Rebecca Gaye. Walker et al.Download PDFPatent Trials and Appeals BoardSep 6, 201915284133 - (D) (P.T.A.B. Sep. 6, 2019) Copy Citation 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. 15/284,133 10/03/2016 Rebecca Gaye Walker J0307t1NP 8879 92983 7590 09/06/2019 Jason P. Webb 1802 W. South Jordan Parkway Suite 200 South Jordan, UT 84095 EXAMINER SILBERMANN, JOANNE ART UNIT PAPER NUMBER 3638 NOTIFICATION DATE DELIVERY MODE 09/06/2019 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): dokippearson@gmail.com jasonw@pearsonbutler.com mariella@pearsonbutler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte REBECCA GAYE WALKER and ROBERT MCCAUSLAND LOTT ____________ Appeal 2018-006882 Application 15/284,133 Technology Center 3600 ____________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O’HANLON, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Rebecca Gaye Walker and Robert McCausland Lott (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2018-006882 Application 15/284,133 2 THE CLAIMED SUBJECT MATTER Claims 1, 8, and 14 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A lighting device, comprising: a) a power source disposed within the device; b) a housing coupled to the light source; c) an attachment member disposed on the housing that selectably couples and decouples the housing to and from a surface; d) a motion sensor functionally coupled to the light source such that the light source changes to an on mode when motion is detected; and e) a direction indicator that is selectably adjustable between indicating various directions and coupled to the housing. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Hoberman US 5,015,994 May 14, 1991 Copeland US 2007/0109813 A1 May 17, 2007 Coushaine US 2010/0254131 A1 Oct. 7, 2010 Ten Wolde US 2012/0038479 A1 Feb. 16, 2012 REJECTIONS I. Claims 1–3, 5–7, 14–16, and 18–20 stand rejected under 35 U.S.C. § 103 as unpatentable over Ten Wolde, Coushaine, and Copeland. Final Act. 2–3. II. Claims 4, 8–13, and 17 stand rejected under 35 U.S.C. § 103 as unpatentable over Ten Wolde, Coushaine, Copeland, and Hoberman. Id. at 3. Appeal 2018-006882 Application 15/284,133 3 OPINION Rejection I Claims 1–3 and 5–7 Appellants present arguments for independent claim 1, and do not separately argue dependent claims 2, 3, and 5–7. Appeal Br. 10–20. We select claim 1 as the representative claim, and claims 2, 3, and 5–7 stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Ten Wolde teaches a lighting device having a motion sensor and direction indicators, and which attaches to a wall, but “does not teach a specific attachment structure.” Final Act. 2. However, the Examiner finds that “Coushaine teaches a lighting device which is attached by adhesive 28.” Id. (citing Coushaine ¶ 25). The Examiner determines that it would have been obvious “to utilize the adhesive of Coushaine as an appropriate attachment for the device of Ten Wolde so that the device may be mounted wherever needed.” Id. The Examiner also finds that Ten Wolde does not teach that the direction indicators are rotatable or adjustable. Id. However, the Examiner finds that “Copeland teaches a lighting device having front bezel 12 which is removable and rotatable with respect to the housing.” Id. (citing Copeland Figure 4). The Examiner determines that it would have been obvious “to utilize such a front housing portion with the device of Ten Wolde so that the indicator may be adjusted or removed/replaced, as taught by Copeland, so as to be used in a variety of locations and situations.” Id. at 2–3. Appellants argue that the Examiner’s reasoning for modifying Ten Wolde’s lighting device to use the adhesive of Coushaine is in error because adhesive would not be an appropriate attachment for such devices that serve Appeal 2018-006882 Application 15/284,133 4 as emergency illumination to indicate a flight route. Appeal Br. 10–11. Appellants assert that it is implied “that the lighting devices of Ten Wolde are permanently installed into specific locations such that the predefined flight route is not easily changeable.” Id. at 11; id. at 16 (asserting that Ten Wolde “cannot be properly combined with any reference that has a temporary attachment structure (such as but not limited to Coushaine)”). According to Appellants, [i]n the context of emergency illumination hardwired into a building, as taught by Ten Wolde, temporary attachments, such as that claimed, would not be appropriate as they are likely to expose wiring and result in damage to the system that may result in loss of life due to failure of the system. An adhesive attachment, inherently temporary and subject to easy removal, repositioning, etc. is not an attachment that can be relied upon in an emergency. Id. at 12. We are not persuaded by Appellants’ argument. Appellants do not offer any evidence to support the position that an adhesive attachment cannot be relied upon in an emergency. This unsupported assertion is mere attorney argument, which cannot take the place of evidence in the record. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nothing in the prior art teaches that the proposed modification—i.e., to use Coushaine’s adhesive to attach Ten Wolde’s lighting device to the wall—would have resulted in an inoperable device. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (“Nothing in the prior art teaches that the proposed modification would have resulted in an ‘inoperable’ process.”). Appellants’ argument does not persuade us that it would be inappropriate to use Coushaine’s adhesive with Ten Wolde’s lighting device, such that one of ordinary skill in the art would have been dissuaded from making the Examiner’s modification. Our reviewing court Appeal 2018-006882 Application 15/284,133 5 has recognized that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”). See Medichem, S. A. v. Rolabo, S. L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Here, that the benefit identified by the Examiner from using Coushaine’s adhesive attachment—i.e., to advantageously allow the device to “be mounted wherever needed” (Final Act. 2) may come at the expense of the potential permanency of the attachment (i.e., allowing for a flight route to be changed (see Appeal Br. 11)) should not nullify its use as the basis to modify Ten Wolde. It would have been obvious to a person of ordinary skill in the art to choose which advantages to pursue given the known tradeoffs stemming from these choices. Therefore, the Examiner has provided a reason with rational underpinning for modifying Ten Wolde in view of Coushaine. Appellants argue that Ten Wolde teaches away from the Examiner’s proposed modification to use an adhesive attachment member, and such a modification would render Ten Wolde’s lighting device unsatisfactory for its intended purpose. Appeal Br. 13–14. Appellants assert that Ten Wolde teaches an emergency lighting system that is hardwired into a building, whereas “[t]he remainder of the cited art teach temporary, changeable, and unreliable structures that are unsuitable for the explicit purposes of Ten Wolde.” Id. at 13. According to Appellants, “one of ordinary skill in the art Appeal 2018-006882 Application 15/284,133 6 would be led away from the path taken by the Applicant and would be discouraged from making the combinations suggested by the Examiner.” Id. This line of argument is unconvincing. In order to “teach away,” a reference must “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants have not identified where Ten Wolde criticizes or discourages adhesive attachment. Merely that Ten Wolde teaches a lighting device for emergency flight route illumination does not teach away from the use of adhesive as an attachment member. In particular, we are not persuaded that modifying Ten Wolde’s lighting device to use an adhesive attachment member would render the lighting device unsatisfactory for its stated purpose of “providing improved visibility in difficult circumstances, such as smoky conditions in case of a fire.” Ten Wolde ¶ 21. Similar to the arguments made with respect to the combination of Ten Wolde and Coushaine, Appellants also argue that the Examiner’s reasoning for combining the teachings of Ten Wolde and Copeland “is in clear error because it contradicts the teachings of Ten Wolde, wherein the locations and situations for the lighting devices of Ten Wolde are predetermined according to an emergency flight route.” Appeal Br. 14–15. Appellants assert that [o]ne of ordinary skill in the art would see a strong reason not to combine Copeland and Ten Wolde, the risk being that people would die in an emergency situation because, if the indicators are changed (e.g. by random occupants of the building or by intentional sabotage), the predetermined flight route to safety will be altered to something other than intended. Id. at 15. We are not persuaded by this argument. Ten Wolde’s teaching that its lighting device is for use in an emergency illumination system does Appeal 2018-006882 Application 15/284,133 7 not preclude there being a benefit to the device having a feature that provides adjustability, such as a rotatable front bezel, as taught by Copeland. See Final Act. 2–3 (the Examiner explaining that the proposed modification of Ten Wolde would allow the indicator to “be adjusted or removed/replaced, . . . so as to be used in a variety of locations and situations”); see also Ans. 4 (explaining that “[t]he device of Copeland is used to aim the light so as to illuminate a safe passageway, which is the intent of Ten Wolde”). That the proposed modification of Ten Wolde’s lighting device to have an adjustable indicator may allow the indicator to be altered to something different than originally intended (see Appeal Br. 15) suggests that the proposed modification involves tradeoffs; however, such considerations do not necessarily preclude the proposed combination. See Medichem, S. A., 437 F.3d at 1165; Winner Int’l Royalty Corp., 202 F.3d at 1349 n.8. Appellants argue that the Examiner’s proposed combination of reference teachings is based upon impermissible hindsight. Appeal Br. 16– 17. This argument is unpersuasive because it does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellants’ disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”). Moreover, the Examiner’s proposed modification of Ten Wolde’s Appeal 2018-006882 Application 15/284,133 8 lighting device to include the adhesive of Coushaine and the rotatable bezel of Copeland does not amount to more than the predictable use of prior art elements according to their established functions, or the mere application of a known technique to a piece of prior art ready for the improvement. See KSR, 550 U.S. at 417 (noting that such modifications are obvious where they do no more than yield a predictable result). For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s rejection of claim 1 as unpatentable over Ten Wolde, Coushaine, and Copeland. We sustain the rejection of claim 1, and claims 2, 3, and 5–7 falling therewith, under 35 U.S.C. § 103 as unpatentable over Ten Wolde, Coushaine, and Copeland. Claims 14–16 and 18–20 Appellants present arguments for independent claim 14 and do not separately argue dependent claims 15, 16, and 18–20. Appeal Br. 28–35. We select claim 14 as representative, and claims 15, 16, and 18–20 stand or fall with claim 14. Independent claim 14 recites “[a] lighting kit comprising: a) plurality of lighting devices . . . and b) a pouch for storing the lighting devices of the kit.” The Examiner finds that “Coushaine teaches a kit having several items in a container (pouch, see paragraph [0010]).” Final Act. 3. The Examiner determines that it would have been obvious to modify Ten Wolde “to utilize a container to retain the several parts of the device or several devices so that the illumination may be easily transported to a location where it is needed.” Id. Appellants initially rely on the same arguments and reasoning that we found unpersuasive in connection with independent claim 1 as the basis for Appeal 2018-006882 Application 15/284,133 9 seeking reversal of independent claim 14. Appeal Br. 28–35 (asserting virtually identical arguments to those presented in connection with claim 1). For the same reasons discussed above, we are not persuaded by these arguments. Appellants further argue that the Examiner’s reasoning for combining the container of Coushaine with the devices of Ten Wolde “is in clear error because the need to transport the devices of Ten Wolde is wholly made up by the Examiner through impermissible hindsight.” Id. at 33. Appellants assert that, “[a]t no time does Ten Wolde discuss or bring up a need to transport the devices.” Id. We are not persuaded by this argument because it appears to insist on an explicit teaching, suggestion, or motivation in Ten Wolde for the Examiner’s proposed combination, whereas such an argument has been foreclosed by the Supreme Court. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness). Rather, the Court requires that we look to whether the Examiner has provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). As discussed above, the Examiner reasons that modifying Ten Wolde to be a kit of lighting devices in a container would facilitate easy transportation of the lighting devices to a location of need. See Final Act. 3. In this regard, Appellants do not identify any flaw in the Examiner’s reasoning. Appellants also argue that “the devices of Ten Wolde are installed as fixtures within the respective building and are not taken from building to building, but remain there.” Appeal Br. 33. Even assuming this Appeal 2018-006882 Application 