Ex Parte Baraldi et al

Patent Trial and Appeal Board

Feb 8, 2018

14548515 (P.T.A.B. Feb. 8, 2018)

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.
14/548,515 11/20/2014 Massimo BARALDI 4222-40028 4650
25570 7590 02/12/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
BUKOWSKI, KENNETH
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
02/12/2018 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
secretaries @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASSIMO BARALDI, GIAN LUCA FERRARI,
IVANO NOFERINI, VITTORIO SCAGLIARINI, and ROBERTO VAIOLI
Appeal 2017-007379
Application ld/548,5151
Technology Center 2600
Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
MICHAEL M. BARRY, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—11. We have jurisdiction over the pending claims under 35 U.S.C.
§6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellants identify QUBICA Europe S.P.A. as the real party in interest.
App. Br. 2.
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Application 14/548,515
STATEMENT OF THE CASE
Introduction
In their Specification, Appellants describe a backlit keyboard for
entering data in an electronic system. Spec. Tflf 2, 4, and 7. In a preferred
embodiment, the electronic system is part of an entertainment apparatus
located in a bowling center, such as the console where players may enter the
names of participants in a bowling game for score keeping purposes.
Spec. 18, 20. Additionally, in a disclosed embodiment, an ambient
lighting mechanism may be mounted on a stand on which the backlit
keyboard is also mounted. Spec. 199. According to the Specification, such
ambient lighting is “for illuminating the area around the device or player
point.” Spec. 199.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below:
1. An entertainment unit comprising a backlighting system
facing a flooring system and controlled by an entertainment
system, the backlighting system comprises LED lights to light
the flooring behind a pedestal in a bowling centre.
The Examiner’s Rejections
1. Claims 1, 3, 4, and 6—8 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Tsujita (US 6,270,421 Bl; Aug. 7, 2001).
Final Act. 3.
2. Claims 2 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsujita and Negley (US 2007/0019129 Al; Jan. 25, 2007).
Final Act. 4—5.2
2 In the body of the rejection, claim 5 is mistakenly identified as claim 2;
nevertheless, each of the recited limitations of claim 5 is addressed.
Final Act. 5. We find the Examiner’s typographical error to be harmless.
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3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsujita and Moody et al. (US 5,842,929; Dec. 1, 1998)
(“Moody”). Final Act. 5.
4. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tsujita and Gauselmann (US 2006/0063591 Al;
Mar. 23, 2006). Final Act. 5—6.
Issue on Appeal3
Did the Examiner err in finding Tsujita discloses “the backlighting
system comprises LED lights to light the flooring behind a pedestal,” as
recited in claim 1?
ANALYSIS4
The Examiner finds Tsujita anticipates claim 1. Final Act. 3. We
begin our analysis with a brief review of Tsujita.
Tsujita is generally directed to “a display unit for bowling alleys for
presenting displays to bowlers and spectators in a bowling alley.” Tsujita,
col. 1:5—7. Figure 2 of Tsujita, as relied on by the Examiner, is illustrative
and is reproduced below:
3 We only address this issue, which is dispositive. We do not address
additional issues raised by Appellants’ arguments.
4 Throughout this Decision, we have considered the Appeal Brief, filed
September 19, 2016 (“App. Br.”); the Reply Brief, filed April 10, 2017
(“Reply Br.”); the Examiner’s Answer, mailed February 9, 2017 (“Ans.”);
and the Final Office Action, mailed February 25, 2016 (“Final Act.”), from
which this Appeal is taken.
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FiG.2
Figure 2 of Tsujita shows a side view of a lane in a bowling alley equipped
with Tsujita’s claimed invention. Tsujita, col 3,11. 42^43. As shown in
Figure 2, Tsujita discloses a display system viewable by a bowler
comprising, inter alia, a masking display (1), masking display screen (la), a
projector (lb), and a ceiling display (2). Tsujita, col. 4,11. 31—59. Tsujita
describes the masking display screen (la) and projector (lb) constitute the
masking display (1) but in embodiments using a panel display (e.g., Plasma
Display Panel or LED panel), the need for projector (lb) is eliminated.
Tsujita, col. 4,11. 50-56. Additionally, Tsujita discloses from above the
masking display (1) to the ceiling, ceiling display (2) is “implemented by an
LED or lamp is arrayed in a continuous manner.” Tsujita, col. 4,11. 56—58.
Appellants argue Tsujita does not disclose a backlighting system
facing a flooring system, as recited in claim 1. App. Br. 3. In particular,
Appellants assert the masking display screen (la), even if configured as a
display panel comprising a back light of an LED display, is not facing the
flooring system. App. Br. 4—5. Additionally, Appellants assert the ceiling
display is described as an “LED or lamp” array for lighting the ceiling rather
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than lighting the flooring system. App. Br. 4—6 (citing Tsujita, col. 4,11. 42—
64, col. 10,11. 33-57).
Although we agree with the Examiner that “the display 2 in the ceiling
provides lighting from the ceiling, one of ordinary skill in the art would
readily recognize that the light from the ceiling display 2 would reach the
floor below,” the Examiner has not shown the ceiling display is a
backlighting system, as recited in claim 1. Rather, Tsujita’s disclosure of a
backlighting system was in relation to masking display (1), which is not
“facing a flooring system.”
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Additionally, to anticipate, a prior art reference must
disclose more than “multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also In reArkley,
455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must clearly
and unequivocally disclose the claimed [invention] or direct those skilled in
the art to the [invention] without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.”).
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner’s rejection of independent claim 1. For
similar reasons, we do not sustain the Examiner’s rejection of claims 2—11,
which depend therefrom.
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NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b). We reject independent claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over Gauselmann.
Gauselmann is generally directed to an illumination technique for slot
machines. Gauselmann 11. In particular, “[a] slant top slot machine is
described where a raised translucent or transparent housing for light emitting
diodes (LEDs) surrounds the main display area of the machine.”
Gauselmann 14. Additionally, Gauselmann discloses “[t]he illumination
also illuminates the area surrounding the machine such as the seat and
floor.” Gauselmann | 6.
In a disclosed embodiment, Gauselmann’s slant top slot machine has
two displays, each of which is surrounded by a raised housing for LEDs.
Gauselmann 122, Fig. 2 (items 12, 14, 40, and 41). Figure 3 of Gauselmann
is illustrative of a raised housing and is reproduced below:
Fig. 3
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Figure 3 is a cutaway view of one of the raised housings showing a
downward emitting LED array. Gauselmann || 12, 23. As illustrated,
Figure 3 shows an array of LEDs (46) mounted on a circuit board (48),
which is mounted behind a translucent plastic edge (42) of raised housing
(40). Gauselmann || 23, 24. In addition, Figure 3 shows a plurality of
arrows directed away from the LED array (46) depicting the downward
emission of light. See Gauselmann 126. Gauselmann additionally teaches
the downward light from the LED array (46) illuminates not only the front
surface of the slot machine 10, but also the area surrounding the machine,
including the seat and the floor. Gauselmann || 6, 26. Gauselmann further
teaches that the LEDs are controlled by a game controller board in the
slanted top slot machine. Gauselmann || 33, 36, Fig. 5, item 64.
Accordingly, we find Gauselmann discloses an entertainment unit (a
slot machine) comprising a backlighting system (LED array (46) mounted
within raised housing (40)) facing a flooring system (Gauselmann || 6, 26),
and controlled by an entertainment system (game controller board (64)), as
recited in independent claim 1. As described in Gauselmann, the
backlighting system (i.e., LED array) comprises LED lights to illuminate
“the area surrounding the machine such as the seat and floor.”
Gauselmann | 6.
We conclude the claim element “to light the flooring behind a
pedestal in a bowling centre” recites an intended use of the backlighting
system that does not further limit the structure of the claimed apparatus.
Our reviewing court guides that the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Mktg. Inti Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
809 (Fed. Cir. 2002). “An intended use or purpose usually will not limit the
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scope of the claim because such statements usually do no more than define a
context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); see
also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990) (finding “apparatus claims cover what a device is, not what
a device does.”). Accordingly, the intended use of “lighting] the flooring
behind a pedestal in a bowling centre” is not entitled to patentable weight.
See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (explaining that
an intended use of a structure does not have patentable weight if the
structure is already known). Additionally, we note there is no structural
relationship between the recited “pedestal” and any other element recited in
the claim. Thus, the “pedestal” is also non-limiting.
Further, to the extent Appellants contend the claimed entertainment
unit further comprises a pedestal5 and that the claim element “to light the
flooring behind a pedestal” imparts some structure on the backlighting
system, we find it would be within the ken of an ordinarily skilled artisan to
orient (or add) the LED arrays of Gauselmann to illuminate the desired areas
around the entertainment unit. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 417.
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made a new rejection regarding
5 We note that, in the Specification, Appellants’ do not describe an
entertainment unit as comprising a pedestal. The word “pedestal” does not
appear in the Specification.
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independent claim 1 under 35 U.S.C. § 103(a), pursuant to 37 C.F.R.
§ 41.50(b). However, we have not reviewed the remaining claims to the
extent necessary to determine whether these claims are unpatentable over
Gauselmann or other prior art, either alone or in combination. We leave it to
the Examiner to ascertain the appropriateness of any further rejections based
on these or other references. Our decision not to enter a new ground of
rejection for all claims should not be considered as an indication regarding
the appropriateness of further rejection or allowance of the non-rejected
claims. See MPEP § 1213.02 (9th ed. Rev. 08.2017, Jan. 2018).
DECISION
We reverse the Examiner’s decision rejecting claims 1—11.
We newly reject claim 1 under 35 U.S.C. § 103 as unpatentable over
Gauselmann.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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claims, Appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board 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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED;
37 C.F.R, $ 41.50(b)
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