Alexis Lewis

Patent Trials and Appeals BoardJun 7, 2021

2020006377 (P.T.A.B. Jun. 7, 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. 14/595,326 01/13/2015 Alexis D. Lewis 33999/01083 7580 27530 7590 06/07/2021 Nelson Mullins Riley & Scarborough LLP IP Department One Wells Fargo Center, Suite 2300 301 South College Street Charlotte, NC 28202 EXAMINER SIPPEL, RACHEL T ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 06/07/2021 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): ip@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte ALEXIS D. LEWIS ____________ Appeal 2020-006377 Application 14/595,326 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the non-final rejection of claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2020-00006377 Application 14/595,326 2 THE INVENTION Appellant’s invention relates to emergency escape devices. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An emergency escape breathing system, comprising: a delivery container including a first portion and a second portion that are releasably secured to each other, the delivery container defining an interior compartment and being comprised of a translucent material; a smoke filtration mask disposed within the interior compartment of the delivery container; and an activated light source disposed within the interior compartment of the delivery container, the activated light source being a light stick that is visible through the delivery container, wherein the delivery container is configured so that the emergency escape breathing system may be grasped and thrown by a hand of a user, and wherein the first portion and the second portion are formed entirely of a heat resistant material. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Templeton US 5,033,142 July 23, 1991 Dosch US 5,113,854 May 19, 1992 Lindqvist US 2006/0076186 A1 Apr. 13, 2006 Shea US 2010/0051616 A1 Mar. 4, 2010 Brister US 8,202,291 B1 June 19, 2012 Lam US 2015/0210432 A1 July 30, 2015 Orion US 2016/0001918 A1 Jan. 7, 2016 Appeal 2020-00006377 Application 14/595,326 3 The following rejections are before us for review: 1. Claims 1, 4, 5, 13, 18, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Dosch, Brister, and Templeton. 2. Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Dosch, Brister, Templeton, Orion, and Lam. 3. Claims 3, 9, 10, and 14–17 are rejected under 35 U.S.C. § 103 as being unpatentable over Dosch, Brister, Templeton, and Orion. 4. Claims 6 and 8 are rejected under 35 U.S.C. § 103 as being unpatentable over Dosch, Brister, Templeton, and Lam. 5. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Dosch, Brister, Templeton, Lam, and Shea. 6. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Dosch, Brister, Templeton, and Lindqvist. OPINION Appellant argues claims 1–12 as a group and raises no arguments with respect to claims 13–19 other than arguments asserted against the rejection of claim 1. Appeal Br. 7–8. We select claim 1 as representative and the remaining claims fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Dosch discloses the invention substantially as claimed except for: (1) being made of heat resistant and translucent material, for which the Examiner relies on Brister; and (2) an activated light source, for which the Examiner relies on Templeton. Non-Final Act. 3–4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the teachings of the prior art to achieve the claimed invention. Id. According to the Examiner, a person of ordinary skill in the art would have done this to Appeal 2020-00006377 Application 14/595,326 4 prevent heat damage and allow the contents to be viewed, even in the dark. Id. Appellant first argues that there is no reason to make Dosch translucent. Appeal Br. 8. Appellant argues that, since Dosch does not disclose a light source in storage container 58, there is no need to make container 58 translucent to allow light to emanate from the container. Id. In response, the Examiner explains that the reason for making the container translucent is to allow the user to view the contents of the container. Ans. 13. This is a sufficient reason for combining Dosch and Brister. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(requiring an obviousness conclusion to be based on explicit articulated reasoning with rational underpinning) cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Next, Appellant argues that a person of ordinary skill in the art would not combine Dosch and Brister because Brister is non-analogous art. Appeal Br. 8. Appellant argues that Brister is directed to devices for treating obesity, which is a different field of endeavor from Dosch and the application under review. Id. In response, the Examiner points out that Brister is reasonably pertinent to the problem of providing a heat resistant, translucent storage container. Ans. 13. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. Innovention Toys, LLC. v. MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is Appeal 2020-00006377 Application 14/595,326 5 reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of similarity to the claimed invention. Id. at 1325-26. A reference is “reasonably pertinent” if it logically would have commended itself to an inventor's attention when considering the problem. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. Appellant’s non-analogous art argument is limited to whether Brister is from the same field of endeavor as Appellant’s invention and fails to consider whether Brister is reasonably pertinent to the problem at hand. See generally Appeal Br. We agree with the Examiner that Brister is reasonably pertinent to the problem of allowing a user to view the contents of a closed container. Appellant next argues that Templeton is non-analogous art because it is directed to an apparatus for use by undersea divers. Appeal Br. 8. As with the argument over Brister, Appellant considers only whether Templeton is from the same field of endeavor and otherwise fails to consider whether it is “reasonably pertinent” to the problem faced by the inventor. Id., Bigio, 381 F.3d at 1325. The Examiner points out, correctly, that Templeton is reasonably pertinent to the problem of illumination in a darkened environment. Appeal Br. 13. Appellant’s invention is little more than a football shaped container that separates into two pieces at the waist and defines an interior volume that holds a smoke inhalation mask and a light. Appellant’s device is delivered Appeal 2020-00006377 Application 14/595,326 6 to a user in a smoke filled environment such as a burning building. Spec. ¶ 19, Fig. 6. The use of a translucent container with a light inside helps the user find the container in the darkened environment of a smoke filled room. There are many diverse environments where the level of illumination is limited. Templeton’s undersea diving environment is but one of many low illumination environments. We agree with the Examiner that it is obvious to place contents in a translucent container provided with a light source to facilitate use in a low illumination environment. We sustain the Examiner’s rejection of claims 1–19. CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 13, 18, 19 103 Dosch, Brister, Templeton 1, 4, 5, 13, 18, 19 2 103 Dosch, Brister, Templeton, Orion, Lam 2 3, 9, 10, 14-17 103 Dosch, Brister, Templeton, Orion 3, 9, 10, 14-17 6, 8 103 Dosch, Brister, Templeton, Lam 6, 8 7 103 Dosch, Brister, Templeton, Lam, Shea 7 11, 12 103 Dosch, Brister, Templeton, Lindqvist 11, 12 Overall Outcome 1-19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED