Uwe Werner et al.

Patent Trials and Appeals Board

Aug 23, 2019

13699795 - (D) (P.T.A.B. Aug. 23, 2019)

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.
13/699,795 03/06/2013 Uwe Werner BOSC.P7810US/11603215 1081
24972 7590 08/23/2019
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
GRAMLING, SEAN P
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
08/23/2019 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
____________________

Appeal 2017-009677
Application 13/699,795
Technology Center 2800
____________________

Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 13, 15–23, 25, 27–35, and 38, which constitute all the claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In our Decision, we refer to the Specification (“Spec.”) of the 13/699,795
Application filed November 26, 2012 (“’795 App.”); the Final Office Action
dated August 18, 2016 (“Final Act.”); the Appeal Brief filed March 10, 2017
(“App. Br.”); the Examiner’s Answer dated June 13, 2017 (“Ans.”); and the
Reply Brief filed June 28, 2017 (“Reply Br.”).
2 Appellants identify Robert Bosch GmbH as the real party in interest. App.
Br. 1.
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The invention relates to a handheld tool carrying case having a
carrying case base, a carrying case cover, at least on battery interface and
one lighting device. Spec. 1, ll. 8–10; 3, ll. 6–8.3 Claim 13, reproduced
below from the Claims Appendix of the Appeal Brief, illustrates the claimed
subject matter:
13. A handheld tool carrying case, comprising:
a carrying case base;
a carrying case cover; and
at least one electronic system;
wherein the carrying case base is connected to the
carrying case cover in a detachable fashion such that the
carrying case base and the carrying case cover are configured to
be completely separated from each other without the use of a
tool,
wherein the carrying case cover has at least one battery
interface which is at least partly fixedly connected to the
carrying case cover, wherein the at least one battery interface is
disposed on an inner surface of the carrying case cover such
that an at least one battery is insertable only when the carrying
case is at least in a partially open state with respect to the
carrying case body,
wherein at least one of the carrying case base and the
carrying case cover has at least one lighting device which is at
least partly fixedly connected to the at least one of the carrying
case base and the carrying case cover,
wherein the lighting device includes a plurality of light
emitting elements embodied as LEDs and a plurality of
diffusers which emit a light flux emitted by the light emitting
elements through a light emission surface of the lighting device,

3 Citations to the Specification are to the substitute specification filed on
Nov. 26, 2011, rather than the literal translation of the original German
application.
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wherein the lighting device emits a light flux that is
greater than 100 lumens.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Chang US 6,662,945 B1 Dec. 16, 2003
Chen US 2004/0228114 A1 Nov. 18, 2004
Klein US 2004/0237374 A1 Dec. 2, 2004
Baker et al.
(“Baker”)
US 7,055,983 B1 June 6, 2006
Finn US 2008/0198578 A1 Aug. 21, 2008
Lase US 2010/0236955 A1 Sept. 23, 2010
REJECTIONS
The Examiner maintains the following rejections: (1) claims 13, 15–
23, 25, 27–35, and 38 under 35 U.S.C. § 112, first paragraph for failing to
comply with the written description requirement; (2) claims 13, 15–23, 25,
27–30, 33, 35, and 38 under 35 U.S.C. § 103(a) as unpatentable over Chen
in view of Klein, Baker, and Finn; (3) claim 31 under 35 U.S.C. § 103(a) as
unpatentable over Chen in view of Klein, Baker, and Finn, and further in
view of Lase; and (4) claims 32 and 34 under 35 U.S.C. § 103(a) as
unpatentable over Chen in view of Klein, Baker, and Finn, and further in
view of Chang. Final Act. 4–13.
OPINION
Written Description Rejection
The independent claims (claims 13 and 35) each require “at least one
battery is insertable only when the carrying case is at least in a partially open
state with the respect to the carrying case body.” Claims App. 1, 4–5. The
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Examiner quotes the Specification’s disclosure: “[a]lternatively or
additionally, the battery could be insertable into a battery slot from outside
while the carrying case cover is closed.” Final Act. 3. Based on this
language, the Examiner finds that Applicants fail to have support in the
application as originally filed for the claim limitation requiring the battery
only be insertable when the carrying case is at least partially open. Id.
Appellants argue that support for the disputed claim limitation is
found in the Figures. App. Br. 4. Figures 1 and 2 of the ’795 Application
are reproduced below:

Figure 1 is a perspective representation of an open handheld tool
carrying case according to an embodiment of the invention having a lighting
device. Spec. 10, ll. 26–28. Lighting device 18a4 shown on an outer surface
of the carrying case cover 14a includes light emission surface 22a. Spec.

4 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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11, ll. 32–33. No battery or battery compartment is illustrated on an outer
surface of the carrying case in Figure 1.
Figure 2 is a partially schematic view of an inner side of the handheld
tool carrying case illustrated in Figure 1. Spec. 10, ll. 30–31. Figure 2
shows two battery interfaces, 17a and 28a, which contact a battery (not
shown). Spec. 13, ll. 31–32. First battery interface 17a is fixedly connected
to carrying case cover 14a. Spec. 13, ll. 33–34.
We do not agree with the Examiner that the ’795 Application lacks
written description for the limitation “at least one battery is insertable only
when the carrying case is at least in a partially open state with respect to the
carrying case body.” See Final Act. 3–4. As quoted by the Examiner, the
Specification states “[a]lternatively or additionally, the battery could be
insertable into a battery slot from outside while the carrying case cover is
closed.” Id. at 4 (quoting Spec. 3, ll. 21–23) (emphasis added).
“Alternatively” indicates that the battery being insertable into a battery slot
only when the carrying case cover is open was an option in the possession of
the inventors at the time of filing the application. Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563‒64 (Fed. Cir. 1991)) (“For
an applicant to comply with the 35 U.S.C. § 112, first paragraph, written
description requirement, the applicant’s specification must ‘convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.’”). Therefore, the Specification
includes sufficient written description of the invention claimed.
We do not sustain the Examiner’s rejection of claims 13, 15–23, 25,
27–35, and 38 as lacking written description.
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Obviousness Rejections
The Examiner rejects claims 13, 15–23, 25, 27–33, 33, 55, and 38 as
obvious over Chen in view of Klein, Baker, and Finn. Final Act. 5–12. For
claim 31, the Examiner adds Lase to the cited prior art, and for claims 32
and 34, the Examiner adds Chang to the cited prior art. Id. at 12–13.
The Examiner finds that Chen teaches the claim limitations with the
exceptions that Chen does not specifically teach (1) the carrying case base
and carrying case cover are configured to be completely separated from each
other without the use of a tool; (2) at least one battery is insertable only
when the carrying case cover is at least in a partially open state with respect
to the carrying case body; and (3) the light emitting elements are LEDs with
diffusers and emit a flux that is greater than 100 lumens. Final Act. 5–6.
The Examiner finds that configuring bases and covers to be
completely separated from each other without the use of a tool is common in
the art, as well as being specifically taught by Klein. Id. at 5. Klein is
drawn to a sporting apparatus especially for fishing and includes a cover that
is entirely removable from a tackle box. Klein, Fig. 23, ¶ 91.
The Examiner finds that providing battery interfaces on the inner
surface of a carrying case cover such that at least one battery can only be
insertable when the carrying case cover is at least partially open with respect
to the carrying case body is common in the art, as well as being specifically
taught by Baker. Final Act. 6. Baker discloses a light storage box assembly
especially suited for use as a fishing tackle box. Baker, Abstract. The box
assembly includes a rotatable lamp assembly mounted on the box’s lid,
portions of which may be translucent material allowing light to shine
through the box. Baker, Abstract.
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The Examiner finds that providing LEDs with diffusers is common in
the art, as well as being specifically taught in Finn. Final Act. 6.
Appellants argue, inter alia, that the combination of Chen, Klein, and
Finn is based on hindsight. App. Br. 6.
Chen discloses a luminescent toolbox apparatus. Chen, Abstract.
Figure 4 of Chen is reproduced below:

Figure 4 is a perspective view of a luminescent toolbox apparatus
according to an embodiment of Chen’s invention showing the apparatus
emitting luminescent light. Chen ¶ 11. Light source 50 includes a
luminescent strip 51 which may carry a logo, and three luminescent strips
52.
Finn is drawn to a fashion illumination system wherein a garment has
a concealed light source positioned so as to illuminate the skin of the wearer.
Finn Abstract. The Examiner determines that it would have been obvious to
one of ordinary skill in the art at the time of the invention to specify the light
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emitting elements in Chen be LEDs with diffusers as taught by Finn in order
to provide an efficient and long-lasting illumination source with a uniform
light distribution pattern. Final Act. 6–7.
The reasoning for integrating the LEDs of Finn’s fashion illumination
system into Chen’s toolbox apparatus appears to be proposed out of
hindsight. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358,
1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread
that stitches together prior art patches into something that is the claimed
invention.”). “Defining the problem in terms of its solution reveals improper
hindsight in the selection of the prior art relevant to obviousness.”
Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir.
2000). Here, the Examiner fails to provide the requisite “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner also determines that it would have been obvious to
specify that the light flux in Chen be greater than 100 lumens in order to
provide a light beam of sufficient intensity to illuminate a desired area, and
discovering the optimum or workable ranges involves only routine skill in
the art. Final Act. 7. This, too, appears to be based on hindsight
reconstruction of the invention. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”). In Chen, the
illumination is provided merely to allow the toolbox to be found in a dark
area. Chen ¶¶ 2–3. In Finn, the light sources in a garment are concealed so
as to illuminate the skin of a wearer without focusing attention on the light
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sources themselves. Finn, Abstract. The Examiner directs us to nothing in
Chen or Finn that suggests a light beam of sufficient intensity to illuminate a
desired area.
For the reasons above, we do not sustain the rejection of claim 13 as
obvious over Chen in view of Klein, Baker, and Finn. We likewise do not
sustain the obviousness rejection of claims 15–23, 25, 27–35, and 38.
Objection
The Examiner requires Appellants to correct the recitation of “[only
when] the carrying case” to “[only when] the carrying case cover” in claims
13 and 35. Final Act. 2. In the Answer, the Examiner commented that
Appellants failed to make the correction. Ans. 2. Although we do not hear
or decide issues pertaining to objections (see MPEP § 706.01), we note for
the record also that claims 13 and 35 also lack antecedent basis for “the
carrying case body” in claims 13 and 35.
DECISION
The rejections of claims 13, 15–23, 25, 27–35, and 38 as lacking
written description and obvious over prior art are reversed.
REVERSED