11016290 (B.P.A.I. Jun. 4, 2012)

Ex Parte Sherman

Board of Patent Appeals and InterferencesJun 4, 2012

11016290 (B.P.A.I. Jun. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JASON T. SHERMAN ________________ Appeal 2010-004688 Application 11/016,290 Technology Center 3700 ________________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER and JAMES P. CALVE, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004688 Application 11/016,290 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-3 and 6-24. Claims 4 and 5 are objected to (App. Br. 4). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter The claimed subject matter is directed to a storage container that removably receives a medical instrument tray having a plurality of recesses and a primary coil positioned at least partially around one of the recesses. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A system for recharging medical instruments, the system comprising: a medical instrument tray defining a plurality of recesses therein for receiving and storing a corresponding plurality of medical instruments, at least one of the plurality of medical instruments including a secondary coil coupled to a rechargeable voltage source, the medical instrument tray including a primary coil positioned at least partially about one of the plurality of recesses configured to receive and store the at least one of the plurality of medical instruments, the primary coil coupling to the secondary coil to charge the rechargeable voltage source when the at least one of the plurality of medical instruments is received in the one of the plurality of recesses, and a storage container to removably receive and store the medical instrument tray, the storage container including an electrical routing system for routing voltage from an external voltage source to the primary coil. References Relied on by the Examiner Cuchiara US 4,397,055 Aug. 9, 1983 Appeal 2010-004688 Application 11/016,290 3 Peifer US 6,096,264 Aug. 1, 2000 Sakurai US 6,666,875 B1 Dec. 23, 2003 Dane US 2004/0129595 A1 Jul. 8, 2004 Chandler US 6,831,225 B2 Dec. 14, 2004 The Rejections on Appeal 1. Claims 1-3, 7-14, and 19-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Peifer and Sakurai (Ans. 3). 2. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Peifer, Sakurai and Cuchiara (Ans. 7). 3. Claims 15-17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Peifer, Sakurai and Dane (Ans. 8). 4. Claim 18 is rejected under § 35 U.S.C. § 103(a) as being unpatentable over Peifer, Sakurai, Dane and Chandler (Ans. 9). ANALYSIS Both independent claims on appeal require a removable tray having one or more recesses1 as well as a primary coil positioned at least partially about one of the recesses. The Examiner finds that Peifer discloses this claimed feature with the exception of the trays being removable (Ans. 4). The Examiner relies on Sakurai for teaching “a similar recharging system where the trays are removable (see col. 10, lines 56-60)” (Ans. 4). Appellant disagrees with the Examiner’s reliance on Sakurai for teaching the claimed removable tray because Sakurai’s removable “receptacles 64 have no electrical components” (App. Br. 13, see also Reply Br. 5). Further, Appellant contends that “no reasonable person would consider [Sakurai’s 1 Independent claim 1 requires “a plurality of recesses” while independent claim 12 requires “at least one recess.” Appeal 2010-004688 Application 11/016,290 4 receptacles 64] to be a tray” and especially a tray “having a primary coil that is removably received by a storage container” (App. Br. 13). Sakurai’s Figure 12 discloses a recharge receptacle 64 that is removable from recess 62a in a recharger. Sakurai states that the “receptacles are removable for washing and sterilization” (Sakurai 10:56- 60)2. Sakurai does not disclose any removability of the primary coil (67) located in the recharger (Sakurai 10:66-67, Fig. 11). The Examiner addresses this matter contending that it would have been obvious “to have the coil built into the tray since it has been held that rearranging parts of an invention involves only routine skill in the art” (Ans. 11). We disagree with the Examiner’s analysis. The Examiner has not identified where it is only “routine skill in the art” to rearrange a primary coil into a removable tray so that the tray and coil can be washed and sterilized. The Examiner further states that “[w]hether the primary coil is built into the tray or separate from the tray doesn’t matter” and again we disagree as the claims require that the removable tray include a primary coil (Ans. 11). In view of the record presented, we are not persuaded that the Examiner has articulated sufficient reasoning with some rational underpinning to support the legal conclusion of obviousness. DECISION The rejection of claims 1-3 and 6-24 is reversed. 2 Cleaning, washing and sterilization are the stated reasons the Examiner combines Peifer and Sakurai (Ans. 4, 11). Appeal 2010-004688 Application 11/016,290 5 REVERSED MP