Matthew Keeler et al.Download PDFPatent Trials and Appeals BoardMar 30, 20212020004415 (P.T.A.B. Mar. 30, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/819,549 08/06/2015 Matthew Len Keeler KEE01-001-US 1455 27300 7590 03/30/2021 PANDISCIO & PANDISCIO, P.C. 436 Boston Post Road Weston, MA 02493 EXAMINER MORGAN, EMILY M ART UNIT PAPER NUMBER 3677 NOTIFICATION DATE DELIVERY MODE 03/30/2021 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): mail@pandisciolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHEW LEN KEELER and KRISTIN E. KEARNS ____________ Appeal 2020-004415 Application 14/819,549 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 2, 3, 5–8, 16, and 18. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references the Specification (“Spec.,” filed Aug. 6, 2015), Final Office Action (“Final Act.,” mailed Mar. 20, 2019), Appeal Brief (“Appeal Br.,” filed Feb. 21, 2020), and Answer (“Ans.,” mailed Mar. 18, 2020). Appellant identifies the inventors as the real party in interest. Appeal Br. 3. Appeal 2020-004415 Application 14/819,549 2 We REVERSE. CLAIMED INVENTON Appellant’s claimed invention “generally relates to a system for illuminating transparent jewelry elements such as, but not limited to, glass beads, clear acrylic elements or translucent stones that may be part of a larger piece of jewelry such as a bracelet or a necklace.” Spec. ¶ 3. Claim 18, reproduced below with bracketed notations added, is the sole independent claim on appeal and is representative of the claimed subject matter: 18. An illuminatable jewelry system, comprising: [(a)] a length of electrically-conductive stringing material having a first end and a second end, and an illuminatable element comprising a light emitting diode disposed therebetween, the light emitting diode comprising a cathode side electrically connected to the first end of the electrically- conductive stringing material and an anode side electrically connected to the second end of the electrically-conductive stringing material; [(b)] a first magnetic connector having a first end and a second end, the first end of the first magnetic connector being electrically coupled to the first end of the electrically-conductive stringing material, and the second end of the first magnetic connector having a first magnetic polarity; [(c)] a second magnetic connector having a first end and a second end, the first end of the second magnetic connector being electrically coupled to the second end of the electrically- conductive stringing material, the second end of the magnetic connector having a second magnetic polarity, wherein the second magnetic polarity is the opposite of the first magnetic polarity; and [(d)] a power cell, the power cell comprising: [(1)] a negative terminal comprising a third magnetic connector having a first end and a second end, Appeal 2020-004415 Application 14/819,549 3 the first end of the third magnetic connector being electrically coupled to the negative terminal of the power cell, and the second end of the third magnetic connector having the second magnetic polarity; and [(2)] a positive terminal comprising a fourth magnetic connector having a first end and a second end, the first end of the fourth magnetic connector being electrically coupled to the positive terminal of the power cell, and the second end of the fourth magnetic connector having the first magnetic polarity; [(e)] wherein proper current flow from the power cell, through the length of electrically-conductive stringing material, and through the light emitting diode is automatically ensured when (i) the second end of the first magnetic connector is magnetically mounted to the second end of the third magnetic connector, and (ii) the second end of the second magnetic connector is magnetically mounted to the second end of the fourth magnetic connector. Appeal Br. 45–47 (Claims Appendix). REJECTION2 Claims 2, 3, 5–8, 16, and 18 are rejected under 35 U.S.C. § 103 as unpatentable over Underdown (US 7,441,917 B1, iss. Oct. 28, 2008) and Kuhlmann (US 2008/0048609 A1, pub. Feb. 28, 2008). ANALYSIS Claim 18 requires four magnetic connectors configured in a manner to ensure proper current flow from a power cell through electrically-conductive stringing material. In rejecting claim 18, the Examiner finds that 2 The Examiner has withdrawn the rejection under 35 U.S.C. § 112(b). Ans. 3. Appeal 2020-004415 Application 14/819,549 4 Underdown teaches the claimed length of electrically-conductive stringing material (limitation (a)), the claimed first magnetic connector (limitation (b)), the claimed second magnetic connector (limitation (c)), and a power cell (limitation (d)). Final Act. 4 (citing Underdown Figs. 6–7, 4:64, 4:67). The Examiner finds that Underdown’s power cell has proper current flow when the first magnetic connector is magnetically mounted to the second magnetic connector. Id. (citing Underdown 4:64, Fig. 7). As such, the Examiner acknowledges that Underdown does not teach the claimed power cell having: a negative terminal comprising a third magnetic connector having a first end and a second end, the first end of the third magnetic connector being electrically coupled to the negative terminal of the power cell, and the second end of the third magnetic connector having the second magnetic polarity; and a positive terminal comprising a fourth magnetic connector having a first end and a second end, the first end of the fourth magnetic connector being electrically coupled to the positive terminal of the power cell, and the second end of the fourth magnetic connector having the first magnetic polarity, wherein proper current flow from the power cell, through the length of electrically-conductive stringing material, and through the light emitting diode is automatically ensured when (i) the second end of the first magnetic connector is magnetically mounted to the second end of the third magnetic connector, and (ii) the second end of the second magnetic connector is magnetically mounted to the second end of the fourth magnetic connector[,] as recited in claim 18, limitations (d)(1), (d)(2), and (e). See id. at 5 (“Underdown . . . does not disclose a power cell having a negative terminal with a third magnetic connector, a positive terminal with a fourth magnetic counter, and