Ex Parte Dalton et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201310570419 (P.T.A.B. Feb. 28, 2013) 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. 10/570,419 03/02/2006 David R. Dalton SP-1755.2 US 9296 20875 7590 03/01/2013 MICHAEL C. POPHAL EVEREADY BATTERY COMPANY INC 25225 DETROIT ROAD P O BOX 450777 WESTLAKE, OH 44145 EXAMINER PERREAULT, ANDREW D ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 03/01/2013 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 DAVID R. DALTON, KIN SANG CHUNG and MICHAEL SQUIRES ____________ Appeal 2010-006643 Application 10/570,419 Technology Center 3700 ____________ Before EDWARD A. BROWN, ANNETTE R. REIMERS and MITCHELL G. WEATHERLY, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006643 Application 10/570,419 2 STATEMENT OF THE CASE David R. Dalton et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1-23 under 35 U.S.C. § 103(a) as being unpatentable over Chan (US 2002/0106624 A1, published Aug. 8, 2004) and Woodie (US 3,780,939, issued Dec. 25, 1973). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention relates to a package-and-device combination 10 including (1) a package 12 having an actuation portion 18; (2) an electrical device 14 having a power source 22; (3) a package switch 46; (4) an interposer element 48; and (5) an electrical circuit 28, 30. Spec. paras. [00033], [00034] and [00040]; figs. 1, 5. Claim 1, the sole independent claim, is illustrative of the claimed invention and reads as follows: 1. A package-and-device combination including: a package having an actuation portion; an electrical device disposed at least partially within the package, the device including a power source connected to an activatable component; and a package switch having an activation condition and a deactivation condition; an interposer element connected to the power source, the interposer element being controlled by the package switch; an electrical circuit comprising the package switch, the interposer element, and the activatable component; said electrical circuit being open by the interposer element once the package switch has changed to its deactivation condition; and Appeal 2010-006643 Application 10/570,419 3 said electrical circuit being closed by the interposer element once the package switch has changed to its activation condition. ANALYSIS The Examiner finds that Chan discloses the limitations of claim 1 except for an interposer element. Ans. 3-4. The Examiner further takes the position that although Chan does not specifically disclose an interposer, “an interposer must exist [in Chan] in order for the switches of both the electronic device and the package to operate individually.” Ans. 10; Chan, paras. [0057], [0062] and [0078]; figs. 2-4. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). However, the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). In this case, in paragraph [0057], Chan discloses (1) the packaging being used and reused as a manual for the product; and (2) providing a connection to a source of stable alternating current, e.g., a wall socket to enable the packaging “[to] be used to perform its functions long after purchase of the product.” Further, in paragraph [0062], Chan discloses an embodiment including “try me” features, wherein “[p]ower from the toy can supply both the toy and the packaging so, for example, the toy can speak and Appeal 2010-006643 Application 10/570,419 4 perform certain actions while the packaging illuminates certain graphics illustrating particular activities or functions of the toy.” In other words, based on the disclosure of paragraph [0062], the toy and the packaging can simultaneously perform functions. As such, incorporating an interposer into the toy and packaging device would prevent the toy and the packaging from being able to simultaneously perform functions as disclosed. Regarding figures 2-4 of Chan, in reference to figure 2, Chan discloses, “initiation of the trigger switch by pressing push button 11 prompts production of sound from the product and may also initiate illumination of the visual displays 17 under control of the integrated circuit 7 located on the product 3.” Chan, para. [0076]. In other words, similar to that discussed above in reference to paragraph [0062], the product (doll) 3 and the packaging can simultaneously perform functions. Further, in reference to figure 3, Chan merely discloses that (1) the packaging includes the push button 11, power source 5, a speaker 9 and visual display 17; and (2) the product (doll) 3 includes the integrated circuit 7, a second speaker 9 and a separate power source 13. Chan, para. [0077]. Lastly, in reference to figure 4 and paragraph [0078] of Chan, while we do not dispute