Ex Parte TAI et al

Patent Trial and Appeal Board

Jul 28, 2017

14047793 (P.T.A.B. Jul. 28, 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.
14/047,793 10/07/2013 CHIEN-HUNG TAI GBJO006 8389
98346 7590 08/01/2017
Bayramoglu Law Offices LLC
2520 St. Rose Parkway
Suite 309
Henderson, NV 89074
EXAMINER
NORTON, NADINE GEORGIANNA
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
in@bayramoglu-legal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIEN-HUNG TAI and MICHAEL TAI-HAO WEN
Appeal 2016-000707
Application 14/047,7931
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—24. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, “[t]he real party in interest in this application
is Jet Optoelectronics Inc.” Appeal Br. 4.
Appeal 2016-000707
Application 14/047,793
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1,10, and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An in-vehicle lighting device set inside a vehicle for emitting
dome light, the in-vehicle lighting device comprising:
an input circuit for inputting a plurality of commands
comprising [sic a] characteristic of the dome light, wherein the
characteristic of the dome light includes a predetermined and
focused shape, color, and brightness of the dome light;
a scalar processor wherein the scalar processor receives a
data from an MCU processor; wherein the data describes the
predetermined and focused shape, color, and brightness of the
dome light and the scalar processor outputs a panel signal
representing the predetermined and focused shape, color and
brightness of the dome light, and the panel signal generated by
the scalar processor applied to a display monitor to emit the dome
light with the characteristics of the predetermined and focused
shape, color and brightness, therefore the scalar processor
controlling the predetermined focused shape, color, and
brightness of the dome light;
wherein the display monitor receives the panel signal to
emit the dome light that matches the predetermined and focused
shape, color and brightness characterized in the panel signal
received from the scalar processor or display a plurality of
multimedia contents based on the panel signal, wherein a
backlight of the display monitor or the display monitor itself is
used to generate the dome light with the characteristics of the
predetermined and focused shape, color and brightness as dome
light lamp of the vehicle when the display monitor is used as the
dome light lamp of the vehicle, and the backlight of the display
monitor or the display monitor itself is used to provide backlight
of the multimedia contents when the display monitor is used to
play the multimedia contents.
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Appeal 2016-000707
Application 14/047,793
Rejections
The Examiner maintains, and the Appellants appeal, the following
rejections:
I. Claims 1, 2, and 10 under 35 U.S.C. § 103(a) as unpatentable
over Farley et al. (US 2012/0153839 Al, pub. June 21, 2012; hereinafter
“Farley”) and Hutzel et al. (US 2012/0120239 Al, pub. May 17, 2012;
hereinafter “Hutzel”);
II. Claims 1 and 10 under 35 U.S.C. § 103(a) as unpatentable over
view of Ueno (JP 2013-125783 A, pub. June 24, 2013; hereinafter “Ueno”)
and Hutzel;
III. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, and Anderson, Jr. et al. (US 2003/0002273 Al, pub. Jan. 2, 2003;
hereinafter “Anderson”);
IV. Claims 4, 5, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Farley, Hutzel, and Anderson;
V. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, and Degner et al. (US 2005/0207086 Al, pub. Sept. 22,
2005; hereinafter “Degner”);
VI. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, Degner and Arakawa (US 7,447,887 B2, iss. Nov. 4,
2008);2
2 The Examiner identifies the US patent number of Arakawa as “US
7,447,997 B2.” See, e.g., Final Act. 59. However, patent number US
7,447,997 B2 is directed to a reference not identified as Arakawa. A
reference by the name of Arakawa has a similar patent number, US
7,447,887 B2 and the content of the reference appears to reflect the
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Application 14/047,793
VII. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, Degner, Arakawa, and Ueno;
VIII. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, Degner, Arakawa, and Vdovin et al. (US 2013/0334559
Al, pub. Dec. 19, 2013; hereinafter “Vdovin”);
IX. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, and Gordon (US 4,207,611, iss. June 10, 1980);
X. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, Gordon, Arakawa, and Degner;
XI. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, Gordon, Arakawa, Degner, and Vdovin;
XII. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, and Anderson;
XIII. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, Gordon, Arakawa, Degner, and Vdovin;
XIV. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, Arakawa, Degner, and Vdovin;
XV. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, and Gordon;
XVI. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Farley,
Hutzel, Anderson, Gordon, Ueno, Arakawa, and Degner;
XVII. Claims 21—24 under 35 U.S.C. § 103(a) as unpatentable over
Farley, Hutzel, Anderson, Gordon, Ueno, Arakawa, Degner, and Vdovin;
and
Examiner’s findings. As such, we understand US 7,447,887 B2 to be the
correct patent number for the Arakawa reference.
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Application 14/047,793
XVIII. Claims 6—24 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the enablement requirement.
ANALYSIS
Rejections I & III—XVII
After considering the positions expressed by the Examiner in the Final
Office Action and Answer, and by the Appellants in the Appeal and Reply
Briefs, we do not sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 103(a) as unpatentable over Farley and Hutzel.
The Appellants argue that the Examiner fails to state a reason “to
combine the hospital light testing disclosure from Farley with the imaging
system of an internal rearview mirror from Hutzel.” Reply Br. 3; see also
Appeal Br. 16, 17—18, 27—29. The Appellants’ argument is persuasive
because the Examiner’s reasoning as to why one of ordinary skill in the art
would combine teachings from Farley and Hutzel appears logically strained
and the result of impermissible hindsight.
The Examiner reasons that:
It would have been obvious for one of ordinary skill in the
art to combine Farley with Hutzel at the time the invention was
made since Hutzel discloses that the pendant accessory may hang
from the rear view mirror and perform an additional function of
a baby monitor so a user would not have to turn their head during
driving for inceased [sic] safety to monitor rear occupants.
Final Act. 11. Farley does not disclose the location of the dome light to be
in a vehicle. The Examiner relies on Hutzel’s teaching of a baby monitor
attached to a rear view mirror of a vehicle to modify the teachings of Farley.
See Final Act. 11; Hutzel, Figs. 3, 4.
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Application 14/047,793
The Examiner’s rationale appears unreasonable because there is a lack
of explanation as to why one would have combined the prior art reference
teachings. In this case, there appears to be a gap in reasoning as to why
Farley’s dome light, which displays different colors based on predetermined
conditions (Farley, paras. 13, 15), would have an application in a vehicle.
The Examiner may have attempted to bridge this gap by explaining that
vehicles conventionally include dome lights. See Ans. 12. However, the
Examiner does not adequately explain why Farley’s dome light, and its
ability to change color on a conditional basis, would be beneficial in a
vehicle.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1, and dependent claim 2, as unpatentable over Farley and Hutzel.
Independent claim 10 includes similar limitations as claim 1. Appeal
Br., Claims App. The Examiner’s rejection of claim 10 includes the same
flaws as the Examiner’s rejection of independent claim 1 and as such, we do
not sustain the Examiner’s rejection of claim 10 as unpatentable over Farley
and Hutzel.
Independent claim 11 includes similar limitations as claim 1. Appeal
Br., Claims App. The Examiner’s rejection of claim 11 includes the same
flaws as the Examiner’s rejection of independent claim 1, which are not
remedied by the Examiner’s reliance on Anderson. See also Appeal Br. 21—
22. As such, we do not sustain the Examiner’s rejection of claim 11, as
unpatentable over Farley, Hutzel, and Anderson.
The remaining rejections based on Farley and Hutzel, in combination
with Anderson, Degner, Arakawa, Ueno, Vdovin, and Gordon, include the
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Application 14/047,793
same flaws as discussed above. As such, we do not sustain the rejections
under 35 U.S.C. § 103(a) of claims 3—9 and 12—24.
Rejection II
After considering the positions expressed by the Examiner in the Final
Office Action and Answer, and by the Appellants in the Appeal and Reply
Briefs, we do not sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 103(a) as unpatentable over Ueno and Hutzel.3
Independent claim 10 includes similar limitations as claim 1 and is rejected
on the same basis. See Final Act. 27—38; Appeal Br., Claims App. Thus, we
likewise do not sustain the Examiner’s rejection of independent claim 10
under 35 U.S.C. § 103(a) as unpatentable over Ueno and Hutzel.
At the outset, we note that the Appellant’s Specification describes
lighting device 100 having input circuit 120, control circuit 150 (including a
scalar processor 153, an MCU processor 151, etc.), and display monitor 110.
See Spec. Fig. 3, paras. 18, 24. We also note that original claim 1 recites a
“control circuit,” however, appealed claim 1 recites a “scalar processor
receives a data from an MCU processor.” Compare Spec. 11 (original
claim 1) with Appeal Br., Claims App. (appealed claim 1). So original
claim 1 references one structure (i.e., a control circuit), but appealed claim 1
references two structures (i.e., a scalar processor and a MCU processor).
