Matthew Keeler et al.

Patent Trials and Appeals Board

Mar 30, 2021

2020004415 (P.T.A.B. Mar. 30, 2021)

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.
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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,
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Application 14/819,549

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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.
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Application 14/819,549

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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.”).
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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
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“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
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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
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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