Ex Parte MATLOW

Patent Trials and Appeals Board

Apr 15, 2019

14889864 - (D) (P.T.A.B. Apr. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/889,864 11/09/2015
44696 7590
Dr. Mark M. Friedman
Moshe Aviv Tower, 54th floor
7 Jabotinsky St.
Ramat Gan, 5252007
ISRAEL
04/17/2019
FIRST NAMED INVENTOR
Mell MATLOW
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.
5743/9 1340
EXAMINER
DSOUZA, JOSEPH FRANCIS A
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
04/17/2019 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):
patents@friedpat.com
friedpat.uspto@gmail.com
rivka_f@friedpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MELL MATLOW
Appeal2018-004977
Application 14/889,864
Technology Center 2600
Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
JEREMY J. CURCURI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2 and 4 which constitute all claims pending in this application. 1
Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the real party in interest as himself. App. Br. 2.
Appeal2018-004977
Application 14/889,864
Introduction
According to Appellant, the claimed subject matter relates to a tire
pressure maintenance system (TPMS) including a sensor installed in the
interior region of the tire and a battery mounted on the exterior region of the
tire to identify tire pressure, and accurately self-inflate the tire to optimal
pressure. Spec. 5:12-20. In particular, the battery is a tubular dry cell
battery (120) configured for deployment on a valve stem (104) with wires
(110, 112) that pass through the valve stem base (102) into an interior region
of the tire to provide electric communication between the battery and the
TPMS sensor deployed in the interior region of the tire. Id. at 5:21---6:3,
Figs. 2--4.
Representative Claim
Claims 2 and 4 are independent. Independent claim 2 is
representative, and is reproduced below with limitation at issue italicized:
Claim 2. A Tire Pressure Maintenance System (TPMS) with an
externally mounted battery for use with a wheel with a tire mounted
thereon, the TPMS comprising:
(a) a valve stem configured to accommodate deployment of an
externally mounted tubular battery;
(b) a tubular battery having an axial through bore, said tubular
battery having a mechanical engagement arrangement configured for
releasable attachment of said tubular battery to said valve stem when
said tubular battery is deployed on said valve stem with at least a
portion of said valve stem deployed within said axial through bore;
and
( c) wires that pass through a valve stem base into an interior
region defined by a combination of the tire mounted on the wheel so
as to provide electric communication between said tubular battery and
a TPMS sensor deployed in said interior region.
2
Appeal2018-004977
Application 14/889,864
Widner
Romero
Zhou
Prior Art Relied Upon
us 5,853,020
US 2003/0113614 Al
US 2012/0218095 Al
Rejections on Appeal
Dec. 29, 1998
June 19, 2003
Aug.30,2012
Claim 2 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Zhou, Romero, and Widner. Final
Act. 4--6.
Claim 4 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Romero and Zhou. Id. at 6-8. 2
ANALYSIS 3
"Section I03(a) forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) ("KSR"). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
2 The Examiner inadvertently referred to claim 2 instead of claim 4. Final
Act. 6. We treat this typographical error as harmless error.
3 We refer to the Final Office Action (mailed May 18, 2017) ("Final Act."),
the Appeal Brief (filed October 16, 2017) ("App. Br."), the Examiner's
Answer (mailed February 6, 2018) ("Ans."), and the Reply Brief (filed
March 28, 2018) ("Reply Br.") for the respective details.
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Appeal2018-004977
Application 14/889,864
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).
Appellant argues that the Examiner erred in rejecting claims 2 and 4
over the combination of Zhou and Romero because the proposed
combination of references does not teach or suggest "a tubular battery
having ... a mechanical engagement arrangement configured for releasable
attachment of said tubular battery to said valve stem when said tubular
battery is deployed on said valve stem with at least a portion of said valve
stem deployed within said axial through bore," as recited in independent
claim 2. App. Br. 7-12. In particular, Appellant argues that the ordinarily-
skilled artisan would not be motivated to combine Zhou' s battery deployed
