Ex Parte Werner et al

Patent Trial and Appeal Board

May 18, 2018

13699582 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/699,582 01/30/2013
24972 7590 05/22/2018
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
UweWerner
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.
BOSC.P7809US/l 1603214 9089
EXAMINER
HAN, JASON
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
05/22/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE WERNER and GEORGIOS MARGARITIS
Appeal2017-006838
Application 13/699,582
Technology Center 2800
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 13-30, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In our Opinion, we refer to the Specification filed November 21, 2012
("Spec."); the Final Action mailed May 31, 2016 ("Final Act."); the Appeal
Br. filed November 29, 2016 ("Appeal Br."); the Examiner's Answer mailed
January 26, 2017 ("Ans."); and the Reply Brief filed March 24, 2017
("Reply Br.").
2 Appellants identify ROBERT BOSCH GmbH as the real party in interest.
App. Br. 1.
Appeal2017-006838
Application 13/699,582
The claims are directed to a handheld tool carrying case. Claim 13,
reproduced below from the Claims Appendix of the Appeal Brief, is
illustrative of the claimed subject matter:
13. A handheld tool carrying case, comprising:
a carrying case base;
a carrymg case cover;
a lighting device; and
an orientation device to fixate at least one part of the
carrying case base or of the carrying case cover pivotably in
various orientations relative to a resting plane of the carrying
case base or of the carrying case cover, wherein the orientation
device comprises:
a connecting element;
a fastening element configured to fixate the
connecting element pivotably on the carrying case base or the
carrying case cover; and
a latching arrangement configured to fixate the
connecting element in various discrete orientations in which the
tool carrying case is at least partially open relative to the resting
plane of the carrying case base or of the carrying case cover.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
W eitbrecht et al.
("Weitbrecht")
Yao
Washington
Chen
us 5,639,002
us 6,053,315
US 6,254,251 Bl
US 2004/0228114 Al
2
June 17, 1997
Apr. 25, 2000
July 3, 2001
Nov. 18, 2004
Appeal2017-006838
Application 13/699,582
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections under 35 U.S.C. § 103(a): (1) claims 13, 16, 17, 19, 21, 24, and
28-30 over Washington in view of Weitbrecht; (2) claims 14, 15, 18, 20, 22,
and 23 over Washington in view ofWeitbrecht, and further in view of Yao;
(3) claims 25 and 26 over Washington in view of Weitbrecht, and further in
view of Chen; and (4) claim 27 over Washington in view ofWeitbrecht and
Chen, and further in view of Yao. Final Act. 2, 17, 24, 29; App. Br. 4.
OPINION
Appellants argue claims 13-24 and 26-30 as a group. App. Br. 4--5.
We select claim 13 as representative of the group. The remaining claims in
the group will stand or fall with claim 13. 37 C.F.R. 42.37(c)(l)(iv). 3
With respect to claim 13, the Examiner finds that Washington teaches
a carrying case base and cover, a lighting device, and an orientation device.
Final Act. 3. Although the Examiner finds that Washington fails to teach the
connecting element, fastening element, and latching arrangement of the
orientation device of claim 13, the Examiner finds that Weitbrecht teaches
these limitations. Id. at 3--4. The Examiner determines that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify Washington to incorporate the orientation device taught by
Weitbrecht because Weitbrecht's orientation device has certain advantages.
Id. at 4--5. Weitbrecht's orientation device allows positioning and securing
the cover relative to the base in more orientations, as needed by the user, and
3 Appellants argue separately for patentability of claim 25, which we
address separately after our discussion of claim 13.
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Application 13/699,582
allows for greater flexibility in using the tool carrying case. Id. at 5. In
addition, the Examiner finds that including the orientation device taught by
W eitbrecht for that disclosed by Washington would have been a simple
substitution of one known element for another, to obtain a predictable result.
See KSR Int'! Co. v. Teleflex, 550 U.S. 398, 416 (2007).
Appellants' sole argument for patentability of claim 13 is that
Washington and W eitbrecht are not analogous art, thus one skilled in the art
would not have been motivated to combine the references. App. Br. 4.
"Whether a reference in the prior art is 'analogous' is a fact question."
In re Clay, 966 F.2d 656, 658 (Fed. 1992); see also Scientific Plastic Prods.,
Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014) ("The analogous
art inquiry is a factual one, requiring inquiry into the similarities of the
problems and the closeness of the subject matter as viewed by a person of
ordinary skill."). Furthermore, the scope of analogous art is to be construed
broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
("The Supreme Court's decision in KS'R international Co. v. Teleflex, Inc.,
550 U.S. 398 (2007), directs us to constn1e the scope of analogous art
broadly, stating that ~{arniliar iterns may have obvious uses beyond their
primmy pw7JOses, and a person of ordinary skill often will be able to fit the
teachings of multiple patents together like pieces of a puzzle.' Id. at 402
(emphasis added).").
To label a reference as analogous art "merely connotes that it is
relevant to a consideration of obviousness under § 103 as 'prior art."' In re
Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). Two separate tests define the
scope of analogous prior art: ( 1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
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Application 13/699,582
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 Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004).
