Milwaukee Electric Tool Corporation

Patent Trials and Appeals Board

Feb 24, 2020

14755523 - (D) (P.T.A.B. Feb. 24, 2020)

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.
14/755,523 06/30/2015 Scott Schneider 066042-8340-US02 1813
60840 7590 02/24/2020
MICHAEL, BEST & FRIEDRICH LLP (MT)
100 EAST WISCONSIN AVENUE
SUITE 3300
MILWAUKEE, WI 53202
EXAMINER
HERNANDEZ, MANUEL J
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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):
MKEIPDOCKET@MICHAELBEST.COM
milwaukeeip@milwaukeetool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT SCHNEIDER,
CHRISTIAN COULIS, JAMES S. HULL, JAY ROSENBECKER,
and SCOTT D. BUBLITZ
Appeal 2019-002170
Application 14/755,523
Technology Center 2800
Before JEFFREY T. SMITH, GEORGE C. BEST, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Milwaukee
Electric Tool Corporation. Appeal Br. 2.
Appeal 2019-002170
Application 14/755,523
2
CLAIMED SUBJECT MATTER
The claims relate to a multi-bay battery charger. Spec. ¶ 2. Claim 11,
reproduced below from the Claims Appendix, is illustrative of the claimed
subject matter:
11. A battery charger for charging a first battery pack and a
second battery pack, the battery charger comprising:
a housing having a first surface, a second surface, and a third
surface, the first surface and the second surface being connected
together at a first oblique angle, the second surface and the third
surface being connected together at a second oblique angle;
a charging circuit positioned within the housing;
a first charging port coupled to the housing and electrically
coupled to the charging circuit, the first charging port configured
to support the first battery pack;
a second charging port coupled to the housing and electrically
coupled to the charging circuit, the second charging port
configured to support the second battery pack while the first
charging port supports the first battery pack;
a first indicator light associated with the first charging port,
the first indicator light including a first lens having a first section
positioned on the second surface and a second section positioned
on the third surface; and
a second indicator light associated with the second charging
port, the second indicator light including a second lens having a
third section positioned on the second surface and a fourth
section positioned on the third surface.
Appeal Br. 8 (Claims Appendix).
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Application 14/755,523
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REJECTIONS ON APPEAL
On appeal, the Examiner maintains the following rejections:
A. Claims 11, 12, and 14–16 under 35 U.S.C. § 103 as unpatentable
over Jacobs2 and Uehlein-Proctor;3
B. Claim 13 under 35 U.S.C. § 103 as unpatentable over Jacobs,
Uehlein-Proctor, and Boyles;4 and
C. Claims 17–20 under 35 U.S.C. § 103 as unpatentable over as
unpatentable over Jacobs, Uehlein-Proctor, and DeRome.5
Ans. 2; Non-Final Act. 3–9.
OPINION
We sustain the above rejections based primarily on the Examiner’s
findings of fact, conclusions of law, and rebuttals to Appellant’s arguments,
as expressed in the Final Action and Answer. The following comments are
added for emphasis.
Appellant presents arguments for independent claim 11 and dependent
claim 12, but does not present any arguments for dependent claims 13–20,
which depend from claim 11. Therefore, we limit our discussion to
independent claim 11, which we select as representative under 37 C.F.R.
§ 41.37(c)(1)(iv), and dependent claim 12. By this rule, claims 13–20 stand
or fall with claim 11.
1. Claims 11 and 13–20
Jacobs discloses a battery charger for charging a first and second
battery pack that includes first and second indicator lights associated with

