Ex Parte Kittelmann et al

Patent Trial and Appeal Board

Mar 29, 2013

10915785 (P.T.A.B. Mar. 29, 2013)

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.
10/915,785 08/11/2004 Rudiger Kittelmann 2133.042USU 8098
7590 03/29/2013
Charles N.J. Ruggiero, Esq.
Ohlandt, Greeley, Ruggiero & Perle, L.L.P.
10th Floor
One Landmark Square
Stamford, CT 06901-2682
EXAMINER
CARTER, WILLIAM JOSEPH
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
03/29/2013 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 RUDIGER KITTELMANN AND HARRY WAGENER
____________

Appeal 2010-008609
Application 10/915,7851
Technology Center 2800
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1- 22, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Application filed on Aug. 11, 2004 claiming benefit of German Patent
Application No. DE 103 61 116.9-54 filed December 22, 2003. The Real
Party in Interest is Auer Lighting GmgH. (Br. 1.)
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Invention
Appellants’ “invention relates to a Fresnel spotlight with an adjustable
aperture angle of the emerging light beam, having a preferably ellipsoid
reflector, a lamp and at least one Fresnel lens.” (Spec. 1, ll. 4-7.)2
Representative Claim
Independent claim 1, reproduced below further illustrates the
invention with the limitation at issue emphasized:
1. A fresnel spotlight comprising:
an adjustable aperture angle of an emerging light beam;
an ellipsoid reflector;
a lamp;
at least one fresnel lens, wherein the at least one fresnel
lens has a diffuser, wherein the diffuser is arranged at the
center of the at least one fresnel lens to define a Fresnel region
and a diffuser region; and
a mechanical guide configured to change a distance
between the reflector and the at least one Fresnel lens between a
spot setting and a flood setting, wherein only a small proportion
of the total light emitted by the lamp passes through the diffuser
region in the spot setting and a high proportion of the total light
emitted by the lamp passes through the diffuser region in the
flood setting.
Rejections on Appeal
1. The Examiner rejects claims 1-11, 13-15, 17-19, and 22 under
35 U.S.C. § 103(a) as being unpatentable over Kittelmann (U.S. Pat. Pub.
No. US 2003/0063466 A1, issued Apr. 3, 2003), Scott (U.S. Patent No.

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed December 15, 2009. We also refer to the Examiner’s Answer (“Ans.”)
mailed March 9, 2010.
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3,576,563, issued Apr. 27, 1971) and Little (U.S. Patent No. 4,519,020,
issued May 21, 1985).
2. The Examiner rejects claims 12, 16, and 20-21 under 35 U.S.C.
§ 103(a) as being unpatentable over Kittelmann, Scott, Little, Hirano (U.S.
Patent No. 6,957,900 B2, issued Oct. 25, 2005 (filed Nov. 28, 2003)),
Aikawa (U.S. Patent No. 6,435,702 B1 issued Aug. 20, 2002), and Koubek
(U.S. Patent No. 1,992,668 issued Feb. 26, 1935).
Grouping of Claims
Based on Appellants’ arguments in the Brief, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2012).

ISSUES
1. Under § 103, did the Examiner err in finding that the cited prior
art combination of Kittelmann, Scott, and Little collectively would have
taught or suggested at least one fresnel lens, wherein the at least one fresnel
lens has a diffuser, [and] wherein the diffuser is arranged at the center of the
at least one fresnel lens to define a Fresnel region and a diffuser region as
recited in independent claim 1 and the commensurate limitation recited in
independent claims 17 and 19?
2. Under § 103, did the Examiner err in combining Scott with
Kittlemann because Scott is non-analogous art?
3. Under § 103, did the Examiner err in combining Scott with
Kittlemann because Scott teaches away from the cited combination?
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4. Under § 103, did the Examiner err in combining Scott with
Kittlemann because Scott would render Kittlemann unsuitable for its
intended purpose?
5. Under § 103, did the Examiner’s combination improper due to
impermissible hindsight?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Non-Final
Office Action mailed on Dec. 16, 2008 as our own, except as to those
findings that we expressly overturn or set aside in the analysis as follows.

ANALYSIS
Claims 1-11, 13-15, 17-19, and 22
Fresnel Lens with a Diffuser
Appellants contend, inter alia, that the cited references fail to teach or
suggest at least one Fresnel lens that has a diffuser. (Br. 5.) Appellants
further contend:
In contrast to spreading a collimated beam in a desired
direction as in Scott, the present application provides that
"Inside the fresnel lens 3, there is a circular centrally arranged
diffuser 7, which generates a defined scattered light ratio and a
defined aperture angle of the scattered light. A defined mixing
ratio of the scattered light relative to the light geometrical-
optically imaged by the fresnel lens 3 is provided in this
way." See page 9, lines 1-6.
(Br. 6.)

