Ex Parte Kropac et al

Patent Trial and Appeal Board

Jul 31, 2017

13527710 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/527,710 06/20/2012 Miroslav Kropac VLS0083US 4791
23413 7590 08/02/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street GUHARAY, KARABI
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIROSLAV KROPAC,
JAN KRATOCHVIL, LUDEK MAZAL,
MARTIN DLUHOS, and PAVEL TUMA
Appeal 2016-003265
Application 13/527,710
Technology Center 2800
Before GEORGE C. BEST, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 4—11, 13, 14, 18, 19, and 22
of Application 13/527,710 under 35 U.S.C. § 102(b) as anticipated; rejected
claims 15—17 and 21 under 35 U.S.C. § 102(e) as anticipated; and rejected
claims 8, 12, and 20 under 35 U.S.C. § 103(a) as obvious. Final Act.
(December 15, 2014). Appellants1 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
1 Varroc Lighting Systems SRO is identified as the real party in interest.
Appeal Br. 2.
Appeal 2016-003265
Application 13/527,710
For the reasons set forth below, we reverse.
BACKGROUND
The ’710 Application describes a reflector signal lamp with a hidden
light source for use in the front and rear signal lighting of motor vehicles.
Spec. 12. Claim 1 is representative of the ’710 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief.
1. A signal lamp for a vehicle, comprising:
a housing having a cover configured to allow light to pass
therethrough;
a nontransparent frame disposed within the housing;
at least one hidden light source for emitting light, the at least
one hidden light source disposed within the housing behind the
nontransparent frame such that the light source is not visible
from any direction outside the housing;
a reflector for reflecting the light emitted by the at least one
light source away from the vehicle; and
at least one light guide disposed between the reflector and the
cover to direct the light emitted by the at least one light source
onto the reflector.
Appeal Br. 12 (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 4, 5, 7, 8, 11, 13, and 22 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Muller.2 Final Act. 2.
2 US 2002/0114166 Al, published August 22, 2002.
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Application 13/527,710
2. Claims 1, 4—7, 9-11, 13, 14, 18, 19, and 22 are rejected under
35 U.S.C. § 102(b) as anticipated by Wagner.3 Final Act. 3.
3. Claims 15—17 and 21 are rejected under 35 U.S.C. § 102(e) as
anticipated by Moskowitz.4 Final Act. 6.
4. Claims 8, 12, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wagner. Final Act. 7.
DISCUSSION
Rejection 1. Appellants argue for reversal of this rejection on the
basis of the limitations in independent claim 1, which is the only
independent claim subject to this ground of rejection.5 Appeal Br. 6—7. The
remaining claims subject to this ground of rejection depend, either directly
or indirectly, from claim 1. We, therefore, and limit our discussion
accordingly. 37 C.F.R. § 41.37(c)(l)(iv).
In relevant part, claim 1 is directed to a signal lamp for a vehicle
comprising “at least one light guide disposed between the reflector and the
cover to direct the light emitted by the at least one light source onto the
reflector.”
In rejecting claim 1, the Examiner states that Muller discloses
at least one light guide (though not specifically mention[ed],
each LED chip is enclosed by an optical light guide to guide the
light emitted from the LED chip) disposed between the reflector
3 US 2009/0284365 Al, published November 19, 2009.
4 US 8,278,806 Bl, issued October 2, 2012.
5 In view of our resolution of this appeal with respect to claim 1, we need not
and do not consider Appellants’ separate arguments concerning the
patentability of claim 7.
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Application 13/527,710
and the cover to direct light emitted by the at least one light
source onto the reflector (paragraphs 11—12).
Final Act. 2—3 (emphasis added). In the Examiner’s Answer, the Examiner
provides a generic illustration of a surface mounted LED device (SMD
LED) from an unknown source. Answer 2. This illustration shows the
semiconductor crystal of the LED surrounded by a lens. Id. Based upon this
illustration, the Examiner states that “[t]he light emitted by the
semiconductor die/chip is guided through the lens/covering to the outside,
thus [Muller’s description of an LED] inherently disclose[s] an optical
element to guide the light, which is considered [to be the claimed] light
guide.” Id. at 3 (emphasis added).
