Ex Parte 6543911 et al

Board of Patent Appeals and Interferences

Jan 9, 2012

95001410 (B.P.A.I. Jan. 9, 2012)

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.
95/001,410 07/27/2010 6543911 7248
64828 7590 01/10/2012
Harold McGurk
The Law Office of Clay McGurk
P.O. BOX 1488
Orange, CA 92856
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

VOLKSWAGEN GROUP OF AMERICA, INC.
Requester and Appellant

v.

LIGHT TRANSFORMATION TECHNOLOGIES LLC
Patent Owner and Respondent
____________

Appeal 2012-002458
Reexamination Control 95/001,410
Patent 6,543,9111
Technology Center 3900
____________

Before STEPHEN C. SIU, JONI Y. CHANG, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent undergoing reexamination (hereinafter the “911 Patent”)
issued to Rizkin et al. on April 8, 2003 from Application 09/566,521 filed
May 8, 2000.
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A. STATEMENT OF THE CASE
Summary
Third Party Requester and Appellant Volkswagen Group of America,
Inc. (“VGA”) appeals under 35 U.S.C. §§ 134(c) and 315(b) the Examiner’s
decision not to reject claim 6 over the prior art.2 Patent Owner Light
Transformation Technologies LLC (“LTT”)3 urges that the Examiner’s
decision should be affirmed. 4 We have jurisdiction under 35 U.S.C.
§§ 134(c) and 315(b).
We reverse the Examiner’s decision not to reject claim 6 over the
prior art.
The Involved Prior Art
Nichols et al. (“Nichols”) 4,767,172 Aug. 30, 1988
Müller DE 2 201 574 July 19, 19735
Brown GB 2 282 700 Apr. 12, 1995

2 See VGA’s Appeal Brief filed July 18, 2011 (hereinafter “VGA’s
App. Br.”) and Rebuttal Brief filed October 31, 2011 (hereinafter “VGA’s
Reb. Br.”).

3 LTT’s ownership rights in the ‘911 Patent are recorded in an
assignment dated August 5, 2011 appearing on Reel 026707 Frame 0833.

4 See LTT’s Respondent Brief filed August 18, 2011 (hereinafter
“LTT’s Resp. Br.”).

5 In this opinion, references to page and line numbers in Müller are to
the English translation of that German document which is of record.
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The Proposed Rejections on Appeal
The rejection of claim 6 under 35 U.S.C. § 102(b) as anticipated by
Müller.
The rejection of claim 6 under 35 U.S.C. § 102(b) as anticipated by
Nichols.
The rejection of claim 6 under 35 U.S.C. § 102(b) as anticipated by
Brown.
Judicial Proceedings
We are informed that the ‘911 Patent is the subject of litigation styled
“LIGHT TRANSFORMATION TECHNOLOGIES LLC v. ANDERSON
CUSTOM ELECTRONICS, INC., et al., Case No. 2:09-cv-00354-TJW-CE
(E.D. Tex. ---Complaint Filed on November 11, 2009)” and “LIGHT
TRANSFORMATION TECHNOLOGIES LLC v. ALLIANCE ELECTRONICS
CORPORATION d/b/a KHATOD USA, et al., Case No. 2:09-cv-00357-TJW
(E.D. Tex. ---Complaint Filed on November 11, 2009).” (VGA’s App. Br.
1.)
The Invention
The invention relates to a lighting device providing a precisely
determined light distribution pattern, useful, for instance, as lighting for
“navigation, obstructions and other signal lights.” (‘911 Patent 1:10-14.)
Claim 6 is reproduced below (VGA’s App. Br. Claims App’x.):
6. A light transformer for highly efficient directing and
redistributing light from a light source in a predetermined pattern with
low divergence or substantially parallel with an axis of light direction
comprising:
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a first end that receives light from the light source;

a second end that outputs the received light, the second end
located on an opposite end of the device from the first end;

a first member located on a third end of the device between the
first end and the second end, wherein the first member has an outer
wall comprising a total internal reflection surface that redirects and
redistributes the received light in a direction of the second end;

a first planar optical window located at an end of the first
member, the first planar optical window being substantially
perpendicular to the axis of light direction;

a second member located on a fourth end of device, the fourth
end located on an opposite end of the device from the third end,
between the first end and the second end, the second member having
an outer wall comprising a total internal reflection surface which
redirects and redistributes the received light in a direction of the
second end;

a second planar optical window located at an end of the second
member, the second planar optical window being substantially
perpendicular to the axis of light direction, the second planar optical
window further being symmetrical across the axis of light direction
with the first planar optical window; and

an aspheric lens located between the first and the second
members, the aspheric lens having an input side on the first end of
device and an output side on the second end of device, the output side
of aspheric lens located between the first and the second planar optical
windows.

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B. ISSUES
1. Is the Examiner’s determination that prior art references to
Simon6, Harris7, and Naka8 do not raise a substantial new question of
patentability with respect to claim 6 properly subject to appeal for review by
the Board of Patent Appeals and Interferences (“Board”)?
2. Did the Examiner correctly determine that none of Müller,
Nichols, or Brown discloses a light transforming device with reflective
surfaces which operate to “redistribute” light?
C. ANALYSIS
Claim 6 is an independent claim and the only claim involved in this
appeal. In its Request for Inter Partes Reexamination, VGA proposed
several alternative prior art rejections to claim 6. Specifically, VGA
advanced anticipation rejections to claim 6 based on each of Müller,
Nichols, and Brown as well as other additional references including Simon,
Harris, and Naka.
In the “Order Granting Request for Inter Partes Reexamination”
mailed September 23, 2010, the Examiner determined that Müller, Nichols,
and Brown each raise a substantial new question of patentability in
connection with claim 6 and thus granted VGA’s reexamination request with
respect to those references. However, in conjunction with Simon, Harris,
and Naka, the Examiner determined that none of the references raises a

6 U.S. Patent No. 5,897,201, issued April 27, 1999.

7 U.S. Patent No. 2,254,961, issued August 21, 1937.

8 U.S. Patent No. 5,813,743, issued September 29, 1998.
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substantial new question of patentability and thus declined to reexamine
claim 6 on the basis of those references. In an Office Action mailed
September 23, 2010, the Examiner initially adopted VGA’s proposed
anticipation rejections to claim 6 based on each of Müller, Nichols, and
Brown. However, in the Action Closing Prosecution (“ACP”) mailed
January 13, 2011 and in the Right of Appeal Notice (“RAN”) mailed March
16, 2011, the Examiner ultimately determined that none of Müller, Nichols,
or Brown discloses all the limitations of claim 6 and therefore declined to
maintain anticipation rejections based on those references. 9
In this Appeal, VGA first seeks reversal of the Examiner’s decision
not to maintain rejections of claim 6 based on Müller, Nichols, or Brown.
Also, characterizing the Examiner’s determination that none of Simon,
Harris, and Naka raise a substantial new question of patentability with
respect to claim 6 as a decision not to adopt rejections based on those
references, VGA asks that the Board reverse the Examiner’s alleged decision
and enter grounds of rejection to claim 6 based on those references.
Simon, Harris, and Naka
At the outset, we reject VGA’s position in connection with its
challenge to the Examiner’s determination that no substantial new question
of patentability is raised with respect to Simon, Harris, and Naka. Pursuant
to 35 U.S.C. § 315(b), a third party requester may only appeal a decision
which is a “final decision favorable to the patentability of any original or

9 In “confirming” the patentability of claim 6 in the RAN, the Examiner
incorporates by reference his reasoning set forth in the ACP. (RAN 2.) In
this opinion, reference is therefore made to the ACP in discussing that
reasoning.
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proposed amended or new claim of” a patent. The determination by an
Examiner that a given prior art reference does not raise a substantial new
question of patentability is a non-appealable determination which does not
represent a final decision on the patentability of a claim in conjunction with
the particular involved prior art reference. See Belkin Int’l, Inc. v.
OptimumPath, LLC, Appeal No. 2011-3697 (BPAI Mar. 30, 2011)
(informative opinion). The Board does not have jurisdiction to decide or
resolve any dispute with respect to that non-appealable determination.
VGA’s recourse in challenging the Examiner’s determination was to seek
review by petition to the Director. 37 C.F.R. § 1.927.
Accordingly, we dismiss, as improper, VGA’s request that this Board
reverse the Examiner’s determination that none of Simon, Harris, or Naka
raise a substantial new question of patentability with respect to claim 6.
Claim Construction
A central issue in this Appeal involves the requirement in claim 6 of a
light transformer which operates to “redistribute” light. In particular, claim
6 sets forth a light transformer which includes first and second members
each incorporating an internal reflection surface that “redirects and
redistributes” light received from a light source. (VGA’s App. Br. Claims
App’x.) In resolving this Appeal, it is necessary to determine the meaning
of the term “redistribute.”
During the course of this reexamination proceeding, LTT has
advanced a meaning of “redistribute” in the context of reflected light rays as
describing an operation that is something more complex than merely
changing the direction of the light rays and instead requires a “change in
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angular intensity distribution” of light from a light source. (See, e.g., LTT’s
“Patent Owner’s Response and Amendment in Inter Partes Reexamination”
filed November 23, 2010; and LTT’s Resp. Br. 5:6-10.) As underlying
support for that meaning, LTT points to the specification of the ‘911 Patent
and to the declaration of Dr. David Pepper submitted under 37 C.F.R.
§ 1.132 on November 23, 2010. (LTT’s Resp. Br.5:10-12.) Dr. Pepper
characterizes light “redistribut[ion]” as requiring a “change in the angular
intensity distribution” of incoming source light. (Pepper Decl. pp. 2-3,
¶ 12.) The ‘911 Patent describes the formation of light transformers
incorporating lenses with curved internal reflection surfaces designed via an
“iterative process” (‘991 Patent 6:41-42) such that the surfaces are
configured to reflect received light in pattern having a “predetermined
intensity distribution” (id. at 8:39-43). That intensity distribution need not
be uniform and may for instance assume a “precise intensity distribution in
the vertical plane.” (Id. at 8:3-22.)
One illustrative embodiment of the disclosed invention is shown in
Figure 3 of the ‘911 Patent, which is reproduced below:

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(1) was the definition advanced by LTT in prosecution before the Examiner
in this reexamination proceeding (see, e.g., “Patent Owner’s Response and
Amendment in Inter Partes Reexamination” filed November 23, 2010); (2) is
supported by the specification of the ‘911 Patent and the declaration
testimony of Dr. Pepper; (3) was accepted by the Examiner as correct (see
ACP 4); and (4) is not disputed by VGA.
We observe that LTT belatedly urges in its Respondent’s Brief that
the term “redisributes” in addition to the meaning that it initially advanced
of “changing the angular intensity distribution” of light also requires that
“the relative order or sequence” of the reflected light rays must also be
changed. (LTT’s Resp. Br.5:12-14.) VGA disputes that the additional
meaning falls within the broadest reasopnable interpretation of the term
“redistributes.” (VGA’s Reb. Br. 8-9.)
Notably absent from the record is underlying evidentiary support for
that additional meaning of “redistributes” now advanced by LTT. Neither
the specification of the ‘911 Patent nor the testimony of Dr. Pepper
reasonably supports a meaning of the term “redistributes” as also requiring a
change in “the relative order or sequence” of reflected lights rays. Indeed,
LTT makes no attempt to substantiate that alleged meaning with citation to
the record and instead simply summarily concludes that “[i]t is well
understood that the ordinary and customary meaning for redistributes also
involves changing the relative order or sequence of the lights rays.” (LTT’s
Resp. Br. 5:12-14) (emphasis in original). We are not persuaded by LTT’s
uncorroborated assertion as to an alleged “ordinary and customary” meaning
imparted to the term “redistributes” which is not reasonably substantiated in
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the evidentiary record before us. We thus reject the meaning for
“redistributes” now urged by LTT in its Respondent Brief as it is not
adequately supported.
For the foregoing reasons, we conclude that the broadest reasonable
interpretation, consistent with the ‘911 Patent specification, of the term
“redistributes” as it appears in claim 6 in connection with light means that
the light, upon reflection, undergoes a change in its angular intensity
distribution.
The proposed rejections over Müller, Nichols, and Brown
In declining to maintain the anticipation rejections over each of
Müller, Nichols, and Brown proposed by VGA, the Examiner relied
primarily on the testimony of Dr. Pepper. Dr. Pepper submits that the
pertinent reflection surfaces in each of Müller, Nichols, and Brown are either
“paraboloid” or “parabolic” surfaces that do not redistribute light and instead
operate only to redirect reflected light, i.e., simply change the direction of
travel of reflected light rays. (Pepper Decl. pp. 2-3, ¶ 12.) Dr. Pepper
testifies that “[p]arabolas do not redistribute light” because they do not
operate to change the angular intensity distribution of incoming source light.
(Id.) In light of that testimony, the Examiner concluded that the devices of
Müller, Nichols, and Brown, in purportedly disclosing only parabola shaped
reflective surfaces, do not operate to redistribute light reflected from those
surfaces. (ACP 4-5.)
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Müller and Nichols
Müller and Nichols are directed, respectively, to a signal light and a
light collector for an LED array. Each device includes internal reflective
surfaces (e.g., element 4c in Müller and element 34a in Nichols) which
operate to reflect light from a light source. In Müller, the reflective surface
is described as a “paraboloid surface.” (Müller 4:30.) In Nichols, the
reflective surface is characterized as “parabolic reflecting surface” (Nichols
Abstract) or “parabolic outside surface” which operates to form collimated
beams of light (id. at 3:36-37.)
VGA does not dispute that the disclosures of Müller and Nichols are
limited to reflective surfaces which are parabolas. Rather, the basis of
VGA’s contentions with respect to the alleged anticipation of claim 6 by
Müller and Nichols is that LTT’s expert witness, Dr. Pepper, is incorrect in
his testimony that parabolas are incapable of redistributing light. (See
VGA’s App. Br. 29-36; VGA’s Reb. Br. 7-8.) Evidently, the underlying
premise of VGA’s disagreement with the testimony of Dr. Pepper stems
from the disclosure that each of the light reflecting devices of Müller and
Nichols operates to produce reflected light that is “substantially parallel” or
“generally parallel” to light emitted from a light source. (Id.) LTT’s claim 6
also specifies that reflected light must be “substantially parallel” with light
from a light source. (LTT’s App. Br. Claims App’x.) Because, in that
respect, the devices of Müller and Nichols allegedly include a similar
operating characteristic as compared with the light transformer of claim 6,
VGA submits that the parabolic reflectors of those prior art references
therefore must also operate to somehow redistribute the light. Based on that
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theory, VGA concludes that Dr. Pepper is “wrong” in his testimony
concerning the inoperability of parabolic reflectors to redistribute light and
therefore the testimony should be disregarded. (Id. at 33:21-23.)
We are not persuaded by VGA’s argument. While the devices of the
prior art and the device set forth in claim 6 may each operate to produce
reflected light having one particular aspect in common, i.e., the reflected
light is substantially parallel with that produced from the light source, that is
but one of multiple characteristics of the reflected light required by claim 6.
In particular, in addition to reflecting light in a substantially parallel fashion,
the device of claim 6 also requires, for instance, that the light additionally be
redistributed upon reflection. As discussed above, the reflective surfaces of
claim 6 “redistributes” the light such that the reflected light exhibits a
change in its angular intensity distribution. Thus, the “redistributes”
requirement is additional to the “substantially parallel” requirement. VGA
does not meaningfully explain why the parabolic reflective surfaces of
Müller and Nichols, simply in producing substantially parallel light rays
upon reflection, necessarily also change the angular intensity distribution of
the light, i.e., redistributes the light. Indeed, neither of those references
appears to include any discussion with respect to changes in an intensity
pattern of the reflected light.
The record reflects that Dr. Pepper has considerable experience in the
relevant art and it is his testimony, advanced subject to the potential