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The Examiner relied on Scott to teach or suggest the centrally
arranged diffuser. (Ans. 3-4, 9.) The Examiner found that Scott taught a
ribbed portion in the center piece of the lens that spreads (diffuses) light.
(Id.)
We agree with and adopt the Examiner’s findings, including the
Examiner’s interpretation of the claimed “diffuser.” (Ans. 9.) The portion of
the Specification pointed to by Appellants (see supra.) is one of three
embodiments of the claimed “diffuser.” (Spec. 9, ll. 1-16.) Accordingly, the
cited portion of the Specification does not specifically “define” a “diffuser,”
but instead provides merely an example of the claimed diffuser. Therefore,
we give the term “diffuser” its broadest reasonable construction as it would
be interpreted by an ordinarily skilled artisan – a “diffuser” involves
spreading light.3 We further agree with the Examiner that the Appellants’
arguments are directed to limitations that are not recited in the claim
language. (Ans. 10.) Thus, we will not read these limitations into the
claims.4
Based on this record, we conclude that the Examiner did not err in
finding that the cited references would have taught or suggested the claimed
“diffuser.”

3 “It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification, and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990); quoting In re Sneed, 710
F.2d 1544, 1548 (Fed. Cir, 1983).
4 See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(internal citations omitted)
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Scott is Non-Analogous Art
Appellants contend that while Kittelmann and Scott may both
generally be related to lighting with a Fresnel lens, Appellants submit that
one skilled in the art would simply not look to Scott to modify Kittelmann in
the manner proposed by the Office Action. (Br. 7.)
Regarding Appellants’ general argument regarding Scott being non-
analogous to the present invention (Br. 7), we disagree for the reasons that
follow. For a prima facie case of obviousness to be established, the
reference need not recognize the problem solved by the Appellants. See In
re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat.
App. & Int. 1985) (“The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious.”) This reasoning is applicable in the present case.
Appellants’ Specification (Spec. 1, ll. 4-7) explains and Appellants’ admit
(Br. 7) both the present invention and Scott are directed to the general field
of Fresnel lighting. Therefore, we conclude that Scott is analogous (not non-
analogous) to the present invention because both are directed to the same
general field of endeavor.
Appellants also contend that there are three reasons why one skilled in
the art would not look to Scott and therefore, Scott is not within the same
field of endeavor nor pertinent to the particular problem with which the
present application is concerned. (Br. 7.)

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Appellants first contend that the ribbed center portion of Scott
provides a different optical functionality to the lens 34 as compared to the
claimed “diffuser.” Therefore, according to Appellants, one would not look
to Scott as a reference. (Br. 8.) We find Appellants’ arguments regarding
Scott’s optical functionality unavailing because, as discussed supra, it is not
necessary that Scott recognize the problem solved by the Appellants for
Scott to be analogous.
Second, Appellants contend that Scott precludes use of a reflector,
which is required in the present claims. (Br. 8-9.) We observe that the first
portion of Scott cited by Appellants discuss prior art systems. (Scott, col. 1,
ll. 40-47.) Therefore, this portion of Scott is not evidence of a preclusion of
reflectors. Further, that the additional cited portion of Scott (Scott, col. 4, ll.
68-74) describes avoiding reflection of extraneous light, is not evidence of a
general disavowment of reflectors, nor does it suggest a path divergent from
the path that was taken by the Appellants. See In re Kahn, 441 F.3d 977,
990 (Fed. Cir. 2006) (citations and internal quotation marks omitted). The
cited portion of Scott discusses the use of a cone 52 to protect the device and
exclude extraneous light from the aperture of the lens. (Scott, col. 4, ll.
55-73.) We find that Scott does not “require” a reflector because it utilizes a
light pipe (56). It does not “teach away” from using a deflector, generally.
Further, the Examiner did not cite Scott for the recited deflector, as we
discuss infra.
Third, Appellants contend that Scott requires a non-movable light
source in the focal point of the Fresnel lens to generate the necessary high
signal light intensity. (Br. 9.) According to Appellants one skilled in the art
looking to resolve the issues of dark areas in movable aperture spotlights
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such as that recited by claims 1, 17, and 19 would simply never look to a
device such as that in Scott (which cannot include a moveable aperture) for
ways to eliminate these dark spots. (Br. 9.) We find this argument
unavailing because as discussed above, Scott is within the same general field
of endeavor as the present invention, and therefore, Scott does not have to
resolve the same issues as the present invention to be analogous art.
Based on this record, we conclude that the Examiner did not err in
combining because Scott is non-analogous art.
Scott teaches away from the proposed combination (Motivation)
Appellants contend that the disclosure of Scott fails to support the
Examiner’s rationale for modifying Kittlemann to include the lens of Scott.
(Br. 11.). We disagree.
The Examiner relied on Scott as evidence that a diffuser portion was
well-known in the art at the time of Appellants’ invention. (Ans. 4.) The
Examiner also provided a motivation to combining Scott with Kittlemann.
(Id.) We agree with and adopt the Examiner’s findings. Moreover, we
agree with Examiner that the motivation for the combination is provided in
Scott. (Scott, col. 5 ll. 50-60.)5 Therefore, we conclude that the Examiner
has stated “some rational underpinning to support the legal conclusion of

