Ex Parte Ohi et al

Board of Patent Appeals and Interferences

Jul 7, 2010

10910887 (B.P.A.I. Jul. 7, 2010)

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.
10/910,887 08/03/2004 Taku Ohi 020872-9073- 9351
60840 7590 07/07/2010
MICHAEL, BEST & FRIEDRICH LLP
100 EAST WISCONSIN AVENUE
SUITE 3300
MILWAUKEE, WI 53202
EXAMINER
HAMMOND, BRIGGITTE R
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
07/07/2010 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 TAKU OHI,
BRYAN SCOTT WHIFFEN
and GEORGE MICHAEL HORNICK
_____________

Appeal 2009-007657
Application 10/910,887
Technology Center 2800
____________

Before ROBERT E. NAPPI, KENNETH W. HAIRSTON,
and MAHSHID D. SAADAT, Administrative Patent Judges.

HAIRSTON, 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.

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 19 to 27 and 29 to 32. Claims 1 to 18 and 28 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the obviousness rejections.
Appellants’ invention is concerned with an electrical power cord plug
identity system associated with a specific tool including a (i) plug housing,
(ii) light source, and (iii) information indicator having a visible surface
including a translucent portion with an icon, symbol, or character
corresponding to a specific power tool (claim 19; Figs. 1-3).
Claim 19 reproduced below, is representative of the subject matter on
appeal:
19. An electrical power cord plug identity system associated with a
specific power tool comprising:
a. a plug housing;
b. a light source disposed within the plug housing, which indicates
when electrical power is available to the plug;
c. an information indicator provided at a surface of the plug such that
light generated from the light source shines through at least a portion of the
information indicator and wherein the information indicator is provided with
a visible surface having one of an icon, symbol, or character, which
corresponds to the specific power tool associated with the plug identity
system and the visible surface has a portion that is translucent.
The Examiner relies upon the following as evidence of
unpatentability:
Holcomb US 4,659,161 Apr. 21, 1987

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Grill US 4,671,597 June 9, 1987
Siemon US 5,620,335 Apr. 15, 1997
Katwala US 6,390,847 B2 May 21, 2002

The following obviousness rejections are before us for review:
(i) Claims 19 to 27 and 31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Grill and Siemon.
(ii) Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Grill and Siemon, further in view of
Holcomb.
(iii) Claim 32 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Grill and Siemon, further in view of Katwala.
In all of the obviousness rejections (see rejections (i) through (iii)
supra), the Examiner relies upon Grill as disclosing the feature set forth in
independent claim 19 of an electrical power cord plug identity system
including a plug housing, a light source within the plug housing for
indicating that power is available to the plug, and an information indicator
on a surface of the plug with light being generated through a visible surface
and translucent portion of the information indicator (Ans. 3-5). The
Examiner relies upon Siemon as disclosing an information indicator
“provided with a visible surface having one of an icon, symbol, or character,
which corresponds to the specific power tool associated with the plug
identity system,” as set forth in claim 19 (Ans. 3). The Examiner determines
that it would have been obvious to modify the connector or plug having an
information indicator 10 of Grill with the identifying symbol of Siemon “for

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easily identifying specific type[s][sic] of plugs as taught by Siemon” (Ans.
3-4).
With regard to the obviousness rejection applying Grill and Siemon
(see rejection (i) supra), Appellants dispute the individual teachings of (i)
Grill with respect to whether or not Grill teaches elements of claim 19 that
the Examiner relies upon Siemon as teaching (e.g., a visible surface or
information indicator having a symbol or character corresponding to a
specific power tool), and (ii) Siemon with respect to whether or not Siemon
teaches elements of claim 19 that the Examiner relies upon Grill as teaching
(e.g., an information indicator with a light shining through a translucent
portion) (Br. 5-6). Appellants also argue (Br. 5) that neither Grill nor
Siemon discloses or suggests an information indicator corresponding to a
specific tool associated with the plug housing, with the information indicator
provided at a surface of the plug housing such that light generated from a
light source within the plug housing shines through at least a portion of the
information indicator.
With regard to the obviousness rejection applying Grill and Siemon
(as to claims 19, 20, 22, 23, 25, 27, and 31), Appellants contend (Br. 8-10)
that the evidence and/or Declaration of Taku Ohi under 37 C.F.R. § 1.132
indicates that the claimed invention is non-obvious. Appellants assert (Br.
8) that the declaration and attachments demonstrate praise of the originality
and usefulness of the claimed invention and as such must be considered in
the obviousness assessment.
With regard to the obviousness rejection applying Grill and Siemon
combined with Holcomb (as to claims 29 and 30) under § 103, Appellants

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contend (Br. 11) that Holcomb fails to teach indicator lights corresponding
to a specific tool.
With regard to the obviousness rejection applying Grill and Siemon
combined with Katwala (as to claim 32) under § 103, Appellants contend
(Br. 12) that Katwala fails to cure the deficiencies of Grill and Siemon.