in a sensor module remotely connected to valve stems/wheel bolt by means
of hoses with Romero's tubular battery having a collapsing vent system. Id.
9 ( citing Zhou Fig. 2, Romero, Fig. 5). According to Appellant, the
proposed combination would at best result in Romero's tubular battery using
Zhou' s threaded cap as the mechanical engagement arrangement configured
for releasable attachment, as opposed to the claimed tubular battery using an
axial through bore in which a valve stem is deployed. Reply Br. 2-3. This
argument is persuasive.
At the outset, we note the Examiner finds the following:
[Zhou discloses] a battery (module assembly, para. 39; para. 37;
[per para. 37, module assembly includes battery]) said battery
having a mechanical engagement arrangement configured for
releasable attachment of said battery to said valve stem (Fig. 5,
battery 506; [0037] states battery 506 is replaceable which
implies it is releasable. Threaded cap 508 allows for releasing
and replacing the battery) when said battery is deployed on said
valve stem deployed on said valve stem (a. bracket and module
assembly is mounted on one of the wheel bolts with two hoses
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Appeal2018-004977
Application 14/889,864
each connecting one of the two module air outlets to respective
inner and outer tire valve stems, para. 39; fig. 7).
Final Act. 4.
Zhou does not disclose (1) a tubular battery having an
axial through bore with at least a portion of said valve stem
deployed within said axial through bore and (2) wires that pass
through a valve stem base into an interior region defined by a
combination of the tire mounted on the wheel; the devices
deployed in said interior region.
Id. at 5.
Id.
Romero discloses a tubular battery having an axial through bore
(abstract; inner wall 10 surrounds a hollow core 20, para. 21;
the inner tube, outer tube, and end plates form a sealed,
hermetic annular space in which the battery components are
held, abstract) at least a portion of said valve stem deployed
within said axial through bore (Fig. 5, valve stem interpreted as
part shown within inner bore shown as 32, 34, 36).
According to the Examiner, the proposed combination of references
would have produced a TPMS with a tubular battery allowing a more
compact, a more aesthetically pleasing, and a less disruptive arrangement,
which is more marketable. Id. Notwithstanding the lack of evidence on this
record to support this latter assertion, we agree with Appellant that even if
the cited portions of Zhou and Romero were combined in the manner
proposed by the Examiner, the resulting combination would still fail to
remedy the noted deficiencies acknowledged by the Examiner. Zhou
discloses a battery ( 506) secured in place in a TPMS by a threading cap
mechanism (508). Zhou, Figure 5. Further, Romero discloses a tubular
battery having a hollow core (20), an inner collapsing tube (10) and/or a
valve core barrel (30). Romero, Fig. 3. As persuasively argued by
Appellant, although Romero's battery's hollow core teaches the claimed
axial through bore, the collapsing tube and/or the valve core barrel are part
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Appeal2018-004977
Application 14/889,864
of the battery, and therefore do not teach the claimed stem valve, which can
be deployed into the axial through bore for releasable attachment. App. Br.
7-8. We further agree with Appellant that Zhou's threaded cap does not
teach the claimed releasable attachment set forth above. Id. at 9. Therefore,
as persuasively argued by Appellant, the proposed combination would result
in the TPMS with a tubular battery being held in place with a threaded cap
as the releasable attachment, as opposed to a valve stem ( external to the
battery) that can be deployed through the axial through bore of the tubular
battery for reliable attachment. Accordingly, we agree with Appellant that
the proposed combination falls short of teaching or suggesting the disputed
limitations.
Because Appellant has shown at least one reversible error in the
rejection of claim 2, we need not reach Appellant's remaining arguments.
Accordingly, we do not sustain the Examiner's obviousness rejection of
independent claim 2. Likewise, we do not sustain the rejection of
independent claim 4, which recites the disputed limitations.
DECISION
For the above reasons, we reverse the obviousness rejections of claims
2 and 4.
REVERSED
6