DOYLE MANUFACTURING, INC.

Patent Trials and Appeals BoardJun 4, 2021

2020003177 (P.T.A.B. Jun. 4, 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. 15/606,171 05/26/2017 Michael A. Doyle 207386/57504-1 3120 43935 7590 06/04/2021 Shumaker, Loop & Kendrick, LLP 1000 Jackson Street Toledo, OH 43604-5573 EXAMINER DINH, BACH T ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 06/04/2021 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): cgolupski@shumaker.com dmiller@shumaker.com tlopez@shumaker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL A. DOYLE1 ____________ Appeal 2020-003177 Application 15/606,171 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–4, 6–9, 11–19, and 21–23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to battery cover assemblies including vent cap adaptors for coupling vent caps to vent ports of a battery cover. E.g., Spec. ¶ 2; Claim 1. Claim 1 is reproduced below from page 2 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Doyle Manufacturing, Inc. Appeal Br. 3. Appeal 2020-003177 Application 15/606,171 2 (Claims Appendix) of the Response to Notification of Non-Compliant Appeal Brief dated November 5, 2019: 1. A vent cap adaptor for coupling a vent cap to a battery cover, comprising: a first portion configured to engage the battery cover; and a second portion configured to receive and engage a bayonet- style vent cap, wherein the second portion has a cylindrical inner surface and a pair of radially inwardly extending bayonet tabs formed on the inner surface, wherein a cylindrical opening arranged concentric relative to a central axis of the vent cap adaptor extends through an entirety of the vent cap adaptor including the first portion and the second portion. REJECTIONS ON APPEAL The claims stand rejected under 35 U.S.C. § 103 as follows: 1. Claims 1, 4, 6–9, 11–19, and 21–23 as unpatentable over Wan (US 2014/0227565 A1, published Aug. 14, 2014) and Campau (US 2010/0323229 A1, published Dec. 23, 2010). 2. Claims 2 and 3 as unpatentable over Wan, Campau, and Mermelstein (US 3,909,302, issued Sept. 30, 1975). ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner’s rejections. Accordingly, we affirm the rejections for reasons set forth below, in the Final Action dated June 6, 2019, and in the Examiner’s Answer. The Appellant presents separate arguments for independent claims 1, 8, and 17. We address those claims below. Consistent with the Appeal 2020-003177 Application 15/606,171 3 provisions of 37 C.F.R. § 41.37(c)(1)(iv), the remaining claims on appeal will stand or fall with the independent claim from which they depend. Claim 1. As summarized by the Examiner in the Answer, the Examiner finds that “[t]he only difference between the adaptor of Wan and that of” claim 1 is “the way in which the second portion of the adaptor engages with the vent cap.” Ans. 7. The Examiner finds that Wan uses tabs 33 on its vent cap that interact with openings 114 on its “second portion,” see Wan Figs. 2 and 3, whereas the claims require tabs on the second portion that interact with tabs on the vent cap. Id. The Examiner finds that Campau teaches a similar battery venting structure in which two elements are secured to each other using tabs that fall within the scope of the claims. Id. at 7–8. The Examiner determines that it would have been obvious to substitute Campau’s tabbed coupling mechanism for Wan’s coupling mechanism “to obtain the predictable result of securing the vent cap to the receiving cylindrical inner surface of the vent cap adaptor.” Id. The Appellant argues that Campau’s tabbed coupling mechanism is not part of an “adaptor,” as recited by claim 1, and that there is no teaching or motivation to use Campau’s coupling mechanism with Wan’s adaptor. Appeal Br. 15–16. That argument is not persuasive of reversible error in the rejection. The Appellant does not persuasively dispute that Wan discloses an “adaptor” within the scope of claim 1. See, e.g., Wan Figs. 2, 3, 7. The Examiner’s proposal is the simple substitution of one known coupling mechanism (Campau’s tabs) for another (Wan’s tabs and openings) with predictable results, i.e., coupling one element to another. Such substitutions do not require an express motivation to combine, see In re Fout, 675 F.2d 297, 301 Appeal 2020-003177 Application 15/606,171 4 (CCPA 1982) (“Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.”), and they typically do not result in nonobvious subject matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (explaining that “the simple substitution of one known element for another” often results in obvious subject matter); id. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” / “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”), 417 (“[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.”). That Campau’s tabbed coupling mechanism appears to be part of Campau’s vent cap rather than part of an adaptor is not indicative of error in the rejection because a person of ordinary skill in the art, through the use of only ordinary creativity, would have understood that Campau’s tabbed coupling mechanism could be used with other objects, such as Wan’s adaptor. See id. at 418 (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also id. (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). The Appellant also argues that the Examiner is not considering the prior art or the claims “as a whole.” Appeal Br. 19. The Appellant alleges, without explanation, that Wan’s structure “is not an adaptor at all,” and Appeal 2020-003177 Application 15/606,171 5 argues that, in Campau, “the vent cap is directly coupled to a compatible vent port, wherein no adaptor is included.” Id. at 21. Those arguments are not persuasive. The Appellant does not persuasively dispute the Examiner’s findings that Wan’s valve body 1 (which the Examiner finds corresponds to the claimed adaptor) functions to connect cover 3 (which the Examiner finds corresponds to the claimed vent cap) to upper shell 52 (which the Examiner finds corresponds to the claimed battery cover) via installing hole 521 (which the Examiner finds corresponds to the claimed vent port). See Ans. 4. Wan discloses that the components of its apparatus form “a venting passage.” Wan at Abstr. Campau, likewise, is concerned with battery venting. Campau at Abstr. (disclosing a “battery vent cap”). The Appellant provides no basis to believe that Wan’s valve body 1 falls beyond the scope of the term “adaptor” as claimed. Compare Spec. Fig. 2 (depicting vent cap adaptor 105), with Wan Figs. 1, 2 (depicting valve body 1); see In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (whether a reference discloses a claim element “is not an ipsissimis verbis test” (internal quotation marks omitted)). The Appellant’s arguments concerning consideration of the prior art and claims “as a whole” are unpersuasive. On this record, we are not persuaded of reversible error in the Examiner’s rejection of claim 1. Claim 8. Claim 8 includes recitations similar to those of claim 1, but whereas claim 1 encompasses only the vent cap adaptor itself, claim 8 recites a “battery cover assembly” comprising a battery cover, a vent cap, and a vent cap adaptor. See Response to Notification of Non-Compliant Appeal Brief (Claims Appendix), at 3. Appeal 2020-003177 Application 15/606,171 6 The Examiner relies on the analysis discussed above. See Ans. 4–5. The Appellant first argues that “Wan lacks the features of the corresponding tabs of the vent cap and vent cap adaptor,” and that, “in Campau, a vent cap adaptor is not required since the ports are compatible with the vent cap.” Appeal Br. 17. Those arguments are not persuasive because “one cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” See In re Keller, 642 F.2d 413, 426 (CCPA 1981). The Examiner finds that Wan as modified by Campau—not Wan or Campau alone—falls within the scope of the recited tab structure. The Appellant also argues that “one would have to completely modify Wan using only the present claims (not the disclosure of Wan or Campau) as a template to arrive” at the claimed structure, and that “[t]o modify Wan to include the features of the tabs as claimed would render the seal plate 31 of Wan inoperable.” Appeal Br. 17. Those arguments are not persuasive of reversible error in the rejection. The Examiner’s proposal of using a tabbed coupling mechanism within the scope of the claims is based on the explicit disclosures of Campau, see Ans 5; Campau Fig. 4 (tabs 48, 50, and 24), not based “only [on] the present claims . . . as a template,” Appeal Br. 17, as alleged by the Appellant. The Appellant’s argument that the proposed modification would render Wan’s seal plate 31 inoperable is attorney argument unsupported by evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). We Appeal 2020-003177 Application 15/606,171 7 do not discern persuasive support of record for that position. It appears that, if Wan’s coupling mechanism were replaced with Campau’s, the same structure (i.e., a cover 3 including plate 31 coupled to portion 11), operating in the same way, would result, the only difference being the mechanism by which cover 3 is coupled to portion 11. See Wan Figs. 1 (depicting cover 3 and portion 11), 3 (depicting cover with seal plate 31). On this record, we are not persuaded of reversible error in the Examiner’s rejection of claim 8. Claim 17. Claim 17 is similar to claim 8 and recites, “a second portion of the vent cap adaptor receiving a lower portion of the cylindrical body of the vent cap.” See Response to Notification of Non-Compliant Appeal Brief (Claims Appendix), at 5. The Examiner relies on the analysis discussed above. See Ans. 4–5. The Appellant argues that Wan’s plate 31 “is not cylindrical,” and that, in Wan, “a lower portion of the plate 31 is not being received in the base portion 11 of Wan because no portion of the body of the plate 31 is being received in the base portion of Wan at all.” Appeal Br. 18. That argument is not persuasive because it attacks Wan individually. It is adequately clear from the record that if Wan’s coupling mechanism were replaced with Campau’s tabbed coupling mechanism, the resulting structure would comprise a cylindrical tabbed portion. See Campau Fig. 4 (cylindrical portion with tabs 48 and 50); see also Ans. 11 (describing “the proposed modification to the vent cap to have [a] cylindrical body”). The Appellant fails to meaningfully address the structure of the combined prior art proposed by the Examiner. Appeal 2020-003177 Application 15/606,171 8 On this record, we are not persuaded of reversible error in the Examiner’s rejection of claim 17. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 6–9, 11– 19, 21–23 103 Wan, Campau 1, 4, 6–9, 11– 19, 21–23 2, 3 103 Wan, Campau, Mermelstein 2, 3 Overall Outcome 1–4, 6–9, 11– 19, 21–23 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED