BLACK & DECKER INC.

Patent Trials and Appeals Board

Mar 22, 2022

2022000730 (P.T.A.B. Mar. 22, 2022)

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. 16/374,052 04/03/2019 Elyse EDWARDS US-TN-16072-CON 4139 28268 7590 03/22/2022 Stanley Black & Decker, Inc. 701 East Joppa Road, MR045 Towson, MD 21286 EXAMINER HERNANDEZ, MANUEL J ART UNIT PAPER NUMBER 2859 MAIL DATE DELIVERY MODE 03/22/2022 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 ELYSE EDWARDS, MATTHEW J. VELDERMAN, WILLIAM A. RIGDON, ANDREW E. SEMAN, and DANIEL J. WHITE Appeal 2022-000730 Application 16/374,052 Technology Center 2800 Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). The oral hearing was waived on March 7, 2022. We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2020). Appellant identifies the real party in interest as Black & Decker Inc. Appeal Br. 3. Appeal 2022-000730 Application 16/374,052 2 CLAIMED SUBJECT MATTER2 The claims are directed to engine mounted battery pack charger system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A battery pack charger system comprising: a charger having one or more receptacles for charging one or more removable battery packs, a mount for mounting the charger to a rotating component of an engine. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Nardi US 4,369,384 Jan. 18, 1983 Serdynski US 2008/0079264 A1 Apr. 3, 2008 Usselman US 2012/0274077 A1 Nov. 1, 2012 Smith US 2012/0291745 A1 Nov. 22, 2012 REJECTIONS Claims 1-3 and 15-18 stand rejected under 35 U.S.C. § 102(a)(l) as being anticipated by Serdynski. 2 We note that independent claim 15 recites “the charger to a primary rotating element of a primary mover,” which is present in the original claim 15, but the Specification does not recite a “mover.” We question whether Appellant intended a “mower” or if Appellant is attempting to claim any machinery that “moves” either as a rotating motor or a moving vehicle. We leave it to the Examiner to further evaluate the scope of the claim and written description support in any further prosecution on the merits. Appeal 2022-000730 Application 16/374,052 3 Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable over Serdynski as applied to claims 1-3 and 15-18 above, and further in view of Nardi. Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over Serdynski as applied to claims 1-3 and 15-18 above, and further in view of Usselman and Nardi. Claims 6 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Serdynski as applied to claims 1-3 and 15-18 above, and further in view of Usselman. Claims 7, 8, 10, 11, and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over Serdynski in view of Smith. Claims 9 and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Serdynski and Smith as applied to claims 7, 8, 10, 11, and 13 above, and further in view of Nardi. Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable over Serdynski and Smith as applied to claims 7, 8, 10, 11, and 13 above, and further in view of Usselman. OPINION 35 U.S.C. § 102 Independent claims 1 and 15 “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). [A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever Appeal 2022-000730 Application 16/374,052 4 enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). To anticipate, “it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Id. We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). We find Appellant’s arguments fail because the arguments are not commensurate with the scope of claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”); see also In Appeal 2022-000730 Application 16/374,052 5 re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not commensurate with the claim scope and are therefore unpersuasive.”) After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we sustain the Examiner’s rejections for the reasons expressed in the Final Action and Examiner’s Answer. We add the following primarily for emphasis. At the outset, we note that the dispute is with respect to claim interpretation and the breath of the scope of the two elements recited in claim 1. Appellant argues that the Examiner states, “it is noted that the instant specification discloses the “charger” comprises an alternator 110, and it is the alternator that is mounted to “a rotating component of an engine”. Similarly, Serdynski discloses a charger which comprises an alternator 22 that is mounted to a rotating component of an engine as described above and within the broadest reasonable interpretation of the claim language”. 