2 US 6,597,152 B1, issued July 22, 2003.
3 US 2006/0267548 A1, published Nov. 30, 2006.
4 US 2010/0060232 A1, published Mar. 11, 2010.
5 US 2008/0174269 A1, published July 24, 2008.
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Application 14/755,523
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first and second charging ports. Jacobs, Figures 1 and 2; Final Act. 3–4.
According to the Examiner, Jacobs discloses all of the limitations of claim
11 except for “the first indicator light including a first lens having a first
section positioned on the second surface and a second section positioned on
the third surface,” and “the second indicator light including a second lens
having a third section positioned on the second surface and a fourth section
positioned on the third surface.” Final Act. 4. The Examiner finds that
Uehlein-Proctor discloses an indicator light including a lens that is
positioned on at least two surfaces. Final Act. 5 (citing Uehlein-Proctor ¶ 91
and Figure 11A); Ans. 3–4 (citing Uehlein-Proctor Figure 13). The
Examiner states that substituting the Uehlein-Proctor light for each of the
indicator lights in Jacobs would provide the claimed first and second
indicator lights, and that a person of ordinary skill in the art would have
made this modification “to improve the visibility of the indicator lights.”
Final Act. 5; Ans. 3–4.
Appellant argues that the Examiner’s interpretation of the indicator
light in Uehlein-Proctor is “a mischaracterization of the reference,” as the
indicator “includes only a single section positioned on a single, beveled
surface of the battery charger.” Appeal Br. 5–6; see also Reply 2 (arguing
that a surface with beveled edges is considered a single surface). Appellant
also argues that neither Jacobs nor Uehlein-Proctor provides a reasonable
rationale to position an indicator light on two surfaces. Appeal Br. 5.
Appellant’s arguments are ineffective to identify any reversible error
in the Examiner’s rejection of claim 11. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (explaining that appellant has burden of identifying
reversible error in an examiner’s rejection). The Examiner’s determination
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Application 14/755,523
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that Uehlein-Proctor discloses an indicator that is positioned on two surfaces
is supported by what is shown in the figures of Uehlein-Proctor. Uehlein-
Proctor, Figs. 11A, 13; Final Act. 4–6; Ans. 2–4. We are not persuaded by
Appellant’s arguments that there is a patentable distinction between the
claimed invention and what is disclosed in the combined teachings of Jacobs
and Uehlein-Proctor. In particular, Appellant offers no evidence to support
its argument that a surface that includes beveled edges constitutes a single
surface, as opposed to two surfaces. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).
Nor are we persuaded by Appellant’s argument regarding the lack of a
rationale to position an indicator light on two surfaces, as Uehlein-Proctor
discloses the use of its indicator lights to “display[] charging information to
an operator.” Uehlein-Proctor ¶ 91; Final Act. 5. Furthermore, given the
teachings of Uehlein-Proctor, a person of ordinary skill in the art using no
more than ordinary creativity would have reasonably expected the location
of an indicator light spanning multiple surfaces would have increased the
angles from which an operator could have viewed the battery charge status.
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ”); In re
Venner, 262 F.2d 91, 95 (CCPA 1958) (explaining that the provision of
“automat[ed] means to replace manual activity which has accomplished the
same result” is well within the ambit of one of ordinary skill in the art)
(citation omitted); see also Soverain Software LLC v. Newegg Inc., 705 F.3d
1333, 1344, amended on reh’g, 728 F.3d 1332 (Fed. Cir. 2013) (concluding
Appeal 2019-002170
Application 14/755,523
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that claims directed to an online shopping system were invalid as obvious
given that the patentee “did not invent the Internet, or hypertext, or the
URL” and using hypertext to communicate transaction information was no
more than “a routine incorporation of Internet technology into existing
processes”) (citations omitted). Appellant has not directed us to evidence
establishing that they were the first to invent indicator lights having lenses
that spanned two surfaces.
For these reasons, we sustain the Examiner’s rejection of independent
claim 11, and claims 13–20, which depend therefrom.
2. Claim 12
Claim 12 depends from claim 11, and requires “the first charging port
is positioned on the first surface, and the second charging port is positioned
on the second surface.” Appeal Br. 8 (Claims Appendix). The Examiner
acknowledges that Jacobs, as modified by Uehlein-Proctor, does not disclose
a second charging port positioned on a second surface, but finds that it
would have been an obvious matter of design choice to modify Jacobs to
include the second charging port on a second surface. Final Act. 6. The
Examiner notes that this modification would not change the functionality of
the apparatus, only the location of the charging port. Final Act. 6.
Appellant argues that the claimed charging port arrangement is used
for a particular purpose and provides an advantage because it allows the
charger to charge two battery packs with a high amount of energy within a
compact area. Appeal Br. 6; Reply 3.
Appellant’s arguments are not persuasive. As the Examiner points
out, “claim 12 merely recites a placement or location of the charging ports,”
and does not address the particular amount of energy of the batteries, the
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Application 14/755,523
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area of the charger, or how the placement of the charging ports affects the
relationship between the energy of the batteries and the area of the charger.
Ans. 7. We thus agree with the Examiner’s determination that “[o]ne of
ordinary skill would recognize the selection of placement of a charging port
on various surfaces of a battery charger to be a matter of design choice.”
Ans. 7.
In view of the foregoing, we are not persuaded of any reversible error
in the Examiner’s rejection of claim 12 under 35 U.S.C. § 103.
CONCLUSION
The Examiner’s rejections of claims 11–20 under 35 U.S.C. § 103 are
affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 12, 14–16 103 Jacobs, Uehlein-
Proctor
11, 12,
14–16

13 103 Jacobs, Uehlein-
Proctor, Boyles
13
17–20 103 Jacobs, Uehlein-
Proctor, DeRome
17–20
Overall
Outcome
11–20

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Application 14/755,523
8
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED