Ex Parte Paul

Board of Patent Appeals and Interferences

Mar 30, 2009

11305562 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRIS PAUL
____________

Appeal 2008-5821
Application 11/305,562
Technology Center 2800
____________

Decided1: March 30, 2009
____________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and KEVIN F.
TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-16 and 18-20. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.

1 The two-month period of filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic delivery).
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Application 11/305,562

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Appellant’s claimed invention relates to powering of portable
electronic devices through batteries, where the batteries are maintained at
preferred operating temperatures. (Spec. ¶¶ [0001]-[0002]).
Independent claim 1 is illustrative of the invention and reads as
follows:

1. A system, comprising:

a battery; and

a harness holding the battery in proximity to a body of a wearer
of the harness, the battery and harness being worn underneath
an outer garment thereby preventing a temperature of the
battery from decreasing towards an ambient temperature of an
environment in which the wearer is located.

(App. Br. 12, Claims Appendix)

The Examiner relies on the following prior art references to show
unpatentability:
Hanada US 6,138,664 Oct. 31, 2000
Quintana US 6,522,531 B1 Feb. 18, 2003
Breen US 6,864,666 B2 Mar. 8, 2005

Claims 1-14, and 16 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Quintana.
Claims 12-15 and 18-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Quintana.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Quintana and Breen.
Claims 15 and 18-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Quintana and Hanada.
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Appellant argues that Quintana does not disclose a system that
prevents a temperature of the battery from decreasing towards an ambient
temperature (App. Br. 4-5). Appellant also argues that the Examiner
improperly combined Quintana and Hanada because the references are
incompatible (App. Br. 10). The Examiner finds that it would be reasonable
to use the system in environments that have extreme hot and cold conditions,
and that the insulative material of Quintana will act as an insulator under any
conditions (Ans. 12-13).
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which 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).

ISSUES
(i) Under 35 U.S.C. § 102(b), with respect to appealed claims 1-14
and 16, does Quintana teach all of the elements of those claims?
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claims 12-15
and 18-20, would one of ordinary skill in the art at the time of the invention
have found it obvious to modify Quintana to render the claimed invention
unpatentable?
(iii) Under 35 U.S.C. § 103(a), with respect to appealed claims 7 and
8, would one of ordinary skill in the art at the time of the invention have
found it obvious to combine Quintana and Breen to render the claimed
invention unpatentable?
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(iv) Under 35 U.S.C. § 103(a), with respect to appealed claims 15 and
18-20, would one of ordinary skill in the art at the time of the invention have
found it obvious to combine Quintana and Hanada to render the claimed
invention unpatentable?

FINDINGS OF FACT
1. Appellant’s Specification details a system that includes a battery
and harness, where the harness holds the battery in proximity to the body of
the wearer and beneath an outer garment. Thus, the battery is prevented
from decreasing towards an ambient temperature of the wearer’s
environment (Spec. 5:25 – 6:16; Fig. 3, elements 301, 304, 305, 306).
2. Quintana is directed to a wearable personal computer, which
includes a harness and an attached battery. Fire protective gear can be worn
over the top of the harness and the attached battery (Figs. 1 and 2, elements
20, 400, 600).
3. Quintana details (Col. 11, ll. 32-36) that “any garment that is heat
and water resistant may be used as FPG 20. In addition, any garment that is
used to protect a person from external conditions, such as a hazardous
material garment, may likewise be used as FPG 20.”
4. Hanada is directed to a warming jacket. The jacket includes a
battery and supplies power to the controller, ignition unit, fuel regulator,
temperature sensor, and temperature setting unit (Abstract; ¶ [0002]).
5. The Examiner finds that there is “no specified insulator (of the
extreme type listed in the reference of Quintana) between the person and the
battery” (Ans. 10).

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PRINCIPLES OF LAW
“A claim is 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
(Fed. Cir. 1987). 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).
[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’)
. . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359,
1369 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
“Even when guidance is not provided in explicit definitional format, the
specification may define claim terms by implication such that the meaning
may be found in or ascertained by a reading of the patent documents.”
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (citations and
internal quotation marks omitted).

