Ex Parte Weijs et al

Patent Trial and Appeal Board

Nov 20, 2014

11994536 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PIETER WEIJS, LEENDERT HUIBERT GOUD,
JOS VAN MEURS, RENATUS WILLEM CLEMENS VAN DER
VEEKEN, LUKAS KASTELEIN, and
JACOBUS MARINUS MARIA CLAASSENS
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Appeal 2012-010557
Application 11/994,536
Technology Center 2800
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Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KAISER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the
Examiner finally rejecting claims 11–13 and 15 (“Final Rej.”). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

OPINION
Appellants’ invention “relates to a fluorescent lamp and to a method
for power saving in lighting applications.” Spec. 1, ll. 1–2.
Claim 11, reproduced below, is representative of the appealed subject
matter:
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Application 11/994,536

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11. A lighting unit, comprising:
a power-saving circuit comprising: a TRIAC shunted by
a series connection of a capacitor and a first resistor, wherein
the first resistor comprises an adjustable resistor and a fixed
resistor; and
a DIAC in series connection with a second resistor.
Appeal Br. 10.
The Examiner rejected claims 11–12 and 15 under 35 U.S.C. § 103(a)
as obvious over the combination of Choon1 and Pagano.2 The Examiner also
rejected claim 13 under 35 U.S.C. § 103(a) as obvious over the combination
of Choon, Pagano, and Johnson.3 In both of these rejections, the Examiner
relied on Pagano to teach the limitation “wherein the first resistor comprises
an adjustable resistor and a fixed resistor.” Final Rej. 3.
Appellants argue that the adjustable and fixed resistors in series
disclosed by Pagano do not shunt the TRIAC disclosed by Pagano, so “the
substitution of the TRIAC D24 of Pagano, et al. for the TRIAC (1) of Choon
would not result in the subject matter of claim 11.” Appeal Br. 7. We do
not find this argument persuasive in showing any error in the Examiner’s
rejections of claims 11–13 and 15. To establish obviousness, the Examiner
need not show that any portion of Pagano could be substituted for some
corresponding portion of Choon, resulting in Appellants’ invention. In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted) (“The test for
obviousness is not whether the features of a secondary reference may be

1 Choon, US 5,059,870, issued Oct. 22, 1991.
2 Pagano et al., US 2003/0230982 A1, published Dec. 18, 2003.
3 Johnson, US 5,463,280, issued Oct. 31, 1995.
4 We note that Pagano describes D1, not D2, as the TRIAC. Pagano ¶ 28.
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Application 11/994,536

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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.”); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”). Appellants do not dispute
that Pagano teaches a combination of adjustable and fixed resistors, nor that
Pagano teaches using those resistors in a circuit similar to that taught by
Choon. Appeal Br. 7. Accordingly, we are not persuaded that the difference
in the precise arrangement of the components of Pagano and Choon would
lead a person of ordinary skill in the art, informed of both Choon and
Pagano, to find it non-obvious to use a combination of adjustable and fixed
resistors, as taught by Pagano, in the power-saving circuit taught by Choon.5

ORDER
The Examiner’s rejections (1) of claims 11–12 and 15 under 35
U.S.C. § 103(a) as obvious over the combination of Choon and Pagano, and
(2) of claim 13 under 35 U.S.C. § 103(a) as obvious over the combination of
Choon, Pagano, and Johnson are affirmed.

5 The Examiner also points out in the Examiner’s Answer that Choon
discloses that its first resistor is a thermistor, which the Examiner asserts has
the properties of a combination of a fixed resistor and an adjustable resistor.
Answer 7 (citing Choon, col. 2, ll. 36–37). Although Appellants do not
dispute this point in their Reply Brief, we do not need to rely on this
evidence.
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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.
AFFIRMED

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