Ex Parte MelnikDownload PDFBoard of Patent Appeals and InterferencesSep 14, 201111104793 (B.P.A.I. Sep. 14, 2011) Copy Citation 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. 11/104,793 04/13/2005 Michael Alan Melnik MMB-10902/08 9421 25006 7590 09/15/2011 GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C PO BOX 7021 TROY, MI 48007-7021 EXAMINER SHALLENBERGER, JULIE A ART UNIT PAPER NUMBER 2885 MAIL DATE DELIVERY MODE 09/15/2011 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 MICHAEL ALAN MELNIK ____________________ Appeal 2010-003874 Application 11/104,7931 Technology Center 2800 ____________________ Before JAY P. LUCAS, DEBRA K. STEPHENS, and JAMES, R. HUGHES, Administrative Patent Judges. LUCAS, Administrative Patent Judge. DECISION ON APPEAL 1 Application was filed April 13, 2005. Appellant claims the benefit under 35 U.S.C. § 119 of provisional application 60/561,695 filed 4/13/2004. The real party in interest is the inventor, Michael Alan Melnik. Appeal 2010-003874 Application 11/104,793 2 STATEMENT OF THE CASE Appellant appeals from a final rejection of claims 13 to 31 under authority of 35 U.S.C. § 134(a). Claims 1 to 12 are cancelled. The Board of Patent Appeals and Interferences (Board) has jurisdiction under 35 U.S.C. § 6(b). The Oral Hearing scheduled on September 15, 2011 was waived. We affirm the rejections. Appellant’s invention relates to a safety module that attaches to a flashlight. In the words of Appellant: It is known to use flashlights or lanterns to illuminate pathways when walking at night. However, when walking in urban areas where there is traffic approaching from behind the user, a flashlight provides no indication of the presence of the user. Accordingly, it would be advantageous to provide a module for use with a flashlight which is easily seen from all directions to warn approaching vehicles. . . . . The invention is directed to a self-contained module having a cover and inner module containing two groups of lights. One group is a pair of lights which are directed through a top end of a covering. The group of lights is formed in a ring and is visible through a cylindrical sidewall of the covering. A pushbutton switch is operable to direct a control circuit to display the lights in preselected modes. The electronic module is also includes an electronic display, a clock and temperature device. Additionally, the module can be provided with a transceiver or cell phone type device and a GPS [(Global Positioning System)] activated by an emergency switch. The module is mounted to a flashlight with an adapter. The module contains a power source and may be used separately from the flashlight. (Spec 1, l. 12 to Spec. 2, l. 8). Appeal 2010-003874 Application 11/104,793 3 The following illustrates the claims on appeal: 13. A safety module adopted for mounting to a flashlight, said safety module comprising: a housing having a transparent end surface and a transparent side surface, at least one light mounted to an inner module within the housing to be visible through the end surface when energized, at least one second light source mounted to an inner module and being visible through said transparent side surface when energized; said housing having a mounting portion for attaching to an end portion of a flashlight having a flashlight housing containing batteries; a switch operable to selectively actuate said first and second lights within said housing of the safety module; a battery contained within said housing of the safety module; and a control circuit connected to said switch to energize said lights according to one of a plurality of predetermined modes. 17. A safety module comprising: a housing having a transparent end surface and a transparent side surface; at least one light mounted to an inner module within said housing, said at least one light visible through said transparent end surface when energized; at least one second light mounted to an inner module, said at least one second light visible through transparent side surface; said housing having a mounting portion for rigidly attaching to an end portion of a flashlight having a flashlight housing containing batteries; a switch operable to selectively actuate said first and second lights within said housing of the safety module; a control circuit operable to activate the at least one light to provide a warning signal; and a transceiver operable to place emergency calls. Appeal 2010-003874 Application 11/104,793 4 The prior art relied upon by the Examiner in rejecting the claims on appeal is: Isacson U.S. 5,318,177 June 7, 1994 Watterson U.S. 2002/0149928 A1 Oct. 17, 2002 Ram U.S. 2003/0124975 A1 July 3, 2003 Hrabal U.S. 6,616,300 B1 Sept. 9, 2003 REJECTIONS The Examiner rejects the claims as follows: R1: Claims 13 and 16 stand rejected under 35 U.S.C. § 102(b) for being anticipated by Watterson. R2: Claim 14 stands rejected under 35 U.S.C. § 103(a) for being obvious over Watterson in view of Hrabal. R3: Claim 15 stands rejected under 35 U.S.C. § 103(a) for being obvious over Watterson in view of Isacson. R4: Claims 17 to 19, 21 to 24, 26, and 27 stand rejected under 35 U.S.C. § 103(a) for being obvious over Isacson in view of Hrabal. R5: Claim 25 stands rejected under 35 U.S.C. § 103(a) for being obvious over Isacson in view of Hrabal and Ram. R6: Claim 20 stands rejected under 35 U.S.C. § 103(a) for being obvious over Isacson in view of Hrabal and Watterson. R7: Claims 28, 29, and 31 stands rejected under 35 U.S.C. § 103(a) for being obvious over Watterson in view of Hrabal. R8: Claim 30 stands rejected under 35 U.S.C. § 103(a) for being obvious over Watterson in view of Hrabal and Isacson. Appeal 2010-003874 Application 11/104,793 5 We will review the rejections in the order argued, and as grouped in the Briefs. We only consider those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUE The issue is whether Appellant has shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns on whether the references teach the mounting portion and other elements as claimed. FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. Appellant has invented a self-powered module that contains two groups of lights, on the end and around the periphery, as well as other conveniences such as a cell phone receiver or a GPS. (Spec. 1, l. 18 to Spec. 2, l. 8). The module is design to mount to a conventional flashlight. (Spec. 3, top). Appeal 2010-003874 Application 11/104,793 6 2. Appellant’s figure 1 illustrates the flashlight with the module. Figure 1 is reproduced below: Figure 1 is a perspective side view of a module adapter and a conventional flashlight. 