12/2/20 Office Action at page 13. First, the Examiner is incorrect regarding the “charger” comprising an alternator 110. In the instant application, the charger 102 and the alternator 110 are separate and distinct elements. As recited in the instant application, “the battery pack charger system 100 includes a charger 102 for charging removable battery packs 104, a charger seating bracket 106, a charger mounting bracket 108, an alternator 110 and an adapter bracket 112.” Instant application, paragraph 29, emphasis added. In addition, the instant application recites, “The charger 102 includes an electrical connector 120, which plugs into the housing 113 to deliver electrical power through a wire 122 from the alternator 110.” Instant application, paragraph 33, emphasis added. Still further, the instant application recites, “the charger 102 is configured to receive 120V AC from the alternator 110.” Instant application, paragraph 33, emphasis Appeal 2022-000730 Application 16/374,052 6 added. Clearly, the charger 102 and the alternator 110 are separate and distinct elements and the alternator is not part of the charger. The Examiner has substituted the alternator for the charger in interpreting the claims and then applied the Serdynski reference. Appeal Br. 10 We disagree with Appellant and find that the Examiner has merely relied upon the broad language and limited elements recited in independent claim 1 which does not preclude additional elements in the combination. We further find that the Examiner has identified specific disclosures and explained how the Serdynski reference discloses the claimed invention. We find the Specification in paragraph 44 describes the combination of elements in the functioning of the battery charger as: The adapter bracket 112 and the rotor component 134 of the alternator 110 rotate with the flywheel and the alternator 110 generates electrical current to charge the charger 102, which charges the removable battery packs 104. The adapter bracket 112 may vary with different engine models and include different placements of fasteners 140 and different numbers of fasteners 140 depending on the type of engine that the battery pack charger system 100 is being mounted. In this manner, different adapter brackets that are sized to fit the alternator 110 may be used depending on the type of engine that the system is being mounted to. The charger 102 may be considered a “drop-on” charger because the charger 102 may be dropped on various types of engines simply by using an adapter bracket 112 that mates with the engine flywheel holes. The engine flywheel holes typically hold a rotating grass screen that is removed to provide access to the holes. The placement of the engine flywheel holes may vary from engine model to engine model and various adapter brackets may be used to mate with particular engine models. In FIGS. 1 and 8, two fasteners 140 are visible and in FIG. 2 three fasteners 140 are visible and in FIGS. 3, 6 and 9 four fasteners are visible. In the example flywheel illustrated below with respect to FIG. 7, four flywheel holes are illustrated so the adapter bracket 112 Appeal 2022-000730 Application 16/374,052 7 actually includes four fasteners 140 to mate with the corresponding flywheel holes even though not all four are visible in FIGS. 1-3. Spec. ¶ 44 (emphasis added). We also find Appellant’s Summary of the Claimed Subject Matter does not identify paragraph 44 of the Specification for this aspect of the claimed invention. Appeal Br. 6-7. The Summary of the Claimed Subject Matter does not provide a specific mapping of elements from the disclosed invention to the claimed invention with multiple structural elements between the physical charger mating to battery packs to ultimately mate with the internal combustion engine. We note that Appellant argues the Examiner’s broadest reasonable claim interpretation, but Appellant does not specifically identify how the claim does not read on the prior art disclosed in the Serdynski reference or how the claim distinguishes over the Serdynski reference. Here, the language of independent claims 1 and 15 does not specifically claim the aspect of the “drop on” battery charger for a riding lawn mower. We further agree with the Examiner that the Serdynski reference discloses the claimed invention as broadly recited in representative independent claim 1 reciting “a mount for mounting the charger to a rotating component of an engine.” If Appellant desires a more specific connection of the battery charger to the rotating components of an internal combustion engine, Appellant should include a specific linkage or identify the specific components that the physical element with its variability in mounting to various internal Appeal 2022-000730 Application 16/374,052 8 combustion engines as element 108 of the disclosed invention.3 “[C]laim construction must begin with the words of the claims themselves.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006) (citation omitted); Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L., 497, 499 (1990) (“To coin a phrase, the name of the game is the claim.”). Here, Appellant has not identified error in the Examiner’s claim interpretation or application of the prior art to Serdynski, and we sustain the anticipation rejection of representative independent claim 1 and independent claim 15 not separately argued are dependent claims 2, 3, 16, 17, and 18.4 35 U.S.C. § 103 Claims 7, 8, 10, 11, and 13 Appellant does not set forth separate arguments for patentability of independent claim 7 and dependent claims 8, 10, 11 and 13. Appeal Br. 15. As a result, we select independent claim 7 as the representative claim for the group and address Appellant’s arguments thereto. We have considered in this decision only those arguments Appellant actually raised in the Briefs. 3 We note that Appellant’s claim 1 is directed to a unique adapter for a “drop on” battery charger that is a combination of claim limitations directed to the electrical functionality of a battery charger and the physical functionality to mate the electrical unit to the structural functionality of the physical internal combustion engine to provide the required motion to generate the electrical power. 