5 In bridging the gap between prior art references and a conclusion of
obviousness, the fact finder may rely on the prior art references themselves,
the knowledge of those of ordinary skill in the art, the nature of the problem
to be solved, market forces, design incentives, the “interrelated teachings of
multiple patents,” “any need or problem known in the field of endeavor at
the time of invention and addressed by the patent,” or the background
knowledge, creativity, and common sense of the person of ordinary
skill. KSR Int’l Co. v. Teleflex Inc, 550 U.S. 398, 418-21 (2007); see also
Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000).
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obviousness.” 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)) and Appellants
have not shown error therein.
Based on this record, we conclude that the Examiner provide a proper
motivation to combine the cited references.
Kittelmann Rendered Unsuitable for Its Intended Purpose
Appellants submit that the proposed modification of Kittelmann with
the device of Scott renders Kittelmann unsuitable for its intended purpose.
(Br. 11.) More particularly, Appellants contend that Scott teaches away
from an adjustable aperture angle or any mechanical moving parts. (Br. 12.)
“What appellants overlook is that it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citations omitted) (emphasis added); see also In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”). The test for obviousness is
not whether the features of a reference may be bodily incorporated into the
structure of another reference but what the combined teachings of those
references would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). This reasoning
is applicable in the present case. As discussed supra, the Examiner reliance
on Scott shows that the diffuser portion, with a Fresnel lens, was well-
known in the art at the time of Appellants’ invention. We conclude that the
combined teachings of the cited references would have suggested a Fresnel
lens with a ribbed portion (diffuser).
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Based on this record, we conclude that the Examiner did not err in
combining Scott with Kittelmann.
Hindsight
Appellants contend that the Examiner used Appellants’ disclosure to
select portions of the cited references to allegedly arrive at Appellants’
invention. (Br. 13.) We disagree.
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
the “combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results,” KSR 550
U.S. at 401
Given the breadth of Appellant’s claims, we are not persuaded that
combining the respective familiar elements of the cited references in the
manner proffered by the Examiner was “uniquely challenging or difficult for
one of ordinary skill in the art” (see Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)).
Therefore, we find the Examiner’s proffered combination of familiar prior
art elements according to their established functions would have conveyed a
reasonable expectation of success to a person of ordinary skill having
common sense at the time of the invention.
Reply Brief
We observe that Appellants did not submit a Reply Brief to rebut the
Examiner’s findings and responsive argument in the Examiner’s Answer.
Accordingly, we find the evidence in record before us supports the
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Examiner’s rejection and Appellants have not persuaded us of error therein.
With respect to all claims before us on appeal, arguments which Appellants
could have made but chose not to make have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). See also In re
Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004).
Based on the issues discussed supra, we conclude that the Examiner
did not err in rejecting representative claim 1. Accordingly, we affirm the
Examiner’s rejection of claim 1 and claims 2-11, 13-15, 17-19, and 22 not
separately argued with particularity.
Claims 12, 16, 20, and 21
As noted above, claims 12, 16, 20, and 21 were rejected by the
Examiner as unpatentable over a separate combination of references.
Appellants did not present arguments regarding claims 12, 16, 20, and 21.
(See Br. 13-14.) Accordingly, we affirm the Examiner’s rejection of
dependent claims 12, 16, 20, and 21 for the reasons discussed supra.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-22 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-22 under 35 U.S.C.
§ 103(a).

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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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