Ex Parte 6554446 et al

Patent Trial and Appeal Board

Dec 9, 2014

95000067 (P.T.A.B. Dec. 9, 2014)

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.
95/000,067 12/20/2004 6554446 108-0184 8558
7590 12/10/2014
Gordon E. Gray, III
GRAY LAW FIRM
4401 N. Atlantic Avenue
Suite 223
Long Beach, CA 90807
EXAMINER
CLARKE, SARA SACHIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/10/2014 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
____________

TEMPO LIGHTING, INC.,
REQUESTER and RESPONDENT,

v.

PATENT OF TIVOLI LLC.,
Patent Owner and Appellant
____________

Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REMAND

Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

2
On February 24, 2012, the Board issued a decision (hereinafter
“Decision”), affirming the Examiner’s rejection of claims 4 and 5, and
reversing the Examiner’s rejection of claims 1-3 and 6-13 in United States
Patent 6,554,446 B1 (hereinafter “the ’446 Patent”). On March 26, 2012,
Third-Party Requester Tempo Lighting, Inc., requested rehearing of the
Board’s Decision. On April 26, 2012, Patent Owner Tivoli LLC. filed
comments opposing the Request for Rehearing. The Board denied
Requester’s for Rehearing. (Decision on Request for Rehearing, September
26, 2012.) Requester appealed the Board’s decision to the Court of Appeals
for the Federal Circuit, which affirmed-in-part, and vacated-in-part the
Board’s Decision, and remanded the case to the Board for further
proceedings. Tempo Lighting, Inc. v. Tivoli, LLC., 742 F.3d 973, 978-79
(Fed. Cir. 2014).
Specifically, the Federal Circuit affirmed the Board’s claim
construction of “inert to light” to mean “non-photoluminescent and not
activated to glow by absorbing ambient light.” Tempo Lighting, 742 F.3d at
978; Decision 6. However, the Federal Circuit vacated the Board’s decision
to reverse the Examiner’s rejections of the claims, stating that the Board’s
reasoning relied on the Examiner’s findings regarding the prior art under a
different claim construction. Tempo Lighting, 742 F.3d at 978. The Federal
Circuit remanded the case to give the Board the opportunity to make new
factual findings under the correct claim construction and to consider
Requester’s additional arguments for unpatentability. Id.
We have considered carefully the reasoning in the Decision in view of
the guidance provided by Tempo Lighting. For the reasons that follow, we
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

3
decline to change the outcome of the Decision reversing the Examiner’s
grounds of rejection. However, pursuant to our authority under 37 C.F.R.
§ 41.77(b), we enter new grounds of rejection for claims 1-3 and 6-13 based
on the alternative grounds of rejection identified by Third Party Requester.
The rejections reversed in the Decision were as follows
(Decision 4-5, 19):
I. Claim 4 under 35 U.S.C. § 102(b) as anticipated by
Mercer ’89; 1,2
II. Claims 1-3 and 9 under 35 U.S.C. § 103(a) as obvious over
Johnsonite ’96 3 in view of Connew; 4
III. Claims 6-8 and 10-13 under 35 U.S.C. § 103(a) as obvious over
Johnsonite ’96 in view of George5 and Connew;
IV. Claims 1-3 and 9 under 35 U.S.C. § 103(a) as obvious over
Mercer ’89 in view of Connew;
V. Claim 5 under 35 U.S.C. § 103(a) as obvious over Mercer ’89;6

1 Mercer Brochure 1989.
2 Although the Federal Circuit’s Decision indicates that all rejections
reversed by the Board are vacated, Tempo Lighting, 742 F.3d at 979, we note
that claims 4 and 5 do not recite the limitation “inert to light” and the
rejection of those claims were affirmed on other grounds. Decision 19.
Accordingly, we need not further address claims 4 and 5. See FN6 infra. To
the extent necessary, we incorporate by reference the portions of the
Decision relating to claims 4 and 5, the rejections of which were affirmed,
and were not appealed to the Federal Circuit. (See Decision 4, 5, 16, 19.)
3 Johnsonite Brochure 1996.
4 Connew U.S. 4,998,391, issued Mar. 12, 1991.
5 George U.S. 6,116,748, issued Sep. 12, 2000.
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

4
VI. Claims 6-8 and 10-13 under 35 U.S.C. § 103(a) as obvious over
Mercer ’89 in view of Connew and George;
VII. Claims 1-3 and 9 under 35 U.S.C. § 103(a) as obvious over
Mercer ’957 in view of Connew;
VIII. Claims 6-8 and 10-13 under 35 U.S.C. § 103(a) as obvious over
Mercer ’95 in view of Connew and George;
IX. Claims 1-3 and 9 under 35 U.S.C. § 103(a) as obvious over
Johnsonite ’99 in view of Connew;
X. Claims 6-8 and 10-13 under 35 U.S.C. § 103(a) as obvious over
Johnsonite ’99 in view of George and Connew;
XI. Claims 1-3 and 9 under 35 U.S.C. § 103(a) as obvious over
Thomas Register8 in view of Connew;
XII. Claims 6-8 and 10-13 under 35 U.S.C. § 103(a) as obvious over
Thomas Register in view of George and Connew;
XIII. Claims 1-3 and 9 under 35 U.S.C. § 103(a) as obvious over
NFPA Life Safety9 in view of Connew; and
XIV. Claims 10-13 under 35 U.S.C. § 103(a) as obvious over NFPA
Life Safety in view of Connew and George.

6 This rejection was not addressed in the Decision, but because the Decision
reversed Rejection I, and Rejection V depended on the findings associated
with Rejection I (RAN 14-15), Rejection V is reversed also.
7 Mercer Brochure 1995.
8 Thomas Register of American Manufacturers, 86th Edition, Thomas
Publishing Company, 36984 (1996).
9 NFPA 101 Life Safety Code, 1997 Edition, p. 101-69 (1997).
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

5
The New Grounds of Rejection entered herein are as follows:
XV. Claims 1-3 and 9 under 35 U.S.C. § 102(b) as anticipated by
Mercer ’89;
XVI. Claims 6-8 and 10-13 under 35 U.S.C. § 103(a) as obvious over
Mercer ’89 in view of George;
XVII. Claims 1-3 and 9 under 35 U.S.C. § 102(b) as anticipated by
Mercer ’95; and
XVIII. Claims 6-8 and 10-13 under 35 U.S.C. § 103(a) as
obvious over Mercer ’95 in view of George.

DISCUSSION
Claims 1, 6, and 9 are independent claims. For convenience, claim 1,
which is illustrative of the appealed subject matter, is reproduced as follows:
1. A lighting apparatus comprising:
a first extruded portion shaped to mount on the nose of a
stair step; and,
a second extruded portion coextruded with said first
portion and mounted on top of the first portion so as to be
above the nose of the stair step, said second portion comprising
a material inert to light and selected to have a reflectance factor
greater than or equal to light gray polyvinyl chloride.
(PO App. Br. 36, Claims App’x.)
Claim 9, like claim 1, is directed to a lighting apparatus with a
second portion “coextruded with said first portion from a reflective
material inert to light.” Independent claims 6 and 13 are also similar
to claims 1 and 9 in having the inert to light requirement, but
additionally recite the presence of a lamp as part of the recited lighting
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

6
apparatus. Dependent claim 10, which depends from claim 9, also
recites a lamp. Claims 7, 8, 11, and 12 recite additional feature of the
lamp.
In rejecting the claims, the Examiner relied exclusively on an
interpretation of “inert to light” different from the interpretation we adopted
in the Decision, and which was affirmed by the Federal Circuit. (Decision 9,
10, 14, 15; Ans. 1-3, 14, 23, 34, 35, 44, 56-57.) In all of the obviousness
rejections reversed in the Decision, the Examiner relied on Connew in order
to meet the recited limitation of “inert to light” by incorporating additives,
UV stabilizers, into the primary references. This rationale was set forth by
the Examiner because the Examiner had construed “inert to light” to mean
that the material is not degraded by light. (See RAN 1-2.) In the Decision,
we found that the Examiner’s interpretation lacked sufficient evidence in the
record to show that the addition of the UV stabilizers discussed in Connew
would result in a second portion that is inert to light as recited in claims 1-3
and 6-13 under the adopted claim interpretation of “inert to light” as “non-
photoluminescent and not activated to glow by absorbing ambient light.”
(Decision 15-16.) There is still insufficient evidence of record to support the
position that the addition of UV stabilizers would result in a second portion
that is inert to light under the claim interpretation adopted in the Decision
and affirmed in Tempo Lighting.
Although Requester argues that Connew’s base layer 20 is reflective
and “inert to light” (not photoluminescent) as required by the claims,
Requester’s argument is insufficient to support a conclusion of obviousness.
That is, Requester does not provide sufficient rational underpinnings for why
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

7
one of ordinary skill in the art would substitute the base material of Connew
into the portions of the stairs of the primary references corresponding to the
second portion recited in the claims. See KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). As a result, we reverse Grounds II-IV and VI-XIV.
We, therefore, in accordance with the guidance provided to us from
the Federal Circuit in Tempo Lighting, turn to Requester’s contentions that
the claims would have been unpatentable in view of the references of record
under the claim interpretation we adopted in the Decision.

Anticipation
We begin by addressing Requester’s contentions that claims 1-3 and 9
are anticipated by Mercer ’89 and Mercer ’95 for the reasons detailed in
Requester’s Comments in Response to ACP (filed July 15, 2009)
(“Comments”). (Req. Resp. Br. 8, 11; Exhibit A.)

PRINCIPLES OF LAW
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Ludtke, 441
F.2d 660, 664 (CCPA 1971). “‘[T]he PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. . . . Whether the rejection is based on
‘inherency’ under 35 U.S.C. s [sic] 102, on ‘prima facie obviousness’ under
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

8
35 U.S.C. s [sic] 103, jointly or alternatively, the burden of proof is the same
. . . (footnote omitted).’” In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980)
(quoting In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).

Mercer ’89
Claims 1-3 and 9
Requester contends that Mercer ’89 anticipates claims 1-3 and 9 under
Patent Owner’s construction of “inert to light” because there is no indication
that any portion of the MAXXI-TREADTM product is photoluminescent.
(Req. Resp. Br. 8; Comments 4; Mercer ‘89, p. 6.)
Mercer ’89 discloses a MAXXI-TREADTM product, featuring a
“highly-visible reinforced nose,” which is a co-extruded product. (Mercer
’89, p. 6, 2nd column.) Mercer ’89 states that the “[c]ontrasting two-tone
design provides maximum visibility and added safety.” (Mercer ’89, p. 6,
2nd column.) Mercer ’89 discloses color combinations including black with
white stripes and black with gray stripes, which are the same or similar to
the color combinations disclosed in the ’446 patent, including black and
light gray. (Mercer ’89, p. 6, 2nd column; ’446 Patent, Col. 2, ll. 2-8.)
Accordingly, Mercer ’89 discloses a material having a reflectance factor
greater than or equal to light gray polyvinyl chloride as recited in claim 1.
We acknowledge that Mercer ’89 does not disclose expressly that the
stripes corresponding to the second portion are “inert to light” as that
limitation has been interpreted in the Decision. However, one of ordinary
skill in the art would have understood the materials disclosed in Mercer ’89
to be non-photoluminescent or not activated to glow by ambient light and,
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

9
thus, “inert to light” as required by the claims. That is, in this particular
instance, because Mercer ’89 is silent as to such properties, one of ordinary
skill in the art would not have understood the materials disclosed in Mercer
’89 to have possessed such properties. Stated another way, because
photoluminescence or the property of being activated to glow by ambient
light would require the ordinary skilled artisan to engineer such property into
the materials used in the stair tread, one of ordinary skill in the art would
have expected Mercer ’89 to have expressly disclosed such a property, rather
than to be silent as to that property. (See, e.g., Johnsonite ‘96, p. 27
Description of Permalight® Technology.) Accordingly, without any
disclosure or teachings to the contrary, one of ordinary skill in the art would
have understood the stripes of Mercer ’89 to be “inert to light.” We observe
also that the ’446 Patent does not expressly disclose that the materials for the
second portion are inert to light. (’446 Patent, col. 2, ll. 2-8.)
In view of Mercer ’89’s disclosure of a co-extruded product having
the same or similar color combinations disclosed by the ’446 Patent, which
is further disclosed as providing maximum visibility, we find sufficient
evidence that the lighting apparatus disclosed in Mercer ’89 are the same or
similar products disclosed and claimed in the ’446 Patent, thus shifting the
burden to Patent Owner to show that they are not. Spada, 911 F.2d at 708;
Fitzgerald, 619 F.2d at 70.
Accordingly, we enter a new rejection for claims 1-3 and 9 as
anticipated by Mercer ’89.

Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

10
Mercer ’95
Claims 1-3 and 9
Similar to Mercer ’89, Requester contends that Mercer ’95 anticipates
claims 1-3 and 9 under Patent Owner’s construction of “inert to light”
because there is no indication that any portion of the MAXXI-TREADTM
product is photoluminescent and this would have been reasonably believed
to be “inert to light” as required by the claims. (Req. Resp. Br. 11;
Comments 5; Mercer ’95, p. 10-11.)
Our reasoning with respect to the MAXXI-TREADTM product
disclosed in Mercer ’95 pages 10-11 is similar to the reasoning set forth for
Mercer ’89 discussed above. We see no need to repeat that analysis here.
Additionally, to the extent that Patent Owner argues that Mercer ’95 does
not disclose co-extrusion, we previously found that argument unpersuasive.
(Decision, pp. 17-18.) Accordingly, we enter a new rejection for claims 1-3
and 9 as being anticipated by Mercer ’95.

Obviousness
Claims 6-8 and 10-13
Mercer ’89 or Mercer ’95 in view of George
As discussed above, claims 6-8 and 10-13 are similar to claims 1-3
and 9 in reciting the “inert to light” limitation, except that claims 6-8 and 10-
13 recite a lamp and additional features thereof. Requester contends that
claims 6-8 and 10-13 would have been obvious over Mercer ’89 or Mercer
’95 in view of George. (Req. Resp. Br. 8-9; Comments 8-9, 10-11, 12-13,
14, 15, 16-21.) Mercer ’89 and Mercer ’95 have been discussed supra. We
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

11
further adopt Requester’s findings and conclusions with respect to the
combinations of Mercer ’89 or Mercer ’95 in view of George in the
Comments as our own. (Comments 8-9, 10-11, 12-13, 14, 15, 16-21.) We
provide the following comments for emphasis. George discusses the
dangers associated with steps in a darkened theater, and discloses a light
source used to illuminate theater aisles, the lighting source having the
features recited in claims 6-8 and 10-13. (Col. 1, ll. 19-65; Fig. 1.) We
agree with Requester that it would have been obvious to combine Mercer
’89 or Mercer ’95 with George “in order to make the light reflective strip
visible in a darkened environment where it is desirable to provide only as
much light as necessary for safety without compromising the darkness of the
environment, as taught by George.” (Comments 11, 13.) We observe also
that Patent Owner, in the Appeal Brief, did not argue the limitations
pertaining to the lamp separately, but rather relied on deficiencies previously
argued for Mercer ’89 and Mercer ’95 in view of Connew. (PO App. Br. 21-
22, 24-25.)
Accordingly, we enter new grounds of rejection for claims 6-8 and 10-
13 as obvious over Mercer ’89 or Mercer ’95 in view of George.

DECISION
The Examiner’s decision to reject claims 4 and 5 under 35 U.S.C.
§ 103(a) as obvious over Johnsonite ’96, Johnsonite ’99, Mercer ’95,
Thomas Register, or NFPA Life Safety in view of Connew (as articulated in
Grounds II, VII, IX, XI, and XIII) is affirmed. (Decision 16-18.)
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

12
We enter new grounds of rejection for claims 1-3 and 9 as anticipated
by Mercer ’89 and Mercer ’95. (Grounds XV and XVII.)
We enter new grounds of rejections for claims 6-8 and 10-13 as
obvious over Mercer ’89 or Mercer ’95 in view of George. (Grounds XVI
and XVIII.)
All other grounds of rejection not explicitly affirmed, are reversed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, 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 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.
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

13
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …

Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

14
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).

AFFIRMED-IN-PART
37 C.F.R. § 41.77

Appeal 2011-012102
Reexamination Control 95/000,067
Patent 6,554,446 B1

15
PATENT OWNER:
GORDON E. GRAY, III
4401 N. ATLANTIC AVENUE
SUITE 223
LONG BEACH, CA 90807

THIRD-PARTY REQUESTER:
HOWARD J. KLEIN
KLEIN O’NEILL & SINGH, LLP
18200 VON KARMAN AVENUE, SUITE 725
IRVINE, CA 92612