3. Watterson teaches a flashlight with a module containing peripheral lights. Watterson’s figure 2 is reproduced below: Appeal 2010-003874 Application 11/104,793 7 Figure 2 illustrates an exploded view of the exemplary embodiment of the invention. PRINCIPLES OF LAW Appellant has the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.â€) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). “What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.†KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.†Id. at 417. Appeal 2010-003874 Application 11/104,793 8 ANALYSIS Appellant presents three major arguments in the Brief, corresponding to Rejections R1, R4, and R7 as indicated above. (App. Br. 3, middle). We will consider the arguments seriatim. As the Rejections R2, R3, R5, R6 and R8 were not argued, they are affirmed pro forma. Arguments with respect to the rejection of claims 13 and 16 under 35 U.S.C. § 102(b) [R1] The Examiner has rejected the noted claims for being anticipated by Watterson. Appellant argues that representative claim 13 requires: “a mounting portion for attaching to an end portion of a flashlight having a flashlight housing containing batteries.†(App. Br. 4, middle). The Examiner has cited Watterson, item #30. Watterson teaches that hanger 30 is a resilient cord of metal, plastic, rubber or another material attached to the tail module that allows the flashlight to be suspended on a hook. (Watterson, ¶ 30). We note that Watterson’s flashlight housing contains batteries, #60. (See Watterson, Fig. 2). In view of this teaching, we do not find error with the rejection in this regard. Arguments with respect to the rejection of claims 17 to 19 and 21 to 24 under 35 U.S.C. § 103(a) [R4] The Examiner has rejected the noted claims for being obvious over Isacson in view of Hrabal, indicating “[i]t would have been obvious to one Appeal 2010-003874 Application 11/104,793 9 of ordinary skill in the art at the time the invention was made to use the transceiver unit taught by Hrabal in the device of Isacson in order to enhance the safety features of the lighting device.†(Ans. 7, middle). Although the Appellant has presented an extended discussion of the KSR case (see citation above) (App. Br. 5 to 7), the Appellant applies the legal guidance to the instant appeal only as follows: “[t]his test is not met by the subject rejection in that the prior art of record fails to provide, explicitly or inherently, any teaching, suggestion, or motivation to combine the references so as to lead a person having ordinary skill in the art to the instantly claimed invention.†(App. Br. 6, bottom to 7, top). Claim 17 requires, in relevant part, “[a] safety module comprising: a housing . . . a transceiver operable to place emergency calls.†No specific connection or placement of the transceiver is specified in the claim. The reference Isacson teaches a flashlight with an internal space 28 that can be used to store pills, candies and so forth. (Isacson, col. 6, l. 9). The reference Hrabal teaches the connection of a transceiver to a flashlight. The Examiner has indicated that to gain the benefit, or “safety featuresâ€, of the lighting device it would be obvious to combine these teachings. As the Hrabal reference actually, literally, and demonstrably teaches combining a flashlight with a transceiver (phone), we do not find error in combining the teachings. Further with respect to claim 17, Appellant contends that in the Isacson reference, Appellant submits that not only is the multi-function container 10 of Isacson non-analogous art, but that key ring support member 18 is clearly not capable of rigidly attaching to an end portion of a flashlight. As such, the element “a mounting portion 18 which is capable of rigidly attaching to an end portion of a flashlight†has not been taught by a prior art Appeal 2010-003874 Application 11/104,793 10 reference and rationale (A) is not satisfied by the combination of Isacson in view of Hrabal. (App. Br. 10, bottom). We find that the Isacson device contains a light (#46), a battery (#38), and a switch (#36), and thus is in an analogous art to the flashlight- transceiver combination of Hrabal. Further, the combination does contain the elements of the claimed safety module, including the mounting portion (#18 of Isacson) rigidly attached to an end portion of the safety module. (See Isacson, Figures 2a, b, and c). We thus do not find an error in the Examiner’s rejection R4 of the subject claims. Arguments with respect to the rejection of claims 28, 29, and 31 under 35 U.S.C. § 103(a) [R7] The Examiner has rejected the noted claims for being obvious over Watterson in view of Hrabal. With respect to representative claim 28, Appellant’s argument is the same as that for rejection R1, concerning the mounting portion #30. We found that argument not convincing. CONCLUSIONS OF LAW Based on the findings of facts and analysis above, we conclude that Appellant has not shown that the Examiner erred in rejecting claims 13 to 31. Appeal 2010-003874 Application 11/104,793 11 DECISION We affirm the Examiner’s rejections [R1 to R8] of claims 13 to 31. 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 llw Copy with citationCopy as parenthetical citation