Ex parte Overy et al.

Board of Patent Appeals and Interferences

Jan 22, 2002

08856943 (B.P.A.I. Jan. 22, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL OVERY and SEAN PRIOR
____________
Appeal No. 2000-0267
Application No. 08/856,943
____________
ON BRIEF
____________
Before BARRETT, GROSS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
The examiner rejected the appellants’ claims 22-34. They
appeal therefrom under 35 U.S.C. § 134(a). We affirm-in-part.
BACKGROUND
The appellants’ invention is a holder for a cellular
telephone that recharges the telephone’s battery.
Conventional holders also supply a current to recharge the
battery of a stored telephone. Electrical contact between the
Appeal No. 2000-0267 Page 2
Application No. 08/856,943
holder’s current supply and the telephone’s battery is
achieved by placing the telephone in the holder. Heretofore,
the weight of the telephone has been sufficient to ensure
contact between a spring contact in the bottom of the holder
and a fixed contact on the bottom of the telephone. As
cellular telephones have become lighter, however, the contact
achieved by gravity has become less reliable.
The appellants’ cellular telephone holder features a
cradle with a spring contact. A lug protrudes from the rear
wall of the cradle and fits in a slot in the telephone. A
spring contact in the bottom of the holder biases the
telephone in a direction to retain the lug in the slot,
thereby holding the telephone in the cradle. The telephone
can be removed, however, by pressing down against the bias of
the spring contact and disengaging the lug from the slot.
Claim 23, which is representative for present purposes,
follows:
23. A holder for charging a radio telephone
battery disposed within a housing, comprising a
cradle member, means for supplying charging current
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Application No. 08/856,943
for charging the battery, an electrical contact
disposed to allow electrical contact between the
battery and the means for supplying charging current
on positioning the housing in the cradle member, an
element disposed on the cradle member for
cooperating in abutting relation with a
complementary element fixed in relation to the
housing, and for releasably locking the housing
relative to the cradle member in such a position
that electrical contact between the battery and the
means for supplying charging current is maintained,
wherein the abutting relation is maintained by a
spring bias of the holder and the element disposed
on the cradle member is sized and shaped such that
the housing must be displaced against the spring
bias to disengage the housing from the element
disposed on the cradle member.
(Appeal Br. at i-ii.)
The prior art applied by the examiner in rejecting the
claims follows:
Tomura et al. 5,189,358 Feb. 23,
1993
Mattinger et al. (“Mattinger”), Translation of European
Patent No. 0,341,395, Feb. 17, 1993.
Claims 22-34 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Tomura et al. The claims also stand rejected
under 35 U.S.C. § 103(a) as obvious over Mattinger in view of
Tomura et al.
Appeal No. 2000-0267 Page 4
Application No. 08/856,943
OPINION
After considering the record, we are persuaded that the
examiner erred in rejecting claims 22-34 as anticipated and in
rejecting claims 22 and 26-34 as obvious. We are also
persuaded that he did not err in rejecting claims 23-25 as
obvious. Accordingly, we affirm-in-part.
Rather than reiterate the positions of the examiner or
appellants in toto, we address their points of contention. We
begin with a point that concerns all the claims. The
appellants argue, “Mattinger et al. (EP 0341395) is directed
to an electric hair cutter. This is not analogous art.”
(Appeal Br. at 7.) The examiner answers, “cell-phones and
heir [sic] cutters are considered as common house hold [sic]
devices, they both require charging and support, one skilled
in the art could easily apply the support feature of a cell
phone to the cutter, or vice versa.” (Examiner’s Answer at
11.) He adds, “[i]n fact, Mattering is submitted by appellant
due to a search report for a foreign patent application.”
(Id.)
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Application No. 08/856,943
"Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if
the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent
to the particular problem with which the inventor is
involved." In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058,
1060 (Fed. Cir. 1992)(citing In re Deminski, 796 F.2d 436,
442, 230 USPQ 313, 315 (Fed. Cir. 1986); In re Wood, 599 F.2d
1032, 1036, 202 USPQ 171, 174 (CCPA 1979)). "[A] reference is
reasonably pertinent if, even though it may be in a different
field from that of the inventor's endeavor, it is one which,
because of the matter with which it deals, logically would
have commended itself to an inventor's attention in
considering his problem . . . . If a reference disclosure has
the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of
that reference in an obviousness rejection." Id. at 659, 23
USPQ2d at 1061.
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Application No. 08/856,943
Regarding the second criterion, a problem with which the
appellants are involved is that of recharging a battery.
Specifically, “[t]he invention relates to a holder that
performs the dual functions of storing and recharging a
battery . . . .” (Spec. at 1 (emphasis added).) A problem
that Mattinger solves also relates to recharging a battery.
Specifically, “the battery is charged.” P. 2. Because the
inventions of the appellants and the reference both solve the
problem of recharging a battery, Mattinger is analogous art.
Having addressed the point of contention that concerns
all the claims, we address the points that concern the
following, logical groups of claims:
• claims 22 and 29-31
• claims 23-25
• claims 26-28
• claims 32-34.
We begin with the first group of claims.
I. Claims 22 and 29-31
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Application No. 08/856,943
The examiner asserts, "Tomura's lug (218) is projecting
into the receiving compartment. Also, notice that the spring
contact (236) is in the receiving compartment (see Figs. 16-
17).
Therefore, Tomura's lug (218) is also projecting toward the
spring contact (236)." (Examiner's Answer at 7.) He further
asserts, “viewing from the spring (116) toward the loop (111)
it appears that Mattering's loop (111) is projecting away from
the spring (116). However, if viewing from the loop (111)
toward the spring (116), then the loop (111) can be considered
as projecting toward the spring ( 116).” (Id. at 11.) The
appellants argue, "[t]he drawings in Tomura et al. do not
disclose or suggest the lug (218) projecting downward towards
the spring." (Reply Br. at 1.) They further argue, “[i]n
Mattinger et al. the loop (111) projects away from the spring
contacts (116, 117).” (Appeal Br. at 9.)
In deciding anticipation, “the first inquiry must be into
exactly what the claims define.” In re Wilder, 429 F2d 447,
450, 166 USPQ 545, 548 (CCPA 1970). Similarly, in deciding
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Application No. 08/856,943
obviousness, “[a]nalysis begins with a key legal question --
what is the invention claimed?” Panduit Corp. v. Dennison
Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed. Cir.
1987).
Here, claim 22 specifies in pertinent part the following
limitations: a "peg section protrudes from a wall of the
receiving compartment in an angled direction generally towards
the spring contact . . . ." Similarly, claim 29 specifies in
pertinent part the following limitations: an "element on the
cradle member being angled towards a bottom of a housing
receiving area of the cradle member . . . .” Accordingly,
claims 22 and 29 require inter alia an element of a receiving
compartment protruding generally toward a spring contact or
toward a bottom of the compartment, respectively.
Starting with the anticipation rejection, “having
ascertained exactly what subject matter is being claimed, the
next inquiry must be into whether such subject matter is
novel.” Wilder, 429 F2d at 450, 166 USPQ at 548. “A claim is
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Application No. 08/856,943
anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a
single prior art reference.” Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.
1987) (citing Structural Rubber Prods. Co. v. Park Rubber Co.,
749 F.2d 707, 715, 223 USPQ 1264, 1270 (Fed. Cir. 1984);
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ
193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 771, 218 USPQ 781, 789 (Fed. Cir. 1983)).
Here, although Tomura discloses that “a lug 218 for
fitting into a retaining slot of the portable telephone is
formed on an upper rear end side 212a of the upper case 212,”
col. 8, ll. 23-25, the lug protrudes neither toward the
reference’s “charging terminals 236,” id. at l. 44, nor toward
its “recess 216 for fitting therein of [sic] a swelled bottom
of a large-capacity battery pack . . . .” Id. at ll. 17-19.
To the contrary, Tomura depicts the lug 218 as protruding
generally perpendicular to the charging terminals 236 and
generally parallel to the recess 216. Figs. 16 and 17.
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Application No. 08/856,943
Because Tomura’s lug protrudes generally perpendicular to
its charging terminals and generally parallel to its recess,
we are not persuaded that the reference discloses the
limitations of a "peg section [that] protrudes from a wall of
the receiving compartment in an angled direction generally
towards the spring contact" or an "element on the cradle
member being angled towards a bottom of a housing receiving
area of the cradle member . . . .” Therefore, we reverse the
anticipation rejection of claim 22, of claim 29, and of claims
30 and 31, which depend from claim 29.
