Ex Parte Jacobs

Patent Trials and Appeals Board

Mar 24, 2016

12599341 - (D) (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/599,341 10/20/2010 Joseph Hendrik Anna Maria Jacobs
138325 7590 03/28/2016
PHILIPS LIGHTING BY
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2007P00797WOUS 8876
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
kim.larocca@philips.com
jo.cangelosi@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH HENDRIK and ANNA MARIA JACOBS
Appeal2014-001333
Application 12/599,341
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-3, 5, 6, 8-10, and 12-18.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The real party in interest is listed as "Koninklijke Philips Electronics NV."
(Appeal Br. 1.)
2 Claims 4, 7, and 11 have been cancelled. (Appeal Br. 2.)
Appeal2014-001333
Application 12/599,341
STATEMENT OF THE CASE
The Appellants' invention "relates to a shading device for a
greenhouse." (Spec. 1, line 7.)
Illustrative Claim3
1. A shading device for a greenhouse, comprising:
a shading element having an outer side and an inner side,
the shading element comprising interwoven electrically
conductive first thread elements and electrically insulating
second thread elements, wherein the electrically conductive first
thread elements include a reflective layer for reflecting an
ambient light, and wherein the electrically insulating second
thread elements also include a reflective layer for reflecting an
ambient light; and
at least one lighting element, each said lighting element
being disposed at the inner side of the shading element and
being connected with at least two of the first thread elements,
wherein each lighting element is driven by an electrical
current, conducted by the first thread elements, resulting in the
emission of an artificial light, illuminating a plant growing in
the greenhouse.
Ueno
Hill
Albright
References
us 5,321,907
US 7, 144,830 B2
US 7, 184,846 B2
Rejections
June 21, 1994
Dec. 5, 2006
Feb.27,2007
I. The Examiner rejects claims 1-3, 5, 6, 8-10, 12-14, and 18
under 35 U.S.C. § 103(a) as unpatentable over Albright and Hill. (Final
Action 3.)
3 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") contained on pages 12-14 of the Appeal Brief.
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Application 12/599,341
IL The Examiner rejects claims 15-17 under 35 U.S.C. § 103(a) as
unpatentable over Albright, Hill, and Ueno. (Id. at 8.)
III. The Examiner rejects claim 17 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Id. at 2.)
ANALYSIS
Claim 1
Independent claim 1 is directed to a "shading device for a
greenhouse" wherein "at least one lighting element" is "disposed at the inner
side of [a] shading element." (Claims App.) The Examiner finds that
Albright shows, in Figure 10, a lighting element disposed on the inner side
of the top of a greenhouse structure. (See Final Action 3.) The Examiner
also finds that Hill discloses a shading element (i.e., a woven article) that
can be electrically connected to a lighting element. (Id. at 3--4.) The
Examiner determines that it would have been obvious to provide Albright's
greenhouse structure with Hill's shading element to power the lighting
element. (See id. at 4.)
The Appellants argue that Albright's Figure 10 does not show any
actual structure at all, as this drawing is "an illustration of the elements of a
greenhouse thermal model." (Appeal Br. 7, emphasis omitted.) We are not
persuaded by this argument because Albright's Figure 10 is a sketch
showing a house-shaped structure having a top which receives solar
radiation. (See Albright Fig. 10, see also id. at col. 22, lines 18-20.)
Albright's Figure 10 also schematically shows that lights are mounted inside
the structure near its solar-radiation-receiving top. (Id.) The fact that
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Application 12/599,341
Albright' s Figure 10 may be described as a thermal model, this does not
oblige us to disregard the greenhouse structure (with an ambient-light
receiving top and lights disposed near the inner side of this top) clearly
shown in this drawing. 4
The Appellants also argue that nothing in Albright's Figure 10
"discloses or even suggests that the 'top' is a shading element (as opposed,
for example, to a glass roof of a greenhouse)." (Appeal Br. 7; see also
Reply Br. 1--4.) Along this same line, the Appellants argue that the
Examiner must, and does not, show that Albright teaches lighting elements
on the inner side of the shading device. (See Reply Br. 3.) According to the
Appellants, the Examiner can only rely upon the statement in Albright that
"shading control may be required to prevent oversaturation." (Id., emphasis
omitted.)
We are not persuaded by these arguments because they focus on
Albright's individual teachings, rather than on the combined teachings of
Albright and Hill. 5 The Examiner's rejection involves providing the top of
Albright' s greenhouse with Hill's woven article "to allow for the
combination of [a] shading device with electrical components of the lighting
system." (Final Action 4.) The Appellants do not dispute that this
modification would have been obvious; and the Appellants do not contend
4 In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (Although patent drawings
may not be working drawings, this "d[ oes] not mean that things patent
drawings show clearly are to be disregarded").