Additionally, we note the Examiner does not provide a construction of
3 The Appellants reiterate all of the arguments advanced for the rejection of
claims 1, 2, and 10 under 35 U.S.C. § 103(a) as unpatentable over Farley and
Hutzel for the rejection of claims 1 and 10 under 35 U.S.C. § 103(a) as
unpatentable over view of Ueno and Hutzel. Appeal Br. 20.
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Application 14/047,793
claim 1 or claim 10, and, therefore, it is unclear how the Examiner applied
the prior art references.
The Examiner’s rejection relies on Ueno to teach a dome light having
an “input circuit,” a “control circuit,” and a characteristic of a dome light.
See Final Act. 33—38. However, the Examiner does not explain how Ueno
discloses “an input circuit for inputting a plurality of commands comprising
[sic, a] characteristic of the dome light, wherein the characteristic of the
dome light includes a predetermined and focused shape, color, and
brightness of the dome light f as recited in claim 1 with added emphasis.
See Final Act. 33—38. It appears the Examiner relied on Hutzel to disclose
this limitation of claim 1. See Final Act. 27, 29—32. However, when the
Appellants argued in the Appeal Brief that Hutzel does not disclose the
argued recitation of claim 1 (Appeal Br. 18—19), in the Answer, the
Examiner pointed to the “primary reference’s teachings.” See Ans. 9—11
(directed to the rejection of claim 1 as unpatentable over Farley and Hutzel).
But, the Examiner failed to explain how the primary reference — in this
case, Ueno — discloses an input circuit for inputting a plurality of
commands for a characteristic of the dome light, including a predetermined
and focused shape, color, and brightness of the dome light.
As another example, the Appellants contend that the Examiner
summarily dismisses a whole host of claim elements. This contention is
persuasive only because we cannot determine reasonably how the Examiner
applied the cited reference teachings from Ueno and Hutzel to a significant
portion of the subject matter of claims 1 and 10. Appeal Br. 18—19, 20
(reiterating arguments made against the rejection of claims 1,2, and 10 as
unpatentable over view of Farley and Hutzel).
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Application 14/047,793
For example, the Examiner’s rejection appears to rely on the
embodiment of Ueno’s Figure 6 to correspond with the “control circuit” of
original claim 1. See Final Act. 34; Non-Final Act. 9 (mailed March 4,
2014). However, it is unclear if the Examiner’s rejection is relying on the
same disclosure to correspond to the claimed “scalar processor [that]
receives a data from an MCU processor” and the associated functional
limitations therewith. The Examiner may have relied upon Hutzel to teach
this claimed subject matter. See Final Act. 27—33 (citing Hutzel, Figs. 3—4,
paras. 90—95). However, the amount of disclosure associated with these
paragraphs is vast and it is not clear what aspect(s) of the disclosure the
Examiner relies upon and how the disclosure corresponds to the claimed
“scalar processor [that] receives a data from an MCU processor” and the
associated functional limitations therewith. Moreover, the Examiner’s
rejection includes the following statement:
It would have been obvious for one of ordinary skill in the
art to combine Ueno with Hutzel at the time the invention was
made since Hutzel discloses that the pendant accessory may hang
from the rear view mirror and perform an additional function of
a baby monitor so a user would not have to turn their head during
driving for inceased [sic] safety to monitor rear occupants.
Final Act. 33 (citing Hutzel, paras. 90—95). Although it is clear that the
Examiner relied upon Hutzel’s teaching particular to the functionality of the
display associated with a baby monitor, it is unclear how the Examiner
combines this teaching with Ueno’s teaching to result in the claimed “scalar
processor [that] receives a data from an MCU processor” and the required
functional limitations associated therewith. Moreover, the responses to the
Appellants’ arguments in the Answer do not resolve this matter.
See Ans. 17—18.
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Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 10 as unpatentable over Ueno and Hutzel.
Rejection XVIII
The Appellants do not contest the Examiner’s rejection of claims 6—24
under 35 U.S.C. § 112(a) as failing to comply with the enablement
requirement. Thus, we summarily sustain this ground of rejection.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—24 under
35 U.S.C. § 103(a).
We summarily AFFIRM the Examiner’s decision rejecting claims 6—
24 under 35 U.S.C. § 112(a) as failing to comply with the enablement
requirement.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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