Turning to the obviousness rejection, the next inquiry is
whether the subject matter is obvious. “In rejecting claims
under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness.” In
re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993)(citing In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992)). "’A prima facie case of
obviousness is established when the teachings from the prior
art itself would appear to have suggested the claimed subject
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Application No. 08/856,943
matter to a person of ordinary skill in the art.’" In re
Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993)(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ
143, 147 (CCPA 1976)).

Here, the examiner fails to show that Mattering cures the
defect of Tomura. Although Mattering discloses “a catch loop
111 of the adapter,” p. 13, the catch loop protrudes neither
toward the reference’s “contact springs 116, 117,” id., nor
toward its “indentation 102, into which the hair cutting
machine 103 can be inserted.” Id. at 12. To the contrary,
Mattering depicts the catch loop 111 as angled away from the
contact springs 116, 117 and from the indentation 102. Figs.
15, 17.
Because Tomura’s lug protrudes generally perpendicular to
its charging terminals and generally parallel to its recess,
and Mattering’s loop is angled away from its contact springs
and indentation, we are not persuaded that the teachings from
the applied prior art would have suggested the limitations of
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Application No. 08/856,943
a "peg section [that] protrudes from a wall of the receiving
compartment in an angled direction generally towards the
spring contact" or an "element on the cradle member being
angled towards a bottom of a housing receiving area of the
cradle member . . . .” Therefore, we reverse the obviousness
rejection of claim 22, of claim 29, and of claims 30 and 31,
which depend from claim 29. We proceed to the second group of
claims.
II. Claims 23-25
The examiner asserts, “according to Tomura's Figs. 16-17,
the phone can be removed by first removing the speaker end of
the phone. As the speaker end of the phone is pulled upward,
the phone pivots at lug (218), then the microphone end of the
phone is forced downward, in turn pushing, or deflecting the
spring (236) down . . . .” (Examiner’s Answer at 8.) He
further asserts, “as the end part (Mattering and [sic] 118) is
moved outward, the spring (116) is deflected to allow the peg
section (111) to be disengaged with the slot (108).” (Id.
at 11.) The appellants argue, “[t]here is no disclosure or
suggestion of the telephone being displaced against the spring
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Application No. 08/856,943
bias to disengage the telephone.” (Reply Br. at 2.) They
further assert, “even if the two references could be properly
combined, they still do not suggest the combined features of
Claim 23.” (Appeal Br. at 10.)

Claim 23 specifies in pertinent part the following
limitations: "the housing must be displaced against the spring
bias to disengage the housing from the element disposed on the
cradle member . . . .” Accordingly, the claim require inter
alia that a housing must displace a spring to disengage it
from a cradle.
Starting with the anticipation rejection, Tomura
discloses that a battery pack attached to a portable telephone
must be displaced against charging springs to engage it with a
battery charger. Specifically, “[w]hen the portable telephone
250 is mounted to the charger 210, the charging terminals 236
of the charger 210 are deformed elastically and come into
pressure contact with the charging terminals of the battery
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Application No. 08/856,943
pack 252 . . . .” Col. 9, ll. 12-16. The examiner fails to
show, however, that disengaging the portable telephone 250
with battery pack 252 from the charger 210 would further
deform the charging terminals 236. To the contrary, the
rounded edges of the battery pack 252 suggest that pivoting
the portable telephone 250 on the lug 218 of the charger 210
to remove the telephone with its battery pack therefrom would
not deform the charging terminals 236 any more than they are
deformed during charging. Figs. 16 and 17.
Because there is no showing that disengaging Tomura’s
portable telephone with battery pack from its charger would
further deform the charging terminals, we are not persuaded
that the reference discloses the limitations that "the housing
must be displaced against the spring bias to disengage the
housing from the element disposed on the cradle member . . .
.” Therefore, we reverse the anticipation rejection of claim
23 and of claims 24 and 25, which depend from claim 23.
Turning to the obviousness rejection, Mattering discloses
that a hair cutting machine with a built-in battery must be
Appeal No. 2000-0267 Page 15
Application No. 08/856,943
displaced against contact springs to disengage it.
Specifically, “[t]o detach the adapter when the hair cutting
machine is once more to be operated without the cable, it is
first necessary to displace the hair cutting machine and then
to rotate it, as indicated in Fig. 17 with the arrows 127.”
P. 14 (emphasis added). When the hair cutting machine 103 is
displaced in the direction shown by the arrow 127, the machine
necessarily presses against contact springs 116 and 117,
thereby displacing the springs in the same direction.
Because Mattering’s hair cutting machine with a built-in
battery must be displaced against its contact springs to
disengage it, we are persuaded that the teachings from the
applied prior art would have suggested the limitations that
"the housing must be displaced against the spring bias to
disengage the housing from the element disposed on the cradle
member . . . .”
Claims that are not argued separately stand or fall
together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ 1089,
Appeal No. 2000-0267 Page 16
Application No. 08/856,943
1096 (Fed. Cir. 1983)(citing In re Burckel, 592 F.2d 1175, 201
USPQ 67 (CCPA 1979)). When the patentability of dependent
claims is not argued separately, moreover, the claims stand or
fall with the claims from which they depend. In re King, 801
F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986)(citing In
re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir.
1983); Burckel, 592 F.2d at 1178-79, 201 USPQ at 70.)
Here, because the appellants have not argued separately
the patentability of claims 24 and 25, these claims fall with
claim 23, from which they depend. Therefore, we affirm the
obviousness rejection of claims 23-25. We proceed to the
third group of claims.
III. Claims 26-28
The examiner asserts that he, “reads Tomura's phone (250)
as the housing. The battery is a part of the housing. In
other words, the phone (250) is a battery housing. The middle
or top end of the battery housing is the location of lug
(218).” (Examiner’s Answer at 9.) He further asserts, “the
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Application No. 08/856,943
element is identified as Mattinger's loop (111), the middle
slot is Mattinger's slot (108). Further, Mattinger is a
battery operating device, the device houses the battery.
Therefore, the device simply can be considered as the battery
housing.” (Id. at 12.) The appellants argue, “Tomura et al.
does not disclose or suggest the lug (218) being located at
the area that receives the middle or top of the battery.”
(Appeal Br. at 5.) They further argue, “[t]here is no
disclosure or suggestion in Mattinger et al. of where the
battery is located in the hair cutter (103) much less that
loop (111) is at an upper area of the receiving area that
receives a middle or top end of the battery.” (Id. at 5-6.)
Claim 26 specifies in pertinent part the following
limitations: "the element on the cradle member being spaced
from the bottom at an upper area of the housing receiving area
that receives a middle or top end of the battery . . . .”
Accordingly, the claim requires inter alia that an element of
a cradle receives a middle or top end of a battery.
Appeal No. 2000-0267 Page 18
Application No. 08/856,943
Starting with the anticipation rejection, Tomura’s lug
does not receive the reference’s battery pack at all, let
alone the middle or top end thereof. To the contrary, the lug
fits into Tomura’s portable telephone. Specifically, “by
fitting the lug 218 into the retaining slot 254 of the
portable telephone 250, the portable telephone with the large-
capacity battery pack 258 attached thereto is fixed easily to
the charger 210 of the portable telephone.” Col. 9, ll. 37-
42. Furthermore, the reference shows that the lug 218 fits
into the bottom of Tomura’s portable telephone 250. Figs. 16
and 17.
Because Tomura’s lug fits into the bottom of its portable
telephone, we are not persuaded that the reference discloses
the limitations that "the element on the cradle member being
spaced from the bottom at an upper area of the housing
receiving area that receives a middle or top end of the
battery . . . .” Therefore, we reverse the anticipation
rejection of claim 26 and of claims 27 and 28, which depend
from claim 26.
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Application No. 08/856,943
Turning to the obviousness rejection, the examiner fails
to show that Mattering cures the defect of Tomura. Although
Mattering discloses that “[i]nside the hair cutting machine
1', there is a motor (not shown) and a battery for storing the
electrical energy necessary for operating the motor,” p. 5,
the reference does not show the location of the battery within
the hair cutting machine 1'. We will not “resort to
speculation,” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), as to the location of Mattering’s battery
vis-á-vis its catch loop 111.
