Ex Parte Flores et al

Patent Trial and Appeal Board

Dec 31, 2018

14121227 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/121,227
77083 7590
PaulM. Denk
763 South New Ballas
Ste. 305
St. Louis, MO 63141
08/12/2014
12/31/2018
FIRST NAMED INVENTOR
Robert Flores
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8164 3429
EXAMINER
WILLIAMS, MAURICE L
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
12/31/2018 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 ROBERT FLORES and MICHAEL CRAVENS
Appeal2018-003735
Application 14/121,227
Technology Center 3600
Before ANNETTE R. REIMERS, SEAN P. O'HANLON, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Robert Flores and Michael Cravens ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C.
§ 103 claims 9, 10, and 18-20 as unpatentable over Iwamoto
(JP 2013-014296 A, published Jan. 24, 2013)2 and Taylor (US 3,713,614,
issued Jan. 30, 1973). Appellants present additional evidence in the
1 The Examiner has withdrawn the 35 U.S.C. § l 12(b) indefiniteness rejection
of claims 9 and 10. See Examiner's Answer 4 ("Ans."), dated Sept. 27, 2016;
see also Final Office Action 2 ("Final Act."), dated Sept. 30, 2015.
2 The Examiner provides an English-language translation of the Specification
of Iwamoto. See Ans. 8-19. We note the English translation does not appear
to include paragraphs 68 through 87 of Iwamoto. Any reference hereinafter
Appeal2018-003735
Application 14/121,22 7
Declaration of co-inventor Michael Cravens ("Cravens Declaration") filed
on November 3, 2015. Claims 1-8 and 11-17 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a wheelchair lighting system.
See Spec. Title, Figs. 1, 3.
Claim 18, the sole independent claim on appeal, is representative of
the claimed subject matter and recites:
18. A wheelchair lighting assembly including at least one
armrest for a wheelchair, supported by the structure of a
wheelchair, said armrest for the wheelchair having an
undersurface;
a mounting component for holding said lighting assembly;
a cut segment of double sided tape, said segment of double
sided tape being sized to be equal or less in width to fit and
adhere to within the lateral dimensions of the undersurface of the
armrest for a wheelchair;
a planar metallized strip corresponding generally to the
dimensions of said double sided tape, and adhering to the
underside of said double sided tape, and provided for cooperating
with the wheelchair lighting system and removably securing the
same in place for usage as a lighting assembly for the wheelchair;
said lighting assembly including a flashlight having a
magnetic integrally secured thereto on one side of the flashlight
to form a magnet portion for removable connection to said planar
metallized strip during usage; and
whereby said flashlight when adhered to the metallized
strip may be directed for illumination forwardly, and removed
to Iwamoto is to the English translation.
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Application 14/121,22 7
and reversed for directing its illumination rearwardly, or the
flashlight may be removed form its magnetic adherence to the
metallized strip to provide a portable flashlight for directing its
light and illumination in various directions.
ANALYSIS
Appellants do not offer arguments in favor of dependent claims 9, 10,
19, and 20 separate from those presented for independent claim 18. See
Appeal Br. 11-16. 3 We select claim 18 as the representative claim, and
claims 9, 10, 19, and 20 stand or fall with claim 18. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellants contend nothing in the prior art "would suggest that the
Taylor device could be modified, for specific application to the undersurface
of the armrest of a wheelchair, to add to the facility of a magnetic flashlight
thereto" and "while Taylor may show a flashlight with a magnet, there is just
not [sic] substantial evidence for holding [Appellants'] invention as obvious,
since no one has ever devised [Appellants'] invention, for use for its
particular purposes." Appeal Br. 12.
Appellants' argument is not directed to the rejection as set forth by the
Examiner and is against Taylor individually, where the rejection is based on
the combined teachings of Iwamoto and Taylor. See Final Act. 4; see also
Ans. 4. Moreover, it is well established that the reason to modify the
reference may often prompt a person of ordinary skill in the art to do what
the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggests the combination to
3 Appeal Brief ("Appeal Br."), filed Mar. 25, 2016.
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Appeal2018-003735
Application 14/121,22 7
achieve the same advantage or result discovered by an applicant. In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006).
In the Answer, the Examiner clarifies the primary reference Iwamoto
discloses a wheelchair device having a non-removable lighting device "on
the underside of the wheelchair armrest" and "Taylor was used as a
secondary reference teaching a removable lighting device and mounting
structure." Ans. 5; see also Final Act. 3--4. In this case, the Examiner
proposes modifying the lighting device of Iwamoto to be removable, as
taught by Taylor, and reasons "[ s ]uch a modification would be beneficial for
safety, by providing a means of adjusting the lighting direction and allowing
the operator to carry the light source upon exiting the wheelchair." See Ans.
5---6; see also Final Act. 4--5. The Examiner's findings are reasonable and
supported by a preponderance of the evidence, and the Examiner's
conclusions therefrom are based on rational underpinnings. Appellants do
not provide persuasive evidence or argument apprising us of Examiner error.
The Examiner's proposed modifications to Iwamoto do not appear to
be uniquely challenging, and Appellants have not explained with any
specificity why a person of ordinary skill in the art would not have had an
expectation of success in making the proposed modifications.
Furthermore, Appellants do not provide any evidence or argument
sufficient to show that the proposed modifications would have been beyond
the level of ordinary skill in the art. Neither do Appellants provide any
persuasive evidence or argument sufficient to show that the proposed
modifications would have been more than a predictable use of the prior art
elements according to their established functions. "The combination of
familiar elements according to known methods is likely to be obvious when
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Application 14/121,22 7
it does no more than yield predictable results." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability." Id. at 417.
To the extent Appellants are arguing the references must be capable of
bodily incorporation in order to combine their teachings, 4 the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of a primary reference. In re Keller,
642 F.2d 413,425 (CCPA 1981); see also Ans. 6. "Rather, the test is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art." Keller, 642 F.2d at 425.
Here, the Examiner reasons "the lighting device of Iwamoto is clearly
disposed underneath the armrest. Incorporation of a mounting feature that
allows the light to be removed [as taught by Taylor] would still result in a
lighting device that fits under the armrest of the wheelchair." Ans. 6. The
Examiner's findings are reasonable and supported by a preponderance of the
evidence, and the Examiner's conclusions therefrom are based on rational
underpinnings. Appellants do not provide persuasive evidence or argument
apprising us of Examiner error.
We further are not persuaded that the Examiner engages in
impermissible hindsight in combining Iwamoto and Taylor. See Appeal Br.
12. The Examiner cites specific teachings in the references themselves, not
4 See e.g., Reply Brief 3 ("[T]he three-sided flanged holder of [Taylor], and a
matching of the flanged holder with the flashlight would have to be an
extremely narrow and aligned fit when applied to the underside of a
wheelchair armrest.") ("Reply Br."), filed Nov. 21, 2016; see also Appeal Br.
13; Craven Declaration 1 (Taylor "requires a special bracket to support the
flashlight and additional padding to deal with excessive vibration.").
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Application 14/121,22 7
Appellants' disclosure, in support of the Examiner's articulated reasoning
for combining the references as proposed in the rejection. See Final Act. 3-
4; see also Ans. 5-6.
Appellants contend "[t]here is no obstruction to the application of the
flashlight, by way of any flanges, when applied to the metal plate at the
underside of the armrest, for the current invention, to attain its ease of
installation." Appeal Br. 13; see also Reply Br. 2-3; Craven Declaration 1
("No special brackets are required. This system can be installed in less than
five minutes and requires no tools."). However, claim 18 is directed to an
apparatus claim of a wheelchair lighting assembly, not to a method claim of
ease of installation of a lighting assembly to the underside of a wheelchair
armrest. See Appeal Br. 18, Claims App.
Appellants contend "[p ]eople with special needs have had a long felt
need for this type of device, but it has just not been available." See Appeal
Br. 11; see also id. at 12-13; Craven Declaration 1.
Establishing long-felt need requires objective evidence that an art-
recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 539 (CCPA 1967). "[L]ong-felt need is analyzed as
of the date of an articulated identified problem and evidence of efforts to
solve that problem." Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178
(Fed. Cir. 1993).
The Craven Declaration states that "Taylor has been around for about
50 years, I have been disabled for a longer period of time, always had a need
for a lighting system for my [wheelchair], and for the convenience of my
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Application 14/121,22 7
usage, but none has ever been available." Craven Declaration 1. However,
as discussed above, Iwamoto, which was filed in 2011 and published in
2013, discloses a wheelchair device having a lighting device on the
underside of the armrest. The opinion of one person in the art of the lack of
a lighting system for a wheelchair is not adequate to establish a long-felt
need industry-wide. For instance, Appellants do not present evidence (a)
that others considered the lack of a lighting system for a wheelchair
undesirable or (b) that others considered the lack of a lighting system for a
wheelchair a problem in need of a solution. See Ans. 4. As such, Mr.
Craven's testimony is not sufficient to establish an industry-recognized
problem existed in the art. At most, the testimony establishes that Mr.
Craven considered the lack of a lighting system for a wheelchair undesirable
and in need of a solution.
In conclusion, the evidence of long-felt need provided in the Craven
Declaration is weak. The Declaration does not show adequately that the
need for a lighting system for a wheelchair was a persistent one or that
others tried to meet the need and failed and does not establish adequately
how long the need existed in the industry and whether any attempts to meet
the need were made by others in the industry. See Ans. 4.
In this case, we find that the strong evidence demonstrating that the
claimed subject matter is nothing more than the application of a known
technique to a known device ready for improvement to yield predictable
results is not outweighed by Appellants' weak evidence of long-felt need.
"[W]eak secondary considerations generally do not overcome a strong prima
facie case of obviousness." W. Union Co. v. MoneyGram Payment Sys.,
Inc., 626 F.3d 1361, 1373 (Fed. Cir. 2010) (citations omitted). This is
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Application 14/121,22 7
particularly true when an invention involves nothing more than "the
predictable use of prior art elements according to their established
functions." Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)
(quoting KSR, 550 U.S. at 417); see also Ohio Willow Wood Co. v. Alps
South, LLC, 735 F.3d 1333, 1344 (Fed. Cir. 2013) ("[W]here a claimed
invention represents no more than the predictable use of prior art elements
according to established functions, ... evidence of secondary indicia are
frequently deemed inadequate to establish non-obviousness.").
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 18 as unpatentable over
Iwamoto and Taylor. Accordingly, we sustain the Examiner's rejection of
claim 18. We further sustain the rejection of claims 9, 10, 19, and 20, which
fall with claim 18.
DECISION
We AFFIRM the decision of the Examiner to reject claims 9, 10, and
18-20 as unpatentable over Iwamoto and Taylor.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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