Ex Parte Werner et alDownload PDFPatent Trial and Appeal BoardMay 18, 201813699582 (P.T.A.B. May. 18, 2018) Copy Citation 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. 3 Appeal2017-006838 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 4 Appeal2017-006838 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 5 Appeal2017-006838 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 6 Appeal2017-006838 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 7 Appeal2017-006838 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 8 Copy with citationCopy as parenthetical citation