Because Tomura’s lug fits into the bottom of its portable
telephone, and Mattering does not disclose the location of its
battery, we are not persuaded that the teachings from the
applied prior art would have suggested the limitations of "the
element on the cradle member being spaced from the bottom at
an upper area of the housing receiving area that receives a
middle or top end of the battery . . . .” Therefore, we
reverse the obviousness rejection of claim 26 and of claims 27
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Application No. 08/856,943
and 28, which depend from claim 26. We conclude with the
fourth group of claims.
IV. Claims 32-34
The examiner asserts that Tomura's “phone (250) is a
battery housing. The middle or top end of the battery housing
is the location of lug (218).” (Examiner’s Answer at 9.) He
further asserts, “the element is identified as Mattinger's
loop (111), the middle slot is Mattinger's slot (108).
Further, Mattinger is a battery operating device, the device
houses the battery. Therefore, the device simply can be
considered as the battery housing.” (Id. at 12.) The
appellants argue, “[i]n Tomura the lug (218) engages the
housing of the telephone; not the housing which the battery is
disposed within. In Mattinger et al. there is no indication
of where the battery is located in the hair cutter (103), much
less that the loop (11) engages the battery housing. In
addition, the loop (111) is on the adapter (105); not on the
cradle (101).” (Appeal Br. at 13.)
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Application No. 08/856,943
Claim 32 specifies in pertinent part the following
limitations: "the housing must be displaced with support from
the spring bias to engage the housing with the element
disposed on the cradle member.” Accordingly, the claim
requires inter alia that an element of a cradle engages the
housing of a battery.
Starting with the anticipation rejection, Tomura’s lug
does not engage the reference’s battery pack. To the
contrary, the lug 218 fits into the retaining slot 254 of
Tomura’s portable telephone 250 as mentioned regarding claims
26-28.
Because Tomura’s lug fits into its portable telephone, we
are not persuaded that the reference discloses the limitations
that "the housing must be displaced with support from the
spring bias to engage the housing with the element disposed on
the cradle member.” Therefore, we reverse the anticipation
rejection of claim 32 and of claims 33 and 34, which depend
from claim 32.
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Application No. 08/856,943
Turning to the obviousness rejection, the examiner fails
to show that Mattering cures the defect of Tomura.
Mattering’s hair cutting machine 103 does not engage the
reference’s charger. To the contrary, the hair cutting
machine engages Mattering’s adapter 105. Specifically, “the
hair cutting machine 103 is pressed towards the catch loop 111
and interlocks the adapter with the hair cutting machine.” P.
13.
Because Tomura’s lug fits into its portable telephone,
and Mattering’s hair cutting machine interlocks with its
adapter, we are not persuaded that the teachings from the
applied prior art would have suggested the limitations that
"the housing must be displaced with support from the spring
bias to engage the housing with the element disposed on the
cradle member.” Therefore, we reverse the obviousness
rejection of claim 32 and of claims 33 and 34, which depend
therefrom.
CONCLUSION
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Application No. 08/856,943
In summary, the rejection of claims 22-34 under 35 U.S.C.
§ 102(b) and of claims 22 and 26-34 under § 103(a) is
reversed. The rejection of claims 23-25 under § 103(a),
however, is affirmed. Our affirmance is based only on the
arguments made in the briefs. Arguments not made therein are
neither before us nor at issue but are considered waived.
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Application No. 08/856,943
No time for taking any action connected with this appeal
may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-0267 Page 25
Application No. 08/856,943
PERMAN & GREEN
425 POST ROAD
FAIRFIELD, CT 06430-6232
Once signed, forward to Team 3 for mailing.
APPEAL NO. 2000-0267 - JUDGE BARRY
APPLICATION NO. 08/856,943
APJ BARRY - 2 copies
APJ GROSS
APJ BARRETT
Prepared By: APJ BARRY
DRAFT SUBMITTED: 24 Sep 02
FINAL TYPED:
Team 3:
I typed all of this opinion.
Please proofread spelling, cites, and quotes. Mark your
proposed changes on the opinion, but do NOT change matters of
form or style. I will include the diskette with the
signed copy so that you can make all changes before
mailing.
For any additional reference provided, please prepare PTO 892
and include copy of references
Thanks,
Judge Barry