Ex Parte Lyst et al

Patent Trial and Appeal Board

Nov 21, 2014

11093862 (P.T.A.B. Nov. 21, 2014)

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.
11/093,862 03/30/2005 James Edward Lyst JR. PUT050005 (THOM:0039) 9544
37106 7590 11/24/2014
FLETCHER YODER P.C.
P.O. Box 692289
HOUSTON, TX 77269-2289
EXAMINER
SIM, YONG H
ART UNIT PAPER NUMBER
2621
MAIL DATE DELIVERY MODE
11/24/2014 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 JAMES EDWARD LYST JR. and
EUGENE MURPHY O’DONNELL
____________________

Appeal 2012-004170
Application 11/093,862
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/093,862

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I. STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–13 and 15–24. Claim 14 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
According to Appellants, the invention relates to projecting video
images using multiple light emitting diodes (LEDs) (Spec. 1, ll. 5–8).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:

1. A video unit comprising:
a plurality of light emitting diodes disposed in a first
annular formation and configured to produce light, wherein the
plurality of light emitting diodes comprise red light emitting
diodes, green light emitting diodes, and blue light emitting
diodes, wherein the individual light emitting diodes of the
plurality of light emitting diodes alternate in color around the
first annular formation;
a reflector configured to reflect the produced light from at
least one of the plurality of light emitting diodes; and
a plurality of optical components disposed in a second
annular formation separate from the first annular formation and
concentric to the first annular formation, wherein each of the
optical components corresponds to one of the light emitting
diodes, wherein each of the optical components is configured to
focus the produced light at the reflector.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Morgan US 2005/0128441 A1 June 16, 2005
(filed Dec. 10, 2003)
Imade ‘423 US 7,128,423 B2 Oct. 31, 2006
(filed Nov. 19, 2004)
Imade ‘815 US 7,210,815 B2 May 1, 2007
(filed July 6, 2004)
Claims 1–3, 5, 7, 9–11, 15–18, and 21–24 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Imade ‘423.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Imade ‘423.
Claims 4, 8, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Imade ‘423 and Morgan.
Claims 12 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Imade ‘423 and Imade ‘815.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
finding Imade ‘423 teaches “a plurality of light emitting diodes disposed in a
first annular formation” wherein “the individual light emitting diodes of the
plurality of light emitting diodes alternate in color around the first annular
formation,” and “plurality of optical components disposed in a second
annular formation” (claim 1).
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants’ Invention
1. Appellants disclose an LED light engine (Abst.), wherein
Figure 2 is reproduced below:

