Ex Parte Clark

Patent Trial and Appeal BoardApr 25, 2018

13174726 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/174,726 06/30/2011 E. Philip Clark 77741 7590 04/27/2018 Brannon Sowers & Cracraft PC 47 South Meridian Street Suite 400 Indianapolis, IN 46204 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. 250-10879 1313 EXAMINER BARAKAT, MOHAMED ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 04/27/2018 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): docket@bscattorneys.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte E. PHILIP CLARK Appeal2017-002893 Application 13/174,726 Technology Center 2600 Before CAROLYN D. THOMAS, MICHAEL J. ENGLE, and PHILLIP A. BENNETT, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Technology The application relates to "meteorology, and, more particularly, to ... ascertaining the direction of an approaching storm." Spec. 1. Illustrative Claim Claim 1 is illustrative and reproduced below with certain limitations at issue emphasized: Appeal2017-002893 Application 13/174,726 1. A portable weather detection and alarm apparatus comprising: a partially transparent housing defining a cavity; and a suspended magnetic element positioned within the cavity; wherein the magnetic element is rotatable in a first plane; wherein the magnetic element is pivotable in a second plane; wherein the second plane is perpendicular to the first plane; wherein the magnetic element is pivotable in a third plane; wherein the third plane is perpendicular to the first plane and perpendicular to the second plane; wherein an automatic, rapid pivot of the magnetic element away from the pull of gravity visually signals a close proximity of a storm to an observer. Rejections Claims 1-5, 11, 14, 15, and 17-20 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over the combination of Lewis (US 5,517,430; May 14, 1996) and Hartman (US 2,418,834; Apr. 15, 1947). Final Act. 2. Claims 6-9 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over the combination of Lewis, Hartman, and Monteiro et al. (US 6,701,631 Bl; Mar. 9, 2004). Final Act. 8. Claims 12 and 13 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over the combination of Lewis, Hartman, and Bhat et al. (US 4,899,453; Feb. 13, 1990). Final Act. 9. Claim 10 stands rejected under 35 U.S.C. Â§ 103(a) as obvious over the combination of Lewis, Hartman, Monteiro, and Monroe (US 2003/0169335 Al; Sept. 11, 2003). Final Act. 10. Claim 16 stands rejected under 35 U.S.C. Â§ 103(a) as obvious over the combination of Lewis, Hartman, and Monroe. Final Act. 10-11. 2 Appeal2017-002893 Application 13/174,726 ISSUES 1. Did the Examiner err in finding Lewis teaches or suggests "a partially transparent housing" and "visually signals," as recited in claim 1? 2. Did the Examiner err in finding Lewis teaches or suggests "a transparent housing," as recited in claim 11? 3. Did the Examiner err in finding the combination of Lewis and Hartman teaches or suggests "visually observing," as recited in claim 17? ANALYSIS Claim 1 recites "a partially transparent housing defining a cavity" and a magnetic element within the cavity, "wherein an automatic, rapid pivot of the magnetic element away from the pull of gravity visually signals a close proximity of a storm to an observer." Independent claim 11 similarly recites "a transparent housing defining a generally spherical cavity" and "a rapid pivoting of the generally spherical magnetic member [within the cavity] indicates proximity of a storm," but unlike claim 1, claim 11 does not expressly recite that such an indication is "visual." The Examiner relies on Lewis for teaching a housing that is "transparent" (claim 11) or "partially transparent" (claim 1 ). Final Act. 4 (citing Lewis 2:14--15, Fig. 5), 2 (citing Lewis 5:13-16, Fig. 1). The cited portions disclose a spherical housing but never address transparency. See Lewis 2: 13-15 ("This invention discloses an apparatus for real-time digital directional orientation by incorporating both a digital inclinometer and a digital compass in a spherical housing."), 5:13-15 ("As shown in perspective in FIG. 1, the real-time directional orientation apparatus 10 comprises a housing 20 having a spherical chamber 22 disposed therein.") (emphasis omitted). 3 Appeal2017-002893 Application 13/174,726 In the Answer, the Examiner further finds "Lewis expressly discloses that the source emitter can be LED and the user see[ s] the direction of the needle at the corresponding point this light is being emitted" and therefore the "housing is at least partially transparent otherwise the user cannot see the direction of the compass needle." Ans. 9 (citing Lewis "Figs. 2, 3a, 6 and their related description"). Based on the citations in the Final Rejection, the Examiner appears to rely on Lewis' "housing 20" in Figures 1-3a or "housing 112" in Figures 5- 7 as disclosing the claimed housing. See Final Act. 2 (citing Lewis 5: 13- 16), 4 (citing Lewis Fig. 5). The question then is whether the Examiner has shown sufficient evidence that housing 20 or 112 is "transparent" or "partially transparent." "[I]t is incumbent upon the Patent Office in the first instance to set forth clearly why it regards a claim to be anticipated, obvious or otherwise defective." In re Mullin, 481F.2d1333, 1336 (CCPA 1973). Here, the Examiner refers us to "Figs. 2, 3a, 6 and their related description" in Lewis. Ans. 9. In Figure 2 of Lewis, the inner wall 24 of the housing 20 is lined with a material 26 which "prevents the fluid means 38 from making direct contact with the plurality of source detector means 30." Lewis 5: 19-27 (emphasis omitted). The material 26 is described as "transparent to the signal from a source emitter means 40." Id. at 5 :21-24 (emphasis omitted). However, there is no evidence of the housing itself being transparent, nor of the source detector means being transparent. See id. at 5:12---6:37. The same is true for the substantially similar disclosure for Figures 5-7. Id. at 9:34--10:62. As Appellant points out, the emissions (such as from an LED or radioactivity) are detected by the numerous source detector means (labeled 30 in Figures 4 Appeal2017-002893 Application 13/174,726 1-3b and 130 in Figures 5-7), so Lewis has no need for and no disclosure of a transparent housing for a person to see through. Reply Br. 5---6. We therefore agree with Appellant that the Examiner fails to show Lewis teaches or suggests a transparent or partially transparent housing. See App. Br. 36- 37' 39--40. 1 Claim 17 is a method claim that recites "visually observing the realigned magnetic member." The Examiner finds "Lewis fails to expressly disclose positing the magnetic member at a ground location, detecting proximity of an approaching storm and visually observing the realigned magnetic member." Final Act. 6. The Examiner further finds "as shown by Hartman, it was well known in the art of magnetic elements that storm influences pivot movements of magnetic elements away from the pull of gravity and to visually observe the realigned magnetic element," relying on Hartman for teaching "the attraction and deflection of the compass needle due to storm clouds or thunderhead is demonstrated visually." Id. (citing Hartman 1:23-28, 3:71-75). Based on this, the Examiner determines "[t]herefore, it would have been obvious to one of ordinary skill in the art of magnetic elements that the apparatus disclosed by Lewis signals a close proximity of a storm by a rapid pivot of the magnetic element away from the pull of gravity as taught by Hartman." Id. at 7. However, even if it was inherent that the magnetic element in Lewis would rapidly pivot away from the pull of gravity when in proximity to a storm, the Examiner fails to explain why it would have been obvious to "visually observe" that phenomenon in "the apparatus disclosed by Lewis." As explained above, 1 All references to the "Appeal Brief' or "App. Br." refer to the Corrected Appeal Brief as filed October 6, 2016. 5 Appeal2017-002893 Application 13/174,726 there is no evidence that the housing in Lewis is transparent and there is no need for visual observation given that detection is done by the numerous source detector means rather than visual observation. Accordingly, we do not sustain the rejection of independent claims 1, 11, and 17, and their dependent claims 2-10, 12-16, and 18-20. 2 DECISION For the reasons above, we reverse the decision rejecting claims 1-20. REVERSED 2 The Appeal Brief states, "Appellant and Appellant's legal representative know of other prior or pending appeals, interferences, or judicial proceedings that may be related to, directly affect or be directly affected by, or have a bearing on the Board's decision in any future pending appeal." App. Br. 4. Given that no other proceedings are identified, we assume this sentence inadvertently omitted a negative (e.g., "know of no other"). 6