Ex Parte Fails et al

Patent Trial and Appeal Board

Mar 11, 2013

11109012 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARY FAILS, LAUREN E. DUNN, and PAUL
KLEISSLER
____________________

Appeal 2010-004117
Application 11/109,012
Technology Center 2100
____________________

Before JEFFREY S. SMITH, ERIC B. CHEN, and JENNIFER S. BISK,
Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004117
Application 11/109,012
2
SUMMARY
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-8, 10, 11, 13, 14, 16-18, and 20-23. Claims 2, 9, 12,
15, and 19 were previously cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
The Invention
The invention relates to entertainment lighting systems. Spec. 1.
Specifically, the patent describes methods and apparatus for powering
devices used in entertainment lighting applications. Id.
The Rejections
1. Claims 18 and 20-23 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Morgan I (US Pub 2004/0160199; Aug. 19, 2004). Ans.
3-4.
2. Claims 1, 3-8, 10, 13, 14, 16-18, and 20-23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over CK (Color Kinetics PDS-
150E (2002)) and Lys (US 6,969,954 B2; Nov. 29, 2005 (filed Apr. 22,
2003)). Ans. 4-8.
3. Claims 1, 3-8, 10, 13, 14, 16-18, and 20-23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over CK and Morgan II (US
7,161,556 B2; Jan. 9, 2007 (filed Feb. 19, 2002)). Ans. 8-12.
4. Claim 11 stands rejection under 35 U.S.C. § 103(a) as being unpatentable
over Morgan I or over CK and Lys or over CK and Morgan II. Ans. 12-
13.

Appeal 2010-004117
Application 11/109,012
3
ANALYSIS
The Anticipation Rejection
The Examiner rejected claims 18 and 20-23 as anticipated by
Morgan I. Claim 18, reproduced below with emphasis added, is illustrative
of the claimed subject matter.
18. A method for operating a plurality of controllable loads,
comprising:
providing a power supply having a plurality of selectively
addressable outputs, each of the outputs adapted for coupling to one of
the loads;
remotely addressing the power supply and/or the outputs using an
industry-standard communication protocol;
converting the industry-standard communication protocol in a
communication protocol compatible with the loads; and
selectively operating the loads using the communication protocol
compatible with the loads;
wherein a power interface, a control interface, and a
configurability interface between the power supply and each of the
plurality of loads, are provided through a single output.
The Examiner points to Figures 16 and 52 and paragraphs 21, 195-
198, and 291of Morgan I as disclosing the required limitation “remotely
addressing the power supply and/or the outputs using an industry-standard
communication protocol” explaining that “these lighting devices may be
connected through a network.” Ans. 3. Appellants argue that Morgan I fails
to disclose this limitation. App. Br. 8-13.
Neither the Examiner nor Appellants explicitly advance a proposed
construction for this limitation. However, to properly determine whether
Morgan I anticipates these claims, we determine that the term “addressing”
requires a definition. The specification does not provide an explicit
Appeal 2010-004117
Application 11/109,012
4
definition for the term “address” or “addressing.” See generally, Spec.
Therefore, we construe the term using the ordinary and customary meaning
it would have to a person of ordinary skill in the art—“referenc[ing] a
particular storage location.”1 CCS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359, 1366 (Fed. Cir. 2002). Thus, the limitation at issue requires
“remotely [referencing a particular storage location of] the power supply
and/or the outputs. . . .”
Figures 16 and 52 each depict a flow diagram for methods related to
the invention of Morgan I—powering and controlling lighting units.
Morgan Abstract, ¶¶ [0255], [0422]. Figure 16 discusses addresses in the
second step in the flow chart, 1604, which states “providing a representation
of a first and second light system on the display wherein the representations
are associated with address information” and in the last step, 1614,
“communicating information to the light systems relating to the re-
arrangement to set new light system addresses.” This Figure does not make
clear, and Examiner does not explain, that it relates to “addressing” a “power
supply and/or . . . outputs” as required by the claim. Instead, Figure 16
appears to disclose addressing light systems, or in the language of the
claims, addressing the loads. Similarly, Figure 52, has steps, 5208,
“selecting an address on the programming device,” 5210 “communicating
the selected address to the lighting system,” and 5212 “storing the
communicated address in memory of the lighting system,” that do not appear
to address a power system or output, but instead address the lighting system
or the loads. Although the Examiner states that these Figures “teach[] a
User Interface is addressing the power supply” (Ans. 13), we are not
persuaded that these Figures disclose the required limitation. Several of the

