Ex Parte Smith

Patent Trial and Appeal Board

Dec 4, 2012

10757146 (P.T.A.B. Dec. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DWIGHT D. SMITH
____________________

Appeal 2010-006667
Application 10/757,146
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1 and 10-12.2 We have jurisdiction under 35 U.S.C. § 6(b). We
affirm, and to the extent we rely on less than all of the references applied by
the Examiner and rely on new portions of the primary reference to Lee (U.S.
Patent No. 5,844,401), we designate our decision as new grounds of
rejection.
Exemplary Claim on Appeal
Claim 1, the only independent claim on appeal, with emphases added,
reads as follows:
1. A battery charger assembly, comprising:

a housing having a battery receiving cavity, said cavity being profiled
to receive at least a battery therein, said housing further comprising an
opening through said housing and into said cavity;

electrodes for contacting contacts on the battery for charging the
battery;

a cam assembly; and

a gripping member operatively connected to said cam assembly, and
movable transversely into and out of said housing opening by operation of

1 For purposes of this decision, we make reference to the Appeal Brief filed
November 25, 2009 (“App. Br.”), the Examiner’s Answer mailed January
20, 2010 (“Ans.”), and the Reply Brief filed March 19, 2010 (“Reply Br.”).
2 Claims 2 and 14 have been canceled, claims 13 and 15-23 have been
indicated as containing allowable subject matter, and claims 3-9 have been
objected to as being dependent upon a rejected base claim, but would be
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims (see Final Rej. 5; App. Br. 2).
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said cam assembly, between a locked and unlocked position, the gripping
member being forced transversely into the battery in the locked position for
frictionally gripping a battery placed within said cavity.

Rejections on Appeal3
(1) The Examiner rejected claims 1 and 10 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Lee and Wulff (U.S. Patent
No. 7,299,373 B2). Ans. 3-4.
(2) The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Lee, Wulff, and Taylor (U.S.
Patent No. 5,262,710). Ans. 4-5.
Appellant’s Contentions
(1) Appellant contends (App. Br. 3-7) that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because:
(a) the combination of Lee and Wulff fail to show a cam for
moving a gripping member into frictional engagement as set forth in
claim 1 (App. Br. 3-6);
(b) Lee uses abutting latches, but not a frictional retaining force
as determined by the Examiner (App. Br. 6);
(c) the combination of Lee and Wulff fails to show “a gripping
member moving transversely into the housing opening and a gripping
member for frictionally gripping a battery placed within the cavity,”
as recited in claim 1 (App. Br. 6), and fails to render claims 1 and 10-
12 obvious (Reply Br. 5-6);

