Ex Parte MATLOWDownload PDFPatent Trials and Appeals BoardApr 15, 201914889864 - (D) (P.T.A.B. Apr. 15, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/889,864 11/09/2015 44696 7590 Dr. Mark M. Friedman Moshe Aviv Tower, 54th floor 7 Jabotinsky St. Ramat Gan, 5252007 ISRAEL 04/17/2019 FIRST NAMED INVENTOR Mell MATLOW 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5743/9 1340 EXAMINER DSOUZA, JOSEPH FRANCIS A ART UNIT PAPER NUMBER 2632 NOTIFICATION DATE DELIVERY MODE 04/17/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patents@friedpat.com friedpat.uspto@gmail.com rivka_f@friedpat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MELL MATLOW Appeal2018-004977 Application 14/889,864 Technology Center 2600 Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and JEREMY J. CURCURI, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 2 and 4 which constitute all claims pending in this application. 1 Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant identifies the real party in interest as himself. App. Br. 2. Appeal2018-004977 Application 14/889,864 Introduction According to Appellant, the claimed subject matter relates to a tire pressure maintenance system (TPMS) including a sensor installed in the interior region of the tire and a battery mounted on the exterior region of the tire to identify tire pressure, and accurately self-inflate the tire to optimal pressure. Spec. 5:12-20. In particular, the battery is a tubular dry cell battery (120) configured for deployment on a valve stem (104) with wires (110, 112) that pass through the valve stem base (102) into an interior region of the tire to provide electric communication between the battery and the TPMS sensor deployed in the interior region of the tire. Id. at 5:21---6:3, Figs. 2--4. Representative Claim Claims 2 and 4 are independent. Independent claim 2 is representative, and is reproduced below with limitation at issue italicized: Claim 2. A Tire Pressure Maintenance System (TPMS) with an externally mounted battery for use with a wheel with a tire mounted thereon, the TPMS comprising: (a) a valve stem configured to accommodate deployment of an externally mounted tubular battery; (b) a tubular battery having an axial through bore, said tubular battery having a mechanical engagement arrangement configured for releasable attachment of said tubular battery to said valve stem when said tubular battery is deployed on said valve stem with at least a portion of said valve stem deployed within said axial through bore; and ( c) wires that pass through a valve stem base into an interior region defined by a combination of the tire mounted on the wheel so as to provide electric communication between said tubular battery and a TPMS sensor deployed in said interior region. 2 Appeal2018-004977 Application 14/889,864 Widner Romero Zhou Prior Art Relied Upon us 5,853,020 US 2003/0113614 Al US 2012/0218095 Al Rejections on Appeal Dec. 29, 1998 June 19, 2003 Aug.30,2012 Claim 2 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Zhou, Romero, and Widner. Final Act. 4--6. Claim 4 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Romero and Zhou. Id. at 6-8. 2 ANALYSIS 3 "Section I03(a) forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.'" KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) ("KSR"). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called 2 The Examiner inadvertently referred to claim 2 instead of claim 4. Final Act. 6. We treat this typographical error as harmless error. 3 We refer to the Final Office Action (mailed May 18, 2017) ("Final Act."), the Appeal Brief (filed October 16, 2017) ("App. Br."), the Examiner's Answer (mailed February 6, 2018) ("Ans."), and the Reply Brief (filed March 28, 2018) ("Reply Br.") for the respective details. 3 Appeal2018-004977 Application 14/889,864 secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Appellant argues that the Examiner erred in rejecting claims 2 and 4 over the combination of Zhou and Romero because the proposed combination of references does not teach or suggest "a tubular battery having ... a mechanical engagement arrangement configured for releasable attachment of said tubular battery to said valve stem when said tubular battery is deployed on said valve stem with at least a portion of said valve stem deployed within said axial through bore," as recited in independent claim 2. App. Br. 7-12. In particular, Appellant argues that the ordinarily- skilled artisan would not be motivated to combine Zhou' s battery deployed in a sensor module remotely connected to valve stems/wheel bolt by means of hoses with Romero's tubular battery having a collapsing vent system. Id. 9 ( citing Zhou Fig. 2, Romero, Fig. 5). According to Appellant, the proposed combination would at best result in Romero's tubular battery using Zhou' s threaded cap as the mechanical engagement arrangement configured for releasable attachment, as opposed to the claimed tubular battery using an axial through bore in which a valve stem is deployed. Reply Br. 2-3. This argument is persuasive. At the outset, we note the Examiner finds the following: [Zhou discloses] a battery (module assembly, para. 39; para. 37; [per para. 37, module assembly includes battery]) said battery having a mechanical engagement arrangement configured for releasable attachment of said battery to said valve stem (Fig. 5, battery 506; [0037] states battery 506 is replaceable which implies it is releasable. Threaded cap 508 allows for releasing and replacing the battery) when said battery is deployed on said valve stem deployed on said valve stem (a. bracket and module assembly is mounted on one of the wheel bolts with two hoses 4 Appeal2018-004977 Application 14/889,864 each connecting one of the two module air outlets to respective inner and outer tire valve stems, para. 39; fig. 7). Final Act. 4. Zhou does not disclose (1) a tubular battery having an axial through bore with at least a portion of said valve stem deployed within said axial through bore and (2) wires that pass through a valve stem base into an interior region defined by a combination of the tire mounted on the wheel; the devices deployed in said interior region. Id. at 5. Id. Romero discloses a tubular battery having an axial through bore (abstract; inner wall 10 surrounds a hollow core 20, para. 21; the inner tube, outer tube, and end plates form a sealed, hermetic annular space in which the battery components are held, abstract) at least a portion of said valve stem deployed within said axial through bore (Fig. 5, valve stem interpreted as part shown within inner bore shown as 32, 34, 36). According to the Examiner, the proposed combination of references would have produced a TPMS with a tubular battery allowing a more compact, a more aesthetically pleasing, and a less disruptive arrangement, which is more marketable. Id. Notwithstanding the lack of evidence on this record to support this latter assertion, we agree with Appellant that even if the cited portions of Zhou and Romero were combined in the manner proposed by the Examiner, the resulting combination would still fail to remedy the noted deficiencies acknowledged by the Examiner. Zhou discloses a battery ( 506) secured in place in a TPMS by a threading cap mechanism (508). Zhou, Figure 5. Further, Romero discloses a tubular battery having a hollow core (20), an inner collapsing tube (10) and/or a valve core barrel (30). Romero, Fig. 3. As persuasively argued by Appellant, although Romero's battery's hollow core teaches the claimed axial through bore, the collapsing tube and/or the valve core barrel are part 5 Appeal2018-004977 Application 14/889,864 of the battery, and therefore do not teach the claimed stem valve, which can be deployed into the axial through bore for releasable attachment. App. Br. 7-8. We further agree with Appellant that Zhou's threaded cap does not teach the claimed releasable attachment set forth above. Id. at 9. Therefore, as persuasively argued by Appellant, the proposed combination would result in the TPMS with a tubular battery being held in place with a threaded cap as the releasable attachment, as opposed to a valve stem ( external to the battery) that can be deployed through the axial through bore of the tubular battery for reliable attachment. Accordingly, we agree with Appellant that the proposed combination falls short of teaching or suggesting the disputed limitations. Because Appellant has shown at least one reversible error in the rejection of claim 2, we need not reach Appellant's remaining arguments. Accordingly, we do not sustain the Examiner's obviousness rejection of independent claim 2. Likewise, we do not sustain the rejection of independent claim 4, which recites the disputed limitations. DECISION For the above reasons, we reverse the obviousness rejections of claims 2 and 4. REVERSED 6 Copy with citationCopy as parenthetical citation