Ex Parte Gluck

Board of Patent Appeals and Interferences

May 17, 2010

11022751 (B.P.A.I. May. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte J. ROBERT GLUCK

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Appeal 2009-007437
Application 11/022,751
Technology Center 2800
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Decided: May 17, 2010
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Before ALLEN R. MACDONALD, CARLA M. KRIVAK,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-007437
Application 11/022,751

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
INVENTION
Appellant’s claimed invention is directed to an office product that
includes a light, an item holder, and a sensor that detects a change of
presence of an item in the item holder. Spec. ¶ [0004].
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. An office product comprising:
a light;
an item holder, comprising a magnet,
a sensor that detects a change of presence of an item holder; and
a controller that is structured and arranged to operate the light at least
when the sensor detects the change of presence of an item.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Egli US 2002/0093814 A1 Jul. 18, 2002

The following rejections are before us for review:
1. The Examiner rejected claims 1-3, 5, 7-11, 18, 20, and 21 under 35
U.S.C. § 102(b) as being anticipated by Egli.
2. The Examiner rejected claims 4, 6, 12-17, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Egli.

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Application 11/022,751

ISSUE
Does Egli teach Appellant’s claim limitations?

FINDINGS OF FACT (FF)
The following Findings of Fact are supported by a preponderance of
the evidence:
1. Egli teaches that a writing instrument 11 bears a permanent magnet 12
on its rear end, which magnet actuates a reed switch 8 when the
writing instrument 11 is received on a holder 10 of a note board 1 as
shown in Figures 1 and 2 (¶ [0019]).
2. Egli teaches a charging controller 6 (i.e., controller) which provides
energy to an accumulator 7 and ultimately to an EL foil (light source)
4 through the activation of switch 8 (¶ [0019]).
3. Egli further provides an EL-driver 9 that generates the necessary
voltage and frequency to cause the EL-foil 4 to light up (¶ [0019]).
4. Egli also teaches that when the reed switch 8 is actuated by the
magnet 12 of the writing instrument 11 accommodated in the holder
10, the light source 4 is switched off (Egli’s claim 10).
5. Egli teaches a writing surface 3 that is transparent and a light source 4
that illuminates the writing surface 3 (¶¶ [0006], [0019]; Fig. 2),
which is part of the note board 1.
6. The term of “pen” is defined, in pertinent part, as “an instrument for
writing with ink [.]” 1913 edition of Wester Dictionary, at
http://machaut.uchicago.edu/cgi-bin/WEBSTER.sh?WORD=pen (last
visited May 1, 2010).

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Appeal 2009-007437
Application 11/022,751

PRINCIPLES OF LAW
The claim terms should be given their broadest reasonable meaning in
their ordinary usage as such claim terms would be understood by one skilled
in the art by way of definitions and the written description. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
“Inherency . . . may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of circum-
stances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (citations omitted).

ANALYSIS
I. Rejection of claims 1-3, 5, 7-11, 18, and 211 under
35 U.S.C. § 102(b) as being anticipated by Egli

Claims 1-3, 5, 7, 10, 11, 18, and 21
With respect to claim 1, Appellant argues, inter alia, that “EGLI does
not disclose a sensor that detects a change of presence of an item in the item
holder (which comprises a magnet)” (Br. 10). Appellant argues that because
Egli’s magnet 12 is mounted on the writing instrument 11 and moves with,
not relative to the writing instrument 11, there is no discernable change of
presence of the writing instrument 11 in the item holder 1 (Br. 10). We are
not persuaded by Appellant’s argument. Claim 1 requires “a sensor that
detects a change of presence of an item in the item holder.” Egli teaches that

1 The Examiner listed claim 20 as rejected under 35 U.S.C. § 102(b).
However, claim 20 depends from claim 19 which was rejected under 35
U.S.C. § 103(a). Appellant has not contested this issue, and accordingly we
treat this error as inadvertent. Accordingly, we address the rejection of
claim 20 under 35 U.S.C. § 103(a).
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Appeal 2009-007437
Application 11/022,751

the writing instrument 11 bears a permanent magnet 12 on its rear end that
actuates the reed switch 8 when the writing instrument 11 is received by the
holder 10 of the note board 1 as shown in Figure 1 (FF 1). In other words,
the reed switch 8 is a sensor that detects the presence of the writing
instrument 11 because switch 8 is actuated by magnet 12 attached to the
writing instrument 11 when it is placed on the holder 10 (FF 1). Thus,
clearly Egli teaches that a sensor/reed switch 8 detects a change of presence
of an item 11 in the item holder/note board 1.
We are also not persuaded by Appellant’s argument that holder 10
does not comprise a magnet (Br. 11). Egli’s note board 1 (i.e., holder)
comprises a magnet 12 when the writing instrument 11 is attached to the
holder 10 on the note board 1.
Furthermore, Egli teaches a charging controller 6 (i.e., controller)
which provides energy to an accumulator 7 and ultimately to the light source
4 through the activation of the switch 8 (FF 2). Egli further teaches that the
EL-driver 9 generates the necessary voltage and frequency to cause the EL-
foil 4 to light up (FF 3). Egli also teaches that when the reed switch 8 is
actuated by the magnet 12 attached to the writing instrument 11
accommodated in the holder 10, the light source 4 is switched off (FF 4).
Accordingly, the controller 6 through the EL-driver 9 lights up the EL-foil 4
until the writing instrument 11 is placed in the holder 10 which causes the
light source to turn off. Thus, we remain unpersuaded by Appellant’s
argument that Egli does not disclose “a controller that is structured and
arranged to operate the light at least when the sensor detects the change of
presence of the item” (Br. 10).
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Application 11/022,751

Accordingly, we will affirm the Examiner’s rejections of claim 1 as
well as the rejections of claims 5 and 7 because they depend from claim 1
and Appellant did not present any further arguments with respect to these
claims (Br. 12). For the same reasons we will also affirm the rejection of
claim 18 as the Appellant (Br. 17-18) repeats the same arguments as already
addressed with respect to claim 1.
With respect to claim 2, Appellant argues that the writing instrument,
specifically a pencil, as disclosed by Egli does not read on the claimed pen
(Br. 11-12). More specifically, Appellant argues that a rectangle (i.e.,
writing instrument) does not anticipate a square (i.e., pen) (Br. 12). In other
words, the pen is necessarily a writing instrument but a writing instrument is
not necessarily a pen. We are persuaded by Appellant’s argument because
the mere fact that a writing instrument may be a pen is not sufficient to
establish inherency. See Robertson, 169 F.3d at 745.
The Examiner responded that the term “pen” is defined as an
instrument for writing regarded as a means of expression (Ans. 11; Fin. Rej.
8). The customary term of “pen” is defined, in pertinent part, as “[a]n
instrument for writing with ink [.]” (FF 6). Accordingly, we also agree with
Appellant that under the broadest reasonable interpretation a pencil does not
read on the term “pen” as an instrument for writing.
Accordingly, we will reverse the Examiner’s rejection of claim 2 and
also the Examiner’s rejections of claims 3, 10, and 11 which depend from
claim 2. We will also reverse the Examiner’s rejection of claim 21 for
similar reasons.

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Appeal 2009-007437
Application 11/022,751

Claims 8 and 9
Appellant argues (Br. 13-14, 19-20) the time the instrument is in use
by the user (and therefore the amount of time the light is illuminated) is
determined at the time of use. This time period is not “predetermined” as
recited in claims 8 and 9. We are persuaded by Appellant’s argument in that
a predetermined time period could not be predetermined if it varies based on
use. Accordingly we will reverse the Examiner’s rejection of claims 8 and
9.

II. Rejection of claims 4, 6, 12-17, and 19-20 under 35 U.S.C. §
103(a) as being unpatentable over Egli.

We will affirm the Examiner’s rejections of claims 4 and 6 as
Appellant relies on their dependency from claim 1 (Br. 23). We will reverse
the Examiner’s rejection of claims 12-17 and 19-20 for the same reasons as
those articulated supra with respect to claims 8 and 9.

CONCLUSIONS
The Appellant’s argued limitations with respect to claims 1, 4-7, and
18 are taught by Egli. The Appellant’s argued limitations with respect to
claims 2, 3, 8-9, 10-17, 19, 20, and 21 are not taught by Egli.

ORDER
The decision of the Examiner to reject claims 1, 4-7, and 18 is
affirmed. The decision of the Examiner to reject claims, 2, 3, 8-9, 10-17, 19,
20, and 21, is reversed.

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Appeal 2009-007437
Application 11/022,751

AFFIRMED-IN-PART

ELD

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
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