Robert Bosch Tool Corporation et al.

Patent Trials and Appeals BoardNov 19, 2020

2020002082 (P.T.A.B. Nov. 19, 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. 14/208,399 03/13/2014 James Alan Weir 2178-1940 4641 10800 7590 11/19/2020 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER MCGRATH, ERIN E ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 11/19/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES ALAN WEIR and ANDREW POMJIN CHO Appeal 2020-002082 Application 14/208,399 Technology Center 3700 Before CHARLES N. GREENHUT, NATHAN A. ENGELS, and PAUL J. KORNICZKY, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 2–10 and 20–22. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Robert Bosch Tool Corp. Appeal Br. 2. Appeal 2020-002082 Application 14/208,399 2 CLAIMED SUBJECT MATTER The claims are directed to a heated garment and battery holster. Claim 2, reproduced below, is illustrative of the claimed subject matter: 2. A heated garment system, comprising: a jacket; a wiring circuit embedded within the jacket and configured to generate heat; a battery assembly configured to removably couple with the wiring circuit, the battery assembly including a power button for selectively applying power to the wiring circuit; and a battery holder configured to removably receive the battery assembly, wherein: the battery holder includes a first end portion defining a first opening to a cavity and a second end portion defining a second opening to the cavity; and the battery assembly includes a coupler configured to align with the second opening when at least a portion of the battery assembly is inserted through the first opening and into the cavity. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Matti US 4,464,445 Aug. 7, 1984 Hattori US 5,633,096 May 27, 1997 Snyder US 5,768,371 June 16, 1998 Campf US 5,986,243 Nov. 16, 1999 Richmond US 2009/0289046 A1 Nov. 26, 2009 Gray US 2011/0108538 A1 May 12, 2011 Blackford US 2012/0074128 A1 Mar. 29, 2012 Appeal 2020-002082 Application 14/208,399 3 REJECTIONS The Examiner withdrew the rejection of claims 6–10, 21, and 22 under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 2; Ans. 3. Claims 2, 20, and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Campf and Hattori. Final Act. 3. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Campf, Hattori, and Matti. Final Act. 6. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Campf, Hattori, Matti, and Snyder Final Act. 6. Claims 5–9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Campf, Hattori, and Richmond. Final Act. 7. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Campf, Hattori, Richmond, and Blackford. Final Act. 11. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Campf, Hattori, and Gray. Final Act. 12. OPINION All the rejections before us depend on whether the “blanket” or “cover” of Campf falls within the ambit of the broadest reasonable interpretation of the recited term “jacket.” Final Act. 3. For the reasons argued by Appellant (Appeal Br. 5–8), we agree with Appellant that it does not. First, the claim preamble and the rest of the Specification indicate that the claimed invention relates to garments. The definition cited by the Examiner equating a jacket to a cover (Ans. 14) is one for wire, mechanical elements, and other items that are clearly not relevant to garments. There is Appeal 2020-002082 Application 14/208,399 4 nothing wrong with consulting a general dictionary when attempting to ascertain the broadest reasonable interpretation of a term. In re Trans Texas Holdings Corp., 498 F. 3d 1290, 1299 (Fed. Cir. 2007). However, although discussed in the litigation context, our reviewing court has indicated that dictionary evidence must always be considered in light of the Specification: In construing claim terms, the general meanings gleaned from reference sources, such as dictionaries, must always be compared against the use of the terms in context, and the intrinsic record must always be consulted to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor. “Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). The Examiner has not selected a reasonable dictionary definition suitable for this particular context. Additionally, our reviewing court has also indicated that although the usage of a term in the prior-art is not necessarily controlling, “[p]rior art references may be ‘indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art.’ Accordingly, the PTO's interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art.” In re Cortright, 165 F. 3d 1353, 1358 (Fed. Cir. 1999). Here, Campf itself refers to, and thus illustrates an awareness of, the term “jacket.” Campf, col. 2, ll. 29–31. Yet, Campf never uses the term Appeal 2020-002082 Application 14/208,399 5 “jacket” to refer to the cited portion of Campf’s invention, always opting for the terms “cover” or “blanket.” Claim construction is a mixed question of fact and law and the weight of evidence presently before us strongly favors the conclusion that, contrary to the Examiner’s proposed claim interpretation, one skilled in the art reading the claims in light of Appellant’s Specification would not understand Campf’s cover or blanket to fall within the scope of subject matter covered by the recited term, “jacket.” Accordingly, as the Examiner’s rejections are all predicated on an overly broad claim construction, for which the Examiner provides no other findings or reasoning to remedy, the Examiner’s rejections cannot be sustained on the grounds presently before us. CONCLUSION The Examiner’s rejections are REVERSED. Appeal 2020-002082 Application 14/208,399 6 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 20–21 103(a) Campf, Hattori 2, 20–21 3 103(a) Campf, Hattori, Matti 3 4 103(a) Campf, Hattori, Matti, Snyder 4 5–9 103(a) Campf, Hattori, Richmond 5–9 10 103(a) Campf, Hattori, Richmond, Blackford 10 22 103(a) Campf, Hattori, Gray 22 Overall Outcome 2–10, 20–22 REVERSED