Ex Parte Pickard

Patent Trial and Appeal Board

Oct 31, 2017

12546915 (P.T.A.B. Oct. 31, 2017)

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.
931 087 NP 4272
EXAMINER
GRAMLING, SEAN P
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
12/546,915 08/25/2009
25191 7590 10/31/2017
BURR & BROWN, PLLC
PO BOX 7068
SYRACUSE, NY 13261-7068
Paul Kenneth PICKARD
10/31/2017 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 PAUL KENNETH PICKARD
Appeal 2017-000923
Application 12/546,915
Technology Center 2800
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
SHELDON M. McGEE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-000923
Application 12/546,915
Appellant appeals under 35 U.S.C. § 134 the Final Rejection of claims
1—5, 8—16, and 19—33. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to lighting devices having a non­
isolated power supply and/or configured to operate on a current of at least 65
volts (Spec. 1:8—9).
Claim 1 is illustrative:
1. A lighting device comprising:
at least one solid state light emitting light source;
a power supply; and
a housing,
said at least one light source and said power supply within said
housing,
said power supply configured to supply power to said at least one light
source,
said housing comprising at least one light passing structure,
said light passing structure comprising at least a first thermoplastic
material, and
said light passing structure substantially transparent,
said first thermoplastic material is UL 94 5VA rated
or
said first thermoplastic material is UL 94 VO rated and said light
passing structure passes the UL 94 5 VA inch flame test, and
wherein when power is supplied to said light source, said light source
emits light source light, and at least a portion of said light source light
passes through said light passing structure.
(emphasis added to indicate argued limitations).
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Appeal 2017-000923
Application 12/546,915
Appellant appeals the following rejections:
1. Claims 1-3, 5, 8, 9, 11-14, 16, 19, 20, 22-24, 26-28, 30, and31 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Shan
(US 7,307,391 B2; Dec. 11, 2007) in view of Shaner (US
2010/0085751 Al; Apr. 8, 2010).
2. Claims 1-3, 5, 8, 9, 11-14, 16, 19, 20, 22-24, 26-28, 30, 31, and 33
are rejected under 35 U.S.C. § 103(a) as unpatentable over Calzaretta
(US 6,793,369 B2; Sept. 21, 2004) in view of Shaner.
3. Claims 4, 10, 15, 21, 25, 29, and 32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Calzaretta in view of Shaner, and Baretz
(US 6,600,175 Bl; July 29, 2003).
FINDINGS OF FACT & ANALYSIS
REJECTIONS (1) AND (2)
Appellant argues subject matter common to independent claims 1, 12,
22, and 26 in each of rejections (1) and (2) (App. Br. 10-19). We select
claim 1 as representative of the argued claims. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that the combination of Shaner with either Shan or
Calzaretta fails to provide a lighting device that satisfies UL 1598 standards
(i.e., a light device that includes structures or mechanisms to prevent
accidental contact of a user with the active electrical components and to
prevent hot material from escaping the lighting device in the event of fire)
(App. Br. 10-11,18-19; Spec. 1:14—17). Appellant contends that Shan does
not disclose a light passing structure that comprises at least one
thermoplastic material and Shaner does not disclose that all of the materials
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Appeal 2017-000923
Application 12/546,915
that it discloses are suitable for making the enclosure cover 40 have a flame
resistance rating of UL 94 5VA (App. Br. 12; Reply Br. 2—3, 5). Appellant
argues that neither Shan nor Shaner contains any suggestion that making
Shan’s cover 107 out of a thermoplastic material would be expected to be
successful in a situation where it is necessary for the cover 107 to be
enclosure-rated (i.e., where the lighting system 10 includes a non-isolated
power supply and/or where a power supply supplies power to a light source
at a voltage of at least 65 volts) (App. Br. 13).
The Examiner finds that Shan or Calzaretta teaches the subject matter
of claim 1, except for the lens passing structure comprising at least a first
thermoplastic material which is UL 94 V0 rated or UL 94 5VA rated (final
Act. 2—3, 13). The Examiner finds that Shaner teaches using thermoplastic
materials that are UL 94 5VA rated for light passing structures1 (final Act.
3, 14). The Examiner concludes that it would have been obvious to use
Shaner’s thermoplastic material that is UL 94 5VA rated for the light
passing structure in Shan or Calzaretta in order to provide a durable and
flame resistant light passing structure because it would have been within the
1 The Examiner makes a separate finding that Appellant admits on page 15
of the Specification that thermoplastic materials that are UL 94 5VA rated
are common in the art (final Act. 3, 14). Appellant disputes whether the
page 15 disclosure is admitted prior art (Reply Br. 3—4). Appellant contends
that the page 15 disclosure is Appellant’s own invention as to the use of the
materials in a light passing structure and Appellant’s only admission is that
these materials are commercially available (Reply Br. 4). The disclosure
referenced by the Examiner is made in the “Detailed Description of the
Inventive Subject Matter” section of the Specification. Because we do not
find that Appellant’s page 15 disclosure constitutes an admission that use of
thermoplastics having the UL 94 5VA rating were known to be used for light
passing structures, we do not rely on this finding of the Examiner in our
analysis of the rejection.
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Application 12/546,915
general skill of one of ordinary skill in the art to select a known material on
the basis of its suitability for the intended use (Final Act. 3, 14).
We find that the preponderance of the evidence favors the Examiner’s
obviousness conclusion. The Examiner finds that Shan and Calzaretta each
teach a light passing structure (107 in Shan and 22 in Calzaretta) that
encloses the light source and power supply (Final Act. 2 and 13). Shan and
Calzaretta do not disclose what the properties are of the light passing
structure. The Examiner relies upon Shaner to teach using an enclosure