5 See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based on the teachings of a combination of
references").
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Application 12/599,341
that, in the modified version of Albright' s greenhouse Hill's woven article
would not constitute a shading element. Even if Albright does not designate
or describe the top of its greenhouse structure as a "shading element" (see
Appeal Br. 6-7, Reply Br. 1-3), the Examiner's rejection involves replacing
this top (be it a glass roof or something else), with Hill's woven article. And
with such a replacement, the artificial-light-emitting elements would be on
the inner side of this woven element so as to illuminate the plants inside
Albright's greenhouse structure.
Independent claim 1 also requires the shading element to comprise
insulating "thread elements" that "include a reflective layer for reflecting an
ambient light." (Claims App.) The Examiner finds that Hill's insulating
thread elements 110 include such a reflective layer. (See Final Action 4.)
The Examiner explains that, in Hill's woven article, metal components 154,
155, 156, and/or 160 are directly connected to and/or disposed directly to
thread elements 110. (See Answer 2.) The Examiner also points out that the
Appellants' Specification describes metal as a reflective material. (See id.
at 2; see also Spec. 11, lines 15-20.)
The Appellants argue that independent claim 1 clearly states that the
insulating thread elements "include a reflective layer for reflecting an
ambient light." (Appeal Br. 5.) According to the Appellants, "the plain
meaning of 'include' is not 'disposed upon"' and it is unreasonable to say
that Hill's thread elements 110 "include any of the elements 154, 156 or 158
simply because [they] contact, reside upon or touch thread elements 110."
(Reply Br. 4, emphasis omitted.) The Appellants also contend that "the
plain meaning of the claim term 'include' is not 'directly connected to' or
'disposed directly to."' (Appeal Br. 6, emphasis omitted.)
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Application 12/599,341
We are not persuaded by these arguments. Although we review claim
construction issues de novo, 6 we note that the Appellants do not propose,
with particularity, an appropriate "plain meaning" for the claim term
"include," for comparison to the prior art thread elements. When we look to
a dictionary for the plain and ordinary meaning7 of the word "include," it is
defined as "to contain, as a whole does parts or any part or element."8 This
plain and ordinary meaning of the word "include" does not prohibit the
"whole" from containing, for example, a part residing on another part. And
this plain and ordinary meaning is consistent with the Specification in that
the Appellants' disclosed reflective layer, a coating, would reside upon,
would be directly connected to, and/or would be disposed directly to, a
thread element. (See Spec. 3, lines 1-5.)9
The Appellants also argue that Hill expressly states that yam 150
"includes" the metal components 154, 155, 156, and 160. (See Appeal Br. 6;
see also Hill, col. 5, lines 40-41.) We are not persuaded by this argument
because the Appellants do not adequately address why Hill's thread
6 See In re Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994) ("[C]laim
construction" is reviewed "de novo").
7 See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en bane)
(Words in a claim "are generally given their ordinary and customary
meaning"; that is, "the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention"). Although
this presumption may be overcome by the Specification providing a special
meaning for a claim term, here the Specification does not do so.
8 http://www.dictionary.com/browse/include (last visited March 15, 2016).
9 See In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010),
("[T]he PTO must give claims their broadest reasonable construction
consistent with the specification").
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Application 12/599,341
elements 110 cannot also include components 154, 155, 156, and 160 it~ for
example, they reside thereupon. (See Hill Fig. IA.)
The Appellants also argue that Hill does not "mention" the reflection
of ambient light or anything that requires its metal components to reflect
ambient light. (See Appeal Br. 6.) We are not persuaded by this argument
because it is not aligned with the Examiner's combination of the prior art.
Again, in the Examiner's rejection, Hill's woven article is provided on the
top of Albright's greenhouse "to allow for the combination of [a] shading
device with electrical components of the lighting system." (Final Action 4.)
The Appellants do not dispute that Hill's components 154, 156, 158 or 160
can be made of metal; the Appellants do not dispute that metal is a reflective
material; and the Appellants do not persuasively explain why, when Hill's
woven article is installed as a shading element on top of a greenhouse
structure, these metal components would not reflect ambient light (i.e., the
solar radiation depicted in Albright's Figure 10).
In view of the foregoing, we are not persuaded that the Examiner errs
in determining that the shading device recited in independent claim 1 would
have been obvious over the applied prior art references. Thus, we sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Albright and Hill (Rejection I).