ISSUES
Based on Appellants’ arguments, the issues are:
(i) Do the combined teachings of Grill and Siemon disclose or suggest
an electrical power cord plug identity system associated with a specific tool
including a plug housing, light source, and information indicator having a
visible surface including a translucent portion with an icon, symbol, or
character corresponding to a specific power tool as recited in claim 19?
(ii) Is Appellants’ evidence of non-obviousness and/or Declaration of
Taku Ohi under 37 C.F.R. § 1.132 sufficient to overcome the obviousness
rejections?

FINDINGS OF FACT
1. Grill describes and shows a female receptacle (Fig. 1; i.e., plug)
having a housing 1, a lamp 6a for producing light (i.e., light source) to
indicate when electrical power is available in the receptacle (col. 1, ll.
6-7; col. 2, ll. 14-21), and a transparent plastic window 10 (i.e.,
information indicator) provided at a surface of the plug such that light
from the lamp 6a shines through the window 10 and has a visible
surface that is translucent (col. 1, l. 63 to col. 2, ll. 21).

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2. Grill also shows and describes that information indicator 10 is
disposed or located in the plug housing 1 (Fig. 1; col. 1, ll. 62-65).
3. Siemon describes and shows a plug identity system (Figs. 3, 4, 5A,
5B, 10, 11) having an information indicator 34 in the form of an icon
or symbol 36/38. The icon/symbol is associated with a specific
powered tool or electrical device such as a telephone, computer, etc.
(Figs. 3, 4, 5A, 5B) for making the plugged device easier to identify
(col. 1, ll. 5-9 and 60-63).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
The test for obviousness is what the combined teachings of the
references would have suggested to the artisan. Accordingly, one can not
show nonobviousness by attacking references individually where the
rejection is based on a combination of references. In re Keller, 642 F.2d
413, 426 (CCPA 1981).
Evidence of secondary considerations must be considered in
determining obviousness if present. See Ruiz v. A.B. Chance Co., 234 F.3d
654, 667 (Fed. Cir. 2000); Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530,
1538 (Fed. Cir. 1983).

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ANALYSIS
Turning now to the obviousness rejection of claims 19 to 27 and 31
over Grill and Siemon, we agree with the Examiner’s findings of fact and
conclusions of obviousness with respect to claim 19 (Ans. 3-8), and adopt
them as our own, along with some amplification of the Examiner’s
explanation of the teachings of Grill (see FF 1, 2) and Siemon (see FF 3).
See Fine, 837 F.2d at 1073; Kahn, 441 F.3d at 988. We will sustain the
Examiner’s rejections of (i) claims 19 to 27 and 31 based upon the teachings
of Grill and Siemon; (ii) claims 29 and 30 based upon the teachings of Grill,
Siemon, and Holcomb; and (iii) claim 32 based upon the teachings of Grill,
Siemon, and Katwala, for the reasons that follow.
The majority of Appellants’ arguments (Br. 5-6) concern individual
shortcomings in the teachings of each of the applied references to Grill and
Siemon. We have carefully reviewed these arguments, however, and they
are not convincing of the nonobviousness of the claimed invention set forth
in claim 19. For example, the Appellants criticized Grill for not teaching
that the information indicator has an icon or symbol corresponding to a
specific tool (Br. 5-6). We note that Siemon, not Grill, is relied upon for that
description as part of the combination of references. It is for this reason one
can not show nonobviousness by attacking references individually when the
rejection is based on a combination of references. Keller, 642 F.2d at 426.
With regard to Appellants’ contention (Br. 8) that the evidence and/or
Declaration of Taku Ohi under 37 C.F.R. § 1.132 must be considered in the
obviousness assessment, we agree. See Ruiz v. Chance, 234 F.3d at 667
(evidence of secondary considerations must be considered in determining

