Ex Parte Smith et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11486494 (B.P.A.I. Jul. 31, 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.
11/486,494 07/14/2006 Matthew R. Smith DP-314764 4412
22851 7590 07/31/2012
Delphi Technologies, Inc.
M/C 480-410-202
P.O. Box 5052
Troy, MI 48007
EXAMINER
MCNALLY, KERRI L
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
07/31/2012 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 MATTHEW R. SMITH,
GERALD J. WITT, and HARRY ZHANG
____________________

Appeal 2010-006131
Application 11/486,494
Technology Center 2600
____________________

Before: MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006131
Application 11/486,494

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention is a light warning system and method
for warning a driver of a vehicle of a sensed condition. See Abstract.
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A light warning system for a vehicle, said system
comprising:

a lighting device in a vehicle for generating a light beam
in a region generally forward of and viewable to a passenger in
the vehicle;

a detection device for detecting a condition desirable of a
warning and generating a warning signal; and

a controller processing the warning signal and
determining whether to present a light beam warning displayed
to the passenger, said controller controlling the lighting device
to generate a flashing light beam, wherein the lighting device is
activated on and off such that the light beam flashes on and off
for a total time period of less than one-half second to draw the
passenger's attention to the generally forward region without
distracting the passenger.

REFERENCES and REJECTIONS
Appeal 2010-006131
Application 11/486,494

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The Examiner rejected claims 1, 4-10, 13, 14, 16-20, 22, and 23 under
35 U.S.C. § 103(a) based upon the teachings of Rothkop (US Patent App.
Pub. No.: 2004/0090317 A1, May 13, 2004), and Boser (US 5,389,913, Feb.
14, 1995).
The Examiner rejected claims 2 and 21 under 35 U.S.C. § 103(a)
based upon the teachings of Rothkop, Boser, and further in view of
Henderson (US 5,264,826, Nov. 23, 1993).
The Examiner rejected claims 3 and 15 under 35 U.S.C. § 103(a)
based upon the teachings of Rothkop, Boser and further in view of Swallow
(US 7,412,264 B2, Aug. 12, 2008, filed Nov. 26, 2004).
The Examiner rejected claims 11 and 24 under 35 U.S.C. § 103(a)
based upon the teachings of Rothkop, Boser and further in view of Gallant
(US 7,327,239 B2, Feb. 5, 2008, filed Aug. 5, 2005).
The Examiner rejected claim 12 and 25 under 35 U.S.C. § 103(a)
based upon the teachings of Rothkop, Boser and further in view of Fuse (US
5,796,350, Aug. 18, 1998).

ISSUE
The pivotal issue is whether the Examiner erred in finding that the
combination of Rothkop and Boser teaches or suggests the limitation of “the
lighting device is activated on and off such that the light beam flashes on
and off for a total time period of less than one-half second to draw the
passenger’s attention to the generally forward region,” as recited in claim 1.

Appeal 2010-006131
Application 11/486,494

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PRINCIPLES OF LAW
The KSR Court recognized that when “there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.” KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference …. Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” Id. at
425.

ANALYSIS
Claims 1, 4-10, 13, 14, 16-20, 22, and 23
Appellants argue that Boser is not within the field of Appellants’
endeavor because it pertains to a warning system that flashes vehicle exterior
lights to warn drivers of other vehicles that the horn of another vehicle is
sounded (App. Br. 13). Appellants explain that this is in contrast to a light
warning system that warns the driver of a vehicle of some specific event
(App. Br. 13).
Appellants further state that Boser is outside of the field of Appellants'
endeavor, and thus, that the determination of whether Boser is analogous art
hinges on whether it is reasonably pertinent to the problem with which
Appellants were concerned (App. Br. 13). Appellants explain that their
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invention is directed to a light warning to notify the driver of a detected
condition without distracting the driver; whereas Boser is directed to
warning other vehicles by flashing the vehicle’s various lights, particularly
when the sound of the horn may not be heard (App. Br. 13). Accordingly,
Appellants conclude that Boser is not reasonably pertinent to the particular
problem that Appellants address (App. Br. 14).
We are not persuaded by Appellants’ arguments. We agree with the
Examiner that Boser is analogous art because it pertains to the broader
problem of vehicle warning systems and, in particular, flashing lights to
make drivers aware of conditions requiring attention (Ans. 13).
Appellants also argue that Rothkop’s light emitters must be displayed
for a sufficiently long time period (presumably much longer than one-half
second) to communicate visual information to the driver which is not
properly combinable with Boser if flashing is applied for a period of less
than one-half second (App. Br. 14-15). Appellants further dispute that
Rothkop teaches the claimed total time period (App. Br. 15).
The Examiner acknowledges that Boser teaches a flashing rate of one
quarter of a second and not a total time period of less than one-half second
(Ans. 12). However, Boser also discloses the flashing happens so that the
“[o]ptimum flashing rate would depend upon appreciable experience” (col.
4, ll. 5-6). Thus, one of ordinary skill could ascertain that a total time period
of less than one-half a second with a flashing rate of less than a quarter of a
second (col. 4, ll. 4-15) would be sufficient to attract a driver’s attention.
This would have been a predictable solution, among a finite number of
solutions, because a person of ordinary skill would recognize that a flashing
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effect for less than one-half of a second would attract a driver’s attention.
See KSR, 550 U.S. at 421.
Furthermore, we agree with the Examiner (Ans. 12) that it would have
been obvious to one skilled in the art to flash a light for less than one-half a
second to attract a driver’s attention, as taught by Boser, and then remain
continuously lit to communicate the vehicle condition to the driver as taught
by Rothkop. We further agree with the Examiner (Ans. 13) that nothing in
the claimed language precludes the light remaining lit after flashing.
Furthermore, the Examiner is not proposing combining the physical
exterior lights (i.e., headlights) of Boser with Rothkop, but rather relies on
Boser for teaching the flashing rate of one quarter of a second (Ans. 15).
The test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference (i.e.,
the rate of flashing lights of Boser being incorporated into the warning
system of Rothkop). Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art
(i.e., flashing rate of one quarter of a second to attract attention). See Keller,
642 F.2d at 426.
Accordingly, we will affirm the Examiner’s § 103 rejection of claim 1
and for the same reasons the rejections of 4-10, 13, 14, 16-20, 22, and 23
which were not separately argued.
Claims 2 and 21
Appellants argue that Henderson, similar to Boser, provides a flashing
circuit, activated in response to an emergency switch, for generating a signal
at a frequency of about 10 Hz applied to the left and right turn indicator
lights and head light of a motorcycle for alerting drivers of other vehicles
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(App. Br. 17). Appellants explain that Henderson, similar to Boser, relates
to warning other vehicles, as opposed to a warning indicator for the driver of
the vehicle in which it is installed (App. Br. 17-18).
We are not persuaded by Appellants’ arguments. The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference (i.e., left and
right light indicator signals being incorporated into the warning system of
Rothkop). Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art (i.e., a
flashing light frequency of about 10 Hz to attract attention). See Keller, 642
F.2d at 426.
Accordingly, we affirm the Examiner’s rejection of claims 2 and 21.
Claims 3 and 15
Appellants argue that one ordinary skill in the art would not have
turned to a personal monitor of Swallow to combine with Boser and
Rothkop (App. Br. 18).
We are not persuaded by Appellants’ arguments. Swallow teaches an
LED indicator that flashes on for one tenth of a second (see col. 5, ll. 58-65).
Thus, Swallow meets the claim limitation of “wherein the light beam flashes
on for a time period of less than one quarter second,” as one-tenth of a
second is less than one-quarter of a second.
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference (i.e., a display with LEDs being incorporated into the warning
system of Rothkop), but rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art
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(i.e., flashing light for a time period less than one-quarter of a second). See
Keller, 642 F.2d at 426.
Accordingly, we affirm the Examiner’s rejections of claims 3 and 15.
Claims 11 and 24
Appellants do not present any additional arguments of patentability
with respect to claims 11 and 24 (App. Br. 19). Accordingly, we affirm the
Examiner’s rejections of these claims.
Claims 12 and 25
Appellants argue that Fuse reduces luminance of a speed sensing
display to minimize the driver’s attention to prevent annoyance; whereas the
claimed invention adjusts brightness of a lighting device based on head pose
directivity in a system that is intended to draw the driver’s attention to the
generally forward region of the vehicle (App. Br. 19).
We are not persuaded by Appellants’ arguments. We agree with the
Examiner (Ans. 17) that Fuse teaches an automobile screen control
apparatus that detects whether the left flasher is on, and thus detects that the
driver’s line of sight is to the left and dims the lighting of a screen when the
screen is within the driver’s line of sight (Abstract). Thus, we agree with the
Examiner that detecting the line of sight meets the claimed limitation of “a
head pose directivity” because detecting a line of sight of a driver would also
indicate the directivity of the head pose (Ans. 17).
Thus, it would have been obvious to one of ordinary skill in the art at
the time the invention was made to dim the lights of Rothkop when they are
within the driver’s line of sight to “prevent driver annoyance” (see Ans. 17
and Fuse’s Abstract).
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The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference (i.e., a display to prevent annoyance into the warning system of
Rothkop), but rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art (i.e.,
dimming the lights in Rothkop in a head pose directivity to prevent driver
annoyance as taught by Fuse). See Keller, 642 F.2d at 426.
Thus, we affirm the Examiner’s rejections of claims 12 and 25.

CONCLUSION
The Examiner did not err in finding that the combination of Rothkop
and Boser teaches or suggests the limitation of “the lighting device is
activated on and off such that the light beam flashes on and off for a total
time period of less than one-half second to draw the passenger’s attention to
the generally forward region,” as recited in claim 1.

DECISION
The Examiner’s decision rejecting claims 1-25 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)(2010).

AFFIRMED

Vsh