Rebecca Gaye. Walker et al.

Patent Trials and Appeals Board

Sep 6, 2019

15284133 - (D) (P.T.A.B. Sep. 6, 2019)

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.

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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.
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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
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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
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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
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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
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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
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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
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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
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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.
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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,
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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.
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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