Gama Sonic USA, Inc.

Patent Trials and Appeals Board

Sep 22, 2020

2020002018 (P.T.A.B. Sep. 22, 2020)

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.
16/031,195 07/10/2018 Lazar Izradel 2661GAM-US 4746
32964 7590 09/22/2020
DEKEL PATENT LTD., DAVID KLEIN
BEIT HAROF'IM
18 MENUHA VENAHALA STREET, ROOM 27
REHOVOT, 76209
ISRAEL
EXAMINER
ROJAS CADIMA, OMAR
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
09/22/2020 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 LAZAR IZRADEL
Appeal 2020-002018
Application 16/031,195
Technology Center 2800
Before JEAN R. HOMERE, BARBARA A. BENOIT, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10, which constitute all of the
pending claims. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Gama
Sonic USA, Inc. Appeal Br. 1.
Appeal 2020-002018
Application 16/031,195

2
CLAIMED SUBJECT MATTER
The claims are directed to a solar LED (light emitting diode) light
bulb. The light bulb is equipped with solar panels mounted in the neck
portion of the bulb which are used to charge a battery which powers the
array of LEDs to emit light. Spec., Abstract. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A light bulb comprising:
a light bulb body comprising a bulbous portion that
narrows into a neck portion, said neck portion extending into a
base portion;
an array of LEDs mounted in said bulbous portion;
one or more solar photovoltaic panels mounted inside said
neck portion; and
a battery disposed in said light bulb body that powers said
LEDs and which is charged by said one or more solar
photovoltaic panels, and wherein said one or more solar
photovoltaic panels extend from said neck portion into part of
said bulbous portion.
Appeal Br. 11 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Waterbury US 4,918,357 Apr. 17, 1990
Robinson US 9,115,856 B1 Aug. 25, 2015

REJECTIONS
Claims 1, 2, 5, 7, 8, and 10 stand rejected under 35 U.S.C.
§§ 102(a)(1) and 102(a)(2) as being anticipated by Robinson. Final Act. 2–
4.
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Claims 3, 4, 6, and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Robinson and Waterbury. Final Act. 5–9.
ISSUE
Has the Examiner erred in finding Robinson discloses “wherein said
one or more solar photovoltaic panels extend from said neck portion into
part of said bulbous portion,” as recited in claim 1?
ANALYSIS
The Examiner’s Findings
The Examiner rejects claim 1 as anticipated by Robinson. Final
Act. 2–3. Relevant to the issue raised by Appellant, the Examiner finds that
Robinson, with reference to Figures 1–5, discloses:
a light bulb body (see body of 20) comprising a bulbous portion
(see lower portion of 20) that narrows into a neck portion (see
mid portion of 20), said neck portion (see mid portion of 20)
extending into a base portion (see upper portion of 20)
an array of LEDs (light emitting diodes 100) mounted in said
bulbous portion (lower portion of 20);
one or more solar photovoltaic panels (individual photovoltaic
panels 75) mounted inside said neck portion (mid portion of 20)
. . .
wherein said one or more photovoltaic panels (75) extend from
said neck portion (mid portion of 20) to said bulbous portion
(lower portion of 20).
Final Act. 2–3 (italics added). The Examiner explains that the recited “neck
portion” is not defined in the Specification, and the lack of a definition
warrants a broader interpretation:
The Examiner explains:
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Application 16/031,195

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[S]ince the neck portion has not been defined in the claims or
specification, the Examiner has given the term “portion” of the
neck its broadest reasonable interpretation. Additionally, see
annotated figure 3 of Robinson showing a circled mid portion, as
an example of one of many possible portions of the neck. It is
clear from figure 3 below, the photovoltaic panel extends from
the neck portion into the bulbous portion, as required by claim 1.
Ans. 4. Additionally, the Examiner provides an annotated version of
Robinson’s Figure 3 to illustrate the reasoning underlying the anticipation
rejection, which is reproduced below.

Robinson’s Figure 3 with annotations added by the Examiner

Appellant’s Arguments
Appellant argues the Examiner has erred because Robinson does not
disclose “wherein said one or more solar photovoltaic panels extend from
said neck portion into part of said bulbous portion.” Appeal Br. 8–9. More
specifically, Appellant argues “[t]he Oxford dictionary definition of neck is
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Application 16/031,195

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either ‘the part of an animal that connects the head with the body’ or ‘a
narrow connecting or end part of something; narrow piece of land or sea;
narrow part near one end of an organ’.” Appeal Br. 8. Appellant maintains
that under this definition, “it is clear that the neck must be a narrow
connecting part between the bulbous portion and the base portion.” Appeal
Br. 8. According to Appellant, Robinson discloses “[t]he bulbous portion of
20 is clearly continuously bulbous up to the beginning of the straight portion
marked 55” which “is the only point where the bulbous portion narrows.”
Appeal Br. 8. Thus, Appellant argues, “[t]he neck portion [in Robinson] can
only be above the point where the lower bulbous portion meets the straight
portion,” and “solar photovoltaic panels 75 do not reach this point.” Appeal
Br. 8.
Our Review
We agree with Appellant that the Examiner has erred in rejecting
claim 1 as anticipated by Robinson. Anticipation is a test of strict identity.
Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir.
2002). That is, to meet the strict identity test for anticipation, all elements
must be disclosed in exactly the same way as they are arranged or combined
in the claim. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325,
1332 (Fed. Cir. 2010). In this instance, the Examiner’s rejection of claim 1
fails to meet this exacting requirement.
To better explain our decision, we reproduce an annotated version of
Robinson’s Figure 3 that identifies certain components of an interchangeable
solar-powered light module (15) as described in the Robinson’s
Specification:
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Application 16/031,195

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Robinson’s Figure 3 with annotations illustrates various components of a
solar-powered light module (15)

As shown in the annotated drawing, Robinson’s solar-powered light
module (15) includes a supporting frame (55) that “includes a substantially
bell-shaped shell defining an upper end, a lower end, and a hollow interior.”
Robinson, col. 5, ll. 23–24. Robinson further describes that the light module
(15) includes a top snap fitting (60) and an ON/OFF switch (40) in the
“upper portion of the supporting frame structure.” Id. at col. 5, ll. 28–30.
Robinson further describes that “the upper portion of the supporting frame
structure also houses a multitude of rechargeable single cell batteries.” Id.
col. 5, ll. 31–32. Robinson also discloses that the “lower portion of the
supporting frame structure 55 is provided with a plurality of individual
photovoltaic panels 75” (id. at col. 5, ll. 35–36) and further includes “[a]
light-emitting diode module 95 [that] is located at the bottom” of the light
module (15) (id. at col. 5, ll. 47–48).
Appeal 2020-002018
Application 16/031,195

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We note that in describing structure of the solar-powered light
module, Robinson identifies an upper end, a lower end, and a hollow
interior. Robinson, col. 5, ll. 23–24 (“The support frame includes a
substantially bell-shaped shell defining an upper end, a lower end, and a
hollow interior.”). Other than this generalized description of the shape of
the device, Robinson does not provide any disclosure regarding different
portions of the device. That is, the description provided in Robinson
provides no demarcation points indicating where any part that can be
reasonably described as a bulbous portion ends and where a neck portion
begins.
Instead, noting the absence of a lexicographical definition of a “neck
portion,” and under the rubric of broadest reasonable interpretation, the
Examiner appears to have arbitrarily selected dividing lines to define the
portions of the Robinson light module, as shown by the dashed lines in
Examiner-annotated Figure 3. See Ans. 4 (“Since the neck portion has not
been defined in the claims or specification, the Examiner has given the term
‘portion’ of the neck its broadest reasonable interpretation.”). However, the
absence of an explicit definition for “neck portion” does not permit the
Examiner to interpret the claim by selecting “an example of one of many
possible portions of the neck” which encompasses the prior art. Rather, the
Examiner is tasked with first ascertaining the scope of the claim, including
the recited “neck portion,” and then comparing properly construed claim to
the prior art. Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d
1372, 1374–75 (Fed. Cir. 2017) (“Anticipation is a two-step analysis. The
first step is properly interpreting the claims. The second step is determining
whether the limitations of the claims, as properly interpreted, are met by the
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prior art” (citations omitted)). Here, the Examiner erred by first comparing
the prior art to the claim, and then by selecting a claim interpretation based
on that comparison.
Appellant offers a definition for “neck portion.” Specifically,
Appellant cites a dictionary definition which defines “neck” as, inter alia, “a
narrow connecting or end part of something.” Appeal Br. 8 (citing “Oxford
dictionary”). We discern no error in Appellant’s proposed construction, as it
is consistent with the description in the Specification, and it accords with the
ordinary and customary meaning of the term. Applying that definition, we
agree with Appellant that the Examiner errs in characterizing the “mid-
portion” of Robinson as a “neck portion.” The portion of Robinson
characterized by the Examiner as the “neck portion” is not a narrow
connecting or end part of light module. Rather, the part of the Robinson
device identified by the Examiner as the “neck portion” is a rounded bulbous
area of the device. As such, we agree with Appellant that the solar panels
(75) in Robinson are positioned in exclusively in the bulbous portion of the
light module (15), while the claim requires that the solar panels be “mounted
inside said neck portion” and “extend from said neck portion into part of
said bulbous portion.” Appeal Br. 11 (Claims Appendix). As such, the light
module (15) disclosed in Robinson is not exactly the same as what is
claimed, and the strict identity requirement for anticipation is not met in this
instance. We, therefore, do not sustain the rejection of claim 1 under
35 U.S.C. § 102. Independent claims 9 and 10 also include recitations that
require the solar photovoltaic panels be “mounted inside said neck portion.”
Appeal Br. 12 (Claims Appendix). For the same reasons, we also do not
sustain the rejection of claims 9 and 10.
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Remaining Claims
Claims 2, 5, 7, and 8 depend from claim 1, and are also rejected as
being anticipated by Robinson. These claims stand together the claim 1.
Claims 3, 4, 6, and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Robinson and Waterbury. The Examiner makes no
findings with respect to Waterbury that would cure the missing disclosure in
Robinson. As such, we also do not sustain the rejection of claims 3, 4, 6,
and 9 under 35 U.S.C. § 103.
CONCLUSION
We reverse the Examiner’s rejections.
More specifically,
We reverse the rejection of claims 1, 2, 5, 7, 8, and 10 under
35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by Robinson.
We reverse the rejection of claims 3, 4, 6, and 9 under 35 U.S.C.
§ 103 as being unpatentable over Robinson and Waterbury.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 7, 8,
10
102 Robinson 1, 2, 5, 7, 8,
10
3, 4, 6, 9 103 Robinson,
Waterbury
3, 4, 6, 9
Overall
Outcome
1–10

REVERSED