Magnasphere Corporation

Patent Trials and Appeals Board

Mar 8, 2021

2020002860 (P.T.A.B. Mar. 8, 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.
15/903,486 02/23/2018 Joseph C. Hedeen 47628-US-CNT1-CNT1 7893
23589 7590 03/08/2021
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
TALPALATSKI, ALEXANDER
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
03/08/2021 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):
uspatents@hoveywilliams.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH C. HEDEEN, RANDALL WOODS, and
LARRY HEDEEN
____________

Appeal 2020-002860
Application 15/903,486
Technology Center 2800
____________

Before JAMES C. HOUSEL, DEBRA L. DENNETT, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 13–16 and 18–21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Magnasphere Corporation as the real
party in interest. Appeal Brief filed October 31, 2019 (“Appeal Br.”), 1.
2 Final Office Action entered October 16, 2019 (“Final Act.”), 1.
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CLAIMED SUBJECT MATTER
Appellant claims a magnetic switch assembly. Appeal Br. 7–9.
Claim 13, the sole pending independent claim on appeal, reads as follows:
13. A magnetic switch assembly comprising
a housing,
an elongated first electrode extending into said housing,
a second electrode spaced from the first electrode, and
a component within said housing shiftable between first
and second switch positions depending upon the magnetic
condition acting upon said component,
said component having a diameter D,
said first switch position being when the component is in
simultaneous contact with the first and second electrodes,
said second switch position being when the component is
out of such simultaneous contact,
said first electrode having an elongated section with a
free end, a cross-sectional area, and a corresponding
longitudinal axis,
said first electrode further including an enlarged section
of greater cross-sectional area proximal to said free end,
said enlarged section having a first end adjacent said
free end and an opposed second end spaced from said first end
and axially spaced from said free end, with a first contact
surface extending between said first and second ends,
the cross-sectional area of said enlarged section at said
second end thereof being greater than the cross-sectional area of
said first electrode,
said second electrode presenting a second contact surface
spaced from said first contact surface,
said component, in said first switch position thereof
simultaneously contacting said first and second contact
surfaces, with a plane both containing said diameter D and
perpendicular to said longitudinal axis intersecting said first
electrode at a point spaced from said second end of said
enlarged section.

Appeal Br. 20 (Claims Appendix) (emphasis and indentations added).
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REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered February 20, 2020 (“Ans.”):
I. Claim 13 under 35 U.S.C. § 112(b) as being indefinite for
failing to particularly point out and distinctly claim the subject matter that
the inventor regards as the invention; and
II. Claims 13–16 and 18–21 under 35 U.S.C. § 103 as unpatentable
over Habboosh (US 2007/0035370 Al, published February 15, 2007) in view
of Bitko (US 6,180,873 B1, issued January 30, 2001).

FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 13–16 and 18–21 under 35 U.S.C. § 103 for reasons set forth in the
Final Action, the Answer, and below, and we reverse the Examiner’s
rejection of claim 13 under 35 U.S.C. § 112(b) for the reasons set forth in
the Appeal Brief and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I
We turn first to the Examiner’s rejection of claim 13 under 35 U.S.C.
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§ 112(b) as being indefinite. The Examiner determines that the recitation in
claim 13 that “said component, in said first switch position thereof
simultaneously contacting said first and second contact surfaces, with a
plane both containing said diameter D and perpendicular to said longitudinal
axis intersecting said first electrode at a point spaced from said second end
of said enlarged section” renders claim 13 indefinite because it is unclear
“what intersects the first electrode, the longitudinal axis or the plane.” Ans.
5; see also Final Act. 4.
As Appellant points out, however, claim 13 explicitly recites “said
first electrode having . . . a corresponding longitudinal axis,” which makes
clear that the “longitudinal axis” recited in the claim refers to the
longitudinal axis of the first electrode. Reply Br. 6–7. One of ordinary skill
in the art, therefore, would understand that the recitation in claim 13 of “a
plane both containing said diameter D and perpendicular to said longitudinal
axis intersecting said first electrode at a point spaced from said second end
of said enlarged section” indicates that the plane, rather than the longitudinal
axis, intersects the first electrode. We, accordingly, do not sustain the
Examiner’s rejection of claim 13 as being indefinite.
Rejection II
We turn next to the Examiner’s rejection of claims 13–16 and 18–21
under 35 U.S.C. § 103 as unpatentable over Habboosh in view of Bitko. To
address this rejection, Appellant presents arguments directed to independent
claim 13 only, to which we accordingly limit our discussion. Appeal Br.
11–18; 37 C.F.R. § 41.37(c)(1)(iv).
Habboosh discloses switch 10 including magnetic switch assembly 20
secured to door frame 12, and second attractive component 22 mounted to
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door 14. Habboosh ¶¶ 64, 65; Fig. 1. Habboosh discloses that switch
assembly 20 comprises housing 24 having sidewall 26, bottom wall 28, and
top cover 30 including non-conductive plug 38, and first attractive
component 45 associated with housing 24. Habboosh ¶¶ 65, 68; Fig. 2.
Habboosh discloses that elongated substantially upright first switch element
40 (first electrode) extends downwardly through plug 38 to a point spaced
above bottom wall 28 having annular contact surface 42 serving as a second
switch element (second electrode). Habboosh ¶ 66; Fig. 2. Habboosh
discloses disposing shiftable body 44 within housing 24, and Habboosh
explains that “[p]referred configurations of body 44 include substantially
spherical balls as well as cylinders but may take virtually any shape as
desired.” Habboosh ¶ 67; Fig. 2.
Habboosh discloses forming shiftable body 44 of a permanently
magnetized material, and forming attractive components 22, 45 of
complementary magnetized material relative to shiftable body 44.
Habboosh ¶ 72. Habboosh discloses that when door 14 is closed relative to
frame 12, shiftable body 44 shifts due to magnetic attraction between second
attractive component 22 and shiftable body 44, so as to hold shiftable body
44 in a position out of simultaneous contact with the switch elements 40, 42.
Habboosh ¶ 73; Fig. 2. Habboosh discloses that when door 14 is opened,
second attractive component 22 is remote from switch assembly 20, which
shifts body 44 to a position in which it is in simultaneous contact with
switch elements 40, 42. Habboosh ¶ 74; Fig. 3. Habboosh explains that “the
goal in selecting the materials for the components 45 and 22 and body 44 is
to assure that the body 44 may be appropriately magnetically shifted when
the door 14 is moved between the closed and open positions thereof.”
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Habboosh ¶ 72.
The Examiner finds that Habboosh does not disclose that first switch
element 40 (first electrode) includes an enlarged section as recited in claim
13, and the Examiner relies on Bitko for suggesting modification of
Habboosh’s first switch element 40 (first electrode) to include such an
enlarged section. Final Act. 5–6.
Bitko discloses a tilt switch that includes casing 128 having edge 126
(second electrode) and recess 130. Bitko col. 8, l. 66–col. 9, l. 5; Fig. 10a.
Bitko discloses that terminal 124 (first electrode) having head 122 extends
upwardly into casing 128. Bitko Fig 10a. Bitko discloses disposing
electrically conductive ball 120 inside casing 128, which engages head 122
and edge 126 of casing 128 to close a circuit. Bitko col. 8, l. 66–col. 9, l. 2;
Fig. 10a. Bitko discloses that when casing 128 is tilted beyond a
predetermined angle, conductive ball 120 rolls into recess 130 and out of
contact with terminal 124, so as to open the circuit. Bitko col. 9, ll. 3–5; Fig.
10b. Bitko discloses that the surface of head 122 can be any suitable shape
to conform to the shape of ball 120, and Bitko illustrates triangular head 122