15/284,133 10 to be true, the benefit of ease of transportation would apply to a device being transported to its permanent installation site. For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s rejection of claim 14 as unpatentable over Ten Wolde, Coushaine, and Copeland. We sustain the rejection of claim 14, and claims 15, 16, and 18–20 falling therewith, under 35 U.S.C. § 103 as unpatentable over Ten Wolde, Coushaine, and Copeland. Rejection II Claim 4 The Examiner finds that Ten Wolde “does not specifically teach directing the area of motion detection.” Final Act. 3. However, the Examiner finds that “Hoberman teaches a motion sensor which may be adjusted to detect motion only in a certain area.” Id. The Examiner determines that “[i]t would have been obvious to utilize such a restrictor or shield (see Hoberman, Abstract) on the device of Ten Wolde so that only desired motion will be detected.” Id. Appellants argue that the Examiner’s “reasoning is unsupported by the teach[ing]s of the cited art and [is] contradictory to the same.” Appeal Br. 18. Appellants assert that “[t]here is no indication from Ten Wolde that it would be desired to not activate the device for occupants of the building in certain sections of the building or in certain portions of a walkway.” Id. Appellants also argue that “a person of ordinary skill, upon reading the specification of Ten Wolde, would be discouraged from following the path set out in Hoberman (shielded motion detector), and would also be led in a direction divergent from the path taken by the Applicant.” Id. at 19. These arguments are unpersuasive. Appeal 2018-006882 Application 15/284,133 11 To the extent that Appellants appear to insist on an explicit teaching, suggestion, or motivation in Ten Wolde for the Examiner’s proposed modification, the Supreme Court has indicated that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness. KSR, 550 U.S. at 415, 419; In re Kahn, 441 F.3d at 988. Appellants’ argument does persuasively explain why the Examiner’s articulated reasoning lacks rational underpinnings. Simply because Ten Wolde does not discuss a desire for the lighting device to detect motion only in a certain area does not preclude one of ordinary skill in the art from being led to make such a modification. Moreover, the Examiner’s proposed modification of Ten Wolde’s lighting device to include Hoberman’s restrictor for adjusting a motion detection area does not amount to more than the predictable use of prior art elements according to their established functions, or the mere application of a known technique to a piece of prior art ready for the improvement. See KSR, 550 U.S. at 417 (noting that such modifications are obvious where they do no more than yield a predictable result). In addition, Appellants’ argument that Ten Wolde teaches away from a shielded motion detector is not persuasive because “[a] reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Fulton, 391 F.3d at 1201). Appellants have not identified where Ten Wolde criticizes or discourages a shielded motion detector. For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s rejection of claim 4 as unpatentable over Ten Wolde, Coushaine, Appeal 2018-006882 Application 15/284,133 12 Copeland, and Hoberman. We sustain the rejection of claim 4 under 35 U.S.C. § 103 as unpatentable over Ten Wolde, Coushaine, Copeland, and Hoberman. Claims 8–13 and 17 In contesting the rejection of claims 8–13, Appellants rely on the same arguments and reasoning we found unpersuasive in connection with the rejections of claims 1 and 4. Appeal Br. 20–26. In contesting the rejection of claim 17, Appellants rely on the same arguments and reasoning we found unpersuasive in connection with the rejections of claims 4 and 14. Id. at 35– 38. For the reasons discussed above, Appellants’ arguments do not apprise us of error in the rejections of claims 1, 4, and 14, and likewise do not apprise us of error with respect to the rejection of claims 8–13 and 17. We sustain the rejection of claims 8–13 and 17 under 35 U.S.C. § 103 as unpatentable over Ten Wolde, Coushaine, Copeland, and Hoberman. DECISION The Examiner’s decision to reject claims 1–3, 5–7, 14–16, and 18–20 under 35 U.S.C. § 103 as unpatentable over Ten Wolde, Coushaine, and Copeland is AFFIRMED. The Examiner’s decision to reject claims 4, 8–13, and 17 under 35 U.S.C. § 103 as unpatentable over Ten Wolde, Coushaine, Copeland, and Hoberman is AFFIRMED. Appeal 2018-006882 Application 15/284,133 13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation