Ex Parte Casper et al

Patent Trial and Appeal Board

Jun 6, 2018

14573668 (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/573,668 12/17/2014
147359 7590 06/08/2018
FOX ROTHSCHILD LLP I EA TON
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
LAWRENCEVILLE, NJ 08648
FIRST NAMED INVENTOR
Joseph R. Casper
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ll4959.00321 4746
EXAMINER
HARRIS, WILLIAM N
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
06/08/2018 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH R. CASPER, CHRISTOPHER D. NOLAN,
JOSEPH J. WITKOWSKI, JEFF R. SHUSTER, and
BRIAN M. WILSON
Appeal2017-007401
Application 14/573,668
Technology Center 2800
Before KAREN M. HASTINGS, A VEL YN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 In our Decision we refer to the Specification originally filed December 1 7,
2014 (as amended June 5, 2015) ("Spec."), the Final Office Action appealed
from dated June 15, 2016 ("Final Act."), the Appeal Brief filed December 1,
2016 ("Appeal Br."), the Examiner's Answer dated February 10, 2017
("Ans."), and the Reply Brief filed April 10, 2017 ("Reply Br.").
2 Appellant is the Applicant, Ephesus Lighting, Inc., which according to the
Brief, is also the real party in interest. Appeal Br. 3.
Appeal2017-007401
Application 14/573,668
STATEMENT OF THE CASE
The subject matter on appeal relates to LED lighting fixtures and lens
structures for high intensity lighting of"[ e ]ntertainment facilities such as
stadiums, arenas and concert halls." Spec. i-f 3. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A light fixture comprising:
a light emitting diode (LED) structure comprising a
plurality of LEDs that are connected to a supporting substrate;
a lens cover comprising a plurality of lenses, each
positioned to be located over one of the LEDs, each lens
comprising a collimator configured to provide a narrow beam
from an LED under the lens, wherein the collimator comprises:
a first end positioned proximate the LED under the
lens and an opposing second end having a width that is
wider than a width of the first end;
an air gap positioned at the first end, wherein the
air gap comprises an opening that is symmetrically
positioned around a central axis; and
a core positioned to have a central axis that is
positioned along the central axis of the air gap, wherein
the core includes an open end positioned at the second
end of the collimator and a closed end that is opposite the
open end and that has a width that is substantially the
same as a width of the open end, wherein:
each LED has a width of X, and
a diameter of the second end is 4.2X to 4.4X.
Appeal Br. 20 (Claims App'x).
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Application 14/573,668
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1, 4--11, and 14--20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Iatan. 3 Final Act. 3.
B. Claims 2, 3, 12, and 13 4 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Iatan in view of Kabuki. 5 Id.
at 13; Ans. 2.
Appellant seeks our review of Rejections A-B. See generally Appeal
Br. Appellant argues independent claims 1, 11, and 20, and dependent
claims 2 (and 12), 9 (and 19), and 10. See id. at 16-18. Therefore, we limit
our discussion to the identified claims, and all other claims stand or fall
together with the claim from which they depend.
OPINION
Rejection A-Obviousness (1, 4-11, and 14-20)
The Examiner rejects claims 1, 4--11, and 14--20 as obvious over
Iatan. Final Act. 3.
3 George Iatan, US 2013/0235581 Al, published September 12, 2013
("Iatan").
4 In the Final Rejection, the Examiner identifies claims 2, 3, 9, 10, 12, 13,
and 19 as subject to Rejection B, however, the Answer identifies only claims
2, 3, 12, and 13 as subject to Rejection B. Compare Final Act. 13 with Ans.
2. Because claims 9, 10, and 19 are subject to Rejection A and because the
Examiner discusses only claims 9, 10, and 19 as part of Rejection A (not
Rejection B), the recitation of claims in the Answer appears correct. See
Final Act. 8-11.
5 Kabuki et al., US 2009/0251897 Al, published October 8, 2009
("Kabuki").
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Application 14/573,668
Claim 1:
The Examiner finds that Iatan teaches a light fixture comprising the
elements claimed except that Iatan does not "disclose or fairly suggest a
diameter of the second end is 4.2X to 4.4X," where Xis the width of an
LED. Final Act. 3-5. The Examiner reasons that "selecting the particular
ranges for the lens and collimator dimensions relative to the size of the
LEDs would have flown naturally to one of ordinary skill in the art to
determine via routine experimentation the most suitable diameter ranges."
Id. at 5.
Appellant argues that "[t]here is no discussion in Iatan that a
dimension of an end of a collimator of a lens covering an LED with respect
to the LED width will have an effect on the light distribution properties of
the lens." Appeal Br. 10. Thus, Appellant urges that the Examiner has
failed to make the necessary showing to establish the relationship between
the LED width and the diameter of the collimator at the second end as a
result effective variable, i.e., "a variable which achieves a recognized
result." Id. at 10-11. Appellant further asserts there is no need to provide
evidence of criticality for the relationship between the dimensions noted
above because the Examiner has not established a prima facie case of
obviousness. Id. at 12; Reply Br. 5.
Appellant does not persuade us of reversible error by the Examiner.
"A recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective." In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that it would have
been obvious for an artisan with ordinary skill to develop workable ranges
for result-effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA
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Application 14/573,668
1980) ("[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art."); In re Aller, 220
F.2d 454, 456 (CCPA 1955) ("where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation."). And, where the difference
between the claimed invention and the prior art is some range, the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range. In
re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990). Further, an
invention may be obvious for reasons the inventor did not contemplate. See
In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane).
Here, the Examiner finds that "selecting the particular ranges for the
lens and collimator dimensions relative to the size of the LEDs would have
flown naturally to one of ordinary skill in the art." Final Act. 5. In
particular, the Examiner describes the known relationship between the beam
angle and width of the lens. See Ans. 5 ("[B]oth the field angle and the
beam angle ... are result effective variables because they are related directly
to the width of the first end and the diameter of the second end of the lens,
both of which are themselves result effective variables."). Thus, the skilled
artisan, desiring to adjust the beam or field angles, would know that
adjusting the width of the lens, and hence the relationship between the
dimensions of the LED and the second end of the collimator, would be one
method of achieving the desired result. Ans. 3, 5.
Appellant further argues that Iatan fails to suggest the claimed air gap
as "there is no support for the Office's assertion in the description of FIG. 9
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in Iatan, and the purported air gap could be anything such as a solid material
of a differing refractive index." Appeal Br. 12.
Appellant's argument is not persuasive of reversible error. The items
in a patent drawing, even as to features unexplained by the Specification,
should not to be disregarded. In re Mraz, 455 F.2d 1069, 1072 (CCPA
1972). "[A] reference must be considered not only for what it expressly
teaches, but also for what it fairly suggests." In re Burckel, 592 F.2d 1175,
1179, 201 USPQ 67, 70 (CCP A 1979). The test for obviousness is not
whether the claimed invention is expressly suggested in any one or all of the
references, but whether the claimed subject matter would have been obvious
to those of ordinary skill in the art in light of the combined teachings of
those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). And,
one of ordinary skill can use his or her ordinary skill, creativity, and
common sense to make the necessary adjustments and further modifications
to result in a properly functioning device. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) ("[A] court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ").
The claim limitation at issue here, the air gap, is fairly suggested by
the drawings of Iatan. See Iatan, Figs. 1-3, 8, 9. Further, as the Examiner
explains,,
[s]ince Iatan's lighting device does not exist in a vacuum and
there is no structure shown between the top of the LED 122 and
the bottom of the lens core, ... one of ordinary skill would
recognize that the only thing that can exist within this space is
air, thereby making the space an air gap.
Ans. 4. Appellants' arguments fail to identify error in the Examiner's
findings or reasoning.
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Accordingly, we affirm the Examiner's rejection of claim 1, and
claims depending therefrom.
Claim 11:
Claim 11, is similar to claim 1, but is directed to a lens cover and
additionally requires that "each lens is configured to provide a beam angle of
10.3° and a field angle of 18.2°." Appeal Br. 22 (Claims App'x). The
Examiner further determines that it would have been obvious to provide a
beam angle of 10.3° and a field angle of 18.2° as claimed "since it has been
held that discovering an optimum value of a result effective variable
involves only routine skill in the art." Final Act. 6. The Examiner reasons
that "determining an optimum beam angle and field angle for the lenses
would have flown naturally ... based on the particular lighting effect(s)
desired." Id.
In addition to the arguments presented for claim 1, Appellant also
argues that "because the beam angle and the light angle are properties
affected by variables such as reflectors, collimators, dispersion optics, lens
dimensions, etc .... are not result-effective variable themselves," it would
not have been obvious to modify Iatan to achieve the claimed invention.
Appeal Br. 14.
Appellant does not persuade us of a reversible error by the Examiner.
As the Examiner explains, optimizing the beam and field angles for a lens to
achieve "the particular lighting effect(s) desired" would have involved no
more than routine experimentation by the skilled artisan. Final Act. 6.
Beam angle and field angle are known to be related to the spread of the
resulting light beam-that is, the smaller the angle, the narrower the spread
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and more focused the light beam, and vice versa. Therefore, depending on
the lighting effect desired, the person of skill in the art would know that
adjust the beam and field angles accordingly. As Appellant and the
Examiner acknowledge, beam and field angles can be adjusted through a
variety of techniques including reflectors, collimators, dispersion optics, and
lens dimensions. Appeal Br. 14, 18; see also Ans. 5 ("[B]oth the field angle
and the beam angle ... are result effective variables because they are related
directly to the width of the first end and the diameter of the second end of
the lens, both of which are themselves result effective variables.").
Therefore, absent a showing of criticality or unexpected results
achieved by the claimed ranges, Appellant has failed to meet their burden.
Claim 20:
Independent claim 20 includes the combination of limitations found in
claims 1 and 11. Compare Appeal Br. 20, 22 with 23-24. For the reasons
discussed above for claims 1 and 11, Appellant fails to identify a reversible
error in the Examiner's rejection of claim 20.
Claim 9 (and 19):
Claims 9 and 19 depend from claim 1 and additionally recite
a distance between the first end and the apex of the air
gap is about 1.48X to about 1.54X;
a diameter of the core is about 1.48X to about 1.54X; and
a height of the core is about 2.15X to about 2.4X.
Appeal Br. 21, 23 (Claims App'x). The Examiner determines that the
additional limitations of claims 9 and 19 would have been obvious to one
skilled in the art because "selecting the particular ranges for the lens and
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collimator dimensions relative to the size of the LEDs would have flown
naturally to one of ordinary skill in the art to determine via routine
experimentation the most suitable core dimension ranges which work with
the particular choice of LED selected." Final Act. 9.
Appellant argues that "the Office has failed to establish that for a lens
covering an LED, the relationship of various dimensions of components of
the lens and the width of the LED are recognized to be a result-effective
variable for providing a narrow beam of light from the LED." Appeal Br.
17.
Appellant's argument is not persuasive of reversible error by the
Examiner. The dimensions recited in claims 9 and 19 relate to particular
ranges for the lens and collimator dimensions which can be adjusted to
provide a beam angle to achieve a desired lighting effect. Ans. 5. Appellant
seems to agree stating that "the beam angle and field angle are properties
affected by variables such as reflectors, collimators, dispersion optics, lens
dimensions, etc." Appeal Br. 18. Appellant argues that the Office has failed
to establish the relationship of various dimensions of components of the lens
and the width of the LED. Id. at 17. But, an invention may be obvious for
reasons the inventor did not contemplate. See Dillon, 919 F .2d at 693.
Whether the Examiner recognized the relationship to be related to the width
of the LED is irrelevant given the known relationship of these features to
beam spread. That Appellant ties these dimensional limitations to the width
of the LED, without a showing of criticality, is no more than "window
dressing." Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346 (Fed. Cir.
1984).
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Therefore, absent unexpected results achieved by the particular
claimed ranges, Appellant has not carried their burden.
Claim 10:
Claim 10, depending from claim 1, additionally recites that "each lens
is configured to provide a beam angle of about 10.3Q and a field angle of
about 18 .2Q." Appeal Br. 22 (Claims App 'x ). These additional recitations
are discussed above for claim 11 and Appellant relies upon the same
arguments advanced in support of claim 11 in support of claim 10. Appeal
Br. 18. Therefore, for the reasons discussed above for claim 11, Appellant
fails to identify a reversible error in the Examiner's rejection of claim 10.
Rejection B-Obviousness (2, 3, 12, and 13)
The Examiner rejects claims 2 and 12 as obvious over Iatan in view of
Kabuki. Final Act. 13. Claims 2 and 12 additionally require
the opening of each air gap comprises a concave sidewall
that extends into the collimator to form a dome shape; and
the closed end has a dome shape, wherein the apex of the
dome extends into the core.
Appeal Br. 20, 22 (Claims App'x). The Examiner acknowledges that Iatan
fails to teach the additional recitations of claims 2 and 12. Final Act. 13.
But, the Examiner finds that, in addition to the findings relating to claims 1
and 11 above, Kabuki teaches a gap having "a concave sidewall that extends
into the collimator to form a dome shape; and the closed end also has a dome
shape" as claimed. Id. at 13-14. The Examiner reasons that the person of
skill in the art would have modified the lens of Iatan to include an "air gap
with a concave sidewall extending into the collimator to form a dome shape,
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and forming the closed end in a dome shape whose apex extends into the
core" to ensure "light is refracted into the core and throughout the collimator
at optimum beam angles to enable a more even distribution of light." Id. at
14.
Appellant contends that while "the hemispherical storage space 32 of
Kabuki is dome shaped, it [is] not an air gap. Rather, the hemispherical
storage shape 32 includes a molding member 13." Appeal Br. 17. Appellant
explains that the molding member 13 uses a silicon resin and is not an air
gap as claimed. Id.
We agree with Appellant that there is no teaching or suggestion in the
combination of Iatan and Kabuki of an "air gap compris[ing] a concave
sidewall that extends into the collimator to form a dome shape; and the
closed end has a dome shape, wherein the apex of the dome extends into the
core" as required by the claims. Appeal Br. 20, 22 (Claims App'x). Here
the Examiner finds that Iatan teaches an air gap and Kabuki teaches an "air
gap with a concave sidewall extending into the collimator to form a dome
shape, and forming the closed end in a dome shape whose apex extends into
the core." Final Act. 14. However, it is clear from Kabuki that the dome-
shaped hemispherical storage space, identified by the Examiner, is not an air
gap but rather a molded member. See, e.g., Kabuki i-fi-134, 38; see also
Appeal Br. 16-1 7. While true that molded member 13 possesses a dome
shape, a mere similarity of shape is an insufficient basis to support a
rejection of obviousness. Missing from the Examiner's rejection is why the
skilled artisan would have modified the air gap of Iatan to include the dome
structure of Kabuki even though Kabuki does not describe such a shape as
having a broad use beyond the hemispherical molded member described.
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Further missing is an expectation of success in the modification proposed by
the Examiner.
Accordingly, on this record, we cannot sustain the Examiner's
rejection of claims 2, 3, 12, and 13.
CONCLUSION
Appellant fails to identify a reversible error in the Examiner's
rejection of claims 1, 4--11, and 14--20 under 35 U.S.C. § 103 as
unpatentable over Iatan.
Appellant has identified a reversible error in the Examiner's rejection
of claims 2, 3, 12, and 13 under 35 U.S.C. § 103 as unpatentable over Iatan
in view of Kabuki.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 4--11, and
14--20 is affirmed and the Examiner's rejection of claims 2, 3, 12, and 13 is
reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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