Claims 2, 3, 5, 6, 8-10, 14, and 18
These claims depend directly or indirectly from independent claim 1
(see Claims App.) and are argued only by virtue of this dependency (see
Appeal Br. 7). Thus, they fall with independent claim 1 and we sustain the
Examiner's rejection of claims 2, 3, 5, 6, 8-10, 14, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Albright and Hill (Rejection I).
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Application 12/599,341
Claim 12
Claim 12 is directed to a "method of operating a shading device
according to claim 1," and comprises the step of "adjusting an amount of an
artificial light emitted by the at least one lighting element in response to an
amount of an ambient light in order to achieve a constant illumination of
plants during day time." (Claims App.) The Examiner finds that Albright
teaches adjusting the emission of artificial light in this manner. (See Final
Action 7.)
The Appellants argue that "[t]he Examiner has failed to cite anything
in Albright" that teaches adjusting artificial light "to achieve a constant
illumination of the plants during day time." (Appeal Br. 9-10 (emphasis
omitted); see also Reply Br. 4--5.) According to the Appellants, the text in
Albright cited by the Examiner "teaches against constant illumination,
noting that the electricity cost of providing supplemental light varies
depending on the particular time period, and that the electricity cost should
be traded off with other costs to improve the operational cost efficiency of
the system." (Reply Br. 5.)
We are not persuaded by this argument because the cited text in
Albright teaches that "it may be necessary to provide supplemental lighting
during daylight hours if the day is comparatively dark, which may occur for
example on days during the winter." (Albright, col. 8, lines 27-29.) The
cited text also teaches that "if the cost of applying C02 is more expensive,
the system will favor using supplemental lighting instead of supplemental
C02" and that "if the amount of C02 naturally occurring in the environment
is sufficiently high, it may not be cost-effective to introduce more C02."
(Id. at col. 8, lines 9-11, 21-23.) In other words, Albright teaches that on a
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winter day, when C02 is expensive and/or when C02 is naturally sufficiently
high, artificial light is adjusted, in response to the darkness of the winter day,
to achieve constant illumination of the plants during daylight hours.
In view of the foregoing, we are not persuaded that the Examiner errs
in determining that the method recited in claim 12 would have been obvious
over the applied prior art references. Thus, we sustain the Examiner's
rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Albright
and Hill (Rejection I).
Claim 13
Claim 13 depends from claim 12 and further recites the step of
"adjusting the amount of artificial light at night to equal the total amount of
ambient light and artificial light during day time." (Claims App.) The
Examiner finds that Albright discloses adjusting artificial light at night in
this manner. (See Final Action 7.)
The Appellants argue that "the Examiner has cited nothing in the
teachings of Albright" that would have made it obvious to adjust the amount
of artificial light at night to equal the total amount of ambient light and
artificial light during day time. (Reply Br. 5.)
We are persuaded by this argument because Albright teaches, in the
text cited by the Examiner, providing artificial light at night based upon
whether supplemental lighting is needed on a particular day to reach a target
PAR (photosynthetic active radiation). (See Albright, col. 9, lines 16-22.)
In other words, Albright may teach adjusting the amount of artificial light at
night based upon the total amount of ambient light and artificial light during
day time. However, Albright does not show or suggest adjusting the amount
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of artificial light at night to equal the total amount of ambient light and
artificial light during day time.
Thus, we do not sustain the Examiner's rejection of claim 13 under
35 U.S.C. § 103(a) as unpatentable over Albright and Hill (Rejection I).
Claims 15 and 16
Claims 15 and 16 depend from independent claim 1. (See Claims
App.) The Appellants argue only that "Ueno does not remedy the
deficiencies of Albright and Hill with respect to claim 1." (Appeal Br. 10-11,
emphasis omitted.) As discussed above, we do not consider Albright and Hill
deficient in this regard, and so we are not persuaded by this argument. Thus,
we sustain the Examiner's rejection of claims 15 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Albright, Hill, and Ueno (Rejection II).
Claim 17
Claim 17 depends from independent claim 1 (see Claims App.) and is
argued in the same manner as claims 15 and 16. Thus, we sustain the
Examiner's rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Albright, Hill, and Ueno (Rejection II).
The Appellants do not argue the Examiner's rejection of claim 17
under 35 U.S.C. § 112, first paragraph (see Appeal Br. 3), and the Examiner
does not withdraw this rejection in the Answer (see Answer 2). Thus, we
summarily sustain the Examiner's rejection of claim 17 under 35 U.S.C.
§ 112, first paragraph (Rejection III).
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DECISION
We REVERSE the Examiner's rejection of claim 13.
We AFFIRM the Examiner's rejections of claims 1-3, 5, 6, 8-10, 12,
and 14--18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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