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ANALYSIS
Appellant argues that Quintana does not disclose a system that
prevents a temperature of the battery from decreasing towards an ambient
temperature (App. Br. 4-5). Appellant argues that Quintana “operates in a
contrary environment,” and that “the Examiner’s implication that firefighters
would also endure extreme cold conditions is improper in the context of
Quintana” (App. Br. 4). The Examiner finds that extreme cold environments
may be included in a reasonable interpretation of Quintana’s “harsh
environments,” (FF 3), and that it is well known in the art that a firefighter’s
gear protects the firefighter from both hot and cold conditions (Ans. 12-13).
We agree with the Examiner that nothing in Quintana precludes operation in
cold environments and the Examiner’s interpretation is not unreasonable.
Appellant also argues that the user of the apparatus in Quintana would
not wish to prevent the temperature of the battery from decreasing, but
would instead prevent the battery from increasing to an ambient temperature
in an extreme heat environment, as evidenced by the insulated battery casing
disclosed in Quintana (App. Br. 5). However, we find the Examiner’s
findings, i.e. that the insulative fire protective gear of Qunitana will still act
as an insulator under any conditions and the claims do not require where a
user can use the device (Ans. 13), to be compelling. The fact that Quintana
does not discuss thermal insulating properties with respect to cold does not
negate their inherent properties. If the battery is prevented from heating up
due to high temperatures, it will also be prevented from cooling down due to
low temperatures by the same thermal insulation. We find nothing in the
disclosure of Quintana that would act to prevent the temperature of the
battery from decreasing towards an ambient temperature of an environment
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in which the wearer is located. As such, we do not find that Appellant has
shown that the Examiner erred in rejecting claims 1-14 and 16 as being
anticipated by Quintana.
With respect to the rejection of claims 12-15 and 18-20 over
Quintana, Appellant emphasizes that the insulated casing for the battery
effectively prevents heat exchange between the body and the battery in any
direction (App. Br. 7-8). The Examiner finds that, because of the close
proximity of the body and the battery, some heat would be retained inside
the garment and transferred either directly or indirectly, and the heat
resistant casing does not prevent all heat from transferring (Ans. 16-17). We
agree with the Examiner. We do not find that the invention, as claimed,
requires more than preventing the temperature of “the battery from
decreasing towards an ambient temperature,” as recited in claims 1 and 18.
As the Examiner has found, the system of Quintana allows for the
prevention of the battery temperature from decreasing towards an ambient
temperature. As such, we do not find Appellant’s argument to be
compelling.
Appellant argues that claims 7, 8, 15, and 18-20 are allowable over
Quintana and either Breen or Hanada for at least their dependence on claim
1 (App. Br. 6 and 9-10). Appellant argues that neither Breen nor Hanada
cures the deficiencies of Quintana. Since we do not find any error in the
rejection of claim 1 over Quintana, we find no error in the rejections of
claims 7, 8, 15, and 18-20.
Appellant also argues that the Examiner improperly combined
Quintana with Hanada (App. Br. 10; Reply Br. 2). Appellant argues that “a
system that allows a transfer of heat from the battery to the person (Hanada)
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and a system that prevents any heat exchange (Quintana) are incompatible
when combined” (App. Br. 10). The Examiner finds it would have been
obvious to remove an insulator closest to the user of the device in Quintana,
as suggested by Hanada, in order to warm the battery, if needed (Ans. 20).
We find that the systems in Quintana and Hanada are not incompatible and
we accept the Examiner’s reasons for combining to be reasonable.
Appellant also argues that the combination of Quintana and Hanada is
improbable because the intended wearer of Quintana’s system, a firefighter,
would not welcome the introduction of flammable gas to produce warmth, as
described in Hanada (Reply Br. 2). We find Appellant is arguing about the
bodily incorporation of one system into another, which is not necessary for
obviousness to be found. As discussed above, we find that the Examiner has
established a factual basis to support the legal conclusion of obviousness and
we affirm the propriety of the combination Quintana and Hanada in rejecting
claims 15 and 18-20.

CONCLUSION
The decision of the Examiner rejecting claim 1-14 and 16 under
35 U.S.C. § 102(a) based on Quintana, rejecting claims 12-15 and 18-20
under 35 U.S.C. § 103(a) as being unpatentable over Quintana, rejecting
claims 7 and 8 under 35 U.S.C. § 103(a) as being unpatentable over
Quintana and Breen, and rejecting claims 15 and 18-20 under 35 U.S.C. §
103(a) as being unpatentable over Quintana and Hanada, is affirmed.

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DECISION
The Examiner’s rejections of claims 1-16 and 18-20 before us on
appeal are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ack

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