Magnasphere CorporationDownload PDFPatent Trials and Appeals BoardMar 8, 20212020002860 (P.T.A.B. Mar. 8, 2021) Copy Citation 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. Appeal 2020-002860 Application 15/903,486 2 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). Appeal 2020-002860 Application 15/903,486 3 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. Appeal 2020-002860 Application 15/903,486 4 § 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 Appeal 2020-002860 Application 15/903,486 5 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.” Appeal 2020-002860 Application 15/903,486 6 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 Appeal 2020-002860 Application 15/903,486 7 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 Appeal 2020-002860 Application 15/903,486 8 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 Appeal 2020-002860 Application 15/903,486 9 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 Appeal 2020-002860 Application 15/903,486 10 (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 Appeal 2020-002860 Application 15/903,486 11 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. Appeal 2020-002860 Application 15/903,486 12 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 Appeal 2020-002860 Application 15/903,486 13 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 Copy with citationCopy as parenthetical citation