Apparently, both the examiner and
appellants presume that the claim has been canceled. However, we fail to find any
amendment in the file wrapper canceling claim 1. The claim appears to be a duplicate
of claim 1 in U.S. Patent 6,060,852, which issued from parent application No.
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Application No. 09/454,723
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08/923,812, and subject to a rejection under 35 U.S.C. § 101 for statutory double
patenting. We leave it to the examiner, upon the return of the application to the
examiner’s jurisdiction, to determine the actual status of the claim, and whether the
claim should be rejected under 35 U.S.C. § 101.
We refer to the Final Rejection (Paper No. 11), the Examiner’s Answer (Paper
No. 16), and the Supplemental Answer (Paper No. 22) for a statement of the examiner’s
position and to the Brief (Paper No. 15) and the Reply Brief (Paper No. 17) for
appellants’ position with respect to the claims which stand rejected.
OPINION
We earlier remanded this application to the examiner (Appeal No. 2001-2358;
Paper No. 21) for the examiner to provide a written response to appellants’ arguments
in the Reply Brief, and to the new evidence filed with the Reply Brief. Appellants have
chosen not to file a response (37 CFR § 1.193(b)(1)) to the examiner’s position set forth
in the Supplemental Answer.
The references of Riordan and Shopp are applied against claims 37-40 under 35
U.S.C. § 103. Shopp discloses a “battery operated” projection screen that includes a
rechargeable battery 32 (Fig. 2). Col. 4, ll. 17-22. In appellants’ view, the reference
does not disclose or suggest a “primary” battery. (Brief at 3-4.) The examiner refers to
a technical dictionary definition as support for the view that the term “primary battery”
does not mean exclusively non-rechargeable, but includes batteries that can be
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recharged. (Answer at 4-5.) Appellants refer to a technical dictionary definition as
support for the position that a “primary battery” is “one that is non-rechargeable.” (Brief
at 3.) Appellants have also attached an expert’s (Sidman) declaration (37 CFR § 1.132)
to show that one skilled in the art “would not consider ‘rechargeable battery 32’ [of
Shopp] to be a ‘primary battery.’” (Sidman dec. at ¶ 2.)
The technical dictionary definition relied upon by the examiner establishes that
the electro-chemical reactions of some “primary” batteries may be reversible to some
extent. Appellants do not appear to dispute that contention. Nor does the declaration
submitted by appellants appear to adhere to a contrary position.
However, the instant claims do not set forth any express limitations with respect
to “reversibility.” The actual issue in controversy is whether the artisan would have
considered “rechargeable battery 32” described by Shopp as falling within the meaning
of the term “primary battery,” as used in instant claim 37, as opposed to whether the
artisan would have recognized that some primary batteries may be rechargeable to
some extent (i.e., have reversible electro-chemical reactions). In our view, appellants’
evidence is sufficient to establish that the artisan would not have considered
“rechargeable battery 32” of Shopp to be a “primary battery.”
However, in the Supplemental Answer the examiner also asserts that Shopp’s
disclosure of battery 32 being rechargeable is merely exemplary. Shopp also describes
the invention in the following terms.
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In one embodiment thereof, the reversible motor of the projection screen
system is a DC powered, reversible motor and the system also includes a
DC power supply such as a rechargeable battery, permitting the system to
be installed without connection to an external power supply and also
providing a portable motorized projection screen system.
Shopp col. 3, ll. 56-62 (emphasis added).
In a Section 103 inquiry “‘the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747,
750, 192 USPQ 278, 280 (CCPA 1976)). “‘The use of patents as references is not
limited to what the patentees describe as their own inventions or to the problems with
which they are concerned. They are part of the literature of the art, relevant for all they
contain.’” In re Heck, 699 F.2d 1331, 1333, 216 USPQ 1038, 1039 (Fed. Cir. 1983)
(quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
Shopp discloses that a rechargeable battery is not the only species of DC power
supply that may be used for powering the DC motor. Shopp’s disclosure would have
suggested to the skilled artisan the full range of DC power supply types that would have
been suitable to provide power to the motor, or at least those being portable and not
requiring connection to an additional (external) power supply. Moreover, the instant
rejection is based on a combination of references. The rejection asserts that Shopp
would have suggested to the artisan providing a window covering, as disclosed by
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Riordan, with a motor, and a battery for energizing the motor, as an improvement over a
manual (i.e., hand-operated) window covering.
We agree with the examiner, in essence, that the combination of references
would have suggested not only a rechargeable, but also a primary, battery as a means
for providing power to the motor. As appellants have established, the artisan was well
acquainted with the characteristics of both types of battery. (See, e.g., Sidman dec. at
¶¶ 3-4.) The ordinary artisan had knowledge sufficient to select either of a primary or a
rechargeable battery, based upon suitability for the details of the particular design
application (e.g., power requirements, and indications for periodic replacement versus
periodic recharging). Selection of either type of battery would have been equally
obvious. Cf. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 806-07, 10 USPQ2d
1843, 1845-46 (Fed. Cir. 1989) (claimed combination of two drugs held to have been
obvious in view of reference which disclosed 1200 possible combinations, without
highlighting preference of two that were claimed). Disclosure of “a multitude of effective
combinations does not render any particular formulation less obvious.” Id. at 807, 10
USPQ2d at 1846. In any event, according to this record, if one is to be preferred, a
primary battery would have been preferable to a rechargeable battery because “internal
construction is in general more simple.” (Sidman dec. at ¶ 5.)
The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact. In re Gartside, 203 F.3d 1305,
1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000). In our estimation, Shopp’s teachings
Appeal No. 2004-1448
Application No. 09/454,723
1 If the examiner is presented with arguments that Shopp represents non-analogous art, in the
event of further prosecution, we note that similarity in the structure and function of the invention and the
prior art is indicative that the prior art is within the inventor’s field of endeavor. State Contracting & Eng’g
Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1069, 68 USPQ2d 1481, 1489 (Fed. Cir. 2003) (citing In re
Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986)). We further note that the references
cited in the Shopp patent, and its assignee, relate to “Draper Shade & Screen Co., Inc.” The company
name itself indicates the recognition of similarity in structure and function of window coverings and
projection screens.
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with respect to electrically powered operation are sufficient to support the examiner’s
finding of a motivation to combine the references.1
Being not persuaded of error in the ultimate conclusion of obviousness with
respect to the subject matter as a whole of instant claim 37, we sustain the rejection.
Claims 38 through 40 fall with claim 37, as appellants have not provided arguments in
support of separate patentability. See 37 CFR § 1.192(c)(7).
We thus sustain the rejection of claims 37-40 under 35 U.S.C. § 103 as being
unpatentable over Riordan and Shopp.
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CONCLUSION
The rejection of claims 37-40 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
JOSEPH L. DIXON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2004-1448
Application No. 09/454,723
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JOHN L ROGITZ
ROGITZ & ASSOCIATES
750 B STREET
SUITE 3120
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