Ex Parte Ohi et alDownload PDFBoard of Patent Appeals and InterferencesJul 7, 201010910887 (B.P.A.I. Jul. 7, 2010) 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. 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. Appeal 2009-007657 Application 10/910,887 2 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 Appeal 2009-007657 Application 10/910,887 3 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 Appeal 2009-007657 Application 10/910,887 4 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 Appeal 2009-007657 Application 10/910,887 5 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). Appeal 2009-007657 Application 10/910,887 6 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). Appeal 2009-007657 Application 10/910,887 7 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 Appeal 2009-007657 Application 10/910,887 8 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 Appeal 2009-007657 Application 10/910,887 9 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. Appeal 2009-007657 Application 10/910,887 10 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. Appeal 2009-007657 Application 10/910,887 11 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 Copy with citationCopy as parenthetical citation