Ex Parte Yokota et al

Patent Trial and Appeal Board

Jul 2, 2013

11235108 (P.T.A.B. Jul. 2, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/235,108 09/27/2005 Shinji Yokota 016891-0886 2815
22428 7590 07/03/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
MAY, ROBERT J
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
07/03/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINJI YOKOTA and KOUJI UMEDA
____________

Appeal 2011-000445
Application 11/235,108
Technology Center 2800
____________

Before JOHN A. JEFFERY, DAVID C. McKONE, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 17, 19, 22, 29, and 48-50. Claims 1-16, 18, 20, 21, 23-
28, and 32-47 were previously canceled. Claims 30 and 31 were withdrawn
as directed to a non-elected species. We have jurisdiction under 35 U.S.C. §
6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention is a decorative light having a light source and a
lens which receives light emitted from the light source at a light receiving
portion. The received light passes through the lens through an outgoing
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portion. The incident light from the light source is divided by the lens and
emitted from an outgoing portion of the lens. See generally Spec. 2: 13-20.
Claim 17 is illustrative:
17. An electronic device having a call function, comprising:
a light source including a light-emitting device that emits colored
light; and
an illumination lens having a light receiving portion and a light
outgoing portion,
wherein the light receiving portion includes a plurality of surfaces,
wherein the light outgoing portion includes a decoration treatment
portion on a surface of the light outgoing portion, the decoration treatment
portion reflecting at least a part of incident light.

THE REJECTION
The Examiner rejected claims 17, 19, 22, 29, and 48-50 under 35
U.S.C. § 103(a) as being unpatentable over Peters (GB 2,391,746 A;
published Feb. 11, 2004) and Wei (US 4,942,744, issued July 24, 1990).
Ans. 4-7.1

ISSUES
(1) Under 35 U.S.C. § 103, has the Examiner erred in rejecting claim
17 by finding that Peters and Wei collectively would have taught or
suggested “a decoration treatment portion on a surface of the light outgoing
portion, the decoration treatment portion reflecting at least a part of incident
light?”

1 Throughout this opinion, we refer to (1) the Appeal Brief filed May 7,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed July 15, 2010
(“Ans.”); and (3) the Reply Brief filed September 14, 2010 (“Reply Br.”).
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(2) Under 35 U.S.C. § 103, has the Examiner erred in rejecting claim
29 by finding that Peters and Wei collectively would have taught or
suggested “a plurality of light-emitting devices, which emit lights of colors
different from each other?”

ANALYSIS
Rejection of Claims 17, 19, 22, 48, and 50 under 35 U.S.C. § 103
Claim 17 is an independent claim on which all of claims 19, 22, 29,
and 48-50 directly depend. The key disputed limitation of claim 17 recites,
in pertinent part, “a decoration treatment portion on a surface of the light
outgoing portion, the decoration treatment portion reflecting at least a part of
incident light.” Claims 29 and 49 are separately argued and will be analyzed
after our discussion of the disputed limitation of claim 17.
The Examiner finds that Peters discloses an electronic device with a
call function with every recited limitation except for (1) a light source
emitting colored light, and (2) an illuminating lens with a light receiving
portion of a polyhedron shape and a light outgoing portion, where the
receiving portion includes plural surfaces and the light outgoing portion
includes a decoration treatment portion on a surface of the light outgoing
portion reflecting at least a portion of the incident light. Ans. 4-5. The
Examiner, however, cites Wei as teaching these features in concluding that
the claim would have been obvious. Id. Ans. 5 (citing Wei, Figs. 1 and 2,
col. 2, ll. 35-40, col. 2, ll. 50-55 and col. 2, ll. 40-45). Specifically, the
brilliance and appearance of the jewel when illuminated by the internal light
source 7 positioned in the interior element cavity 11 emits light through the
jewel inner wall surface and through reflecting facets 112. Id. The
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decorative treatment portion of the outgoing portion is found in the brilliant
color film 13 on the surface of the jewel. Id. (citing Wei, col. 2, ll. 50-55).
Wei concludes by noting the invention obtains “a beautiful glittering result
through repeated refraction.” Id. (citing Wei, col. 2, ll. 53-54). In the
Response to Argument section, the Examiner also finds that incident light
being reflected on the surface of the light outgoing portion of the lens of the
claimed invention is inherent. Ans. 7.
Appellants describe Wei and conclude claim 17 is “much different
from Wei.” App. Br. 11. More to the point, Appellants urge us to find that
Wei shows a jewel which reflects light from an external source. Reply Br. 1
(citing Wei, col. 2, ll. 21-32). This, say Appellants, is in contrast to claim
17, which requires reflecting light from the inside of the jewel. Id.
Appellants also contend that the larger refraction index of the lens means
less reflection at the outer portion absent the decorative treatment. Reply Br.
2. Appellants deny that the disputed limitation is inherent. Id.
For the following reasons, we agree that Wei teaches or suggests the
disputed limitation. “[I]ncident light” is light from the light source. Spec. 2:
17-20. As the Examiner finds, Wei teaches that the internal light source,
positioned in the internal cavity, emits light in the same arrangement as
claimed. Ans. 5.
Apellants are correct that Wei describes how a natural jewel reflects
external light at the passage cited by Appellants. See Wei, col. 2, ll. 21-32.
Appellants’ argument is not persuasive. To the contrary, Wei clearly shows
in Figures 1 and 2 “incident light” passing through the jewel and out the
facets 12 and brilliant color film 13. Wei, col. 2, ll. 42-43. Wei’s color film
maps to the decorative treatment portion of claim 17, which is on the “light
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outgoing portion.” Given that Wei shows the exact arrangement as claimed,
i.e., a light emitter and a lens with a light receiving and light outgoing
portions, Wei, as the Examiner finds, inherently reflects “at least a part of
incident light.”
Furthermore, the Examiner has come forward with a finding which we
find is supported by the record. Indeed, not only have Appellants failed to
persuasively rebut the Examiner’s inherency finding,2 reflection off the color
film of Wei is a predictable result which follows from common sense that
one of ordinary skill would appreciate. It is circumstances like this where
obviousness is found. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421
(2007). Once the Examiner has established a case for obviousness, it is the
burden of Appellants to overcome that finding with persuasive argument
based on evidence of record. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Appellants have failed to do so.
We sustain the Examiner’s rejection of claim 17 for reasons
previously stated. Dependent claims 19, 22, 48, and 50 are not separately
argued and the rejections to those claims are likewise sustained.

Rejection of Claims 29 and 49 under 35 U.S.C. § 103
Claim 29 recites that “the light source includes a plurality of light-
emitting devices, which emit lights of colors different from each other.” The
Examiner cites Peters’ teaching of different colored lights corresponding to

2 See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”)
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an alert from a specific device. Ans. 7-8 (citing Peters, 4, ll. 23-25).
Further, the Examiner finds that combining red, blue, and green colors to
form various hues and colors of light is said to have been known since the
1940s. Id.
Appellants assert Peters does not show blending red, blue, and yellow
(sic). Reply Br. 2. This argument, however, was raised for the first time in
the Reply Brief and is therefore waived as untimely. Compare Reply Br. 2
with App. Br. 12-13. See also Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative) (“[The reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”). In any event, even if we
were to consider this belated argument, it is not commensurate with the
scope of the claims since claims 29 and 49 only require that the colors be
“different from each other.”
Claim 49 additionally recites that, upon receipt of an incoming call,
the light source “performs an illumination pattern using light of different
color according to the caller of the incoming call.”
The Examiner cites common knowledge that cell phones can associate
different ring tones with different callers. Ans. 8. Peters teaches or suggests
use of an audio ring tone. Ans. 8 (citing Peters, 4, ll. 15-25). As discussed
infra, Peters discusses using different colors for differing alerts. Ans. 7-8.
Appellants contend the disputed limitation is not shown by the
references. App. Br. 13.
Appellants merely pointing out, in the Appeal Brief, what claim 49
recites and then asserting that the cited references fail to teach the limitation
(App. Br. 12-13) are not considered a separate argument for patentability.
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See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Appellants
arguments first raised in the Reply Brief regarding Peters are waived as
discussed infra. Regardless, the arguments made are unpersuasive as they
are not commensurate with the scope of the claims. Nor do Appellants rebut
the Examiner’s findings, which are based on common knowledge and are
supported on the record. Appellants have not persuaded us that the
Examiner’s rejection of claim 49 is erroneous.
The rejection of claims 29 and 49 is therefore sustained.

CONCLUSION
The Examiner did not err in rejecting claims 17, 19, 22, 29, and 48-50
under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 17, 19, 22, 29, and 48-50 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).

AFFIRMED

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