Ex Parte Weir et al

Patent Trial and Appeal Board

May 25, 2018

14208399 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/208,399 03/13/2014
10800 7590 05/25/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
James Alan Weir
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2178-1940 4641
EXAMINER
MCGRATH,ERINE
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
05/25/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES ALAN WEIR and ANDREW POMJIN CHO
Appeal2017-008003
Application 14/208,399
Technology Center 3700
Before: CHARLES N. GREENHUT, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 2-
10 and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2017-008003
Application 14/208,399
CLAIMED SUBJECT MATTER
The claims are directed to a heated garment and battery holster. Claim
2, reproduced below, is illustrative of the claimed subject matter:
2. A heated garment system, comprising:
a jacket;
a wiring circuit embedded within the jacket and
configured to generate heat;
a battery assembly configured to removably couple with
the wiring circuit, the battery assembly including a power button
for selectively applying power to the wiring circuit; and
a battery holder configured to removably receive the
battery assembly, wherein:
the battery holder includes a first end portion defining a
cavity and a second end portion including an opening; and
the battery assembly includes a coupler configured to align
with the opening when the battery assembly is received within
the cavity.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Matti
Snyder
Holmberg
Richmond
Gray
Blackford
us 4,464,445
us 5,768,371
US 7,623,898 B2
US 2009/0289046 Al
US 2011/0108538 Al
US 2012/0074128 Al
REJECTIONS
Aug. 7, 1984
June 16, 1998
Nov. 24, 2009
Nov. 26, 2009
May 12, 2011
Mar. 29, 2012
Claims 2, 3, and 5-9 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Richmond and Matti.
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Application 14/208,399
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Richmond, Matti, and Snyder.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Richmond, Matti, and Blackford
Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gray and Richmond.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gray, Richmond, and Holmberg.
OPINION
An examiner's rejection must be clearly articulated in the record
before us in order for us to provide meaningful appellate review. In re
Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). In this case, the Examiner's
rejection of claim 2 based on Richmond and Matti is not adequately clear.
Claim 2 requires a battery holder that includes a first end portion
defining a cavity and a second end portion including an opening, and claim 2
also requires that the battery holder is configured to removably receive a
battery assembly. The Examiner initially cites Richmond's battery pack 130
as the recited "battery assembly" and Richmond's pocket 108 as the recited
"battery holder." Final Act. 3--4. The Examiner then states that, "Richmond
fails to disclose the battery holder including a first end portion defining a
cavity and a second end portion including an opening." Ans. 3; cf Final Act.
4 ( stating that "Richmond fails to disclose the battery assembly including a
first end portion defining a cavity and a second end portion including an
opening") ( emphasis added). In claim 2, however, it is the "battery holder,"
not the "battery assembly," that must include the "cavity" and "opening."
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Application 14/208,399
The Examiner then cites Matti as disclosing a "battery holder (10)
including ... a cavity ... into which the batteries are inserted[] and ... an
opening (24), where the battery assembly includes a coupler (22) configured
to align with the opening (24) when the battery assembly is received within
the cavity." Final Act. 4. Although the Examiner does not specify precisely
what in Matti is regarded as the "battery assembly," it is apparent that the
Examiner cites at least coupler 22 as part of the "battery assembly." Coupler
22, though, is external to the cited cavity of battery holder 10 and not
"received within the cavity," as required by claim 2.
As Appellants point out, interpreting the combination of Richmond's
and Matti's components as the Examiner has done would not arrive at the
claimed arrangement, including, for example, the claimed coupler aligned
with the opening when the battery assembly is received within the cavity.
App. Br. 4. Although we are mindful that an obviousness combination does
not require bodily incorporation of the cited elements of the prior art (see
Ans. 10 (citing In re Keller, 642 F.2d 413 (CCPT 1981)), the Examiner's
rejection conflates claim terms and the cited elements in such a way that the
Examiner's intended position is not adequately clear.
As Appellants are entitled to timely notice of all matters of fact and
law asserted, it is neither our place, nor Appellants' burden, to speculate as
to the basis for rejecting claims. In re Stepan, 660 F. 3d 1341, 1345 (Fed.
Cir. 2011 ). Accordingly, we do not sustain the rejections based entirely, or
in part, on the Richmond-Matti combination.
Turning to the rejection of claim 2 based on Gray and Richmond, the
Examiner modified the reasoning of the Final Rejection so that the "closed
end" of Gray's battery holder corresponds to the "first end portion defining a
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Appeal2017-008003
Application 14/208,399
cavity" and the "open end" of the battery holder corresponds to the claimed
"second end portion including an opening." Ans. 8. The Examiner further
finds that Gray also teaches a "power button," Gray's "on/off switch (such
as the control button 22)" (Gray para. 0038), on the battery holder 136,
citing the battery holder's on/off switch as support for the conclusion that it
would have been obvious to include a power button on the battery assembly
as taught by Richmond. Ans. 12-13.
Appellants assert the position set forth in the Examiner's Answer is a
new ground of rejection (App. Br. 9-11), but demonstrate they had actual
notice of these grounds and respond substantively under 37 C.F.R. § 41.41
instead of electing to pursue the procedural options afforded under 37 C.F.R.
§ 41.40.
In rejecting the claims on Gray and Richmond, the Examiner regards
Gray's battery pack 38 as the recited "battery assembly" and Gray's battery
holder 36 as the recited "battery holder." Final Act. 9. In Gray, it is this
entire assembly, battery pack and battery holder, that is received in a pocket
or zippered compartment 32. Gray para. 24. This is similar to Richmond, in
which pocket 108 receives battery pack 130. Richmond para. 56. In both
Gray and Richmond, it is disclosed that a power button (Richmond 612, para
64; Gray 22, para. 0038) may be placed on the outermost structure housing
the batteries (in Richmond) or the battery pack (in Gray) and directly
received in the garment pocket. Neither of these references teaches the
provision of a power button on a structure like the battery pack 3 8 of Gray
that the Examiner proposes to modify to include a power button.
The Examiner states that such a modification would "allow[] the
battery to be used in a wider variety of objects such as other heated garments
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Application 14/208,399
and even tools (Gray, Par. 0025) without the need for specially designed
power controls separate from the battery assembly." Final Act. 9; Ans. 13.
However, the Examiner does not cite any evidence, nor provide any
technical reasoning to explain why this is so. Reply. Br. 13-14.
On the record before us, the Examiner has not presented sufficient
evidence or reasoning to demonstrate why it would have been obvious, in
light of Richmond's teachings, to place a power button on the battery pack
38 of Gray specifically. By failing to present sufficient evidence or
reasoning regarding this particular feature of claim 2, the Examiner has
failed to establish the obviousness of the precise subject matter claimed. All
words in a claim must be considered in judging the obviousness of the
claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970). This deficiency is not overcome by the Examiner's rejection to
dependent claim 20 based on the combination of Gray, Richmond, and
Holmberg.
DECISION
The Examiner's rejections are reversed.
REVERSED
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