Ex Parte Lax

Board of Patent Appeals and Interferences

Mar 26, 2012

12237623 (B.P.A.I. Mar. 26, 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.
12/237,623 09/25/2008 Samuel Lax LIFESU-50840 1127
26252 7590 03/26/2012
KELLY LOWRY & KELLEY, LLP
6320 CANOGA AVENUE
SUITE 1650
WOODLAND HILLS, CA 91367
EXAMINER
YACOB, SISAY
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
03/26/2012 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 SAMUEL LAX
____________

Appeal 2011-000680
Application 12/237,623
Technology Center 2600
____________

Before SCOTT R. BOALICK, CARL W. WHITEHEAD, JR. and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000680
Application 12/237,623

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-21. Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We affirm.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A dual condition fire/smoke detector system, comprising:

a housing;

a photoelectric sensor disposed within the housing;

a heat sensor disposed within the housing;

a wireless communication system associated with the photoelectric
sensor and the heat sensor; and

a light source comprising a high-intensity LED associated with the
housing and positioned to illuminate an exit in response to a hazard detected
by either one of the sensors.

Rejections on Appeal
Claims 1-6, 9 and 11-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Morris (U.S. Patent Number 6,323,780 B1),
Mayusumi (U.S. Patent Application Publication 2003/0058117 A1), Kelly
(U.S. Patent Number 6,181,251 B1) and Ellul (U.S Patent Application
Publication 2007/0132575 A1). Answer 4-7.
Appeal 2011-000680
Application 12/237,623

3
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morris, Mayusumi, Kelly, Ellul and Sharpe (U.S Patent
Application Publication 2004/0229113 A1). Answer 7-8.
Claim 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morris, Mayusumi, Kelly, Ellul and Wong (U.S Patent
Number 5,966,077). Answer 8-9.
Claims 15-18 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kirkor (U.S. Patent Number 4,319,229), Morris, Kelly
and Ellul. Answer 9-12.
Claim 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kirkor, Morris, Kelly, Ellul and Sharpe. Answer 12-13.
Claim 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kirkor, Morris, Kelly, Ellul and Wong. Answer 13.

Issue on Appeal
Does Kelly expressly teach away from using the claimed high-
intensity LED in a fire/smoke detection system, thus failing to establish a
prima facie case of obviousness?

PRINCIPLE OF LAWS
“What the prior art teaches and whether it teaches toward or away
from the claimed invention … is a determination of fact.” Para-
Ordnance Mfg., Inc. v. SGS Imps. Int'l, Inc., 73 F.3d 1085, 1088 (Fed.
Cir. 1995) (citations omitted). “A reference may be said to teach
away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference,
or would be led in a direction divergent from the path that was taken
by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appeal 2011-000680
Application 12/237,623

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Teaching an alternative or equivalent method, however, does not
teach away from the use of a claimed method. In re Dunn, 349 F.2d
433, 438 (CCPA 1965).

ANALYSIS
The invention is a dual condition fire/smoke detector system having a
photoelectric sensor, a heat sensor and a light source to illuminate an exit in
response to a hazard detected by either one of the sensors. Appeal Brief 7;
claim 1.
Appellant argues claims 1-21 in separate groups. See Appeal Brief
10-14. We group these claims together here for clarity and brevity since
Appellant has not presented any patentability arguments that specifically
state how each of the claims is patentable over the prior art of record.
Appellant traverses the obviousness rejections of record because Kelly
expressly teaches away from using the claimed high intensity LED in a
fire/smoke detection system and is therefore not combinable with any of the
cited prior art to support a prima facie case of obviousness. Appeal Brief 10.
Appellant argues:

In short, Kelly states that “intense flashing lights destroy night vision,
often causing more harm than good to confuse people trying to
escape a dark building.” ‘251 Patent at col. 1, lns. 35-37 (emphasis
added). A person of ordinary skill in the art would never use features
of a prior art reference (i.e. high-intensity lighting) when those
features are taught in the reference itself as causing more harm than
good. Therefore, as described in more detail below, it is respectfully
requested that the obviousness rejections be withdrawn in view that
Kelly is not combinable with the other prior art references to establish
a prima facie case of obviousness.

Appeal Brief 10.
Appeal 2011-000680
Application 12/237,623

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Appellant further argues “Kelly states that ʻflashing incandescent
lights can tend to daze and confuse rather than directʼ” (emphasis deleted).
However the Examiner reasons that inclusion of a high-intensity LED in a
dual condition system is obvious in view of Kelly. Appeal Brief 10-
11. Appellant concludes that “[a]sserting that a “laser beam” and a
“powerful light” are equivalent generic light sources is an incorrect and
overbroad application of Kelly.” Appeal Brief 11.
The Examiner indicates he relied upon Kelly strictly to “teach the
claimed limitation requiring a lighting source that is attached to the housing
of the dual detector to illuminate an exit/door.” Answer 15. The Examiner
finds Kelly discloses the advantages and disadvantages of employing high
powered lights or flashing strobes and then suggest improving the prior art
by creating structural means to focus or beam the light to an exit and it was
that particular structure in which the Examiner relied upon to modify.
Id. The Examiner reasons that the structural means of focusing or beaming
the lighting element to an exit is independent of the type of lighting elements
used in the structure. Id.
In the Reply Brief, Appellant notes the Examiner’s statement “Kelly
does destroy the invention of Morris modified by Mayusumi et al. as it only
introduces a structure with the ability to directing [sic] source to an
exit/door.” Reply Brief 5; see Answer 18. This does not appear to be an
admission by the Examiner of Kelly’s incompatibility because when read
within the context of the paragraph as a whole, it is evident that "does
destroy" was merely a typographical error and the phrase "does not destroy"
was intended. See Answer 5, 18.
Appeal 2011-000680
Application 12/237,623

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We do not find Appellantʼs arguments to be persuasive because the
Examiner relies upon Kelly to teach the claimed limitation requiring a
lighting source attached to the housing of the dual detector to illuminate an
exit/door wherein the type of light employed by Kelly is immaterial to the
combination of the references. See Answer 5, 15. Further, Kelly does not
teach away from employing the claimed “high-intensity LED” because, as
noted by Appellant, Kelly refers to “flashing” incandescent lights and
emphasizes the confusion that can be caused by “flashing” lights and flashes
of lights. See Kelly, column 1, lines 30-44. Kelly is clearly concerned with
the “flashing” aspect of the lightning source and not the intensity of the
lightning source.
Therefore we will sustain the Examiner’s obviousness rejections of
claims 1-21.

DECISION
The Examiner’s decision rejecting claims 1-21 under 35 U.S.C. § 103
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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