Ex Parte 7055981 et al

Patent Trial and Appeal Board

Mar 5, 2014

90012209 (P.T.A.B. Mar. 5, 2014)

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.
90/012,209 03/26/2012 7055981 4357.55USREX1 4160
24113 7590 03/05/2014
PATTERSON THUENTE PEDERSEN, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
HEYMAN, JOHN S
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/05/2014 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
____________________

Ex parte WILLIS ELECTRIC1
Appellant, Patent Owner
____________________

Appeal 2013-010733
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Patent No. US 7,055,981 B22
Technology Center 3900
____________________

Before DANIEL S. SONG, RAE LYNN P. GUEST and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Willis Electric is the real party in interest (Appeal Brief (hereinafter "App.
Br.") 1).
2 Issued June 6, 2006 (hereinafter "'981 patent") to Yao.
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Claims 1-7 and 9-18 are pending in the subject reexamination, claim 8
having been previously canceled and claims 9-18 having been added during
the reexamination (Final Office Action, Sept. 25, 2012, pgs. 1-2). The
Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from the Final
Rejection of claims 1-7 and 9-18 (App. Br. 2). We have jurisdiction under
35 U.S.C. §§ 134(b) and 306. The Patent Owner also relies on a Reply Brief
(hereinafter "Reply Br.") in support of its appeal. An Oral Hearing was
conducted at the Patent Trial and Appeal Board on January 29, 2014, the
transcript of which will be entered into the record in due course.
The Examiner rejects claims 1-7 and 9-18 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Weskamp,3 Wilcox4 and Pan.5 We
AFFIRM the rejection and denominate our affirmance as New Grounds of
Rejection under 37 C.F.R. § 41.50(b).
The invention is directed to a light string provided on a tree such as
those used during the Christmas holiday season. Representative independent
claim 1 reads as follows (Claims App'x., bracketed text and underlining
showing amendments removed for clarity):
1. A stretchable and shrinkable light string tree comprising:
a long trunk including many short pipes, each short pipe
having a connecting ring with vanes, each vane comprising a
pair of spaced apart generally vertically oriented sides, each
side defining a hole, the holes being registered with each other;
a base frame with a central axis to support said long trunk
to stand up straight;

3 U.S. Patent No. 4,140,823 issued February 20, 1979.
4 U.S. Patent No. 5,342,661 issued August 30, 1994.
5 U.S. Patent No. 6,752,512 B2 issued June 22, 2004.
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multiple branches, a base part of each branch forming a
round shape and a hole being defined in the round shape, said
round shape of each branch being arranged between the spaced
apart sides of a separate one of said vanes with the hole in the
round shape and the holes in the spaced apart sides of the vane
aligned with each other;
a plurality of pins, each pin extending through the holes
in the spaced apart sides of a separate one of the vanes and the
hole in the round shape of the branch arranged between the
sides to couple the branch to the vane, the pin being fixed and
used as a pivot to make said branch stretchable and shrinkable
freely relative to the trunk;
single or multiple sets of light strings, each light string
composed of many lamp bulbs, lamp holders, electrical
conductors and receptacles, to be fixed on the branches to
establish tree light strings.

Independent claims 6, 9 and 14 are similar to claim 1. Claim 9 further
requires a second portion of the light string that has a length sufficient to
allow arrangement of the branches in extended and folded positions. Claim
14 requires a second portion of the light string with one or more lamp bulbs,
one or more lamp holders, and one or more electrical conductors.

ISSUE
The issue is whether the claims would have been obvious to one of
ordinary skill in the art in view of Weskamp, Wilcox and Pan.

PRINCIPLES OF LAW
As to determining obviousness, the Supreme Court warned against
"[r]igid preventative rules that deny factfinders recourse to common sense,"
and that "[a] person of ordinary skill is also a person of ordinary creativity,
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not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
The Court explained that "when a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result." Id. at 416 (citing United States v. Adams, 383 U.S. 39,
50–51 (1966)). The Court also explained that:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability.
Id. at 417.
In addition, "[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). It is not necessary that the
inventions of the references must be physically combinable, without change,
to render obvious the invention under review. In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983).

