Ex parte Rhine
Appeal 2010006734, Reexamination Control 90/005,694, Tech. Center 2800
The claim on appeal was directed to a wristwatch including a light source mounted in the watch case, and further including a timer delay means which turned off the light source after a delay.
The Examiner rejected under § 103, combining a watch having a light controlled by an external switch with a flashlight having a time delay switch. As motivation, the Examiner pointed to a teaching in the flashlight reference that the time delay switch saved battery power. The BPAI characterized this motivation as a "design incentive" or "other market force," citing to KSR.
The Applicant argued that "it would not have been feasible to miniaturize the components of the mechanism taught in Mallory to put them into a wristwatch and still allow them to function." The Board found this unpersuasive:
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). Appellant does not provide sufficient evidence that those of skill in the art could not have made a smaller version similar to the mechanism of Mallory to work in a watch. Indeed, Wegner teaches using springs in a wristwatch. (Wegner col. 2, ll. 47-50; Fig. 1, element 22). Thus, the Examiner had a reasonable basis for considering that the mechanism of Mallory, which relies on springs and valves, could have been successfully used in a watch. (Ans. 9). Appellant does not point to evidence to the contrary. Thus, we are not persuaded that the Examiner erred.
My two cents: The Board's references to "smaller version" and "miniaturization" makes it sound like there were clear differences between two references — small watch, big flashlight — and that the obviousness rationale was basically "miniaturizing electrical components to fit in a watch is a routine modification." Sounds reasonable, and I agree that this is a prima facie case which shifts the burden to the Applicant to show why that's not a routine modification. [Or to offer some other reason why the combination isn't rational.]
However, I think the Examiner's position — as expressed in the Answer — may be even stronger than as characterized by the Board. According to the Answer:
Applicant's argument that the time delay cutoff switch of Mallory is too large and bulky to be used in a watch is more a matter of scale than function. This is especially true when one notices in Figs. 1 and 3 of Wegner '871 that the electrical switch assembly shown uses a bulky, mechanical spring in the same manner as that of Mallory's '282 automatic time delay switch.Clearly, if the examiner had relied upon the time delay switch feature of an electric toaster or an egg timer then applicant's argument of non-analogous art might have been more persuasive.Here, the Examiner seems to be suggesting that miniaturization of the flashlight mechanism was unnecessary because the electrical switch in the watch already used a "bulky" spring, rather than the miniature spring one usually associates with watches.
If both the watch and the flashlight used a similar-sized spring for the electrical switch, this reduces the amount of difference between the two, and bolsters the conclusion of obviousness.