11349390 (B.P.A.I. Sep. 10, 2009)

Ex Parte Levine

Board of Patent Appeals and InterferencesSep 10, 2009

11349390 (B.P.A.I. Sep. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT LEVINE ____________ Appeal 2009-003039 Application 11/349,390 Technology Center 1700 ____________ Decided: September 10, 2009 ____________ Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and CHUNG K. PAK, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 16, 18, and 19 (Final Office Action (“FA”), mailed March 11, 2008). Claim 17, the other claim pending in the above- identified application, was objected to, but was indicated to be allowable if rewritten “in independent form including all of the limitations of the base Appeal 2009-003039 Application 11/349,390 2 claims and any intervening claims” (FA 7). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The subject matter on appeal is directed to a portable power supply unit useful for supplying electrical power to a variety of electronic and electric equipment (Spec. 1, ll. 7-10). This portable power supply unit is illustrated in Figure 2 as shown below: Figure 2 The portable power supply unit has a box (11) for securely containing two standard 6-volt lantern batteries, a cover (12) hinged or attached to the box (11), electrical circuits (15), (16), and (17) on the underside of the cover (12) for electrical connection with the batteries, and rivets (18) for attaching a handle (not shown) to the cover (12) (Spec. 4, ll. 14-25 and Spec. 1, ll. 29-31). Further details of the appealed subject matter are recited in representative claim 16 reproduced from the Claims Appendix to the Appeal Brief (“Br.”), filed May 6, 2008: Appeal 2009-003039 Application 11/349,390 3 16. A portable power supply unit having in combination a. a free-standing supporting rectangular box having a cavity arranged for receiving two six volt lantern batteries[,] b. two six volt lantern batteries removably disposed in said cavity, c. a rectangular cover to securely contain such batteries in said box, d. a removable rigid non-conducting board fitting within said cover and containing at least one embedded circuit on one of the flat sides of the board, said circuits extending around the circumference of the board and being in direct electrical contact with said batteries to provide current to e. a handle attached to said cover, said handle containing a receptacle for accessing the current provided by the batteries through said circuit board. The Examiner relies on the following evidence to establish unpatentability (Examiner’s Answer (“Ans.”), mailed June 25, 2008, 4 and Miscellaneous Communication, mailed July 14, 2008, 1): Jones 3,694,729 Sep. 26, 1972 Todd 3,963,972 Jun. 15, 1976 Chen 5,220,269 Jun. 15, 1993 Arai 6,475,680 B1 Nov. 5, 2002 Appeal 2009-003039 Application 11/349,390 4 Appellant requests review of the Examiner’s rejection of claims 16, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Todd, Jones, Arai and Chen.1 In traversing the Examiner’s § 103 rejection, Appellant contends that one of ordinary skill in the art would not have been led to employ two conventional lantern batteries in the portable power package of the type taught by Todd (App. Br. 3-4). Appellant also contends that one of ordinary skill in the art would not have been led to utilize the printed circuit board for conducting electricity taught by Arai, in lieu of electrical wires, in the portable power package of the type taught by Todd (App. Br. 5-8 and Reply Brief (“Reply Br”), filed August 21, 2008, 1-3). Further, Appellant contends that one of ordinary skill in the art would not have been led to employ the claimed design of a printed circuit useful for batteries in the portable power package of the type taught by Todd (App. Br. 7). ISSUES AND CONCLUSIONS Has Appellant shown reversible error in the Examiner’s determination that one of ordinary skill in the art, armed with the knowledge taught by Jones and Arai, would have been led to employ two lantern batteries, together with an appropriate conventional electrical connection, such as an appropriate printed circuit board design, in the portable power package of the type taught by Todd? On this record, we answer this question in the negative. 1 Appellants have not separately argued the claims on appeal. (See generally App. Br. 8.) Accordingly, for the purpose of this appeal, we limit our discussion to claim 16 pursuant to the requirements of 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2009-003039 Application 11/349,390 5 FINDINGS OF FACT (“FF”) 1. Todd teaches a portable power package as illustrated in Figures 2 and 3 as shown below: The portable power package (10) illustrated in Todd’s Figures 2 and 3 is defined by a rectangular box (12) having a rectangular container portion (18), a cavity (14) in the container portion (18) for receiving an electric battery (16) and a charger (28), a rectangular cover portion (20) attached to Appeal 2009-003039 Application 11/349,390 6 the rectangular container portion (18) via conventional hinges (22), a handle (26) provided on the cover portion (20), and a plurality of conventional jacks (30), which are electrically connected to the battery (16), mounted on the cover portion (20). (See Figs. 2 and 3 with col. 2, l. 49 to col. 3, l. 12 and col. 1, ll. 52-64). 2. Todd exemplifies a “6- or 12-volt conventional storage battery commonly used in the electrical systems of motor vehicles” as the electric battery (16) which is removably disposed in the cavity (14) (col. 1, ll. 55-56 and col. 2, ll. 52-55). 3. Todd teaches (col. 3, ll. 41-53) that: As will be readily seen from this schematic diagram [in Figure 4], each jack 30 is electrically connected in series with an associated one of the switches 34 to form a jack-switch pair. Each of the pairs thus formed is also seen as electrically connected in series with battery 16 and in parallel with the other such pairs. More specifically, wires 42, of which six are illustrated in Fig. 5, connect associated jacks 30 and switches 34 in series and are themselves connected between a pair of wires 44 and 46 connected to respective poles of battery 16. Further, wires 48 and 50 are also connected to the poles of battery 16 and to jacks 38 for connecting the latter in series with battery 16. 4. Todd not only teaches placing the jacks 30 along an edge 32 of the cover portion 20, but also teaches disposing the jacks 30 anywhere desirable and convenient (col. 3, ll. 17-21). 5. Jones teaches a portable battery pack containing several battery units, preferably commercially available 6-volt battery units, with negative and positive poles of the battery units conductively connected in series or Appeal 2009-003039 Application 11/349,390 7 parallel to provide appropriate output voltages at a receptacle 20 (Abstract, col. 3, ll. 19-31, and col. 4, ll. 27-68). 6. Jones teaches that its portable battery pack containing several battery units satisfies the need for providing the appropriate output voltage for power tools operating at different voltages (col. 1, ll. 34-42). 7. Appellants acknowledge that lantern batteries are well known in the art (Spec. 1 and Reply Br. 1). 8. Arai teaches connecting a printed circuit board with microcomputer chips to a battery assembly comprising several lithium secondary batteries to control the charge-discharge operation of the battery assembly, i.e., “a function to terminate the charge-discharge operations of the battery assembly when any one of the voltage and the current of at least one of the batteries [] went out of a designated range” (col. 15, l. 60 to col. 16, l. 30). 9. Arai teaches that the printed circuit board is made of a flame retardant board to improve the safety of the battery assembly (col. 16, ll. 30-43). 10. Appellant does not dispute the Examiner’s determination that it would have been obvious to provide the receptacles taught by Chen in the handle of the portable power package suggested by Todd, Jones and Arai (Compare Ans. 7 with App. Br. 7). PRINCIPLES OF LAW It is well settled that the United States Patent and Trademark Office (PTO) is obligated to give claim terms their broadest reasonable interpretation, taking into account any enlightenment by way of definitions or otherwise found in the specification. In re ICON Health and Fitness, Inc., Appeal 2009-003039 Application 11/349,390 8 496 F.3d 1374, 1378-79 (Fed. Cir. 2007) (“[T]he PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”) (Citation omitted); In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (“[T]he PTO gives a disputed claim term its broadest reasonable interpretation during patent prosecution.”). Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). This longstanding broadest reasonable interpretation principle is based on the notion that “during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). That is, a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application. “Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” Zletz, 893 F.2d at 322. “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” ICON Health, 496 F.3d at 1379. The transitional term “comprising” in the claims on appeal is interpreted as permitting the inclusion of elements and/or steps, which are not specifically claimed. In re Baxter, 656 F.2d 679, 686 (CCPA 1981). Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a determination of: (1) the scope and content of the prior art; (2) the differences between the claimed subject matter and the prior art; (3) the level Appeal 2009-003039 Application 11/349,390 9 of ordinary skill in the art; and (4) secondary considerations, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). As stated in KSR Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 418 (2007): [A]nalysis [of whether the subject matter of a claim would have been prima facie obvious] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. In re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom . . . .”). The common knowledge attributable to one of ordinary skill in the art includes what was admittedly known in the art by Appellants at the time of the invention. See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The admitted prior art in applicant’s Specification may be used in determining the patentability of a claimed invention.); see also In re Davis, 305 F.2d 501, 503 (CCPA 1962). KSR also instructs that: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product . . . of ordinary skill and common sense. KSR, 550 U.S. at 421. Appeal 2009-003039 Application 11/349,390 10 “[W]hen a patent ‘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.” Id. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). According to 37 C.F.R. § 41.37(c) (1)(ix) (2007): Evidence appendix. An appendix containing copies of any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examiner and relied upon by appellant in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner. . . . On appeal to this Board, Appellants must show that the Examiner reversibly erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii). ANALYSES As indicated supra, Todd teaches a portable power package having a free-standing supporting rectangular box having a cavity for receiving an electrical battery, a rectangular cover to securely contain such battery in the box, appropriate wiring in the cover in direct electrical contact with the battery to provide electric current to jacks corresponding to the claimed receptacles, and a handle attached to the cover. Todd teaches that jacks corresponding to the claimed receptacles can be placed in any desired and convenient locations, inclusive of the handle of the portable power package. Indeed, Appellants do not dispute the Examiner’s determination that it would have been obvious to place receptacles in the handle of Todd’s portable power package. Appeal 2009-003039 Application 11/349,390 11 Thus, as indicated supra, the dispositive question raised is: Has Appellant identified reversible error in the Examiner’s determination that one of ordinary skill in the art, armed with the knowledge taught by Jones and Arai, would have been led to employ two lantern batteries, together with an appropriate conventional electrical connection, such as an appropriate printed circuit board design, for the batteries and jacks in the portable power package of the type taught by Todd? On this record, we answer this question in the negative for the reasons which follow. As to the claimed two lantern batteries, contrary to Appellant’s arguments at pages 3 and 4 of the Brief, Todd is not limited to using a 6-volt or a 12-volt car battery in its portable power package. Todd teaches employing an electrical battery in general, inclusive of any conventional 6-volt and 12-volt batteries. Although Todd does not mention employing two conventional batteries in the shape of lantern, Jones teaches the benefit of employing two or more 6-volt batteries for the purpose of providing appropriate output voltages for power tools operating at different voltages. Thus, one of ordinary skill in the art looking to make a portable power supply unit useful for various purposes would have been led to employ two or more conventional batteries, including two or more conventional lantern- shape batteries, rather than a single battery, in the portable power supply unit of the type taught by Todd. This is especially true in this situation since Appellant acknowledges that 6-volt lantern batteries were known at the time of the invention. In reaching this determination, we have considered Appellant’s arguments at pages 3 and 4 of the Appeal Brief that Todd and Jones teach rechargeable batteries or car batteries which are different from carbon-zinc Appeal 2009-003039 Application 11/349,390 12 batteries used in Appellant’s device. However, the claims on appeal do not recite such batteries. Nor has Appellant described the claimed lantern batteries as being limited to carbon-zinc batteries in the Specification. Thus, this argument is not convincing. Even if the claimed lantern batteries are limited to conventional carbon-zinc batteries, our conclusion would not be altered. From the collective teachings of Todd and Jones, one of ordinary skill in the art would have recognized that the benefit of using two or more batteries in a power supply unit, i.e., providing appropriate output voltages for given power tools or equipment, is applicable to either conventional rechargeable batteries or non-rechargeable (replaceable) batteries including conventional carbon-zinc based lantern batteries. Thus, as indicated supra, we determine that one of ordinary skill in the art would have been led to employ any two or more conventional batteries, including non-rechargeable conventional carbon-zinc based lantern batteries, in the portable power package of the type taught by Todd, with a reasonable expectation of successfully using them as a power source and obtaining the benefit taught by Jones. As to the claimed printed circuit board, Arai teaches the advantage of using a printed circuit board for electrical connection in terms of safety and control of current flow from several batteries. The other advantages of a printed circuit board over electrical wires, such as compactness, would have been readily apparent from simple observation by those skilled in the art. Thus, we concur with the Examiner that one of ordinary skill in the art would have been led to employ an appropriately designed printed circuit board (corresponding to the electrical wiring suggested by Todd and Jones) in the cover of the portable power package of the type suggested by Todd Appeal 2009-003039 Application 11/349,390 13 and Jones, with a reasonable expectation of successfully connecting the batteries and jacks in the manner suggested by Todd and Jones and successfully obtaining the advantages indicated above. In reaching this determination, we have also considered Appellant’s arguments at pages 5 through 7 of the Appeal Brief and pages 1 through 3 of the Reply Brief that one of ordinary skill in the art would not have been led to employ the claimed circuit board since the claimed lantern batteries do not suffer from the fire or explosion hazard associated with the lithium secondary batteries mentioned in Arai. However, the Examiner proffers a reasonable scientific basis to support his reasoning at page 9 of the Answer. Specifically, the Examiner reasons that: There is always a danger of a battery short-circuiting, which can cause fire or explosion especially depending on the application in which the battery is being used. Batteries use a chemical reaction to produce electricity. How can such a reaction take place without a fire hazard or danger of explosion? As a rebuttal, Appellant relies on Radio Shack-On line Battery Guidebook at page 1 of the Reply Brief. However, it is not part of the record. It was not entered into the record by the Examiner. No copy of the Guidebook was submitted in the Evidence Section of the Appeal Brief. Thus, we decline to consider the Guidebook in question. In any event, as indicated supra, at the time of the invention, there were other benefits which would have prompted one of ordinary skill in the art to employ the claimed printed circuit board, in lieu of electrical wires, as an electrical conductor in the portable power package suggested by Todd and Jones. Appeal 2009-003039 Application 11/349,390 14 It follows that Appellant has not identified any reversible error in the Examiner’s determination that one of ordinary skill in the art, armed with the knowledge of Todd, Jones, Arai, and Chen, would have been led to the claimed portable power supply unit.2 DECISION In view of the foregoing, we sustain the rejection of claims 16, 18, and 19 under 35 U.S.C. § 103(a). Accordingly, the decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v). AFFIRMED psb BERND W. SANDT 900 DEERFIELD COURT MIDLAND, MI 48640 2 Appellant refers to a commercial version of the claimed power unit called “Powerzall” which is illustrated in the advertisements, Exhibits E and F, attached to the Appeal Brief (e.g., App. Br. 2-3). However, Appellant does not rely on these advertisements to show that the claimed invention is commercially successful or satisfies a long-felt need. These advertisements are relevant only in understanding the claimed subject matter.