Figure 2 discloses an LED light engine 12 comprised of a plurality of
LEDs (40a– 40c) oriented in an annular configuration to form LED ring 41
(p. 7, l. 27 to p. 8, l. 1), and a plurality of lenses 42 arrayed in an annular
configuration between each of the LEDs 40a–40c (p. 8, l. 27 to p. 9, l. 2);
wherein, in one embodiment, the LEDs 40a-40c alternate in color red, green,
and blue around the LED ring 41 (p. 10, ll. 14–15).
Imade ‘423
2. Imade ‘423 discloses an illumination apparatus, wherein
Figures 21A and 21B are reproduced below:
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Figures 21A and 21B disclose an illumination unit comprising two
planar reflecting mirrors 64a and 64b and two condenser lenses 53a and 53b
configured as pairs with respect to a rotating shaft 47 (col. 19, ll. 51–56), the
condenser lenses being supported by a rotating supporting member 65
integrated with the rotating shaft 47 in such a manner that these lenses can
be rotated and moved in cooperation with the planar reflecting mirror 64
(col. 19, ll. 19–22), and LED chips 54a (54b) arranged on two stages along
an inner side surface of a drum support member 61 (col. 19, ll. 63–65), the
LED chips being drawn as LED chip rows 45R, 45G and 45B in such a
manner that the chips having the same color are continuously arranged (col.
18, ll. 30–32).
IV. ANALYSIS
35 U.S.C. § 102(e)
Appellants contend “the Imade ‘423 reference merely discloses pairs
of condenser lenses 53a, 53b on opposite sides of a rotating shaft 47” and
“aligned along a straight line (e.g., perpendicular to the centerline c-c’)”
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(App. Br. 8). Thus, Appellants contend “two condenser lenses 53a disposed
directly adjacent to each other on one side of the rotating shaft 47, and two
other condenser lenses 53b disposed directly adjacent to each other on an
opposite side of the rotating shaft 47 do not form an annular formation”
(App. Br. 9).
Appellants also contend:
the Imade ‘423 reference discloses that an illumination unit 41
includes red LED chip rows 45R, green LED chip rows 45G, and
blue LED chip rows 45B, with each of the LED chip rows 45R,
45G, 45B containing more than one LED chip of the same color
in a continuous manner . . .
(App. Br. 10). As such, Appellants contend “the individual LED chips of
each LED chip row 45R, 45G, 45B do not alternate in color within the LED
chip rows 45R, 45G, 45B” (id.).
Based on the record before us, we agree with Appellants. In
particular, Imade ‘423 discloses two sets of condenser lenses supported on
opposite sides of a supporting member integrated with the rotating shaft (FF
2). Unlike Appellants’ condenser lenses arrayed in an annular configuration
between each LED of an LED ring (FF 1), Imade ‘423’s condenser lenses
are arrange on opposite sides of the supporting member. We agree with
Appellants that the lenses “disposed directly adjacent to each other on an
opposite side of the rotating shaft 47 do not form an annular formation”
(App. Br. 9).
Furthermore, Imade ‘423 discloses LED chips arranged as LED chip
rows 45R, 45G, and 45B in such a manner that the chips having the same
color are continuously arranged (FF 2). Unlike Appellants the LEDs which
alternate in color red, green, and blue around the LED ring (FF 1), Imade
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‘423’s chip rows are arranged such that chips having the same colors are
continuously arranged. We agree with Appellants that the LEDS “do not
alternate in color within the LED chip rows” (App. Br. 10).
Although we agree with the Examiner that “the condenser lenses 53a
and 53b, rotate in an annular formation” (Ans. 15, emphasis added), we
cannot find any clear teaching in the sections of Image ‘423 referenced by
the Examiner of a “plurality of optical components disposed in a second
annular formation” as required by claim 1 (emphasis added).
Similarly, although we agree with the Examiner that “Imade clearly
teaches that each individual group of diodes 45R, 45G and 45B, alternate in
color around an annular formation” (Ans. 16, emphasis added), we cannot
find any clear teaching in the sections of Image ‘423 referenced by the
Examiner of “the individual light emitting diodes of the plurality of light
emitting diodes alternate in color around the first annular formation,” as
required by claim 1 (emphasis added).
We find the preponderance of evidence on this record fails to support
the Examiner's finding that Appellants’ claim 1 is anticipated by Imade ‘423.
We are of the view that the Examiner has not fully developed the record to
show express or inherent anticipation regarding the disputed limitations of
claim 1 pursuant to 35 U.S.C. § 102(e).1 Therefore, we are constrained to
reverse the Examiner’s rejection of representative claim 1 and independent

1 In the event of further prosecution, we leave it to the Examiner to
consider whether the claims 1–3, 5, 7, 9–11, 15–18, and 21–24 should
instead be rejected under 35 U.S.C. § 103(a) as being obvious over Imade
‘423. While the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) 1213.02.
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claims 9 and 17 standing therewith (App. Br. 7–12), as well as claims 2, 3, 5,
7, 10, 11, 15, 16, 18, and 21–24 respectively depending from claims 1, 9,
and 17, over Imade ‘423.
Regarding the § 103 rejections of dependent claims 4, 6, 8, 12, 13, 19,
and 20, the Examiner has not shown how the above-discussed deficiencies
of Imade ‘423 would have been obvious, or how the secondary Morgan and
Imade ‘815 references overcome the deficiencies of Imade ‘423. Therefore,
we also reverse the Examiner’s §103 rejection of dependent claim 6 over
Imade ‘423, of dependent claims 4, 8, 13, and 20 over Imade ‘423 in further
view of Morgan, and of dependent claims 12 and 19 over Imade ‘423 in
further view of Imade ‘815.
V. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1–13 and 15–24 under 35 U.S.C.
§§ 102(e) and 103(a) are reversed.

REVERSED

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