Ex Parte Rastegar et al

Board of Patent Appeals and Interferences

May 26, 2006

10236005 (B.P.A.I. May. 26, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex Parte JAHANGIR S. RASTEGAR and
THOMAS SPINELLI
_______________

Appeal No. 2005-2724
Application No. 10/236,005
_______________

ON BRIEF
_______________

Before, GARRIS, KRATZ and JEFFREY T. SMITH Administrative Patent Judges.

JEFFREY T. SMITH, Administrative Patent Judge.

Decision on appeal under 35 U.S.C. § 134
Appellants appeal the decision of the Primary Examiner rejecting claims 1-15,
all of the pending claims. We have jurisdiction under 35 U.S.C. § 134.
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BACKGROUND
Appellants’ invention relates to a device comprising a structure for housing or
supporting at least one power consuming element; and a power supply formed in or
on the structure. The power-consuming element is electrically connected, directly or
indirectly, to the power supply. According to Appellants, suitable devices include a
projectile, a disposable camera, portable CD player, cassette player, cellular
telephone, personal digital assistant, and flashlight. (Specification, p. 7). Claim 1 is
illustrative:
1. A device comprising:
a structure for housing or supporting at least one power
consuming element; and a power supply formed in or on the
structure, the power supply being electrically connected to the at
least one power consuming element for supplying power to the
same.

CITED PRIOR ART
As evidence of unpatentability, the Examiner relies on the following references:
Hershey et al. (Hershey) 5,381,445 Jan. 10, 1995

Jalan et al. (Jalan) 5,607,784 Mar. 04, 1997

I. Claims 1-5 and 10-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hershey. (Answer, p. 3-8).
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II. Claims 6-9 stand rejected under 35 U.S.C. §103(a) as unpatentable over Hershey
in view of Jalan. (Answer, p. 8-9).
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellants in
support of their respective positions. This review leads us to conclude that the §103
rejection of claims 1, 2 and 5-15 is well founded. However, we conclude that the
rejection of claims 3 and 4 is not well founded. Our reasons follow.
OPINION1
Claims 1-5 and 10-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hershey.
The Examiner found that Hershey discloses a munitions cartridge
transmitter (housing) that is dischargeable from a propelling device. The
cartridge comprises a hollowed shell containing a power supply (235), such as,
a battery, that provides electrical energy to a component such as a transmitter
(230) and a signal generator (220), i.e., power consuming elements. (See col.
9, ll. 54-58) (Answer, pp. 3-4).

1 Rather than reiterate the conflicting viewpoints advanced by the Examiner and the Appellants
concerning the above-noted rejections, we refer to the Answer, mailed June 27, 2005, and the Briefs,
filed May 4, 2005 and August 28, 2005.
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Application No. 10/236,005

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Appellants argue, “the Examiner is using impermissible hindsight in
combining the Hershey reference with the knowledge of an ordinarily skilled
artisan in the art at the time of the invention. Thus, their combination to defeat
the patentability of the claims is improper. That is, there is no motivation to
combine the device (munition) of Hershey with any specific understanding or
technological principle within the knowledge of one of ordinary skill in the art
regarding the integration of the power supply in or on the structure (casing) of
the device (munition).” (Brief, p. 6).
We do not agree with the Appellants’ argument. Hershey discloses a
cartridge comprises a power supply and a transmitter. The power supply
component is in the structure of the device and attached indirectly thereto. The
device (munitions cartridge) of Hershey functions to emit electromagnetic
signals after discharge from the cartridge-propelling device. (Col. 1, ll. 31-43).
A person of ordinary skill in the art would have recognized that the cartridge of
Hershey must have been designed such that the components required to
transmit signals would not have been expelled from the discharged cartridge.
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The claimed invention does not limit the space consumed by the power
supply component. Thus, Appellants’ arguments, Brief pages 9-10, regarding
the space allocated to the power supply component are not persuasive.
Appellants argue that, because the Examiner has not addressed on the
record the level of skill in the art, the § 103 rejection is premised on hindsight.
(Brief, p. 11). “While it is always preferable for the fact finder below to specify
the level of skill it has found to apply to the invention at issue, the absence of
specific findings on the level of skill in the art does not give rise to reversible
error ‘where the prior art itself reflects an appropriate level and a need for
testimony is not shown.’” Okajima v. Bourdeau, 261 F.3d 1350, 1355,
59 USPQ2d 1795, 1797 (Fed. Cir. 2001), (quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163, 225 USPQ 34, 38 (Fed. Cir. 1985)).
Appellants have not explained, and it is not apparent, why the applied prior art
in the present record does not reflect an appropriate level of skill in the art.
Appellants argue, “[t]here is no teaching or suggestion in the art, nor is
there a showing that someone skilled in the art at the time of the invention
recognized the problems addressed by the present invention.” (Brief, p. 10).
This argument is not persuasive because Hershey discloses a device that
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teaches and suggests a device having an arrangement that is encompassed by
the subject matter of claim 1.
Regarding claim 2, Appellants argue that the power supply source of
Hershey is not “a portion of the structure and is further not a load bearing
member.” (Brief, p. 12).
Claim 2 is not limited to the scope of Appellants’ argument. Claim 2
requires the power supply to be “a load bearing member formed in or on the
structure.” As discussed above, the munitions cartridge of Hershey functions to
emit electromagnetic signals after discharge from the cartridge-propelling
device. Thus, the structure of the power supply must have been designed to
resist the force exerted on the cartridge (i.e., load) when propelled and
sufficient to prevent the power supply from being expelled from the discharged
cartridge. In addition, the power supply component must be designed to resist
the forces (load) exerted by the spring (310) contained in the cartridge.
Appellants’ arguments regarding claim 5 are not persuasive. Hershey
describes a spring (310) that is connected to a wall of the housing (250) so as
to maintain a connection of the power supply to the contact point (420) of the
transmitter package. (Col. 10, ll. 43-50).
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For the foregoing reasons and those set forth in the Answer, giving due
weight to Appellants’ arguments, we determine that the preponderance of
evidence weighs in favor of affirming the Examiner’s rejection of claims 1, 2, 5
and 10-15. Accordingly, the Examiner's rejection of these claims under
35 U.S.C. §103(a) is affirmed.
Regarding claims 3, the Examiner asserts that “Hershey et al teach that
the use of a multi-chip modulating packaging providing the capability to place
integrated circuit components or chips in close physical proximity on a
substrate, the substrate and components or chips being overlaid with one or
more layers (col. 11, lines 30-65). Thus, Hershey et al encompass
embodiments employing film configurations. Addition, Figure 4 above illustrates
that the battery 210 is part of the shell structure.” (Answer, pp. 3-4). We
reverse.
Claim 3 specifies that the power supply is a film generating material. We
agree with Appellants, Brief page 12, that there is no correlation between the
multi-chip packaging arrangement and a power supply in the form of a film as
described in claim 3. Thus, we reverse the rejection of claim 3 and dependant
claim 4.
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The Examiner rejected claims 6-9 under 35 U.S.C. §103(a) as
unpatentable over the combination of Hershey and Jalan. We affirm for the
reasons presented by the Examiner.
Appellants argue that Hershey does not teach or suggest the use of
metal fuel cells as a power supply thus, there is no motivation to combine the
teachings of Hershey and Jalan. (Brief, p. 14).
Appellants’ augment is not persuasive. As correctly recognized by the
Examiner, Answer, page 9, Jalan discloses several advantages for using a
metal fuel cell. A person of ordinary skill in the art would have reasonably
expected that the advantages discussed in Jalan would have also been
achieved by using a metal fuel cell in the device of Hershey.
CONCLUSION
In summary, we affirm the Examiner’s rejections of claims 1, 2 and 10-15
and claims 6-9. However, we reverse the Examiner’s rejection of claims 3
and 4.
Appeal No. 2005-2724
Application No. 10/236,005

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Time for taking action
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv)(2004).

AFFIRMED-IN-PART

)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

JTS/tf
Comment [COMMENT1]: The year
should be entered here.
Appeal No. 2005-2724
Application No. 10/236,005

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THOMAS SPINELLI
2 SIPALA COURT
E. NORTHPORT, NY 11731