Ex Parte SEYLER

Patent Trial and Appeal Board

Dec 12, 2018

14473788 (P.T.A.B. Dec. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/473,788 08/29/2014 Andrew SEYLER
22852 7590 12/14/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
UNITED ST A TES OF AMERICA
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.
12502.0006-00000 5055
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/14/2018 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW SEYLER
Appeal2018---002954
Application 14/473,788
Technology Center 1700
Before BEYERL YA. FRANKLIN, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20. (Appeal Br. 7-20.) We have jurisdiction pursuant
to 35 U.S.C. § 6(b).
We REVERSE.
1 This Decision includes citations to the following documents:
Specification filed August 29, 2014 ("Spec."); Final Office Action dated
November 22, 2016 ("Final Act."); Appeal Brief filed September 25, 2017
("Appeal Br."); Examiner's Answer dated November 30, 2017 ("Ans."); and
Reply Brief filed January 29, 2018 ("Reply Br.").
2 Appellant identifies Carmax Business Services, LLC., as the real party in
interest. (Appeal Br. 1.)
Appeal2018---002954
Application 14/473,788
THE INVENTION
Appellant states that the invention relates to an ultraviolet (UV) lamp
and to method of utilizing a UV lamp for curing a coating. (Spec. ,r 1.)
Claims 1 and 2 are representative:
1. A method for using an ultraviolet light source
compnsmg:
providing an ultraviolet light source;
applying electrical power to the ultraviolet light
source, thereby causing the ultraviolet light source to
emit ultraviolet light;
measuring a usage parameter while the
ultraviolet light source emits ultraviolet light;
saving a usage value to memory that is
representative of the usage parameter;
calculating a sum value based on at least the
usage parameter;
comparing the sum value to a predetermined
value; and
replacing the ultraviolet light source when the
sum value equals or exceeds the predetermined value;
wherein the usage parameter includes an amount
of energy that the ultraviolet light source has
consumed while emitting light.
2. A method for curing an automotive coating
compnsmg:
applying a first automotive coating to at !east
one surface;
determining that a sum value based on at least a
usage parameter does not exceed a predetermined
value, wherein the usage parameter includes an
amount of energy that the ultraviolet light source has
consumed while emitting light;
moving, responsive to determining that the sum
value does not exceed the predetermined value, a
hand-held ultraviolet light source into a booth that has
the at least one coated surface;
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Appeal2018---002954
Application 14/473,788
curing the first automotive coating with the
ultraviolet light source;
moving the ultraviolet light source out of the
booth that has the at least one coated surface;
applying a second automotive coating to at least
one different surface;
moving the ultraviolet light source into a booth
that has the at least one coated different surface;
curing the second automotive coating with the
ultraviolet light source; and
moving the ultraviolet light source out of the
booth that has the at least one coated different surface.
(Response to Office Action filed September 8, 2016, Appeal Br. 1 7-18,
Claims App. 3)
REJECTIONS
The Examiner rejected claims as follows:
1. Claims 2-18 under 35 U.S.C. § 112(b) or under 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite;
2. Claim 1 under 35 U.S.C. § 103 as obvious over LM-9000 (NPL
Document, LM-9000 UV Lamp Monitor);
3. Claims 2-9, 12-14, 16, and 17 under 35 U.S.C. § 103 as obvious
over Kamei et al. (US 2002/0119259 Al, published August 29,
2002, "Kamei") in view of Petro, Jr. (US 4,621,187, issued
3 Claim 1 in the Claims Appendix does not appear to be the correct version
of claim 1 as amended in the Reply to Office Action filed September 8,
2016, that amendment having deleted the phrase "one of an amount of time
that the ultraviolet light source has emitted light and" after the phrase
"wherein the usage parameter includes." Thus, claim 1 is reproduced from
the Reply to Office Action filed September 8, 2016.
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Appeal2018---002954
Application 14/473,788
November 4, 1986, "Petro, Jr."), Wakalopulos (US 8,459,839 B2,
issued June 11, 2013, "Wakalopulos"), and LM-9000;
4. Claims 10, 11, and 18 under 35 U.S.C. § 103 as obvious over
Kamei, Petro, Jr., Wakalopulos, LM-9000, and Swoboda et al. (US
2007/0271812 Al, published November 29, 2007, "Swoboda");
5. Claim 15 under 35 U.S.C. § 103 as obvious over Kamei, Petro, Jr.,
Wakalopulos, LM-9000, and DeRegge et al. (US 7,704,564 B2,
issued April 27, 2010) (hereinafter "DeRegge"); and
6. Claims 19 and 20 under 35 U.S.C. § I03(a) as obvious over
Kamei, Wakalopulos, and LM-9000.
(Final Act. 2-12.)
DISCUSSION
Rejection I-Indefiniteness
The Examiner determined that claim 2 is indefinite because there is
insufficient antecedent basis for the limitation "the ultraviolet light source"