that the current flow is ensured when all four magnetic connectors are attached appropriately.”). Appeal 2020-004415 Application 14/819,549 5 To remedy the deficiencies of Underdown, the Examiner relies on Kuhlmann. See id. at 5–6 (citing Kuhlman ¶¶ 26, 38, Fig. 5). Kuhlmann relates to “magnetically attachable leads for connecting to any battery for battery recharging.” Kuhlmann ¶ 1. Figure 5 of Kuhlman shows flashlight 132 having internal circuitry (not shown) and magnetic leads 101 for transferring charge from external battery 111 to an internal battery or batteries. Id. ¶¶ 22, 38. Magnetic leads 101 include wires 103 with conducting and magnetically-attaching ends 102. Id. ¶ 26. Because most batteries are encased with magnetic, iron-based materials, magnetic leads 101 attach to a variety of batteries. Id. ¶ 27. In one embodiment, magnetic leads 101 are polarized, i.e., one lead 101 must be aligned with a positive end of the battery and another lead 101 must be aligned with a negative end of the battery in order for current to flow properly through the circuit. See id. ¶ 28. In this embodiment, the leads would be marked, such as by color or symbols, to indicate polarity of the circuit so that a user could connect the battery in a manner to provide for proper current flow. Id. In another embodiment, magnetic leads 101 are not polarized, allowing current to flow properly regardless of which lead 101 attaches to the positive or negative terminal of battery 111. Id. The Examiner finds that Kuhlmann’s magnetically-attaching ends 102 of leads 101 teach the first and second magnetic connectors, that a negative terminal of external battery 111 teaches the claimed third magnetic connector, and a positive terminal of external battery teaches the claimed fourth magnetic connector. Final Act. 5; see also Ans. 4–5 (finding that for “magnetic leads 101 to stay attached to battery 111, the battery must therefore have magnetic ends,” and concluding from this finding that Appeal 2020-004415 Application 14/819,549 6 “Kuhlmann discloses four ‘magnetic connectors’”). The Examiner further finds that proper current flow from battery 111 is “automatically ensured when (i) the second end of the first magnetic connector is magnetically mounted to the second end of the third magnetic connector, and (ii) the second end of the second magnetic connector is magnetically mounted to the second end of the fourth magnetic connector (as shown in figure 5).” Final Act. 5. Yet, we agree with Appellant that Kuhlmann does not teach or suggest the claimed third and fourth magnetic connectors, as recited in limitations (d)(1), (d)(2), and (e) of claim 18. See Appeal Br. 34–38. For example, claim 18 requires a third magnetic connector having a first end electrically coupled to a negative terminal of Kuhlmann’s battery 111 and a second end having a second magnetic polarity (limitation (d)(1)). It also requires a fourth magnetic connector having a first end electrically coupled to the positive terminal of Kuhlmann’s battery 111 and a second end having a first magnetic polarity (limitation (d)(2)). Kuhlmann’s battery, in contrast, includes standard batteries “encased with magnetic iron based materials.” Kuhlmann ¶ 27. To the extent that the Examiner finds that Kuhlmann’s battery requires the claimed third magnetic connector having a second end with a second magnetic polarity (limitation (d)(1)) and the claimed fourth magnetic connectors having a second end with a first polarity (limitation (d)(2)) because magnetically-attaching ends 102 are capable of attaching to Kuhlmann’s battery 111, we disagree. Here, Kuhlmann’s magnetically- attaching ends 102 would magnetically connect with battery 111, because the battery is encased in an iron-based material. However, Kuhlmann does Appeal 2020-004415 Application 14/819,549 7 not teach or suggest that the battery includes the third magnetic connector having a second end with a second magnetic polarity and a fourth magnetic connector having a second end with a first polarity, as recited in limitations (d)(1) and (d)(2). In the Answer, the Examiner additionally points to paragraph 7 of Kuhlmann as disclosing “the use of magnetic ends on the battery 111.” Ans. 7. However, paragraph 7 does not relate to the embodiment shown in Figure 5. Instead, paragraph 7 generally describes, as background, that it is known to affix magnets to a battery, such as with rechargeable phones, to hold the battery in place. We find no indication that battery 111 in the embodiment depicted in Figure 5 of Kuhlmann includes the third magnetic connector and fourth magnetic connector, as required by limitations (d)(1), (d)(2), and (e) of claim 18, based on paragraph 7 of Kuhlmann. To the extent that the Examiner finds in the Answer that paragraph 28 of Kuhlmann teaches or suggests a “proper” magnetic polarity for ends 102 of magnetic leads 101, we disagree. See Ans. 4–5. (“Examiner notes that Kuhlmann discusses ‘proper polarity’ in [0028].”). The magnetic polarity of ends 102 would not be an issue for the embodiment shown in Figure 5, because ends 102 are attaching to an iron-based material, and not a magnet having a first magnetic polarity at a first end and a second, opposite magnetic polarity at the second end. Instead, paragraph 28 concerns electrical polarity of the circuit (e.g., flashlight 132 for the example depicted in Figure 5) that would be powered by connecting magnetic leads 101 to a battery. See Kuhlmann ¶ 28 (“Alternatively, the configuration of the internal circuitry is such that the device will function properly with either Appeal 2020-004415 Application 14/819,549 8 magnetic lead 101 attached to either end of the battery.”) (emphasis added and omitted). For the foregoing reasons, we determine that the Examiner fails to establish, using adequate evidence or technical reasoning, how the combination of Underdown and Kuhlman teaches or suggests at least limitations (d)(1), (d)(2), and (e), as required in claim 18. Accordingly, we do not sustain the rejection of independent claim 18 and dependent claims 2, 3, 5–8, and 16 under 35 U.S.C. § 103 as unpatentable. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 3, 5–8, 16, 18 103 Underdown, Kuhlmann 2, 3, 5–8, 16, 18 REVERSED Copy with citationCopy as parenthetical citation