penalties under Section 1001 of Title 18 of the United States code, that
Müller and Nichols disclose only parabolic internal reflection surfaces and
that parabolic reflection surfaces are incapable of redistributing light. It is
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clear that VGA disagrees with that testimony. However, absent from the
record is any credible analysis from VGA as to the content of Müller and
Nichols which adequately refutes the testimony, or any other evidence, such
as declaration testimony from VGA’s own expert witness, operating to
substantiate VGA’s basis for disagreement.
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. Karsten Mfg. Corp. v.
Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). In light of Dr.
Pepper’s testimony, the Examiner determined that Müller and Nichols lack
features required by LTT’s claim 6, in particular, internal reflection surfaces
which redistribute light. As discussed above, VGA has not properly
established that Dr. Pepper’s testimony should be discredited in connection
with Müller and Nichols. Like the Examiner, we conclude that the
testimony provides sufficient evidence that elements required by claim 6 are
absent from the disclosures of Müller and Nichols. We, therefore, are not
persuaded that the Examiner was incorrect in declining to adopt VGA’s
proposed anticipation rejections to claim 6 based on those references. We
sustain the Examiner’s decision not to adopt those proposed rejections.
Brown
Brown discloses a light emitting diode for reflecting light. (Brown
2:8-17.) Brown’s Figure 12 is reproduced below:
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Brown contemplates that its device may be formed with reflection surfaces
that are something other than a parabola. (VGA’s Reb. Br. 13:6-12.)
In declining to adopt VGA’s proposed anticipation rejection based on
Brown, the Examiner again relied on the testimony of Dr. Pepper. (ACP 4.)
Although seemingly recognized by Dr. Pepper that Brown envisions
reflective surfaces which are simply “part parabolic” (Pepper Decl. p. 3 ¶
13), Dr. Pepper’s testimony that Brown’s device does not disclose all the
features of claim 6 is still premised on the understanding that “[p]arabolas
do not redistribute light” (id. at pp. 2-3 ¶ 12). In the circumstance, however,
where Brown’s device is configured with multiple reflective surfaces each of
which is “part parabolic” such that the reflective surfaces collectively are
something other than a parabola, that testimony is of only limited value in
ascertaining whether Brown’s disclosure anticipates claim 6.
As described in connection with Figure 12 reproduced above, the
light rays reflected by surfaces 34 and 40 are “substantially parallel” (Brown
14:23-24) and, upon reflection by those surfaces, the light rays do not appear
to be distributed uniformly in passing from part 50. Furthermore, Brown
expresses that the operation of its part 50 affects the “luminous intensity” of
the light emitting diode 2 as a whole. (Id. at 16:21-17:1) Figure 15,
(reproduced below) illustrates “luminous intensity plots” of a light emitting
diode which incorporates part 50 (plot 58) and a light emitting diode which
does not incorporate the part (plot 56). (Id. at 17:1-3.) The addition of part
50 “approximately trebles the useful luminous intensity” of the light
emitting diode. (Id. at 17:3-5.)
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During prosecution in this reexamination proceeding, each of the
Examiner (Office Action mailed Sep. 23, 2010, p. 6) and VGA (VGA’s App.
Br. 20-21) provided a detailed assessment of how Brown discloses all the
features set forth in LTT’s claim 6. LTT does not dispute those assessments
of Brown’s disclosure other than to contend that Brown’s reflection surfaces
do not “redistribute” light. In subsequently withdrawing the anticipation
rejection to claim 6 based on Brown, the Examiner relied solely on the
testimony of Dr. Pepper that parabolas do not redistribute light. (ACP 4-5.)
For the reasons discussed above, we are not persuaded that Dr. Pepper’s
testimony adequately accounts for the full disclosure of Brown, in particular,
the disclosure that its reflection surfaces need not be formed as parabolas. In
our view, the Examiner was incorrect in withdrawing the anticipation
rejection of claim 6 over Brown based simply on that testimony of Dr.
Pepper.
Accordingly, for the foregoing reasons, we are not persuaded that
Brown does not disclose all the features of claim 6. We conclude that
Brown’s disclosure establishes an adequate prima facie basis for the
anticipation of claim 6 and, therefore, we enter a rejection to that claim
under 35 U.S.C. § 102(b) as anticipated by Brown.
D. CONCLUSION
1. The Examiner’s determination that prior art references to
Simon, Harris, and Naka do not raise a substantial new question of
patentability with respect to claim 6 is not properly subject to appeal for
review by the Board.
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2. The Examiner correctly determined that neither Müller nor
Nichols discloses a light transforming device with reflective surfaces which
operate to “redistribute” light. However, the Examiner did not correctly
determine that Brown’s device fails to “redistribute” light as set forth in
claim 6.
E. ORDER
We affirm the Examiner’s decision not to maintain the rejection of
claim 6 under 35 U.S.C. § 102(b) as anticipated by Müller.
We affirm the Examiner’s decision not to maintain the rejection of
claim 6 under 35 U.S.C. § 102(b) as anticipated by Nichols.
We reverse the Examiner’s decision not to maintain the rejection of
claim 6 under 35 U.S.C. § 102(b) as anticipated by Brown.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes
a new ground of rejection for LTT’s claim 6 and is hereby designated as
such. Section 41.77(b) provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.” That section also provides that
Patent Owner LTT, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal proceeding
as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such a
response must be either an amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that
the proceeding be reheard under § 41.79 by the Board
Appeal 2012-002458
Reexamination Control 95/001,410
Patent 6,543,911

20
upon the same record. The request for rehearing must
address any new ground of rejection and state with
particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).

REVERSED

Appeal 2012-002458
Reexamination Control 95/001,410
Patent 6,543,911

21
PATENT OWNER:
HAROLD MCGURK
THE LAW OFFICE OF CLAY MCGURK
P.O. BOX 1488
ORANGE, CA 92856

THIRD-PARTY REQUESTER:
KENYON & KENYON LLP
ONE BRAODWAY
NEW YORK, NY 10004