1 See Microsoft Computer Dictionary 19 (5th ed. 2002).
Appeal 2010-004117
Application 11/109,012
5
paragraphs of Morgan I relied upon by the Examiner have the same problem.
See Morgan I ¶ [0021] (“One embodiment of the invention is directed to a
device that is configured to set the address of an illumination device.”); see
also ¶ 291.
However, in response to Appellants’ brief, the Examiner clarifies that
“Figure 2 and Paragraphs 195-198 clearly show the power supply (i.e. LUC)
being addressed remotely through a network by central controller 202 using
an industry standard protocol (Ethernet protocol).” Ans. 14. We agree with
the Examiner. Morgan I discloses that “in one aspect of this embodiment,
each LUC may be configured as an addressable Ethernet-based controller
and accordingly may be identifiable to the central controller 202 via a
particular unique address (or a unique group of addresses) using an
Ethernet-based protocol.” Morgan 1 ¶ [0196]. This statement demonstrates
that the central controller, shown as remote from the power supply (LUC) in
Figure 2, references particular storage locations of the power supply using
Ethernet. Thus, Morgan I discloses “remotely addressing the power supply
and/or the outputs using an industry-standard communication protocol.”
Therefore, because we agree with the Examiner that Morgan I
explicitly discloses each of the limitations of claim 18, we sustain the
rejection of claim 18. Appellants rely on the same arguments made for
claim 18 in asserting the patentability of claims 20-23. App. Br. Thus, we
also sustain the rejection of claims 20-23.
The Obviousness Rejections
The Examiner rejected claims 1, 3-8, 10, 13, 14, 16-18, and 20-23 as
obvious over CK combined with either Lys or Morgan II. Claim 1,
Appeal 2010-004117
Application 11/109,012
6
reproduced below with emphasis added, is illustrative of the claimed subject
matter.
1. A power supply, comprising:
a plurality of selectively addressable outputs, each output adapted
for coupling to a load of a plurality of such loads;
an input for an industry-standard communication protocol;
a converter of the industry-standard protocol in a communication
protocol compatible with the loads; and
a configuration unit for assigning an industry-standard protocol
address to each load and configuring each load from a location remote
from each load;
wherein a power interface, a control interface, and a
configurability interface between the power supply and each of the
plurality of loads, are provided through a single output.
CK is a document providing the specifications for the Color Kinetics
PDS-15e—an intelligent power/data supply. The Examiner finds that it
discloses every limitation of claim 1 except “a configuration unit for
configuring each load from a location remote from each node.” Ans. 5. The
Examiner relies on Lys (Ans. 5) or Morgan II (Ans. 9) as disclosing the
missing limitation.
Appellants argue that Lys does not require “a configurability
interface” as required by claim 1, but instead requires “multiple interfaces
between its first component and each device.” App. Br. 18. We are not
persuaded by this argument. Even assuming, without deciding, that Lys’s
system requires multiple interfaces—an assumption undercut by Figure 1 of
Lys, which shows only one connection from the controller to the lights 30
using only one interface (interface 1)—this requirement is nonetheless
irrelevant to the Examiner’s position which is not based on physically
combining the references, but rather what the references’ collective
Appeal 2010-004117
Application 11/109,012
7
teachings would have suggested to ordinarily skilled artisans. See Ans. 14-
15. We see no error in this position, for “[i]t is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859
(Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not
whether the references can be physically combined, but whether the claimed
invention is rendered obvious by the teachings of the prior art as a whole)).
In short, enhancing the device disclosed by CK as suggested by Lys merely
predictably uses prior art elements according to their established functions—
an obvious improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). For the same reasons, we are not persuaded that the alleged
requirement of multiple interfaces in Lys would result in a change in
operation of Lys if combined with CK. See App. Br. 22.
For the first time, in the reply brief, Appellants argue that the
Examiner’s rejection is improper because CK does not disclose “a
configuration unit for assigning an address compatible with the industry-
standard communication protocol.” Reply Br. 3-4. This argument is entitled
to no consideration because it was not presented for the first time in the
opening brief. Optivus Technology, Inc. v. Ion Beam Applications S.A., 469
F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the reply
brief that could have been raised in the opening brief is waived); accord, Ex
parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”)
(absent a showing of good cause, the Board is not required to address an
argument newly presented in the reply brief that could have been presented
in the principal brief on appeal). Even if it were not waived, Appellants
would not prevail using this argument. The Examiner relied on Lys for the
Appeal 2010-004117
Application 11/109,012
8
configuration unit. Ans. 5 (citing Lys, col. 3, ll. 6-11). The cited language
in Lys explicitly discloses a component (the configuration unit) that issues a
command and corresponding devices or fixtures (loads) that receives the
command. Lys, col. 3, ll. 3-8. The component “may assign sequential
network addresses as fixtures or devices 30 are added to or read from the
lighting network.” Id. at col. 3, ll. 8-17. Thus, Lys explicitly discloses “a
configuration unit for assigning an industry-standard protocol address to
each load.”
For the combination of CK and Lys, the Examiner states that “[i]t
would have been obvious to one of ordinary skill in the art to configure the
loads remotely, since this would eliminate the need to physically configure
each load location” and “[i]t would have been obvious to one of ordinary
skill in the art to add the configurability interface of [Morgan or Lys] to the
single output of CK . . . since this would reduce the number [of] outputs
needed to communicate.” Ans. 5, 9. Appellants argue that the Examiner’s
rationale for combining the cited references is not properly supported with
articulated reasoning. App. Br. 19-22, 28-30.
In response to Appellants’ arguments, the Examiner provides more
detail describing the reason to combine CK with Lys, stating that such a
combination “would avoid the hassle of physically going to each unit to set
the address” and “[i]ntegrating components has the advantage of using less
material” and using less space. Ans. 15. The Examiner also explains that
Lys, itself, suggests using a single enclosure, thereby providing a reason to
combine the configuration unit of Lys, which allows for remote
configuration of the loads, with the device disclosed in CK. Ans. 15 (citing
Lys, col. 4, ll. 9-12). We conclude that the Examiner’s explanation that
Lys’s disclosure “[t]he first component 1 [controller for receiving and
Appeal 2010-004117
Application 11/109,012
9
transmitting information over the lighting network] and the second
component 2 [remote unit] may be implemented separately or integrated into
a single enclosure” provides a rational underpinning to justify the
Examiner’s obviousness conclusion.
Appellants also argue that the Examiner improperly ignored the
sophistication and risks associated with the technology in the Appellants’
field. App. Br. 20-21. According to Appellants, in the “relevant industry,”
the level of ordinary skill in the art would not simply combine Lys with CK
because among other things, “[t]he complexities and intricacies of
technology in the entertainment lighting industry have historically presented
obstacles to attaining novel devices.” Id. 5. However, we are not persuaded
by this argument. This argument is not commensurate with the claims,
which do not mention the entertainment lighting industry, but instead,
broadly claim a power supply operating loads, which are also broadly
defined. Appellants do not dispute that Lys, which discloses “automatic
configuration systems and methods for lighting and other applications,” is in
an analogous art, even though the systems and methods it discloses “are not
limited to use with any particular type of lighting system.” Lys, Title; col. 2,
ll. 24-26. We are therefore not persuaded that a person of ordinary skill in
the art, who, as conceded by Appellants, has “at least a bachelor of science
degree in electrical engineering, if not an advanced degree in the same or
similar area,” (App. Br. 20) would be discouraged from combining Lys with
CK. We therefore conclude that the Examiner satisfied the initial burden of
establishing a prima facie case of obviousness.
Appellants also argue that the Examiner improperly failed to consider
objective evidence of non-obviousness that rebuts the Examiner’s prima
facie case. App. Br. 22-26. Appellants filed two declarations of Gary Fails,
Appeal 2010-004117
Application 11/109,012
10
a named inventor of the application and President and Founder of CTI, the
assignee of the application. See App. Br. Ex. A (“Fails Decl. I”) ¶¶ 1-2.
Fails states that CTI sells products, the PDS-line of devices, which
incorporate all of the limitations of the claims. See App. Br. Ex. B (“Fails
Decl. II”) ¶¶ 3-5. Fails also declares, and provides sales figures showing,
that the annual sales of those products have increased annually from 2005-
2007. Id. at 9. Fails states that CTI’s sales of these devices comprise
between 80% and 90% of the market share, which is “highly unexpected.”
Id. at 10. Further, Fails states that CTI did not engage in unique or