Appellants contend that Weitbrecht is not from same field of endeavor
as Washington and the present invention: Weitbrecht relates to a coverable
container for the seat-area of vehicles to provide a vertically adjustable
armrest, while Washington and the present invention relate to a portable
stool storage box and a handheld tool carrying case. App. Br. 4--5.
Appellants also argue that Weitbrecht is not reasonably pertinent because it
allows for different pivot positions in order to "reliably support the arm
resting on the flap" of the container, but the latching arrangement of the
present invention allows the lighting device to be "oriented advantageously
onto a work area." Id. at 5. Appellants contend that Weitbrecht's disclosure
of an arm rest with latching grooves that allows fixation of the arm rest into
only three small open positions ( 6Q, 12Q, and 18Q) would offer only minor
benefits compared to a toolbox with a lighting device in its closed state, as
only the ceiling will be illuminated. Id.
The field of endeavor here is positioning means for a container that
allows the top or cover of the container to be held in a position. When
considering field of endeavor, we remain cognizant of the adage that "the
name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of Protection and
Interpretation of Claims-American Perspectives, 21 Int'l Rev. Indus. Prop.
& Copyright L. 497, 499 (1990)). Appellants' motivation and purpose do
not control an obviousness determination. KSR, 550 U.S. at 419-420 ("In
determining whether the subject matter of a patent claim is obvious, neither
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Application 13/699,582
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under§ 103."). Neither claim 13 nor the
Specification require that the open position be of a specified size. Therefore,
Appellants' contention that Weitbrecht is non-analogous art because the
latching arrangement allows only small open positions is unpersuasive of
reversible error by the Examiner.
We find both Washington and Weitbrecht are analogous art to claim
13 and the instant invention. We agree with the Examiner's analysis that the
combined references teach all elements of claim 13. Therefore, we sustain
the rejection of claim 13. We also sustain the rejection of claims 14--24 and
26-30.
Claim 25 depends from claim 13 and further requires that "the
lighting device is fixedly connected to the carrying case cover and includes a
light emitting surface which is disposed on an outer surface of the carrying
case cover." Claims App'x 3.
The Examiner rejects claim 25 over the combination of Washington
and Weitbrecht, as applied to claim 13, and further in view of Chen. Final
Act. 24. The Examiner finds that Chen teaches a lighting device being
fixedly connected to a carrying case cover and including a light emitting
surface that is disposed on an outer surface of the carrying case cover. Id. at
25. The Examiner concludes that it would have been obvious to have
modified the combination of Washington and Weitbrecht to incorporate
Chen's teachings because the modification would allow illumination of areas
outside of the carrying case. Id. In addition, the modification would be an
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Application 13/699,582
obvious combination of prior art elements according to known methods to
yield predictable results. Id. at 26.
Appellants' argument that claim 25 is not obvious for the same
reasons as for claim 13 is unpersuasive. Appellants also argue that one of
ordinary skill in the art at the time of the invention would not have combined
Washington and Chen. App. Br. 6. Appellants contend that Washington is
concerned with providing light for a user to open the box assembly in a dark
environment and immediately be able to locate the necessary tool. Id. In
contrast, Chen is concerned with locating the toolbox in a storage room,
according to Appellants. Id.
Chen discloses a toolbox with a luminescent device attached. Chen,
Abstract. The luminescent device includes a driver, a sensor connected with
the driver, and a light source connected to the sensor. Id. Except for the
luminescent device, the toolbox is otherwise similar to conventional
toolboxes. Id. i-f 15. The primary objective of Chen is to provide
luminescence "when necessary." Id. i-f 4. While such luminescence may be
helpful in locating the toolbox in a storeroom, Chen's disclosure does not
exclude using the light source for other purposes.
Washington describes a toolbox with two exterior light assemblies for
emitting light from an exterior side surface of the box portion. Washington
col. 1, 11. 52-55. Such exterior light sources could be helpful in locating the
toolbox in a storeroom, as well as having other purposes in both Washington
and Chen.
Appellants' overly narrow descriptions of the disclosures in
Washington and Chen regarding light sources do not bar combining the
references. See App. Br. 6; Reply 2. "As long as some motivation or
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Application 13/699,582
suggestion to combine the references is provided by the prior art taken as a
whole, the law does not require that the references be combined for the
reasons contemplated by the inventors." In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992). "One of ordinary skill in the art need not see the identical
problem addressed in a prior art reference to be motivated to apply its
teachings." Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424
F.3d 1293, 1323 (Fed. Cir. 2005). The skilled artisan would have been
motivated to use Chen's exterior luminescence device in Washington's
toolbox to assist in locating the toolbox in a storeroom, as well as to
illuminate the area interior and exterior to the toolbox.
DECISION
The rejections of claims 13-30 are affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv)(2015).
AFFIRMED
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