10814565 (B.P.A.I. Feb. 28, 2011)

Ex Parte Lin

Board of Patent Appeals and InterferencesFeb 28, 2011

10814565 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/814,565 03/31/2004 Arlo H. T. Lin CFP-1842-1 (15722/471) 6890 69638 7590 02/28/2011 KAMRATH & ASSOCIATES P.A. 4825 OLSON MEMORIAL HIGHWAY SUITE 245 GOLDEN VALLEY, MN 55422 EXAMINER BASICHAS, ALFRED ART UNIT PAPER NUMBER 3743 MAIL DATE DELIVERY MODE 02/28/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ARLO H. T. LIN ____________________ Appeal 2009-011141 Application 10/814,565 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, JOHN C. KERINS, and KEN B. BARRETT, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 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 2009-011141 Application 10/814,565 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 2- 13. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a cigarette lighter with an alarm. Claim 13, reproduced below, is illustrative of the claimed subject matter: 13. A cigarette lighter including a reservoir for storing fuel, a head formed on the reservoir, a valve for releasing the fuel from the reservoir, a nozzle put in the head for spraying the fuel from the valve, an ignition device for igniting the fuel sprayed from the nozzle into a flame, a cover for covering the head and an alarm for providing only one round of an audible message every time the cover is lifted, with the alarm including a speaker providing the only one round of the audible message, with the cover being lifted for an ignition time to ignite the fuel and to use the flame, with the only one round of the audible message being of a duration less than the ignition time. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Semenko Chen US 3,816,057 US 6,527,542 Jun. 11, 1974 Mar. 4, 2003 Kuriyama JP 11051391 Aug. 1, 1997 REJECTIONS Claims 2 and 11-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kuriyama and Semenko. Ans. 3. Claims 3-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kuriyama, Semenko, and Chen. Ans. 4. Appeal 2009-011141 Application 10/814,565 3 OPINION We have carefully reviewed the rejections on appeal in light of the arguments of the Appellant and the Examiner. As a result of this review, we have determined that the applied prior art does not establish the prima facie obviousness of the claims on appeal. Therefore the rejections on appeal are reversed. Our reasons follow. We agree with the Examiner that Kuriyama discloses a lighter with a sort of visual alarm of LEDs 23 for providing a flashing light show every time the lighter cover is lifted. See p. 15, l. 13- p. 16, l. 17. The LED device 23 remains on until the cover is closed. We note that the Examiner construes the actuation of the LED device, which remains on as long as the cover remains off the lighter, as providing only a single round of messaging when the cover is lifted. We do not construe it as such, since it is merely a set of lights actuated by a switch. A continuous light cannot be construed as a single round of a message. It is merely a continuous signal. We also acknowledge that Kuriyama discloses that it is important to provide a decoration rich in variety so that the consumer does not become tired of the lighter decoration. P. 4, l. 6-17 and p. 5, ll. 17-19. We further agree with the Examiner that Semenko discloses a cigarette lighter with information or health warnings displayed through the wall of the cigarette lighter when the cigarette lighter is actuated. Col. 1, ll. 22-27. Semenko further discloses that the warnings can include an audio message. Col. 1, ll. 40-43. However, we do not agree with the Examiner that the combined teachings of Kuriyama and Semenko would have rendered it obvious to construct a lighter that provides only one round of messaging every time the cover is lifted. The Examiner states that this part of the claimed subject Appeal 2009-011141 Application 10/814,565 4 matter would have been obvious as a design choice based on “esthetic appeal.” Ans. 4. With regard to this rationale of the Examiner, the predecessor of our reviewing court has stated that design choice is inapplicable in a rejection where the use of the claimed feature solves a stated problem. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)(use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art”); In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)(finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art.). Appellant’s specification makes clear that playing the recorded message only one time every time the lighter cover is lifted solves the stated problem of preventing annoyance on the part of the user. Spec. 1. Since this feature of Appellant’s independent claims solves the stated problem that Appellant raises in the Specification, it is inappropriate for the Examiner to dismiss this portion of the claim as a simple matter of design choice. The cited reference to Chen does not ameliorate the problem we have with the rejection based on Kuriyama and Semenko. Accordingly, the rejection of all claims on appeal is reversed. DECISION The rejection of claims 2 and 11-13 under 35 U.S.C. § 103(a) is reversed. The rejection of claims 3-9 under 35 U.S.C. § 103(a) is reversed. REVERSED Appeal 2009-011141 Application 10/814,565 5 nlk KAMRATH & ASSOCIATES P.A. 4825 OLSON MEMORIAL HIGHWAY SUITE 245 GOLDEN VALLEY MN 55422