Ex Parte Melnik

Board of Patent Appeals and Interferences

Sep 14, 2011

11104793 (B.P.A.I. Sep. 14, 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.
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

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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

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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

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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

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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.”) (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

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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

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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 features”, 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

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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

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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

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