To serve as an anticipatory reference, “the reference must disclose
each and every element of the claimed invention, whether it does so
explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009). In making an anticipation rejection, elements found to be inherently
present must necessarily be present in or result from the prior art. In re
Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir. 2012). ‘“Inherency . . .
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.’”
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v.
Kemmer, 102 F.2d212, 214 (CCPA 1939)).
In this case, the Examiner has not provided sufficient evidence to
establish that Muller’s description of the use of an SMD LED amounts to an
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Application 13/527,710
inherent description of the use of a light guide.6 We begin by noting that the
unattributed illustration used by the Examiner is entitled to very little
evidentiary weight precisely because the source of the illustration is
unknown. Furthermore, the Examiner cites no additional authority in
support of his assertion that every SMD LED includes a light guide. Indeed,
even if we were to assume that the Examiner is correct in asserting that
every SMD LED device includes a cover disposed over the semiconductor
crystal, we can readily envision that the cover could take the form of a
hemisphere of uniform thickness with the semiconductor crystal located at
its center. In that case, the presence of the cover would have no effect on the
distribution of light emitted by the SMD LED.
Because inherency may not be established by probabilities or
possibilities, we are constrained to reverse the rejection of claim 1. We,
therefore, also reverse the rejection of claims 4, 5, 7, 8, 11, 13, and 22.
Rejection 2. Appellants rely upon limitations present in independent
claims 1 and 18 in arguing for reversal of this rejection. Appeal Br. 8—9.
The remaining claims subject to this ground of rejection depend, either
directly or indirectly from these independent claims. Thus, we select
independent claims 1 and 18 as representative of the claims subject to this
ground of rejection and limit our discussion accordingly. 37 C.F.R.
§ 41.37(c)(l)(iv).
6 We assume, without deciding, that a light guide included in an SMD LED
can correspond to the claimed light guide. We, therefore, express no opinion
regarding Appellants’ argument, see Reply Br. 3—4, that the Examiner has
adopted an unreasonably broad interpretation of the term “light guide.”
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Claim 1 is directed, in relevant part, to a signal lamp for a vehicle
comprising “at least one hidden light source for emitting light, the at least
one hidden light source disposed within the housing behind the
nontransparent frame such that the light source is not visible from any
direction outside the housing.” Claim 18 contains similar language: “[a]
signal lamp, comprising: at least one light source for emitting light, wherein
the at least one light source is hidden from view by a frame of the signal
lamp . . .
Because we agree with Appellants that the Examiner erred by finding
that Wagner describes the claimed hidden light source recited in independent
claims 1 and 18, we reverse.
We begin by noting that the Examiner’s stated basis for the rejection
mixes details of different embodiments depicted in Figures la, lb, 2a, and
2b. See Final Act. 4. The Examiner, therefore, has not found that Wagner
describes a single embodiment that satisfies all of the limitations of either
claim 1 or claim 18.
A reference that does not disclose a specific embodiment which
satisfies all of the claim limitations will nonetheless describe the claimed
invention within the meaning of § 102 if it “clearly and unequivocally . . .
[directs] those skilled in the art to [the claimed invention] without any need
for picking, choosing, and combining various disclosures not directly related
to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d
586, 587 (CCPA 1972) (emphasis in original) (quoted with approval in
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)).
In this case, however, the Examiner picks and chooses various aspects
of the two embodiments shown in Wagner’s Figures la, lb, 2a, and 2b. This
sort of selection is not proper in an anticipation rejection.
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Moreover, the anticipation rejection is based upon a factually
erroneous analysis of the embodiments depicted in Wagner. Both claims 1
and 18 require that the light source be hidden behind a frame of the signal
lamp. The Examiner relies upon Wagner’s embodiment depicted in
Figures la and lb (the first embodiment) as describing the frame. Final
Act. 4 (finding that the claimed frame corresponds to a part of the housing
12 shown in Figures la and lb). The Examiner turns to the embodiment
depicted in Wagner’s Figures 2a and 2b (the second embodiment) for a
description of the light source as hidden from view. Id. (citing Wagner
143).
Closer scrutiny, however, reveals that neither of Wagner’s
embodiments relied upon by the Examiner describes the light sources as
being hidden behind a frame.
Figure la shows a front view of the first embodiment. Wagner 126.
Figure lb shows a longitudinal cut through the first embodiment. Id. The
front view of the first embodiment shows light sources 40 and 50 as visible
through light pane 30. Housing 12 does not cover the space between the
light sources and the viewer. The longitudinal section shown in Figure lb
confirms this analysis. Thus, the first embodiment does not show the light
sources as being hidden behind a frame. Figure 2a shows a front view of the
second embodiment, and Figure 2b shows a longitudinal cut through the
second embodiment. Id. 127. We begin by noting Figures 2a and 2b
identify the mirror housing with reference 64.7 See id. 142. As is apparent
7 Neither the Final Action nor the Examiner’s Answer identify any portion
of housing 64 as comprising a frame within the meaning of the claims of the
’710 Application.
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from Figure 2b, mirror housing 64 does not cover the space between the
viewer and light sources 40 and 50. Rather, this space is covered by light
pane 30. Wagner uses the same reference numerals in different figures to
designate “equal or similar elements.” Id. 132. We, therefore, agree with
Appellants that a person of ordinary skill in the art at the time of the
invention would conclude that light pane 30 shown in Figures 2a and 2b is
translucent. See Appeal Br. 8—9. We are aware that 143 of Wagner states
that “[t]he light sources 40, 50 are located inside the rear view mirror
assembly] 60 and [are] hidden from the view from the outside.” We
conclude that a person of ordinary skill in the art would reconcile this
seeming conflict by understanding the language in 143 as stating that the
unlit light sources are hidden from view, not that light from the sources
cannot pass through light pane 30 and be perceived by an observer through
means other than light guide 20d.
For the foregoing reasons, we reverse the rejection of independent
claims 1 and 18 as anticipated by Wagner. Thus, we also reverse rejection
of dependent claims 4—7, 9—11, 13, 14, 19, and 22 as anticipated by Wagner.
Rejection 3. Appellants argue for reversal of this rejection on the
basis of limitations in claim 15, which is the only independent claim subject
to this ground of rejection. Claims 16, 17, and 21 depend from claim 15.
We, therefore, select claim 15 is representative of the claims subject to this
ground of rejection. The other claim subject to this ground of rejection will
stand or fall with claim 15. 37 C.F.R. § 41.37(c)(l)(iv).
In relevant part, claim 15 requires “at least one light guide disposed
between the reflector and a cover of the signal lamp to direct the light
emitted by the at least one light source onto the reflector.”
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Application 13/527,710
In rejecting claim 15, the Examiner makes no finding of fact regarding
the correspondence between any portion of the embodiments of Moskowitz
depicted in Figure’s 1—3 and the claimed cover. Final Act. 6. Our own
review of Moskowitz does not reveal any description of a portion of these
embodiments that corresponds to a cover as that term is used in claim 15 of
the ’710 Application.
Because the Examiner has failed to identity where Moskowitz
describes each element of the invention recited in claim 15, we are
constrained to reverse the anticipation rejection. We, therefore, also must
reverse the rejection of claims 16, 17, and 21.
Rejection 4. As discussed above, we have reversed the rejection of
claim 1 as anticipated by Wagner because Wagner does not describe each
limitation in claim 1. Claims 8, 12, and 20 depend, either directly or
indirectly, from claim 1, and the Examiner’s obviousness analysis, see Final
Act. 7—8, does not cure the above-discussed defects in the rejection of
claim 1. Thus, we are constrained to reverse the rejection of claims 8, 12,
and 20 as unpatentable over Wagner.
CONCLUSION
For the reasons set forth above, we reverse the anticipation rejections
of claims 1, 4—7, 9—11, 13—19, 21, and 22. We also reverse the obviousness
rejection of claims 8, 12, and 20.
REVERSED
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