4 The Examiner may also wish to consider US Patent 10,709,060 B2 to Simmons et al. in any further prosecution on the merits for an after-market self-contained unit for addition to mowers and US Patent 10,098,278 B2 to of Velderman et al. (Assigned to Black & Decker). Appeal 2022-000730 Application 16/374,052 9 Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv). With regards to the obviousness rejection of independent claim 7, the Examiner additionally relies upon the Smith reference to teach or suggest the “mounting [in the charger and mounting bracket mounting the charger] to one or more engine shroud holes of an engine” in the claimed invention. Final Act. 9. Appellant argues that “the Smith reference, while this reference seems to disclose attaching a coil 12 to a cam cover 10, it surely does not disclose, teach or suggest attaching/mounting a charger to an engine. As such, the Smith reference does not seem to overcome the deficiencies in the Serdynski reference.” Appeal Br. 15. Appellant further argues that the prime deficiency of the Serdynski reference is that it does not teach, disclose or suggest a charger mounting bracket coupled to the charger and that the charger mounting bracket mounts the charger to an engine, much less to one or more engine shroud holes (paraphrasing claim 15 [sic claim 7]). While the power-generating device 18 and a charger 86 are both arguably mounted to the frame 14, it is very apparent that the frame 14 does not serve to mount the charger 86 to the power-generating device 18. To argue that the frame is for mounting the charger to the power-generating device simply because the charger and the power-generating device are both connected to the frame would be analogous to saying a wheel of a car is mounted to an engine of a car simply because they are both connected to the frame of the car. Neither of these are reasonable statements. Appeal Br. 15. Appellant further argues that the prime deficiency of the Serdynski reference is that it does not teach, disclose or suggest a charger mounting bracket coupled to the charger and that the charger mounting bracket mounts the Appeal 2022-000730 Application 16/374,052 10 charger to an engine, much less to one or more engine shroud holes (paraphrasing claim 15 [sic, claim 7]). Appeal Br. 15. Appellant also argues that While the power-generating device 18 and a charger 86 are both arguably mounted to the frame 14, it is very apparent that the frame 14 does not serve to mount the charger 86 to the power- generating device 18. To argue that the frame is for mounting the charger to the power-generating device simply because the charger and the power-generating device are both connected to the frame would be analogous to saying a wheel of a car is mounted to an engine of a car simply because they are both connected to the frame of the car. Neither of these are reasonable statements. Here, Appellant is arguing the references individually rather than the combination as applied as the Examiner has explained the rejection. Appellant further relies upon the arguments found unpersuasive with respect to independent claims 1 and 15. As a result, Appellant’s arguments do not show error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 7 and dependent claims 8, 10, 11, and 13 not separately argued. Claims 9, 12, and 14 Appellant does not set forth separate arguments for patentability of these dependent claims and argues that the Examiner has not relied upon the additional prior art references to remedy the argued deficiencies in independent claim 7 and the claims are patently distinct over the combination of prior art references. Appeal Br. 15-16. Because Appellant did not show error in the Examiner’s obviousness rejection of independent Appeal 2022-000730 Application 16/374,052 11 claim 7, Appellant’s reliance thereon does not show error in the obviousness rejection of dependent claims 9, 12, and 14. Claims 4-6 and 19 Appellant does not set forth separate arguments for patentability of these dependent claims and argues that the Examiner has not relied upon the additional prior art references to remedy the argued deficiencies in independent claims 1 and 15 and the claims are patently distinct over the combination of prior art references. Appeal Br. 13-14. Because Appellant did not show error in the Examiner’s anticipation rejection of independent claims 1 and 15, Appellant’s reliance thereon does not show error in the obviousness rejection of dependent claims 4-6 and 19. CONCLUSION We sustain the Examiner’s anticipation and obviousness rejections of claims 1-19. We note that no Reply Brief is of record to rebut the Examiner’s further explanations and responses to Appellant’s arguments. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 15-18 102(a)(1) Serdynski 1-3, 15-18 4 103 Serdynski, Nardi 4 5 103 Serdynski, Usselman, Nardi 5 6, 19 103 Serdynski, Usselman 6, 19 7, 8, 10, 11, 13 103 Serdynski, Smith 7, 8, 10, 11, 13 9, 12 103 Serdynski, Smith, Nardi 9, 12 Appeal 2022-000730 Application 16/374,052 12 14 103 Serdynski, Smith, Usselman 14 Overall Outcome 1-19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED