Ex Parte Marmaropoulos et al

Patent Trials and Appeals Board

Apr 29, 2019

11994182 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/994, 182 12/28/2007 George Marmaropoulos
24737 7590 05/01/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2005P00844WOUS 4548
EXAMINER
Y ANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE MARMAROPOULOS and GIANG VU
Appeal2018-005588
Application 11/994, 182
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-5 and 7 under 35 U.S.C. § 112, second
paragraph, or 35 U.S.C. § l 12(b) as indefinite, and claims 1-5, 7, and 19-36 under
35 U.S.C. § 103(a) as unpatentable over Redford (US 5,763,112, issued June 9,
1998) in view of Tai (US 2005/0239261 Al, published Oct. 27, 2005). We have
jurisdiction under 35 U.S.C. § 6(b).
1 This Decision includes citations to the following documents: Specification filed
December 28, 2007, as amended ("Spec."); Final Office Action dated Aug. 9, 2017
("Final"); Appeal Brief filed Jan. 18, 2018 ("Appeal Br."); Examiner's Answer
dated Mar. 30, 2018 ("Ans."); and Reply Brief filed May 10, 2018 ("Reply Br.").
2 The Appellants identify Koninklijke Philips Electronics N.V. as the real party in
interest. Appeal Br. 2.
Appeal2018-005588
Application 11/994, 182
We AFFIRM-IN-PART.
The invention relates to a thin battery having magnetic end portions that
include voltage connections. Spec. 2: 13-14. "The magnetic end portions allow the
fast and intuitive connection of a number of such batteries either in parallel or in
series." Id. at 2: 14--15. Claim 1, reproduced below, is representative of the claims
on appeal.
1. A thin electrical battery, comprising:
a central portion, and
a first end portion and a second end portion disposed on either
side of the central portion;
wherein the thin electrical battery has a width, a length, a
thickness, a first surface and a second surface that is on an opposite
side of the battery from the first surface,
wherein both the width and length of the battery are many times
greater than the thickness,
wherein the first surface is bounded by the length and the
width,
wherein the second surface bounded by the length and the
width,
wherein the second surface is opposite the first surface,
wherein the first end portion and the second end portion have a
cross section bounded by the thickness and the width,
wherein the first end portion comprises a positive voltage
connection,
wherein the positive voltage connection is exposed on both the
first and the second surfaces of the battery,
wherein the second end portion comprises a negative voltage
connection,
wherein the negative voltage connection is exposed on both the
first and the second surfaces of the battery,
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Application 11/994, 182
wherein the first end portion comprises a first magnetic element
and the second end portion comprises a second magnetic element, and
wherein each of the first magnetic element and the second
magnetic element has an "N" pole on the first swface of the battery
and an "S" pole on the second surface of the battery.
Appeal Br. 18, Claims Appendix ( emphasis added).
Indefiniteness Rejection
The Examiner determines the claim 1 language "many times greater" is a
relative term that renders claim 1 and its dependent claims 2-5 and 7 indefinite.
Final 3--4. The Appellants contend "the plain meaning of the phrase 'many
times greater' would imply at least two or three times greater, and the ... drawings
provide an indication of the relative magnitudes of the width and length of the
battery with respect to the thickness." Appeal Br. 7. In support of their argument,
the Appellants direct us to Figures 1, 9, and 10, and page 3, lines 13-17 of the
Specification. Appeal Br. 7.
"When a word of degree is used, the ... specification [must] provide[] some
standard for measuring that degree. [We] must decide, that is, whether one of
ordinary skill in the art would understand what is claimed when the claim is read in
light of the specification." Seattle Box Co. v. Indus. Crating & Packing, Inc., 731
F.2d 818, 826 (Fed. Cir. 1984).
As to the figures, we agree with the Examiner that there is no indication in
the Specification or drawings that the figures are to scale. Ans. 4; see Hockerson-
Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951,956 (Fed. Cir. 2000)
("HHI' s argument thus hinges on an inference drawn from certain figures about the
quantitative relationship between the respective widths of the groove and fins.
Under our precedent, however, it is well established that patent drawings do not
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Appeal2018-005588
Application 11/994, 182
define the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.").
The Specification disclosure referenced by the Appellants reads:
Battery 100 is relatively thin, the width and length of battery 100
being many times that of the thickness of battery 100. As shown in
Fig. 1, the battery may be in the shape and form of a thin strip of
constant thickness. Alternatively, battery 100 may have rounded ends,
tapered edges, or varying thickness. See ... Figs. 9 and 10.
Spec. 3: 13-17. This description uses essentially the same words of degree as used
in claim 1 and, therefore, provides no definitional guidance as to the meaning of
the claim language "many times greater."
Based on the foregoing, we agree with the Examiner that claim 1, when read
in light of the Specification and drawings, does not adequately define the scope of
patent protection sought by the Appellants. Accordingly, we sustain the rejection
of claims 1-5 and 7 under 35 U.S.C. § 112, second paragraph, or 35 U.S.C.
§ 112(b) as indefinite.
Obviousness Rejection
The predecessor to our reviewing court has counseled that a rejection under
35 U.S.C. § 103 should not be based on speculations and assumptions as to the
scope of claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). In the present
case, it is possible for us to apply a reasonable, conditional interpretation of the
claim 1 phrase "wherein both the width and length ... are many times greater than
the thickness" for purposes of resolving the obviousness rejection, because the
Appellants agree with the Examiner that the scope of the claim language
encompasses the dimensions of Redford's battery and Tai's connector. See Reply
Br. 3 ("Redford discloses a 'thin' battery with a length and width that are many
times greater than its thickness, and Tai discloses a connector with a length and
width that are many times greater than its thickness."). Ex parte Saceman, 27
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Application 11/994, 182
USPQ2d 14 72, 14 7 4 (BP AI 1993) ( explaining that in the interest of administrative
and judicial economy, where reasonably possible, a conditional interpretation of
the claims adequate for the purpose of resolving patentability issues should be
made to avoid piecemeal appellate review).
Turning now to the merits of the rejection under 35 U.S.C. § 103, the
Examiner finds Redford discloses or suggests the invention as claimed in
independent claims 1, 20, and 29, with the exception that Redford discloses that
magnetic elements are located on only a first surface of the battery, and fails to
teach that the magnetic elements also are located on the second surface of the
battery, as required by the claims. Final 4--5. The Examiner finds one of ordinary
skill in the art would have rearranged Redford's magnetic elements such that they
were located on both the first and second battery surfaces in order to adapt the
battery to different power and space requirements. Id. at 5. In the alternative, the
Examiner relies on Tai, directed to a connector, for a teaching of arranging
magnets on opposite surfaces. Id. The Examiner finds one of ordinary skill in the
art would have included magnetic elements on the second surface of Redford's
battery based on Tai' s arrangement of magnetic elements, which is described as
assuring proper connection and allowing for reductions in size. Id. at 5---6. The
Examiner acknowledges Tai fails to disclose an arrangement wherein the N poles
of the magnetic elements are on a first surface and the S poles are on a second
surface, but finds "[t]he specific orientation of the batteries relative to the sides
would not have unexpected results or criticality as they would be selected based
upon the desired configuration of attachment within the system." Id. at 5.
The Appellants argue the Examiner has failed to identify evidence to support
a finding that one of ordinary skill in the art would have rearranged Redford's
magnetic elements in the manner claimed. See generally Appeal Br. 9-16. The
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Application 11/994, 182
Appellants argue the claimed arrangement of magnetic elements is contrary to
conventional arrangements, such as those used in Redford and Tai. Appeal Br. 9.
The Appellants contend that the magnets in conventional arrangements "are
configured to enforce the 'proper' orientation of the battery, via magnetic
repulsion, to avoid 'improper' voltage connections." Id. The Appellants argue that
in the claimed invention, and contrary to the prior art, the arrangement of the poles
of the magnets "enabl[ e] the batteries to be coupled such that the connections
between the batteries may be positive-to-positive, or positive-to-negative, merely
by rotating the relative orientation of the ... batteries." Id. The Appellants explain
that in the claimed arrangement, "some batteries may be coupled positive-to-
positive while others may be coupled positive-to-negative, thereby enabling
complex serial-parallel arrangements of the batteries to satisfy a given voltage and
current requirement, using the same batteries in different relative orientations." Id.
at 9--10.
The Appellants cite to Redford Figure 4B and Tai Figures 4, 5, and 20, and
the corresponding descriptions of these figures, in support of their argument. See
Appeal Br. 12-15. The cited disclosures support the Appellants' contentions that
Redford is concerned with maintaining a single orientation of the battery and that
in Tai's device, N and S poles must be located on both surfaces in order for proper
performance. See id. at 13-15.
In response to these arguments, the Examiner argues the modifications to
Redford and Tai, would have been within the skill level of the ordinary artisan who
"would have heuristics into magnets which obviate the claimed structure." Ans. 6.
The Appellants' arguments are persuasive of reversible error in the
Examiner's conclusion of obviousness. The Examiner has failed to identify
persuasive evidentiary support for finding that the ordinary artisan would have had
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Application 11/994, 182
a reason to modify Redford, alone or in combination with Tai, such that the N
poles of the magnetic elements are on a first surface and the S poles are on a
second surface. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir.
2013) ("Where, as here, the necessary reasoning is absent, we cannot simply
assume that 'an ordinary artisan would be awakened to modify prior art in such a
way as to lead to an obviousness rejection.' [In re Nouvel, 493 F. App'x 85, 92
(Fed. Cir. 2012)]. It is in such circumstances, moreover, that it is especially
important to guard against the dangers of hindsight bias."); In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.").
Accordingly, we do not sustain the rejection of claims 1-5, 7, and 19-36
under 35 U.S.C. § 103(a) as unpatentable over Redford in view of Tai.
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-IN-PART
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