Ex Parte Nevins

Patent Trial and Appeal Board

Dec 8, 2015

12774551 (P.T.A.B. Dec. 8, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121774,551 05/05/2010 Michael Olen NEVINS
22429 7590 12/10/2015
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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.
5024-004U 8246
EXAMINER
SMALL, NAOMI J
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
12/10/2015 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
EAnastasio@IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL OLEN NEVINS
Appeal 2014-001166
Application 12/774,551
Technology Center 2600
Before DEBRA K. STEPHENS, KARA L. SZPONDOWSKI, and
SHARON PENICK, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-10 and 12-21. Claim 11 has been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-001166
Application 12/774,551
STATEMENT OF THE CASE
Appellant's invention is directed to an induction lamp light fixture.
(Spec. i-f 1 ). Claim 1 is representative of the claimed subject matter:
1. A light fixture for an induction-based light source,
compnsmg:
a top cover;
a lower cover coupled with the top cover;
a lens coupled with the lower cover;
a reflector positioned behind the lens;
a casting configured to receive a support coupled to the
lower cover;
a heat sink integral with the casting; and
an induction-based light source positioned between the
lens and the reflector, wherein the reflector is positioned in
relation to the induction-based light source.
The Examiner's Rejections
Appellant seeks our review of the following rejections:
Claims 1-3, 9, 10, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Parker et al. (US 2007 /0008167
Al, published Jan. 11, 2007), Zhang et al. (US 7,744,247 B2, issued June
29, 2010), 1 and Wedell et al. (US 6,419,378 Bl, issued July 16, 2002).
1 The Examiner mis-cited the Zhang patent number in the Final Rejection
and Answer. (Final Act. 2; Ans. 4). We consider this harmless error
because the Appellant refers to the correct reference. (See App. Br. 6).
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Application 12/774,551
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parker, Zhang, Wedell, and Petrakis et
al. (US 2007 /023 6946 A 1, published Oct. 11, 2007).
Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parker, Zhang, Wedell, and Janos et al.
(US 2009/0098764 Al, published Apr. 16, 2009).
Claims 13-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parker, Zhang, Wedell, and Hein (US
2010/0182786 Al, published July 22, 2010).
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parker, Zhang, Wedell, and Bailey
(US 7,556,399 Bl, issued July 7, 2009).
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parker, Zhang, Wedell, and Brower et
al. (US 2006/0203493 Al, published Sep. 14, 2006).
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parker, Zhang, Wedell, and Recker et
al. (US 2010/0141153 Al, published June 10, 2010).
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parker, Zhang, Wedell, Wijbenga et al.
(US 2006/0239007 Al, published Oct. 26, 2006) and Lewin et al. (US
2010/0073927 Al, published Mar. 25, 2010).
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parker, Janos, and Branch et al. (US
5,309,145, issued May 3, 1994).
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Application 12/774,551
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Parker, Branch, Janos, Lewin, and
Sjobom (US 5,896,093, issued Apr. 20, 1999).
ANALYSIS
After consideration of each of Appellant's arguments, we agree with
the Examiner. We refer to, rely on, and adopt the Examiner's findings and
conclusions as set forth in the Examiner's Answer and in the action from
which this appeal was taken. (Ans. 20-21; Final Act. 2-17). Our discussion
will be limited to the following points of emphasis.
Rejection of Claims 1-3, 9, 10, and 12
In rejecting claim 1, in the Final Action the Examiner relies on Zhang
to teach or suggest "a casting configured to receive a support coupled to the
lower cover," Wedell to teach or suggest "a heat sink integral with the
casting," and Figure 1 of Parker, which depicts one embodiment of a
lighting fixture, to teach or suggest the remaining claim limitations. (Final
Act. 2-3). The Examiner determines it would have been obvious to one of
ordinary skill in the art to modify Parker's housing of Figure 1 with Zhang's
engaging hole for receiving a support pole and Wedell's lower housing
which acts as a heat sink to "securely mount[] the fixture on a pole above a
roadway or street, and to reduce the [number of] parts within the fixture by
integrating the heat sink with the lower housing in order to reduce
maintenance for the fixture." (Final Act. 3).
Appellant contends the Examiner's proposed modification would
render Parker unsatisfactory for its intended purpose. (App. Br. 8).
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Application 12/774,551
Specifically, Appellant argues because Parker's Figure 1 is "contemplated a
ceiling or wall mounted lighting fixture[,]" modifying Parker to receive a
support coupled to the lower cover would "impair the ability of the Parker
assembly to be mounted to a ceiling or wall" because it would "result in a
rounding of the housing[.]" (App. Br. 8-9, citing Parker i-f 14, Fig. 1).
Appellant asserts the Examiner's rationale to combine is not reasonable for a
lighting fixture which is intended to be mounted on a wall or ceiling. (App.
Br. 9-10).
At the outset, we note Appellant's identification of the intended
purpose of Parker's invention is too narrow. The intended purpose of
Parker's light fixture is "to comply with pertinent laws while maximizing the
ability to obtain a determined amount and type of lighting when so desired."
(Parker, Abstract; see also Parker i1i19, 29, claims 1--4). Parker discloses
one configuration of its lighting fixture in Figure 1, which is "contemplated
a ceiling or wall mounted lighting fixture," and another configuration in
Figure 2, which is a pathway lighting fixture including a mounting unit for
attachment with the ground. (Parker i-fi-f 14, 16). Moreover, as the Examiner
points out, Parker contemplates other lighting fixture configurations. (Ans.
20, citing Parker i130, claims 1-3). Such disclosure indicates that Parker's
intended purpose may be met with different configurations of the light
fixture.
To the extent Appellant bases this argument on a bodily incorporation
of Zhang's teachings into Parker~ we are also unpersuaded. Our reviewing
court states:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
stn1cture of the primary reference .... Rather, the test is what
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Application 12/774,551
the cornbined teachings of the references would have suggested
to those of ordinary skm in the art
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant has not presented
persuasive evidence showing that mounting Parker's light fixture using the
technique taught by Zhang would have been beyond the technical grasp of a
person having ordinary skill in the art. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007); see also id. at 421 ("A person of ordinary skill is
also a person of ordinary creativity, not an automaton."). Nor has Appellant
identified any evidence that such a modification to Parker's Figure 1 device
would require material and radical modification or substantial reconstruction
and redesign. Appellant has not identified, and we are unable to find in the
record before us, any evidence that such a combination was "uniquely
challenging or difficult for one of ordinary skill in the art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citation omitted).
Based on the foregoing, we are not persuaded the Examiner's
proposed modification renders Parker unsatisfactory for its intended
purpose. Accordingly, we find the Examiner articulates adequate reasoning
with rational underpinning as to why one of ordinary skill in the art would
have combined Parker, Zhang, and Wedell to result in the claimed light
fixture. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellant also contends the Examiner's proposed modification to
Figure 1 would change the structure of Parker. (App. Br. 10-11). In
support, Appellant points to the embodiment in Figure 2, which is a pagoda
lighting fixture that includes a support for mounting along a pathway, and
argues changing the mounting arrangement of Figure 1 to the mounting
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Application 12/774,551
arrangement of Figure 2 results in an arrangement where the induction-based
light sources are no longer between the lens and reflector, as recited in claim
1. (App. Br. 10-11, citing Parker i-f 16; see also Reply Br. 5). Appellant
contends:
[ t ]he inclusion of a separate embodiment which includes a
support mounted light fixture, clearly indicates that simply
attaching a support to the structure of Figure 1 of Parker
without adjusting the arrangement of the optical elements in
Parker would not result in a light fixture able to control a
direction of light propagation.
(App. Br. 12).
We are not persuaded by Appellant's arguments. As the Examiner
pointed out in the Answer, Figure 2 teaches or suggests the same claim
limitations as the Examiner relied upon in Figure 1. (Ans. 20-21). 2 Under
the broadest reasonable interpretation of the term "between," we agree with
the Examiner that the induction based light source is still positioned between
the lens and reflector in the configuration of Figure 2. (Ans. 20-21).
However, even if we did not so find, as discussed above, Appellant has not
directed us to anything other than attorney argument to support the assertion
that a person of ordinary skill in the art would not have been able to modify
Parker's Figure 1 device to incorporate the teachings of Zhang.
2 In the Reply Brief, Appellant argues the Examiner's reliance on Figure 2 in
the Answer is a new ground of rejection that should not be considered by the
Board. (Reply Br. 5---6). \Vhere the Examiner's Answer contains a "new
ground" of rejection not designated as such, remedy may be sought by way
of petition under 37 C.F.R. 1.181. See MPEP § 1207.03(b); see also 37
C.F.R. 41 AO. Appellant, having elected to maintain this appeal by filing a
reply briel~ has waived any right to remedy that may have existed via
petition for purposes of the present appeal.
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Application 12/774,551
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of independent claim 1. For the same reasons, we sustain the Examiner's
rejection of dependent claims 2, 3, 9, 10 and 12, not separately argued.
Rejection of Claim 20
In the rejection of claim 20, the Examiner relies on Branch to teach or
suggest a "controller arranged to dim the light source to a low luminance
state responsive to the first signal." (Final Act. 15, citing Branch col. 7,
lines 49--51). Branch describes "[i]n the 'Auto' mode of operation selected
at 52 the lamp 16 will be illuminated to a relatively dim level of illumination
upon the detection of motion[.]" (Branch, col. 7, lines 49--51 ).
Appellant contends Branch describes arrangements where a bright
light is turned on or a dim light is turned on, but not the ability to dim a light
source to a low luminance state. (App. Br. 16; Reply Br. 7). Specifically,
Appellant contends Branch uses the term "dim" as an adjective to describe
the type of light, whereas Appellant uses the term "dim" as a verb to
describe the capabilities of the recited light fixture. (App. Br. 16).
We are not persuaded by Appellant's arguments. The Examiner finds,
and we agree, Branch teaches a component for controlling the dimming of
the intensity of a light depending on a detected ambient condition. (Ans. 21,
citing Branch col. 5, lines 3-10, and col. 15, lines 13-15; see also col. 7,
lines 49--51). 3 Even if we were to accept Appellant's contention that a light
3 In the Reply Brief, Appellant argues the Examiner's reliance on column 5,
lines 3-10 and column 7, lines 13-15 of Branch in the Answer is a potential
new ground of rejection that should not be considered by the Board. (Reply
Br. 7). As set forth above in footnote 2, Appellant, having elected to
maintain this appeal by filing a reply brief, has waived any right to rernedy
that may have existed via petition for purposes of the present appeal.
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Appeal2014-001166
Application 12/774,551
dimmed to a low luminance state is not described explicitly in Branch,
Appellant has not proffered sufficient evidence or argument that such
dimming would have been '"uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art" l)~eeLeapfrog, 485 F.3d at 1162 (citingKSR, 550 U.S. at 418),
Therefore, we agree with the Examiner that Branch teaches, or at least
suggests, dimming the light source to a low luminance state responsive to
the first signal. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 20.
Rejection of Claims 4---8, 13-19, and 21
Appellant does not provide separate arguments for the Examiner's
rejections of claims 4--8, 13-19, and 21. Accordingly, we sustain the
Examiner's 35 U.S.C. § 103(a) rejection of claims 4--8, 13-19, and 21 for
the same reasons discussed above.
DECISION
For the above reasons, the Examiner's rejection of claims 1-10 and
12-21 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)(l )(iv) .
AFFIRMED
tj
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