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obviousness if present); accord Stratoflex v. Aeroquip, 713 F.2d at 1538.
However, Appellants’ arguments (Br. 8-10) that the evidence and/or
Declaration of Taku Ohi under 37 C.F.R. § 1.132 indicates that the claimed
invention is non-obvious are not persuasive. The evidence of obviousness
presented by the Examiner far outweighs Appellants’ limited showing of
industry praise as indicated in Tabs 1 through 4 and discussed in the
declaration. The Examiner’s determination that it would have been obvious
to modify the connector or plug 1 having an information indicator 10 of Grill
with the identifying symbol of Siemon “for easily identifying specific
type[s][sic] of plugs as taught by Siemon” (Ans. 3-4) is reasonable,
predictable, and would only require common sense. We find strong
motivation for one of ordinary skill in the art looking at the lighted plug of
Grill and the plug with icons/symbols of Siemon, to combine these teachings
in order to provide a lighted plug with an icon/symbol that makes it easier to
identify the specific electrical device attached to the plug.
The Examiner has provided articulated reasoning with a rational
underpinning to support the combination for the legal conclusion of
obviousness (Ans. 3-9). See Kahn, 441 F.3d at 988. Based on our findings
with respect to Grill (see FF 1, 2) and Siemon (see FF 3), we agree with the
Examiner that the combination of Grill and Siemon meets all of the
limitations of an electrical power cord identity system set forth in claim 19,
and all of the additional limitations set forth in dependent claims 20 to 27
and 31.
Appellants do not separately argue with particularity the limitations of
claims 20, 22, 23, and 25 to 27 apart from merely asserting that these claims

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depend from claim 19 (Br. 10). Such conclusory assertions without
supporting explanation or analysis particularly pointing out errors in the
Examiner’s reasoning fall well short of persuasively rebutting the
Examiner's prima facie case of obviousness. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Appellants’ argument with respect to claims 21 and 24, that Grill
and/or Siemon do not disclose an information indicator disposed within a
plug housing (Br. 10), in unconvincing. The Examiner is correct (Ans. 8)
that Grill discloses an information indicator 10 disposed in a plug housing 1
in Figure 1 (see FF 2). Appellants’ contention (Br. 5) that Grill does not
disclose a light disposed with a plug housing is not well taken in light of our
findings with respect to Grill (see FF 1, 2).
The obviousness rejection of claims 29 and 30 (see rejection (ii) listed
supra) falls with claim 19 because (i) the dependent claims contain the
limitations of independent claim 19 upon which they ultimately depend, (ii)
Appellants do not argue that Holcomb fails to teach the limitations recited in
claims 29 and 30 of a second information indicator located opposite the
information indicator, and (iii) Appellants’ contention (Br. 11) that Holcomb
fails to teach indicator lights corresponding to a specific tool is unpersuasive
since Grill and Siemon are relied upon for this feature and not Holcomb.
The obviousness rejection of claim 32 (see rejection (iii) listed supra)
falls with claim 19 because (i) dependent claim 32 contains the limitations of
claim 19 upon which it depends, and (ii) Appellants do not argue that
Katwala fails to teach the limitation recited in claim 32 of an information
indicator being adhesively affixed to a plug.

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In view of the foregoing, we will sustain the obviousness rejections of
(i) claims 19 to 27 and 31 based upon the teachings of Grill and Siemon; (ii)
claims 29 and 30 based upon the teachings of Grill, Siemon, and Holcomb;
and (iii) claim 32 based upon the teachings of Grill, Siemon, and Katwala.

CONCLUSIONS OF LAW
The properly combined teachings of Grill and Siemon disclose or
suggest an electrical power cord plug identity system associated with a
specific tool including a plug housing, light source, and information
indicator having a visible surface including a translucent portion with an
icon, symbol, or character corresponding to a specific power tool as recited
in claim 19.
Appellants’ evidence of non-obviousness and/or Declaration of Taku
Ohi under 37 C.F.R. § 1.132 has been considered and is deemed insufficient
to overcome the obviousness rejections.

ORDER
The decision of the Examiner rejecting claims 19 to 27 and 29 to 32
under 35 U.S.C. § 103 is affirmed.

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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

KIS

MICHAEL, BEST & FRIEDRICH, L.L.P.
100 EAST WISCONSIN AVENUE
SUITE 3300
MILWAUKEE, WI 53202