09829033 (P.T.A.B. Nov. 13, 2012)

Ex Parte Venegas

Patent Trial and Appeal BoardNov 13, 2012

09829033 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FRANK VENEGAS JR. ____________________ Appeal 2011-011461 Application 09/829,033 Technology Center 2800 ____________________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from a final rejection of claim 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). An oral hearing on this appeal was conducted on Nov. 7, 2012. We Reverse. Appeal 2011-011461 Application 09/829,033 2 STATEMENT OF CASE Independent claim 1, reproduced below, is the only claim on appeal. 1. A lighting assembly for use with a stanchion extending outwardly from a ground surface comprising: an elongated tubular body having an open end and a closed end defining an interior cavity, the open end and the interior cavity of the elongated tubular body being dimensioned to receive the stanchion substantially entirely therein such that the open end is proximate to or in contact with the ground surface; a source of electrical power disposed inside or outside of the elongated tubular body; and a lighting assembly having a light source interconnected to the power source, the light assembly being secured relative to the tubular body so that the light is visible exteriorly of the interior cavity; and further including a proximity detector and control electronics operative to activate the light source when a vehicle is in close proximity to the stanchion. PRIOR DECISION Appeal No. 2008-5559 (Application No. 09/829,033), mailed May 22, 2009. Examiner Affirmed). REJECTION The Examiner rejected claim 1 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combined teachings and suggestions of Ruediger (U.S. 4,344,110) and Baker (GB 2344915 A). Appeal 2011-011461 Application 09/829,033 3 ISSUE Under Â§ 103, did the Examiner err in combining the cited references? ANALYSIS Appellant contends: According to the Examiner, Ruediger discloses a lighting assembly 10 (see below) "capable of being used with a stanchion." The Examiner gives no explanation as to how this is possible with Ruediger, especially since it appears to Appellant that at least the base 32 would interfere with this application. Baker resides in a small portable voice messaging and warning device that includes an infrared movement detector primarily to assist blind or partially sighted people. The Examiner concedes that Ruediger fails to teach a proximity detector and control electronics operative to activate the light source when a vehicle is in close proximity to the stanchion, but contends that it would be obvious to modify Ruediger with Baker "for the benefits of secured environment for the device, its operation and the users." (Final OA, page 3) Appellant does not understand what is meant by a "secured environment." Regardless of the definition, Ruediger has no need whatsoever for a proximity detector. Ruediger is directed to a channel marker to be used in the water. Ruediger teaches away from mounting relative to a ground surface to warn "a vehicle." Ruediger seems incapable of being used with a stanchion. Where the teachings of two or more prior art references conflict, the Examiner must weigh the power of each reference to suggest solutions to one of ordinary skill in the art, considering the degree to which one reference might accurately discredit another. In re Young, 927 F.2d 588 (Fed. Cir. 1991). The mere fact that references can be combined or modified does not render the resultant combination obvious unless the prior art also suggests the desirability of the combination. In re Mills, 916 F.2d 680 (Fed. Cir. 1990). Here, the Examiner's proposed combination of Ruediger and Baker makes no sense. (App. Br. 2-3). See also Reply Br. 1-2. Appeal 2011-011461 Application 09/829,033 4 The Examiner disagrees. Regarding the proffered combination of Ruediger and Baker, the Examiner responds that the "[m]odification of [Ruediger]'s device with provision of a proximity detector neither downgrades nor impairs functionality of the device. Further, addition of a proximity detector ensures operation of the device in a secured and well- protected surrounding." (Ans. 5, emphasis added). We begin our analysis by reviewing the Examiner's proffered rationale for combining the references as stated in the rejection: It would be have been obvious to one of ordinary skill in the art at the time of the invention to modify the lighted assembly of Ruediger by providing [a] proximity detector as taught by Baker for the benefits of [a] secured environment for the device, its operation and the users. (Ans. 4, emphasis added). We observe that the Examiner does not provide specific citations to any evidence to support such a motivation: i.e., to provide "the benefits of [a] secured environment for the device, its operation and the users." (Id.). Therefore, based upon our review of the record, we agree with Appellant that the Examiner has not established how the addition of a proximity detector ensures operation of Ruediger's channel marker (Figs. 1-2) "in a secured and well-protected surrounding." (Ans. 5). On this record, we agree that the Examiner has not established a prima facie case of obviousness by providing the requisite articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, we agree with Appellant that Ruediger has no need whatsoever for a proximity detector because Ruediger is directed to a channel marker to Appeal 2011-011461 Application 09/829,033 5 be used in the water. (App. Br. 3). Thus, we find the weight of the evidence supports Appellant's contention that the Examiner's proposed combination of Ruediger and Baker makes no sense. (Id.). We are also mindful that every Examiner begins the search for prior art by searching the claims of the patent application. 1 Although the teaching, suggestion, or motivation (TSM) test is no longer a rigid rule post KSR, "the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references." In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). Here, we also observe that the Examiner has not further developed the record to show that the proffered combination would have been obvious based upon the knowledge of an artisan, or based upon the nature of the problem to be solved.2 On this record, we are of the view that an artisan possessing common sense would not have reasonably been led to combine the references as 1 "A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of argument reliant upon ex post reasoning." KSR, 550 U.S. at 421. See also Graham v. John Deere Co., 383 U.S. 1, 36 (1966). 2 "A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references ... The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art." In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006) (citing In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000)). Appeal 2011-011461 Application 09/829,033 6 proffered by the Examiner (Ans. 4) to meet the claim limitations without having the benefit of Appellant's claims and/or Specification to use as a guide. For essentially the same reasons articulated by Appellant in the Briefs, as discussed above, we reverse the rejection of independent claim 1, the only claim before us on appeal. DECISION We reverse the Examiner's rejection of claim 1 under Â§103(a).3 ORDER REVERSED peb 3 Judge Homere concurs in the result only.