additional advertising efforts for the PDS devices of products apart from
what CTI commits for nearly all products, but they still sell better than any
multifunctional power supplies in the relevant market. Id. at 11-12.
Appellants conclude that because the PDS devices embody each of the
elements of the broadest of Appellants’ claims, the unexpectedly high
commercial success without increased advertising or marketing efforts
shows “a direct nexus to the claimed invention.” App. Br. 24.
The Examiner states that “the declaration fails to show any evidence
to support the claim of 80% to 90% control of the market share of multi-
functional power supplies.” Furthermore, it is unclear as to what type of
multi-function power supplies are being compared in this statement.
However, even if this evidence is submitted, Examiner has concluded that,
when all of the evidence is considered, the totality of the rebuttal evidence of
nonobviousness fails to outweigh the evidence of obviousness.” Final
Rejection at 14.
We conclude that the Fails declarations do not control the obviousness
conclusion in this case. First, we agree with the Examiner that Appellants
fail to support their claim of 80% to 90% market share. The only statement
Appeal 2010-004117
Application 11/109,012
11
related to this assertion is that “considering the market breakup of multi-
functional power supplies in the entertainment lighting industry, CTI’s sales
of the PDS devices comprise between 80% and 90% of the market share of
these power supplies.” Fails Decl. II at ¶ 10. However, this statement is
meaningless without a definition of what the “market” comprises and what is
meant by “market breakup of multi-functional power supplies.” To the
extent that Fails defines the relevant market as “the entertainment lighting
industry,” this market is not commensurate with the claims. As discussed
above, the claims broadly claim a power supply operating loads, and are not
limited to power supplies used in the entertainment lighting industry.
Moreover, leaving aside the deficiencies related to market share
evidence, there is a more fundamental problem with Appellants’ evidence of
secondary considerations. “For objective evidence of secondary
considerations to be accorded substantial weight, its proponent must
establish a nexus between the evidence and the merits of the claimed
invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed.Cir.2010)
(quotation omitted). In order to establish a proper nexus, the patentee must
offer “proof that the sales were a direct result of the unique characteristics
of the claimed invention—as opposed to other economic and commercial
factors unrelated to the quality of the patented subject matter.” In re Huang,
100 F.3d 135, 140 (Fed. Cir. 1996) (emphasis added) (concluding that the
patentee failed to establish nexus). “[I]f the commercial success is due to an
unclaimed feature of the device,” or “if the feature that creates the
commercial success was known in the prior art, the success is not pertinent.”
Ormco Corp. v. Align Tech., Inc., 463 F.3d, 1299, 1312 (Fed. Cir. 2006).
We are not persuaded by Appellants’ conclusion that simply showing
that the PDS devices encompass all elements of the claim shows the required
Appeal 2010-004117
Application 11/109,012
12
nexus. “Where the offered secondary consideration actually results from
something other than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention.” In re Kao, 639 F.3d 1057,
1068 (Fed. Cir. 2011). Appellants’ provide no persuasive evidence that
other features of the PDS devices did not contribute to the commercial
success. In fact, other than an unsupported, self-interested, and conclusory
statements by the inventor/assignee that the features encompassing the
claimed limitation were the cause of the increased sales (Fails Decl. at ¶ 12),
the record is silent on whether the success was caused by the merits of the
invention as distinct from the prior art. See In re DBC, 545 F.3d 1373, 1384
(Fed. Cir. 2008) (concluding that “DBC has done little more than submit
evidence of sales,” and “[h]owever substantial those sales, that evidence
does not reveal in any way that the driving force behind those sales was the
claimed [invention].”).
On this record, we conclude that the Examiner met the burden of
showing a prima facie case of obviousness and Appellants’ evidence of
secondary considerations does not rebut that prima facie case. It follows that
we sustain the § 103 rejection of claims 1, 3-8, 10, 13, 14, 16-18, and 20-23
based on CK combined with Lys. Because we sustain the obviousness
rejection on this combination of references, we do not address the
Examiner’s cumulative rejection of CK combined with Morgan II.
DECISION
The Examiner’s decision rejecting claims 1, 3-8, 10, 11, 13, 14, 16-18,
and 20-23 is affirmed.
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).
Appeal 2010-004117
Application 11/109,012
13

AFFIRMED