in line 5 of claim 2. (Final Act. 2.)
Appellant argues that one of ordinary skill in the art would have
understood that claim 2 as a whole, as understood in light of the
Specification, possesses a reasonably ascertainable scope. (Appeal Br. 7-8,
citing MPEP § 2I 73.05(e), Spec. ,r,r 41, 46; see also Reply Br. 4--5.)
We agree with Appellant that the scope of claim 2 would be
reasonably ascertainable to one of ordinary skill in the art. That is, claim 2
recites "determining that a sum value based on at least a usage parameter
does not exceed a predetermined value" where the usage parameter
"includes an amount of energy that the ultraviolet light source has consumed
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Appeal2018---002954
Application 14/473,788
while emitting light." The next clause of claim 2 recites "moving,
responsive to determining that the sum value does not exceed the
predetermined value, a hand-held ultraviolet light source .... " Thus, claim
2 relates the determined sum value of the ultraviolet light source to the
ultraviolet light source recited in the next clause of the claim. Claim 2
contains several other references to "the ultraviolet light source." We are of
the view that one of ordinary skill in the art would have ascertained the
ultraviolet light source in line 5 of claim 2 to refer to the hand-held
ultraviolet light source subsequently referred to throughout the claim.
Because one of ordinary skill in the art would have understood claim
2 to be referring to the same ultraviolet light source throughout the claim,
the metes and bounds of claim 2 would have been reasonably ascertainable.
Accordingly, we agree with Appellant that any lack of antecedence in "the
ultraviolet light source" recited in line 5 of claim 2 does not render the claim
indefinite.
As a result, we reverse the Examiner's rejection of claims 2-18 under
35 U.S.C. § 112(b ).
Rejections 2-5-0bviousness
Independent claims 1, 2, and 19 all recite "wherein the usage
parameter includes an amount of energy that the ultraviolet light source has
consumed while emitting light." In rejecting claims 1-20 as obvious over
the prior art, the Examiner found that LM-90004 does not specifically teach
4 In view of the discussion of LM-9000, we find it unnecessary to address
Appellant's arguments regarding the status of LM-9000 as prior art.
(Appeal Br. 8-9, Reply Br. 5-8.)
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Appeal2018---002954
Application 14/473,788
this limitation, but that LM-9000 discloses recording and maintaining lamp
operation information and parameters continuously monitored during
operation including lamp energy. (Final Act. 4, citing LM-9000, p. 4, col. 1
"System Features", see also Final Act. 6-7 citing LM-9000, p. 3, col. 1, 1st
and 5th ,r ("Lamp Monitor Software"),, p. 4, col. 1, ("System Features"), p.
4, col. 2 ("Lamp Data"), Final Act. 12) The Examiner determined
it would have been obvious to one of ordinary skill in the art to
have used energy consumed by the UV light source during
emitting light as the usage parameter to determine when the
light source was to be replaced because this was a relevant
process parameter affecting the effectiveness of the UV curing
process.
(Final Act. 4.)
We agree with Appellant that the Examiner has not provided
sufficient support that LM-9000 would render obvious using the amount of
energy consumed by the ultraviolet light source as a usage parameter.
(Appeal Br. 12-13, Reply Br. 9-12.) Specifically, LM-9000 discloses
"[ c ]ontinous monitoring of lamp energy" and"[ m ]aintain[ing] all lamp
operation information" under "System Features," where the "Data Collection
Features" include "Operating Temperature, Power and Speed Settings,"
"Output Energy Events," and "User Defined Data Collection." (LM-9000,
p. 4.) Thus, the only express disclosure of how data related to energy is
collected in LM-9000 is through "Output Energy Events." Although the
Examiner states that it would have been obvious to have monitored energy
consumption, there is insufficient disclosure of monitoring energy consumed
in LM-9000 to support the Examiner's position that the operation parameters
disclosed in LM-9000 include energy consumed. (Ans. 6.) The Examiner's
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Application 14/473,788
further position that energy outputted by the lamp is related to energy
consumed is not sufficient to support the rejection (Ans. 6-7), as the claims
expressly require that the usage parameter is the amount of energy
consumed, and not a parameter related thereto.
Therefore, the Examiner has not provided sufficient reasoning for
modifying LM-9000 to use input energy as the usage parameter.
None of the other cited prior art references remedy the deficiencies
discussed above with respect to LM-9000. As a result, we reverse the
Examiner's decision to reject claims 1-20 as obvious over the prior art of
record.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
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