ANALYSIS
Claims 1-7
The Examiner rejects all of the claims as obvious, incorporating by
reference portions of the Final Office Action dated September 25, 2012
(hereinafter "Final OA") (Ans. 3). The Examiner concludes that, for
example, with respect to claim 1, "[i]t would have been obvious to apply the
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light strings 2/21 as shown on the branches of the tree in Figs. 1 and 2 of Pan
'512 to the branches of the trees disclosed by the Weskamp '823/Wilcox '661
combination for the reason given in Pan '512, namely, 'to provide a
decorative lamp-tree' (col. 1, line 12)." (Final OA 3).
The Patent Owner argues that combining the folding branch structure
of Weskamp and Wilcox with the light string of Pan would render the
folding branch feature inoperable and unsatisfactory for its intended purpose
because Pan "depicts portions of light strings and wiring tightly wrapped
around portions of the trunk, between branches - with no consideration to
possible pivoting or movement of the branches." (App. Br. 12-13).
According to the Patent Owner, "[i]f a light string were attached to the tree
and branches of Weskamp '823 and/or Wilcox '661 with tight confinement to
the trunk as taught by Pan '512, the resulting lighted tree would not be
capable of pivotal movement of the branches." (App. Br. 14; see also App.
Br. 15).
The Patent Owner also asserts that the Examiner failed to establish a
prima facie case of obviousness and has merely resorted to conjecture (App.
Br. 16-17). According to the Patent Owner, to arrive at the claimed
invention, one must modify Pan to enable folding branches, while
maintaining the functionality of the light strings, and then combine it with
folding branch structures of Weskamp and Wilcox (Reply Br. 5-6).
The Examiner disagrees and sets forth several different explanations
as to why the Patent Owner's arguments are unpersuasive. The Examiner
states, inter alia, that
the combining of prior art elements (Pan's Christmas tree lights
to the Weskamp/Wilcox foldable branch Christmas trees)
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according to known methods with no change in their respective
functions to yield predictable results at the time of the invention
is deemed an obvious expedient by the skilled worker in the art,
and therefore, not patentable.
(Ans. 4).
The Examiner further states that there is no evidence showing that a
person of ordinary skill in the art would tightly wrap the lights without
considering possible pivoting of the branches as asserted (Ans. 4) and that it
is common sense "that the skilled worker in the art of attaching Christmas
tree light strings as taught by Pan to a foldable Christmas tree such as taught
by the Weskamp/Wilcox combination would make allowances for the
foldable nature thereof." (Ans. 5). Moreover, the Examiner further states
that a person of ordinary skill is also a person of ordinary creativity and not
an automaton (Id. (citing KSR, 550 U.S. 398 (2007))). The Examiner
concludes that
making allowances in attaching the light strings to the foldable
branches in such a manner that they would not be damaged
during normal use, i.e. during folding and unfolding of the
branches, would fall under the umbrella of ordinary creativity
of a person having ordinary skill in this art.
(Ans. 6).
We agree with the Examiner's conclusions. Firstly, the Patent
Owner's inoperability/intended purpose arguments are based on an
assumption that "Pan '512 itself - shows a light string tightly attached about
the trunk and trunk-end of the branch such that folding of the branches of the
tree would not be possible." (App. Br. 17). While Figure 2 of Pan shows
conductors extending across the trunk of the artificial tree, it does not
disclose the light string is "tightly" attached about the trunk thereof, which,
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if present, may potentially prevent folding of the branches as asserted. Pan
does teach a light string being "wound on" or "wound around" a branch of
the tree and the use of a connector for "attaching" the light string to the
branch or the tail. (Pan, col. 1, ll. 37-40; col. 2, ll. 1-3). However, such
winding or attaching on any particular branch would not prevent folding of
the branches of Weskamp/Wilcox. Moreover, even if a light string was
tightly attached about the trunk as asserted by the Patent Owner, it is
speculative that such attachment would prevent folding of the branches. It is
just as possible that a slack in the light string would be created between the
trunk and the branches upon upward folding of the branches. Pan's
disclosure simply does not provide sufficient detail to allow determination or
drawing of reasonable inferences to support the Patent Owner's
inoperability/intended purpose arguments.
Secondly, regardless of whether the light string is tightly attached
about the trunk in Pan, we agree with the Examiner that it would have been
obvious to a person of ordinary skill in the art to make adequate allowances
by providing some slack in the secured light string so as to ensure that the
branches (of Weskamp and/or Wilcox) can be folded when securing the light
string of Pan. Whereas the Patent Owner chooses to characterize the
combination of the references in a different manner from that of the
Examiner, it is undisputed that Weskamp and Wilcox both disclose artificial
trees wherein the branches are pivoted to fold. Pan discloses an artificial
tree with a light string secured thereto, albeit without folding branches.
Hence, the prior art discloses the structural components of the claim but does
not explicitly suggest the manner in which the prior art combination should
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be implemented with respect to the light string at the pivotable junction of
the branch and the trunk. We agree with the Examiner's conclusion that it
would be obvious to a person of ordinary skill in the art to implement the
combination with adequate allowances by arranging the light string at the
pivotable junction, such as providing some slack in the secured light string,
so as to ensure that the branches of Weskamp and/or Wilcox fold. We
further agree with the Examiner's conclusion that such implementation is
mere common sense to a person of ordinary skill who possesses ordinary
creativity and is not an automaton. KSR, 550 U.S. at 417, 421.
The Patent Owner essentially requires an explicit teaching in the art
for providing slack in the secured light string at a location where the branch
is attached to the trunk, thereby treating a person of ordinary skill as an
automaton with no skill or creativity. Id.; see also Keller, 642 F.2d at 425;
Sneed, 710 F.2d at 1550.
Therefore, in view of the above, we find no error in the Examiner's
conclusion of obviousness as to claims 1-7.

Claims 9-13
Independent claim 9 recites "a second portion of the light string
located on a trunk-side of the clip is free of the support strand, a length of
the second portion being sufficient such that the branches may be arranged
in the extended position or the folded position without constraint or
interference from the light string." Correspondingly, claim 9 explicitly
requires adequate allowances or slack in the secured light string discussed
supra with respect to claims 1-7.
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The Examiner rejects these claims concluding, inter alia, that these
claims would have been obvious to one of ordinary skill in the art, that "this
is nothing more than the application of routine skill of the worker in the art
to ensure a workable structure," and that it would be common sense to
provide allowances in the light string to allow folding of the branches when
combining the teachings of Weskamp, Wilcox and Pan (Final OA, 10; Ans.
8).
The Patent Owner relies on the arguments set forth with respect to
claim 1 (App. Br. 19) which we find unpersuasive for the reasons discussed
supra. The Patent Owner also asserts that Pan "does not have the required
second portion free of the branch support strand" and the references "fail[s]
to teach or suggest such a feature." (App. Br. 19-20; see also Reply Br. 7).
In this regard, the Patent Owner asserts that there is no prima facie case of
obviousness established because "[t]he Examiner must show that the prior
art discloses all limitations of the claim, including the subject limitation, or
the rejection fails." (App. Br. 22-24; see also Reply Br. 6-8).
However, as noted above, the prior art is not missing any structural
components or devices recited in the claim and clearly discloses light strings
and clips for retaining the same (see Pan, col. 1, ll. 34-40; col. 2, ll. 1-4;
Figs. 2-4). The Patent Owner draws an imaginary line across a portion of
the conductor to define the first portion and the second portion (App. Br. 20,
annotated Figure 5). Hence, the recited "second portion" is not a separate
structural component or device but, instead, is a segment of the same
continuous light string that is defined by the manner in which the light string
is secured to the artificial tree. As discussed supra, provision of such a
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segment, that is, slack or accommodation in the light string, would have
been obvious to one of ordinary skill in the art for ensuring that the branches
of Weskamp and/or Wilcox fold. The Patent Owner's argument is again
requiring an explicit teaching in the art for providing slack in the secured
light string at a location where the branch is attached to the trunk, thereby
treating a person of ordinary skill as an automaton with no skill or creativity.
KSR, 550 U.S. at 417, 421; see also Keller, 642 F.2d at 425; Sneed, 710 F.2d
at 1550.
Therefore, in view of the above, we find no error in the Examiner's
conclusion of obviousness as to claims 9-13.

Claims 14-18
Independent claim 14 recites "the second portion extending along the
first branch from the branch-tip end of the first branch toward a trunk end of
the first branch and including one or more lamp bulbs, one or more lamp
holders, and one or more electrical conductors." Hence, in these claims, the
recited "second portion" differs from that of claim 9 and refers to a portion
of the light string which returns to the trunk from the tip end of the branch
(App. Br. 25, annotated Figure 1). Moreover, these claims require the
second portion to include, in essence, one or more lights.
The Examiner concludes that these claims are obvious based on the
finding that:
Fig. 1 of Pan is simply a symbolic representation of the
electrical circuit of Pan's light string that operates between an
operating voltage and ground. . . . [A]ll the light strings of Pan
are deemed typical of the prior art, and from all appearances,
the same as disclosed in the base patent.
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(Final OA 13; see also Ans. 10).
The Patent Owner relies on the arguments set forth with respect to
claim 1 (App. Br. 24) which we find unpersuasive for the reasons discussed
supra. The Patent Owner also argues that there is no basis to the Examiner's
finding that Pan's disclosure of the light string is "symbolic" and asserts that
the disclosed second portion of Pan merely includes electrical conductors
but lacks lamp bulbs or lamp holders (App. Br. 25-28). The Patent Owner
further argues according to Pan, it is the structure and layout of the special
light bulb string depicted in Figure 1, which results in the uniform
distribution depicted in Figure 2 "to show every bulb in a well distributed
manner." (App. Br. 28-29 (quoting Pan, col. 1, ll. 41-45); see also Reply Br.
9). According to the Patent Owner, modifying Pan to add the second portion
with lights would result in non-uniform distribution of the lights on the
branches and destroy its purpose of improving the distribution of bulbs on
the tree (App. Br. 29; Reply Br. 9). Hence, the Patent Owner's argument is
based on the fact that Pan discloses a special light string that differs from
conventional light strings, Pan's special light string not having lights along
the "second portion" which is said to correspond to a portion of the light
string returning to the trunk from the tip end of the branch.
Notwithstanding the Patent Owner's arguments, we note that there is
no dispute that conventional light strings that do not have the special
configuration of lights of Pan are known in the art. In this regard, the
specifications of the '981 patent as well as Pan acknowledge such
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conventional light strings (see Spec. col. 1, ll. 10-19; Pan, col. 1, ll. 5-10).6
Correspondingly, we conclude that when providing lights to an artificial tree
of Weskamp/Wilcox in view of Pan, it would have been further obvious to a
person of ordinary skill in the art to utilize a conventional light string instead
of the special light string specifically disclosed in Pan. Such implementation

6 Moreover, the Patent Owner's representative, in response to questioning
during the Oral Hearing, also conceded that conventional light strings were
known in the art:
JUDGE GUEST: So it looks like Pan has some kind of a special -- I
mean, if we look at that Figure 1, it looks like they have some kind of a
special light string --
MR. THORSON: Right.
JUDGE GUEST: -- that's different than maybe like a conventional
Christmas tree light string.
MR. THORSON: Right.
JUDGE GUEST: But if we were using a conventional light string to
do the same sort of wrapping as described in Pan, why wouldn't that meet
the claim?
MR. THORSON: Well, our point is that that's not what Pan is. …
…
JUDGE SONG: … So [Pan] talks about the disadvantages of winding,
but it also acknowledges that conventional light strings are known. So I
think going back to what Judge Guest was getting at is well, conventional
light strings are known, and so the distinction that you were making that Pan
has evenly distributed light bulbs, wouldn't that be taken care of by
implementing a conventional light string in combination with Wes[]kamp
and Wilcox? …
…
MR. THORSON: Yeah. You know, we're not disputing that there are
conventional light strings. Certainly there have been conventional light
strings around for a long time. The issue that we're getting at here is what
the Examiner has done with Pan in order to make this rejection.

(Hearing Transcript, pg. 7).
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merely substitutes a known light string of Pan with another conventional
light string (which is said to be known in the art by Pan and admitted as
being known by the Patent Owner), to thereby yield a predictable result
which is merely a predictable variation. KSR, 550 U.S. at 416, 417. Such
implementation using conventional components rather than specialized
components disclosed in Pan can also minimize complexity and cost. See,
e.g., Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006) (an implicit motivation to combine has
been found to exist when the improvement is technology-independent and
the combination of references results in a product that is cheaper).
While we acknowledge that such further modification may diminish
the uniform distribution of lights that is suggested in Pan, "case law does not
require that a particular combination must be the preferred, or the most
desirable, combination described in the prior art in order to provide the
motivation for the current invention." In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004); see also 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.").
Thus, in view of the above, we find no error in the Examiner's
conclusion of obviousness as to claims 14-18.

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CONCLUSIONS
The Examiner did not err in concluding the claims would have been
obvious to one of ordinary skill in the art in view of Weskamp, Wilcox and
Pan and, thus, AFFIRM the rejection of claims 1-7 and 9-18. However, we
recognize that our analyses and rationales set forth above, and the facts
relied upon, may slightly differ from those of the Examiner.
Correspondingly, we denominate the rejection of these claims as New
Grounds of Rejection under 37 C.F.R. § 41.50(b).

AFFIRMED; 37 C.F.R. § 41.50(b)

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS 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. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner….
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record….
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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

peb

For PATENT OWNER:

PATTERSON THUENTE PEDERSEN, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS MN 55402-2100