Ex Parte Henri et al

Board of Patent Appeals and Interferences

Jun 15, 2012

11406179 (B.P.A.I. Jun. 15, 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.
11/406,179 04/17/2006 Marc Henri 2405-3A 5691
7590 06/18/2012
Eric Fincham
316 Knowlton Road
Lac Brome, QC J0E 1V0
CANADA
EXAMINER
SWARTHOUT, BRENT
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
06/18/2012 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
____________

Ex parte MARC HENRI and GILLES ROY
____________

Appeal 2010-004390
Application 11/406,179
Technology Center 2600
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 11/406,179

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STATEMENT OF THE CASE
Appellants’ invention concerns a warning light system for a tower. A
light assembly, comprising a light emitting device and at least one capacitor
for supplying electrical power to the light emitting device, is mounted on the
tower. A control system is mounted proximate to the bottom of the tower,
comprising a switching power supply and a control circuit. (Spec. 2-3).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. In a tower having a warning system thereon, the
improvement comprising:

a first station located on said tower, said first station
having a flash head and at least one capacitor mounted therein;
and

a second station mounted proximate a base of said tower,
said second station including a switching power supply and a
controller assembly.

REFERENCES
Edgerton US 2,478,908 Aug. 16, 1949
Bonazoli US 3,771,120 Nov. 6, 1973
Kearsley US 3,973,168 Aug 3, 1976
Bosnak US 4,321,507 Mar. 23, 1982
Chesney US 6,900,742 B2 May 31, 2005

REJECTIONS
The Examiner rejected claims 1, 2, 6, 7, and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Kearsley in view of Bonazoli and
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Edgerton.
The Examiner rejected claims 3-5 and 8 under 35 U.S.C. § 103(a) as
being unpatentable over Kearsley in view of Bonazoli, Edgerton, and
Bosnak.
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Kearsley in view of Bonazoli, Edgerton, and Chesney.

ISSUE
Appellants argue that none of the references attempts to solve the
same problem Appellants solve (App. Br. 9); that Kearsley would not be
functional on today’s taller towers (App. Br. 10); that none of the references
teaches a first station on the tower containing only the flash head and
capacitor components (App. Br. 11); and that the references do not contain
any suggestion that they could be combined in the manner proposed (App.
Br. 12).
Appellants’ arguments present us with the following issue:
Would it have been obvious to combine Kearsley with Bonazoli and
Edgerton to achieve the instant invention?

PRINCIPLES OF LAW
“[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, 401 (2007) (citing U.S. v.
Adams, 383 U.S. 39, 50-52 (1966)).
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The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citation omitted).
“[O]ne cannot show nonobviousness by attacking references
individually, where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citation
omitted). “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference, nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id. at 425 (citations omitted).

ANALYSIS
CLAIMS 1, 2, 6, 7, AND 10
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by Appellants’ arguments that the Examiner
erred. We agree with the Examiner’s finding that Kearsley teaches the
limitations of claim 1, except for one or more capacitors mounted at the
flash head (Ans. 3). We agree that Bonazoli and Edgerton each teaches
placing capacitors adjacent to flash lamps (Ans. 3-4). We agree with the
Examiner that the references need not place “only” a flash head and
capacitor together, as the word “only” does not appear in the claim (Ans. 6).
Last, we agree with the Examiner’s conclusion that such placement would
have been obvious in order to protect circuits from environmental elements,
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allow for ease of installation, and ensure proper synchronization (Ans. 4).
We find that the Examiner has articulated reasoning having a rational
underpinning for combining Kearsley, Bonazoli, and Edgerton. See Kahn,
441 F.3d at 988.
Appellants’ argument that none of the references explicitly suggests
combination in the manner advanced by the Examiner (App. Br. 12) is not
sufficient to show that the Examiner erred. We find that the Examiner has
suggested a combination of familiar elements (e.g., the co-location of flash
head and capacitors), according to known methods, which yields predictable
results. Accordingly, we agree with the Examiner’s conclusion of
obviousness. See KSR, 550 U.S. at 401.
Appellants’ assertion that Kearsley would not be functional with
today’s taller towers (App. Br. 10-11) is not germane to the claimed
invention, which does not recite any limitation specifying the height at
which lights are to be mounted.
Appellants’ argument that the references are directed to solving
completely different problems than Appellants’ invention is not accurate.
The cited references are all directed to providing reliable high-intensity
lighting.
We conclude that the Examiner did not err in rejecting claims 1, 2, 6,
7, and 10 under § 103 as being unpatentable over Kearsley in view of
Bonazoli and Edgerton. We will sustain the Examiner’s rejection of claims
1, 2, 6, 7, and 10.
CLAIMS 3-5 AND 8
Appellants’ only argument concerning these claims is that the further
reference to Bosnak does not remedy the alleged deficiencies of the
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combination of Kearsley in view of Bonazoli and Edgerton (App. Br. 14).
As noted supra, we are not persuaded that such deficiencies exist.
Therefore, we will sustain the Examiner’s § 103 rejection of claims 3-5 and
8, for the reasons given with respect to the § 103 rejection of claim 1, supra.
CLAIM 9
Appellants’ only argument concerning this claim is that the further
reference to Chesney does not remedy the alleged deficiencies of the
combination of Kearsley in view of Bonazoli and Edgerton (App. Br. 14).
As noted supra, we are not persuaded that such deficiencies exist.
Therefore, we will sustain the Examiner’s § 103 rejection of claim 9, for the
reasons given with respect to the § 103 rejection of claim 1, supra.

CONCLUSION
It would have been obvious to combine Kearsley with Bonazoli and
Edgerton to achieve the instant invention.

DECISION
The Examiner’s decision rejecting claims 1-10 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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