Ex Parte Paterson

Patent Trial and Appeal Board

Aug 30, 2017

13871652 (P.T.A.B. Aug. 30, 2017)

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.
13/871,652 04/26/2013 Alastair John Paterson 051077-9184-US01 7733
23409 7590 09/01/2017
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
TRA, ANH QUAN
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALASTAIR JOHN PATERSON
Appeal 2016-008035
Application 13/871,6521
Technology Center 2800
Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’
rejection of claims 1, 3—5, and 7—23.
We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
1 Appellant identifies Joy MM Delaware, Inc. as the real party in interest.
App. Br. 2.
Appeal 2016-008035
Application 13/871,652
SUBJECT MATTER
Appellant claims a system and method of controlling lighting in a
mining environment using light emitting diodes (LEDs).
Claim 1 is illustrative of the claimed subject matter:
1. A system for controlling lighting in a mining environment,
the system comprising:
at least one light emitting diode positioned on an under­
side of a roof support; and
a controller configured to receive status information for
mining equipment operating in the mining environment and
communicate with the at least one light emitting diode and
change the at least one light emitting diode from a first operating
mode to a second operating mode based on the received status
information, wherein in the first operating mode the at least one
light emitting diode provides area lighting and in the second
operating mode the at least one light emitting diode conveys
information to personnel located in the mining environment,
wherein, in the second operating mode, the controller flashes the
at least one light emitting diode to indicate a direction away from
a detected condition.
App. Br. 11 (emphasis added).
OPINION
The Examiner rejects claims 1, 3—5, and 7—23 under 35 U.S.C.
§ 103(a) as being unpatentable over Smart2 in view of Howie.3 Final Act.
2—5. We need address only the independent claims, i.e., claims 1 and 16.
2 US 4,913,499, issued April 3, 1990.
3 US 6,957,166 Bl, issued October 18, 2005.
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Application 13/871,652
Claim 1
In rejecting claim 1, the Examiner finds that Smart discloses a mining
machine having a pressure transducer. Final Act. 2. The Examiner finds
further that Howie discloses load rate monitoring controller 24 connected to
multiple pressure transducers and LED lighting indicator clusters 26, 28, and
30 for the purpose of monitoring the dynamic load on a roof support within a
mining environment. Id. The Examiner concludes that it would have been
obvious to the skilled artisan to combine the disclosures of Smart and Howie
to provide a visual warning system to mining personnel. Id. at 2—3.
Appellant argues, inter alia, that “Howie fails to teach or suggest
flashing one or more of the LED clusters ‘to indicate a direction away from
a detected condition, ’ as recited in Claim 1 ” because Howie does not
disclose “strobing or flashing a visual indicator to convey any type of
directional information associated with a detected condition.” App. Br. 7.
In response to this argument, the Examiner asserts that Howie’s flashing
LEDs teach or suggest the disputed limitation because they “indicate a
direction (warning) away from a detected condition.” Ans. 4 (emphasis
added). Appellant contends that Howie’s flashing LEDs fail to meet the
claim limitation because “even if an observer decides to move away from
the flashing LED generally, the observer cannot gather any information from
a flashing LED regarding in what direction he or she should move away
from the LED.” Reply Br. 2. Appellant notes that the claimed lighting
system “can be flashed in a particular sequence (e.g., from left to right or
right to left) to direct an observer in a particular direction,” but that Howie
contains no teaching or suggestion to operate in such a manner. Id.
In order to properly consider Appellant’s argument, we must first
construe the disputed limitation requiring the recited LED “to indicate a
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Application 13/871,652
direction away from a detected condition” when it is in the second operation
mode. “[DJuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. ofSci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Applying this principle to the limitation at issue, we note that
Appellant relies on paragraph 15 of the Specification in their argument.
Reply Br. 2. The disclosure in paragraph 15 indicates that “[a] set of lights
18 can also be flashed in a particular sequence to direct personnel to safe
locations away from dangerous locations. For example, the lights 18 can
strobe toward an exit of a mine or away from a dangerous condition.” Spec.
115 (emphasis added). In view of this disclosure, we determine that the
limitation requiring the LED “to indicate a direction away from a detected
condition,” when read in light of the Specification, would be interpreted by
the ordinary skilled artisan to mean that the LED must convey positional
information to the personnel in the mining environment, so as to guide such
personnel toward an exit or another safe location that is away from a
potentially dangerous condition that has been detected. This construction is
at odds with the Examiner’s apparent construction of the disputed limitation,
wherein the Examiner seems to equate the term “direction” with the term
“warning.” Ans. 4. The Examiner, however, fails to explain how such
“warning” can convey information to mining personnel regarding in which
“direction” they should proceed in order to move “away from a detected
condition,” such as the mine’s exit or another safe location. Spec. 115.
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
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Application 13/871,652
the prior art or would have been obvious based on the knowledge of the
skilled artisan or the inferences and creative steps such skilled artisan would
have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); KSRInt’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Because the Examiner fails to show that the claimed limitation
requiring the at least one LED “to indicate a direction away from a detected
condition” is taught or suggested by the cited references or would have
otherwise been obvious, we are constrained to reverse the rejection of claim
1 and its dependent claims 3—5 and 7—15.
Claim 16
Claim 16 recites:
A method for controlling lighting in a mining
environment, the method comprising:
operating, by at least one controller, a plurality of light
emitting diodes positioned on an under-side of a plurality of roof
supports;
receiving, at the at least one controller, information
indicating a subset of the plurality of roof supports being
advanced',
operating, by the at least one controller, at least one of the
plurality of light emitting diodes positioned on a roof support
included in the subset to convey information to personnel located
in the mining environment that roof support is advancing based
on the received information, wherein operating the at least one
of the plurality of light emitting diodes to convey information
includes changing at least one of the color, brightness, and
flashing sequence of the at least one of the plurality of light
emitting diodes.
App. Br. 13 (emphasis added).
The Examiner rejects claim 16 on the basis that “a mine having [a]
plurality of roof supporters is well known in the art” and states that “[i]t
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Application 13/871,652
would have been obvious ... to use [a] plurality of the modified Smart’s
figure in a mine for the purpose of improving safety for mining personnel.”
Final Act. 4. The Examiner’s rejection does not address the recited
limitation that requires the controller to receive “information indicating a
subset of the plurality of roof supports being advanced.” Id. Appellant
contends (App. Br. 9—10) that the cited references fail to teach or suggest
monitoring the advancement of the roof supports or the use of LED clusters
to convey such information to mining personnel regarding their
advancement. In response to this argument, the Examiner states that “the
movement of the roof support is detected via detecting the hydraulic
pressures,” and cites to Smart 2:65—3:35 which “teaches that the hydraulic
pressures are constantly measured while the roof supports are advancing (the
equipment is constant monitoring).” Ans. 5. Appellant, in the Reply Brief,
contends that such pressure monitoring “is not equivalent to monitoring or
otherwise detecting when a particular roof support is being advanced”
because the roof supports may undergo pressure changes regardless of
whether they are stationary or moving. Reply Br. 5.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (explaining that “the examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.”). To establish a prima facie case of obviousness,
the Examiner must show that each and every limitation of the claim is
described or suggested by the prior art or would have been obvious based on
the knowledge of the skilled artisan or the inferences and creative steps such
skilled artisan would have employed. Fine, 837 F.2d at 1074; KSR, 550
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Application 13/871,652
U.S. at 417. Furthermore, “[t]he Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not. . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
In this case, the Examiner does not provide a factual basis in the final
rejection (Final Act. 4) regarding how the combination of references satisfies
the recited limitations requiring that the at least one controller receives
“information indicating a subset of the plurality of roof supports [are] being
advanced,” and then operates the LEDs to “convey information . . . that [the]
roof support is advancing based on the received information.” (emphasis
added). Rather, the Examiner focuses the rejection on how having multiple
roof supports is known in the art. Id. In the Answer (Ans. 5), the Examiner
asserts that Smart’s constant measurement of hydraulic pressure meets the
limitation, but fails to explain how such measurement is related to the actual
advancement of the roof supports. Specifically, the Examiner does not
establish or explain how the information regarding advancement of the
subset of roof supports can be gleaned by a measurement of the pressure
load between the roof and the floor.
In this regard, Smart teaches that “[a]s the face (3) advances through
cutting of material from it[,] the roof supports are also advanced and the
cams (17), (19) follow the profile of the roof. If the roof is converging, then
the strut is compressed inside due to its telescopic nature” and a signal is
generated and delivered to “remote indicating equipment where the
convergence can be scaled and measured.” Smart 2:61—3:2 (emphasis
added). Thus, in Smart, there may be a change in pressure between the roof
and floor in the event of additional convergence over the distance that the
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Application 13/871,652
roof supports are being advanced. In the absence of such convergence
during roof support advancement, however, it is not seen how Smart’s
system controller would receive any information regarding the roof supports
being advanced. Moreover, the Examiner fails to explain, and it is not
readily apparent to us, how Smart’s system would be able to distinguish
between hydraulic pressure measurements taken while the roof supports are
stationary or moving so as to inform mining personnel that a roof support is
being advanced in the mine.
Because claim 16 requires information to be received by the controller
and conveyed to mining personnel when the roof supports are being
advanced, and because the rejection lacks a basis in fact that this limitation
is taught or suggested in the prior art, or a determination that this limitation
would otherwise have been obvious, we reverse the rejection of this claim.
For the same reason, we reverse the rejection of dependent claims 17—23.
DECISION
We reverse the Examiner’s rejection of claims 1, 3—5, and 7—23 under
35U.S.C. § 103(a).
REVERSED
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