in Figure 10a oriented in casing 128 with its apex pointed upwardly, so that
one of the inclined sides of head 122 conforms to the surface of ball 120.
Bitko col. 9, ll. 6–7.
In view of these disclosures in Bitko, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify
Haboosh’s first switch element 40 (first electrode) to include an enlarged
section oriented and shaped as disclosed in Bitko, by attaching the narrow
end (tip or point portion) of Bitko’s triangular enlarged section to Haboosh’s
switch element 40 (first electrode), so that the inclined side of the enlarged
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section contacts Haboosh’s shiftable body 44, “to provide a more consistent
and uniform contact surface thereby lowering resistance.” Final Act. 5–6.
Appellant argues that Bitko is not “pertinent to the present invention”
because “Bitko is not concerned with a magnetic switch at all.” Appeal Br.
15–16; see also Appeal Br. 12.
A reference is analogous art if it “is either in the field of the
applicant’s endeavor or is reasonably pertinent to the problem with which
the inventor was concerned . . . based on the judgment of a person having
ordinary skill in the art.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir.
2006). “A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 658 (Fed. Cir. 1992). “In other words, ‘familiar items may have
obvious uses beyond their primary purposes.’” Id. at 1380 (quoting KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)).
Bitko discloses electrical switches. Bitko col. 1, ll. 8–10. Although
the disclosures in Bitko cited by the Examiner relate to a tilt switch
containing a mesoscopic conductor liquid “contemplated as [a] substitute for
mercury tilt switches,” the switch nonetheless connects and disconnects a
conducting path in an electrical circuit, like the switch assembly recited in
claim 13. Bitko col. 7, ll. 26–29; col. 8, l. 66–col. 9, l. 7. Bitko discloses
that the purpose of its invention is to reduce contact resistance that occurs in
conventional mercury tilt switches. Bitko col. 1, ll. 6–42. Bitko achieves
this objective, in part, by shaping the mutually contacting faces of a terminal
(first electrode) and an electrically conductive ball (shiftable component) to
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maximize their contact area. Bitko col. 6, ll. 46–60; col. 7, ll. 45–63; Figs. 1
and 2.
Even if Bitko is not in the field of the inventors’ endeavor, the
reference nonetheless is reasonably pertinent to the particular problem with
which the inventors were concerned, as set forth in Appellant’s
Specification. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (Explaining
that the same field of endeavor test “for analogous art requires the PTO to
determine the appropriate field of endeavor by reference to explanations of
the invention’s subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention.”).
More specifically, as explained in the Specification, Appellant’s
invention addresses a problem in the art of magnetic switches that occurs
when switch balls become stuck in the simultaneous electrode contact
position due to frictional forces encountered between the balls and
electrodes. Spec. 1, ll. 11–16; 2, ll. 1–9. Bitko’s disclosure of appropriately
shaping mutually contacting faces of an electrode and an electrically
conductive ball to maximize their contact area logically would have
commended itself to one of ordinary skill in the art seeking to address this
problem. The ordinarily skilled artisan would have recognized that shaping
mutually contacting faces of an electrode and an electrically conductive ball
in an electrical switch as disclosed in Bitko to maximize their contact area
could also reduce frictional forces between the two elements. KSR, 550 U.S.
at 417 (“[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or [a different one]. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.”). Contrary to
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Appellant’s argument, Bitko, therefore, is analogous art.
Appellant argues that modifying Habboosh’s electrode 40 and Bitko’s
head 122 of terminal 124 so as to arrive at an enlarged section as recited in
claim 13 would require inverting Bitko’s head 122, and shaving off and
truncating the pointed end of Bitko’s head 122 “thereby creating a frustum
of the tip,” in order to render head 122 “suitable for attachment to
Habboosh’s electrode,” which is in no way “disclosed or suggested in any of
the art.” Appeal Br. 15–16.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
Bitko’s disclosure of forming head 122 of terminal 124 (first
electrode) to have an enlarged triangular shape with an inclined side
conforming to the surface of electrically conductive ball 120 so as to
maximize the contact area between terminal 124 and ball 120 reasonably
would have led one of ordinary skill in the art to modify Haboosh’s first
switch element 40 (first electrode) to include an enlarged section shaped and
oriented as disclosed in Bitko. The ordinarily skilled artisan would have
recognized that attaching the narrow end (tip or point portion) of a triangular
enlarged section as disclosed in Bitko to Haboosh’s switch element 40 (first
electrode), so that an inclined side of the enlarged section contacts
Haboosh’s shiftable body 44, would maximize the contact surface between