3 Separate patentability is not argued for claims 10-12 (see App. Br. 7-8).
Except for our ultimate decision, these claims are not discussed further
herein.
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(d) Lee has nothing to do with providing a camming
engagement for locking the battery in position, therefore combining
Lee and Wulff would change the principle of operation of Lee (Reply
Br. 2-5);
(e) Wulff does not appear to show the gripping member that is
cammed into the side of a battery to frictionally hold the battery in
place (Reply Br. 5);
(f) Lee fails to show a gripping engagement of the battery, and
instead shows a latch/catch arrangement with latching structure 51
and 71 (Reply Br. 5);
(g) the Examiner has failed to provide any articulated reasoning
for combining Lee and Wulff (App. Br. 7; Reply Br. 6), because the
Examiner’s statement that Lee’s gripping member may be modified to
have the gripping member moveable by operation of the cam
assembly as taught by Wulff is a conclusory statement (Reply Br. 6);
and
(h) even if Lee and Wulff were properly combinable, Wulff’s
teachings would not transform Lee’s member 71 into “a frictionally
engageable gripping member” (Reply Br. 5-6).
(2) Appellant contends (App. Br. 8) that the Examiner erred in
rejecting claims 11 and 12 under 35 U.S.C. § 103(a) over the combination of
Lee, Wulff, and Taylor for the same reasons argued with respect to claims 1
and 10 from which claims 11 and 12 ultimately depend.
Issue on Appeal
Based on Appellant’s arguments in the briefs, the following issue is
presented on appeal:
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Did the Examiner err in rejecting claims 1 and 10-12 as being obvious
because Lee fails to teach or suggest the “cam assembly” and “gripping
member . . . for frictionally gripping a battery” as set forth in independent
claim 1 on appeal?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (App. Br. 3-8; Reply Br. 1-6) that the Examiner has erred. We
disagree with Appellant’s conclusions, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, as well as the Advisory Action mailed April 16, 2009, and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (see Ans. 3-14; Reply Br. 1-6), with
the exception that we find that Lee alone (see Fig. 3B, elements 6, 61, 62, 7,
71, and 72), and not Wulff in combination with Lee as relied upon by the
Examiner (Ans. 3-5), teaches or suggests the cam assembly and gripping
member moveable by operation of the cam assembly, recited in claim 1.
We concur with the conclusions reached by the Examiner regarding
Lee (see Ans. 3-5), and designate our reliance on (i) less than all of the
references with regard to the rejection of Lee and Wulff for claims 1 and 10
(e.g., we only rely on Lee), (ii) Lee in combination with Taylor (i.e., and not
Lee further combined with Wulff in addition to Talyor for claims 11 and 12),
and (iii) additional portions of Lee (Fig. 3B; col. 1, ll. 51-58; col. 2, ll. 9-15;
col. 3, ll. 44-62; and col. 4, ll. 13-16), as new grounds of rejection (i.e., for
claim 1 we find that Lee teaches or suggests all the limitations of a battery
charger assembly as claimed, and for claims 11 and 12 we find that Lee
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combined with Taylor teaches or suggests the battery charger assembly as
recited in claims 1 and 10 from which claims 11 and 12 depend (see Ans. 4-
5 and 13-14)). In re Wiechert, 370 F.2d 927 (CCPA 1967) (concluding
Board decision constituted new ground of rejection when rejection was
factually based on different portion of reference).
The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection. In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966) (citing In re
Bush, 296 F.2d 491, 496 (CCPA 1961)). To the extent that we have relied
upon disclosures of Lee shown in Figure 3B and described at column 3, line
22 through column 4, line 22 as teaching or suggesting the cam assembly
and gripping member for frictionally gripping the battery as recited claim 1,
we designate our affirmance of the Examiner’s rejections of (i) claims 1 and
10, and (ii) claims 11 and 12, as new grounds of rejection. We highlight and
address specific findings and arguments with respect to Lee as follows.
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)(quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)); see also In re Morris, 127 F.3d 1048, 1053-54
(Fed. Cir. 1997).
Appellant shows (i) a cam 70, cam actuation mechanism or assembly
64, gripper or gripping member 68 in Figures 4 and 5, and (ii) a friction
member 102 in Figures 7 and 10, that are described at paragraphs [0027],
[0029], and [0030] as being a rubber-like structure integrally molded from
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Santoprene® or Torlon® (Spec. ¶¶ [0027], [0029], and [0030]) and grips the
battery to hold it in place (Spec. ¶ [0035]; see also Abs.). In this light, one
of ordinary skill in the art reading Appellant’s Specification and claim 1 on
appeal would understand at least Lee’s projection 62 (i.e., cam assembly) to
constitute the “cam assembly” recited in claim 1 because it is operatively
connected to the locking projection 71 (i.e., gripping member), sliding part
6, grip 61, projection 62, locking member 7, and projection groove 72 for
frictionally gripping a battery 5 placed in a cavity as shown in Figure 3B
between rollers 31 and 32 (col. 1, ll. 48-58; col. 3, ll. 41-64). One of
ordinary skill in the art would recognize that frictional gripping capacity can
be improve with the implementation or use of rubber-like substances as
disclosed by Appellant (see Spec. ¶ [0029]).
Lee specifically discloses that locking member 7 holds the battery 5
“tightly to the charging device because the spring adds a force to the locking
member” and “strengthens the force settling the battery” (col. 2, ll. 9-14).
Furthermore, Lee discloses that “[p]rojection groove 72 of locking member
7 makes contacts with and cams with projection 62 of sliding part 6” (col. 3,
ll. 50-51), and “[a]s shown in FIG. 3B, if the user slides the grip 61 in the
direction indicated by the arrow, the projection 62 of the sliding part 6 cams
with locking member 7” (col. 4, ll. 13-16). Finally, Appellant admits (App.
Br. 3-4; Reply Br. 2-3) that Lee includes Figures 3A and 3B, and discloses
that when sliding part 6 is moved in the direction of the arrow in Figure 3B,
projection groove 72 and locking member 7 contact and cam with sliding
part 6 and projection 62, and are biased with spring 8 (col. 3, ll. 44-62; col.
4, ll. 13-16).
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Therefore, we do not find Appellant’s arguments with regard to Lee to
be persuasive in light of the Examiner’s findings regarding Figures 3A and
3B (see Ans. 9-12). Specifically, Appellant’s arguments do not address the
findings of the Examiner in relation to the rejection of claim 1 with respect
to Figure 3B of Lee, or our findings regarding Lee’s disclosure of a “cam
assembly” and “gripping member . . . for frictionally gripping a battery”
discussed supra.
In view of the foregoing, Appellant’s contentions (App. Br. 3-7;
Reply Br. 1-6) that the combination of Lee and Wulff fails to teach or
suggest the cam assembly and gripping member for frictionally gripping a
battery recited in claim 1 are not persuasive. Accordingly, we will sustain
the Examiner’s rejection of independent claim 1, and dependent claims 10-
12.
For the above reasons, we also affirm the rejections of (i) dependent
claim 10 over Lee, and (ii) claims 11 and 12 over the combination of Lee
and Taylor, whose merits are not separately argued. In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987).

CONCLUSION
The Examiner has not erred in rejecting claims 1 and 10-12 as being
unpatentable under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 1 and 10-12 are affirmed.
To the extent that we have relied upon disclosures of Lee not relied on
by the Examiner as teaching or suggesting the cam assembly and gripping
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member of claim 1 and 10-12, we also enter new grounds of rejection under
37 C.F.R. § 41.50(b) for claims 1 and 10-12.
This decision contains new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
. . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that (emphasis added):
the appellant, WITHIN TWO MONTHS FROM THE
DATE OF THE DECISION, must exercise one of the following
two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

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;
37 C.F.R. § 41.50(b)

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