Ex Parte Lee

Board of Patent Appeals and Interferences

Mar 23, 2011

09735697 (B.P.A.I. Mar. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte NOEL LEE
________________

Appeal 2010-002446
Application 09/735,697
Technology Center 2800
____________________________

Before ALLEN R. MACDONALD, CARLA M. KRIVAK, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.
DECISION ON APPEAL1

Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 49-62. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing was held on March 10, 2011. We affirm.

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. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-002446
Application 09/735,697

2
STATEMENT OF THE CASE
Introduction
Appellant claims a structure having electric power outlets that are
identified by different colored areas. Appellant also claims a method for
using a power outlet strip that assigns “separate and distinct colored area[s]
proximate” to each outlet.2 Illustrative independent claims 49 and 58 read as
follows:
49. An AC electrical power distribution system comprising:

a housing having a plurality of substantially identical AC power
distribution outlets for connecting AC electrical power to a plurality
of devices,

said housing having a plurality of colored areas for selectively
identifying each outlet of said power distribution outlets,

each colored area of said colored areas on said housing being different
in color from any other such colored area, and

each of said colored areas assigned to a different device.

58. A method for preventing confusion in users of a multiple outlet
power strip having several identical outlets for providing power to a
plurality of devices, comprising the steps of:

assigning a separate and distinct colored area proximate to each outlet
for selectively identifying each outlet of said power strip,

assigning each colored area a different color from any other such
colored area; and

providing colored indicia corresponding to the colors of said colored
areas for identifying devices assigned to each colored area.

2 See generally Abstract; Spec. 4:17-19; Fig. 2.
Appeal 2010-002446
Application 09/735,697

3
Rejections on Appeal
The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 49, 52, and 56-62 as unpatentable over Dwight (US Des.
401,220), and Barna (US 5,775,935) (Final Action 7-8);
2. Claims 50, 51, 54, and 55 as unpatentable over Dwight, Barna, and
Liner (US 5,708,554) (Final Action 8-9); and
3. Claim 53 as unpatentable over Dwight, Barna, and Crane (US
5,899,761) (Final Action 9-10).
Appellant’s Contentions3
The independent claims 49 and 58 are argued to be patentable over
Dwight and Barna (App. Br. 10-18).4 Appellant “submits that the Examiner
has (a) . . . failed to make a prima facie case of obviousness by not providing
sufficient motivation to combine the Dwight and Barna references, (b)
engaged in improper hindsight when combining the Dwight and Barna
references and (c) improperly discounted secondary consideration evidence”
(Reply Br. 2).5

3 Arguments that Appellant did not make in filed briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii). Whereas, the arguments
permitted during oral hearings are those relied upon in the briefs unless upon
a showing of good cause a new argument is permitted based upon a recent
relevant Board or Federal Circuit decision – no exception was requested for
this appeal. 37 C.F.R. § 41.47(e).
4 Appellant contends the dependent claims do not stand or fall together
(App. Br. 31). However, Appellant merely points out what the dependent
claims recite (App. Br. 31-33), which statements are not considered
arguments for separate patentability. 37 C.F.R. § 41.37(c)(1)(vii).
5 Citing the Manual of Patent Examining Procedure (MPEP) § 707.02, the
Appellant asserts further arguments to apparently contend that this
application should be treated as “special” (App. Br. 26-31). Designating an
application “special” is a discretionary matter decided by the Supervisory
Appeal 2010-002446
Application 09/735,697

4
Issue on Appeal
The pivotal issue raised by Appellant’s arguments is whether the
Examiner erred under 35 U.S.C. § 103(a) in rejecting claims 49 and 58 as
being unpatentable over Dwight and Barna?
PRINCIPLES OF LAW
The Supreme Court has held that 35 U.S.C. § 103 forbids issuance of
a patent for claimed subject matter that “‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(citation omitted). The Court also explained that “when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 416 (citation omitted).
ANALYSIS
Obviousness Rejection Based on Dwight and Barna
With respect to the independent claims 49 and 58, the Examiner finds
the Dwight design patent teaches “a design . . . disclosing a power strip
housing having a plurality of colored areas (different hatching indicating
different colors)” (Final Action 7). Despite the Appellant’s argument that
Dwight in being a design patent lacks written description (Reply Br. 3), the
Examiner’s consideration of Dwight drawings is admissible because it long

Primary Examiner (MPEP § 707.02). A denial may be remediable by
petition to the Director, but is not a matter within the Board’s jurisdiction.
In re Mindick, 371 F.2d 892, 894 (CCPA 1967). Accordingly, those
arguments are not considered.
Appeal 2010-002446
Application 09/735,697

5
has been held that drawings can anticipate or make obvious a claimed
invention. See Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928).
The Dwight drawings show different hatching, i.e., symbolic lining,
on ring shaped surfaces, while all other shown surfaces are marked with
distinguishing stippling (see, e.g., Dwight, Figs. 1 and 5). MPEP § 1503.02
V, which does not have the force of law or regulation, does indicate
practices for (i) showing color by marking drawn structure surfaces with
symbolic lining in accordance with MPEP § 608.02, and (ii) identifying
drawings as being lined for color with a statement that “should be inserted in
the [design patent] specification” to avoid possible confusion. The Dwight
patent does not include such a statement. Absence of the statement we find
to be harmless because the record is silent as to there being consequent
confusion. For example, the Appellant has repeatedly acknowledged that
the “Dwight apparatus . . . comprises thin colored rings . . .” (App. Br. 19;
Reply Brief 3 (emphasis added)). Further, the symbolic lines shown on
Dwight’s ring structure surfaces (see Fig. 1, a perspective view, and Fig. 5, a
right side elevation view) comply with the practice set out in MPEP §
608.02 for showing different colors. Accordingly, we agree with and adopt
the Examiner’s findings from Dwight’s drawings set out supra.
From our review of Barna, we also agree with and adopt the
Examiner’s findings as to teachings from that reference (Final Action 7-8).
Exemplary of Appellant’s contentions is the argument that “[e]ven if
the concept of color-coding, in general, has been known, the concept of solid
color-coding has never been applied to substantially identical outlets of a
plug strip apparatus until the present invention” (App. Br. 14). First, the
Examiner and we find Barna teaches color-coding (Final Action 7-8), and,
Appeal 2010-002446
Application 09/735,697

6
therefore, the concept is old. Second, the Examiner and we agree that the
appealed claims nowhere recite “solid color-coding” (Ans. 6). Finally, we
find the Examiner’s reasoning for combining references to be rational
despite Appellant’s allusion to some requirement for Appellant’s
“invention,” which we understand is asserted to support an argument that the
Examiner applied improper hindsight. More specifically, Appellant argues
that “the best defense against the subtle but powerful attraction of a
hindsight-based obviousness analysis is rigorous application of the
requirement for a showing of the teaching or motivation to combine prior art
references” (Reply Br. 4 (citation omitted)). The Examiner’s reasoning for
combining Dwight and Barna is “[t]he motivation . . . to provide an
indication as to which device is not plugged into the power strip ([Barna]
column 6, lines 27, 28)” (Final Action 8).6 We find from the record,
including the cited Barna disclosures, that the Examiner’s explained
combination relies on rational utilization of prior art elements known in the
field to yield a predictable result, and, as such, the combination is obvious.
KSR, 550 U.S. at 416, 417.
Appellant further filed declarations under 37 C.F.R. §§ 1.131(a) and
1.132 setting out testimony concerning a date of conception, asserted
commercial success, and psychological significance of solidly colored
surfaces of high chroma. We reviewed these declarations, and also reviewed
the Examiner’s described considerations of the declarations, findings, and

6 The cited Barna disclosure reads: “By entirely surrounding a connection
port with a color coded section or item[] a user may more readily identify
the connection in which a connection cable should be inserted” (Col. 6, ll.
27-28).
Appeal 2010-002446
Application 09/735,697

7
identified reasoning for why they are not persuasive (Ans. 8-12). We agree
with and adopt the Examiner’s findings and conclusions.
For the forgoing reasons we sustain the rejection of independent
claims 49 and 58. We also sustain the rejections of all the respective
dependent claims 52, 56, 57, and 59-62 that are not separately argued.
Claims 50, 51, and 53-55
Appellant contends that claims 50, 51, and 53-55 are patentable
because of the above addressed patentability arguments for independent base
claim 49, without further argument (App. Br. 21-26, 31-33). Consequently
for the reasons explained supra, we sustain the rejections of these claims.
CONCLUSIONS
1. The Examiner did not err in rejecting claims 49, 52, and 56-62, under
35 U.S.C. § 103(a), as being unpatentable over Dwight and Barna.
2. The Examiner did not err in rejecting claims 50, 51, 54, and 55, under
35 U.S.C. § 103(a), as being unpatentable over Dwight, Barna, and
Liner.
3. The Examiner did not err in rejecting claim 53, under 35 U.S.C. §
103(a), as being unpatentable over Dwight, Barna, and Crane.
4. Claims 49-62 are not patentable.
DECISION
The Examiner’s rejections of claims 49-62 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

Appeal 2010-002446
Application 09/735,697

8

gvw

LaRIVIERE, GRUBMAN & PAYNE, LLP
P.O. BOX 3140
MONTEREY, CA 93942