switch element 40 (first electrode) and shiftable body 44. KSR, 550 U.S. at
418 (An obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for [an examiner] can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.”); see also In re Preda, 401 F.2d 825, 826
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(CCPA 1968) (“[I]t is proper to take into account not only specific teachings
of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
Contrary to Appellant’s arguments, the proposed modification of
Haboosh does not involve first inverting Bitko’s tip 122 before attaching tip
122 to switch element 40 (first electrode), but, rather, involves attaching tip
122 to switch element 40 (first electrode) when tip 122 is in the orientation
disclosed in Bitko. Furthermore, to the extent that Appellant asserts that one
of ordinary skill in the art would not have had sufficient skill to
appropriately adapt the structure of Habboosh’s electrode 40 to attached an
enlarged section oriented and shaped as disclosed in Bitko, Appellant’s
unsupported argument does not constitute objective evidence demonstrating
that such a modification would have been “uniquely challenging or difficult
for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19);
see also Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313,
1333 (Fed. Cir. 2020) (“‘[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton,’ so the fact that it would take some
creativity to carry out the combination does not defeat a finding of
obviousness.”) (quoting KSR 550 U.S. at 421); In re Keller, 642 F.2d 413,
425 (CCPA) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of [a]
primary reference . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Appellant argues that operation of Habboosh’s switch involves
“bottom-to-top” movement of shiftable body 44 between a position in which
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it simultaneously contacts bottom wall 28 (second electrode) of housing 24
and first switch element 40 (first electrode) as shown in Figure 2, and the
separated condition shown in Figure 3, “to change the switch position of the
device.” Appeal Br. 16. Appellant argues that “the Examiner’s alterations
create a switch which no longer has such ‘bottom-to-top’” operation, and,
therefore, “the Examiner significantly changes the operational characteristics
of Habboosh without any justification.” Appeal Br. 16–17; see also Reply
Br. 5.
Appellant, however, does not direct us to any objective evidence
establishing that modifying Habboosh’s first switch element 40 (first
electrode) to include an enlarged section oriented and shaped as disclosed in
Bitko would inhibit movement of shiftable body 44 of Habboosh’s switch,
such that shiftable body 44 would be unable to move between a position in
which it is in simultaneous contact with the switch elements 40, 42 to a
position in which it is out of contact with switch elements 40, 42.
Appellant’s unsupported argument does not constitute the requisite evidence
necessary to establish that the proposed modification of Habboosh’s
electrode 40 would, in fact, inhibit the “bottom-to-top” movement of
Habbosh’s shiftable body 44. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (“An assertion of what seems to follow from common experience is
just attorney argument and not the kind of factual evidence that is required to
rebut a prima facie case of obviousness.”); Icon Health & Fitness, Inc. v.
Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is
not evidence” and cannot rebut other admitted evidence.). Appellant’s
argument, therefore, does not identify reversible error in the Examiner’s
rejection.
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Appellant argues that “the only logical end result” of “any
combination of Habboosh and Bitko . . . would be to apply Bitko’s conical
tip 122” to Habboosh’s first switch element 40 (first electrode) “as intended
by Bitko, i.e., by the attachment of the base of the conical tip directly to
Habboosh’s electrode 40,” which “does not meet the terms of claim 13.”
Appeal Br. 17; see also Reply Br. 5–6.
Appellant’s argument, however, does not address the modification of
Habboosh’s first switch element 40 (first electrode) actually proposed by the
Examiner. Nor does Appellant’s argument address the factual findings and
reasoning that underlie the Examiner’s proposed modification. Appellant’s
argument, therefore, does not identify reversible error in the rejection as
presented by the Examiner.
Furthermore, Appellant’s unsupported assertion as to “the only logical
end result” of “any combination of Habboosh and Bitko” (Appeal Br. 17),
does not constitute the requisite objective evidence necessary to establish
how one of ordinary skill in the art would have viewed the “end result” of
combining the relied-upon disclosures of Habboosh and Bitko. Geisler, 116
F.3d at 1470.
We, accordingly, sustain the Examiner’s rejection of claims 13–16
and 18–21 under 35 U.S.C. § 103.

CONCLUSION

Claim(s)
Rejected

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13 112(b) Indefiniteness 13
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Claim(s)
Rejected

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–16, 18–
21
103 Habboosh, Bitko 13–16, 18–
21

Overall
Outcome
13–16, 18–
21

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