Ex Parte Sears

Patent Trial and Appeal Board

Sep 10, 2013

11970026 (P.T.A.B. Sep. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/970,026 01/07/2008 Ernest Halsey Sears KBBYA-0001 2226
64275 7590 09/11/2013
M. Keith Blankenship
1602 Village Market Blvd. SE, Ste. 260
Leesburg, VA 20175
EXAMINER
SEMBER, THOMAS M
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
09/11/2013 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 AND APPEALS
____________
Ex parte ERNEST HALSEY SEARS
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Appeal 2011-004481
Application 11/970,026
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-12, and 14-31 under 35 U.S.C. § 102(b) as
anticipated by Gurz (U.S. 5,539,623 published July 23, 1996). The
Examiner withdrew the rejection of claims 2 and 13 (Ans. 3); accordingly,
the appeal is dismissed as to those claims. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-004481
Application 11/970,026

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BACKGROUND

Claim 1 is illustrative of the invention:
1. A modular stair unit for creating an illumination effect on a
stairway, said stair unit comprising:
a body having a substantially planar dorsal surface and a ventral
surface, defining an interior void between said dorsal surface and said
ventral surface, said void adapted to allow substantially unobstructed light
transmission;
a housing, adjoiningly mounted to said ventral surface of said body,
having a substantially diffusive backing surface and forming a transmission
aperture proximate to said ventral surface of said body;
a light source positioned within said housing for transmitting light
within said housing; and
a power source inlet in electrical communication to said light source.

Three other independent claims 11, 17, and 21 are also all drawn to a
modular stair unit. Appellant argues all of the claims rejected under 35
U.S.C. § 102 (b) as a group (Br. VII A). Thus, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), we select independent claim 1 as the representative claim
on which our discussion will focus.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s finding that the subject matter of Appellant’s
claim 1 is anticipated. We sustain the above rejection based on the findings
of fact and rebuttals to arguments1 expressed by the Examiner in the
Answer.

1 No Reply Brief has been filed.
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Application 11/970,026

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We add the following for emphasis only. The main issue on appeal is
the weight to be given to the claim preamble of a “stair unit”. Appellant
does not present any arguments to refute the Examiner’s detailed findings
with respect to the claim elements recited in the body of the claim (Br.
generally). Rather, he argues that since the lighting device/sign of Gurz is
not a “stair unit”, it cannot anticipate any of Appellant’s claims (Br. Section
VIIA).
During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“An essential purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Moreover, it is
during prosecution that applicants have “the opportunity to amend the claims
to obtain more precise claim coverage.” American Academy, 367 F.3d at
1364.
As to the preamble, “[i]f the claim preamble, when read in the context
of the entire claim, recites limitations of the claim, or, if the claim preamble
is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim
preamble should be construed as if in the balance of the claim.… If,
however, the body of the claim fully and intrinsically sets forth the complete
invention, including all of the limitations, and the preamble offers no distinct
definition of the claimed invention's limitations, but rather merely states, for
example, the purpose or the intended use of the invention, then the preamble
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Application 11/970,026

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is of no significance to claim construction because it cannot be said to
constitute or explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
The Examiner’s position that that the preamble does not add any
further limitations to those recited in the body of the claim is reasonable. In
this instance, the body of claim 1 sets forth a complete light structure, as the
preamble does not provide a limitation to any of the elements recited in the
body of the claim. See IMS Technology, Inc. v. Haas Automation, Inc., 206
F.3d 1422, 1434 (Fed. Cir. 2000) (“If the preamble adds no limitations to
those in the body of the claim, the preamble is not itself a claim limitation
and is irrelevant to proper construction of the claim.”).
Furthermore, the Examiner’s position is that to the extent any weight
needs to be given to the preamble phrase “stair unit”, the rectangular light
unit of Gurz need only be capable of use as a stair unit (e.g., Ans. 9-11).
Appellant’s Specification states the stair unit may be used as a riser or a
tread (Spec. 3:12), it may be installed on a pre-existing stairway (Spec. 3:7-
6), it may be fabricated of PVC, wood, aluminum, steel or “any other
material common to the construction industry” (Spec. 10:13-14), and that the
dimensions of the housing are “generally unlimited” (Spec. 10:14).
On this record, Appellant has not directly addressed or provided any
specific response to the Examiner’s reasonable determination that the light
unit of Gurz would have been capable of being used as a stair unit to
illuminate a stairway (Ans. 9-11), for example only, as an illuminated riser.
Accordingly, the decision of the Examiner is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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