cover 40 made preferably of material having a flame resistance rating of UL
94 5VA (Shaner 113). Shaner discloses that the enclosure 40 may be made
of polymeric material such as polycarbonate, polystyrene, or acrylic. Id.
Shaner discloses that the cover over the light source and circuitry is flame
resistant and partially transparent (Shaner 14). Shaner discloses that using a
flame resistant cover over the light source and circuitry fulfills a need to
enclose the light source and circuitry together in a simplified construction
while satisfying industry safety requirements (Shaner 13).
Based upon these disclosures, the Examiner reasonably concludes that
it would have been obvious to use Shaner’s flame resistant, transparent
cover for the light as the light passing structure in Shan or Calzaretta in
order to provide a durable, flame resistant light passing structure. Contrary
to Appellant’s argument, Shaner’s teachings provide a reasonable
expectation of success in using Shaner’s thermoplastic cover material as a
light passing structure. Indeed, Shaner teaches that the enclosure cover 40
may include lenses 46 made from the same material as the rest of the
enclosure cover 40 in order to allow light to pass through (Shaner 114). We
are unpersuaded by Appellant’s argument that Shaner’s preference for a
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Application 12/546,915
flame resistant material does not mean every material used to form the cover
layer is flame resistant. We understand Shaner’s paragraph 13 to disclose a
preference for flame resistant materials which includes polymers such as
polycarbonate that pass the UL 94 5VA standard. In other words, Shaner
prefers materials, including thermoplastics that comply with the flame
resistance standard UL 94 5VA. Whether Shaner includes non-preferred
embodiments that do not have the flame resistance does not detract from the
preference for materials, including thermoplastics that have a flame
resistance. Indeed, Shaner teaches using the flame resistant cover to enclose
the light source and circuitry in order to satisfy safety requirements (Shaner
13).
Appellant’s argument that neither Shan nor Shaner provide any
suggestion that using a thermoplastic cover member would be expected to be
successful in a situation where it is necessary for the cover to be “enclosure­
rated, i.e., where the lighting system 10 includes a non-isolated power
supply and/or where a power supply supplies power to a light source at a
voltage of at least 65 [vjolts” relies on a definition of enclosure rated that is
different than in the Specification (App. Br. 13). The Specification
describes “enclosure rated” as “i.e., in which either (1) the light passing
structure is made of a material which is UL 94 5VA rated, or (2) the light
passing structure is made of a material which is UL 94 V0 rated and the
light passing structure passes the UL 94 5VA 5 inch flame test.” (Spec.
2:14—17). Nevertheless, under either definition of “enclosure rated” the
combined teachings of Shan or Calzaretta and Shaner would have suggested
substituting Shaner’s flame resistant thermoplastic cover member for Shan’s
or Calzaretta’s light passing member. Shaner provides the motivation for
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Application 12/546,915
making such a substitution: To satisfy industry safety standards for
enclosing a light source and dangerous circuitry (Shaner 13).
The Examiner finds that the claims do not recite a non-isolated power
supply and so Appellant argues limitations not in the claims (Ans. 6). We
agree. The Examiner finds that the Specification does not define “power
supply” and the Examiner gives the phrase its broadest reasonable
interpretation as including any device that supplies electrical power to
another device (Ans. 6). The Examiner further finds, however, that Shan
and Calzaretta teach a light source and power supply (i.e., 205 in Shan and
15 in Calzaretta) inside a housing and covered by a cover layer (i.e., an
enclosure surrounding the power supply and light source) (Ans. 6; Final Act.
2, 13). Appellant does not dispute the Examiner’s findings with regard to
Shan and Calzaretta teaching a power supply (Reply Br. generally).
Therefore, when Shan or Calzaretta is modified according to the teachings of
Shaner, an enclosure rated structure as that term is described in the
Specification would have been achieved. Appellant’s arguments against
Shan, Calzaretta, and Shaner attack the references individually instead of
addressing what the combined teachings would have suggested to the
ordinarily skilled artisan.
On this record, we affirm the Examiner’s § 103 rejections, over Shan
or Calzaretta in view of Shaner.
REJECTION (3)
Appellant’s arguments regarding rejection (3) focus on whether
Baretz teaches the limitations argued to be missing from Calzaretta and
Shaner (App. Br. 21). Appellant contends that Baretz does not disclose a
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Application 12/546,915
light device comprising a non-isolated power supply and/or a power supply
configured to supply power to a light source at a voltage of 65 volts. Id.
Appellant argues that Baretz would not provide any degree of expected
success if one of the materials disclosed in Shaner or Baretz was selected to
make the lens for the light fixture of Calzaretta that is configured as an
enclosure-rated housing (App. Br. 21).
Appellant’s arguments are not persuasive because they fail to address
and show reversible error with the specific findings of the Examiner’s
rejection. In particular, the Examiner relies on Baretz to teach that solid
state emitters having luminescent material are common in the art (Final Act.
23). The Examiner relies on Calzaretta to teach the particular light housing
structure and Shaner to teach the particular thermoplastic material for the
cover material (Final Act. 13, 14, 23). We find Appellant’s arguments
regarding Calzaretta and Shaner to be unpersuasive for the reasons discussed
above with rejections (1) and (2).
On this record, we affirm the Examiner’s § 103 over Calzaretta,
Shaner, and Baretz.
DECISION
The Examiner’s decision rejecting claims 1—5, 8—16, and 19-33 under
35 U.S.C. § 103(a) is affirmed.
No more time for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED
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