the Examiner’s position that this figure illustrates that both the packaging and the product (doll) 3 include an integrated circuit 7, an activatable component 9, and a power source 5 and 13, respectively, (see Ans. 10), nonetheless, as correctly pointed out by Appellants, Chan discloses a single push button 11 with a trigger switch located on the packaging (Reply Br. 2; Chan, para. [0079]; fig. 4). As such, Chan does not disclose that both the product (doll) 3 and the packaging each include a switch, as the Examiner contends. Ans. 10. Chan further discloses in paragraph [0078], Appeal 2010-006643 Application 10/570,419 5 “each of the product (doll) and packaging can independently generate signals to initiate production of sound or illumination of visual displays. In order that these activities can be coordinated, the integrated circuits 7 of each of the product and the packaging are interconnected.” As noted above, the Examiner takes the position that the product (doll) and packaging device of Chan must include an interposer in order for the product (doll) 3 and the packaging to operate individually. Ans. 10. However, just because the product (doll) 3 and the packaging can independently generate signals, it does not necessarily mean that the product (doll) and packaging device of Chan includes an interposer element. For example, the integrated circuit 7 of the product (doll) 3 could be programmed to perform digital logic operations with the integrated circuit 7 of the packaging, or vice versa, resulting in coordination of the activities of the product (doll) 3 and the packaging, so that the product (doll) 3 and the packaging could independently generate signals. As such, the Examiner has not provided any persuasive evidence to show that the product (doll) and packaging device of Chan necessarily includes an interposer in order for the product (doll) 3 and the packaging to operate individually. For the foregoing reasons, the Examiner has failed to provide any factual evidence to reasonably support the determination that the product (doll) and packaging device of Chan necessarily includes an interposer element. Consequently, we agree with Appellants that “[n]owhere is an interposer [element] provided expressly or inherently in Chan.” Reply Br. 2. The Examiner further takes the position that “interposers were well known at the time of the invention” and provides the Woodie reference as an example. Ans. 4. The Examiner also finds that Woodie discloses an Appeal 2010-006643 Application 10/570,419 6 interposer element, wherein the interposer element is controlled by a package switch. Id. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Chan to include an interposer element being controlled by a package switch, in view of Woodie, “for the purpose of opening or closing the circuit in order to allow (or disallow) the device to operate.” Ans. 5. Appellants argue that Woodie fails to disclose an interposer element being controlled by a package switch, as required by claim 1. App. Br. 9; Reply Br. 2; App. Br., Claims Appendix. We agree with Appellants’ position because, while we do not dispute the Examiner’s position that Woodie discloses an interposer element and a switch (see Ans. 4), the Examiner has not pointed to any portion in Woodie that discloses or suggests that the interposer element is being controlled by the switch. Based on our review, switches formed by conductive elements (e.g., 232, 234, respectively, of spring element 230) on the interposer (e.g., 188) cooperate with conductive elements (e.g., 206, 222 and 214, respectively) on the circuit board 162 to permit the production of error signals associated with malfunctions of the solenoid (e.g., 176). See Woodie, col. 2, ll. 2-9 and ll. 39-41; col. 5, ll. 29-44; col. 6, ll. 36-45; col 8, ll. 10-15; figs. 12-15. In other words, it appears that the switches 232, 234 of the spring element 230 are being controlled by the interposer element 188, not the other way around. Hence, the Examiner’s finding that Woodie’s interposer element is controlled by the package switch is speculative. Accordingly, the Examiner’s legal conclusion of obviousness is not supported by facts, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal conclusion of obviousness must be supported by Appeal 2010-006643 Application 10/570,419 7 facts. Where the legal conclusion is not supported by facts it cannot stand.”). In conclusion, for the foregoing reasons, the rejection of independent claim 1 and its respective dependent claims 2-23 cannot be sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). DECISION The decision of the Examiner is reversed as to claims 1-23. REVERSED hh Copy with citationCopy as parenthetical citation