Gunther Niedermayer et al.

Patent Trials and Appeals Board

Aug 28, 2019

13718236 - (D) (P.T.A.B. Aug. 28, 2019)

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.
13/718,236 12/18/2012 Gunther NIEDERMAYER U018792-5 (0127/JAB) 8360
140 7590 08/28/2019
LADAS & PARRY LLP
1040 Avenue of the Americas
NEW YORK, NY 10018-3738
EXAMINER
ENDO, JAMES M
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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):
nymail@ladas.com
nyuspatactions@ladas.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GUNTHER NIEDERMAYER and MICHAEL MATHEISL
____________

Appeal 2018-008555
Application 13/718,236
Technology Center 2800
____________

Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a final
rejection of claims 1–19 and 21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Inventio AG is the Applicant/Appellant and is identified as the real party in
interest. App. Br. 3.
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Application 13/718,236

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The invention is generally directed to an illuminable panel for an
escalator, a moving walkway, or an elevator cage. Spec. 1. Claim 1 is
illustrative of the subject matter claimed and is reproduced below from the
Claims Appendix to the Appeal Brief:
1. An illuminable panel for illumination by at least one
lighting means arranged at at least one edge region of the panel,
the illuminable panel comprising:
a five panel layer sequence, each layer having two
mutually opposing side surfaces each bounded by a respective
edge region, each layer being in contact with adjacent layers by
the side surfaces thereof; the five layer sequence of the panel
comprising a reflective covering first layer, a transparent, edge-
illuminable light-dispersing particle-containing polymer
material plate second layer, a glass pane third layer, a
transparent polymer fourth layer, and a glass pane fifth layer,
the combination of panel layers providing for a uniform
dispersion of light and illumination across the fifth layer non-
contacting side surface.
App. Br. 13.
Independent claim 13 is directed to an escalator comprising
essentially the illuminable panel of claim 1. Id. at 15.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action:
I. Claims 1, 2, 5, 6, and 21 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Ohtsuki (US 5,786,665, issued July 28, 1998),
Kanade (US 2007/0086176 A1, published April 19, 2007), and Kleewein
(US 2004/0257800 A1, published December 23, 2004).

II. Claims 3 and 4 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ohtsuki, Kanade, Kleewein, and Kuo (US 2006/0098453
A1, published May 11, 2006).

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III. Claims 7 and 8 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ohtsuki, Kanade, Kleewein, and Recker (US
2010/0327766 A1, published December 30, 2010).

IV. Claims 9–11 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ohtsuki, Kanade, Kleewein, and Yang (US 2005/0213351
A1, published September 29, 2005).

V. Claim 12 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ohtsuki, Kanade, Kleewein, and Brychell (US 7,762,704
B2, issued July 27, 2010).

VI. Claims 13 and 15 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ohtsuki, Kanade, Kleewein, Vogt (US 2009/0067162 A1,
published March 12, 2009) and Saito (GB 2167370 A, published May 29,
1986).

VII. Claim 14 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ohtsuki, Kanade, Kleewein, Vogt, Saito, and Erikson (US
2010/0018087 A1, published January 28, 2010).

VIII. Claims 16 and 19 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ohtsuki, Kanade, Kleewein, Vogt, Saito, and Nakamori
(US 2010/0219040 A1, published September 2, 2010).

IX. Claim 17 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ohtsuki, Kanade, Kleewein, Vogt, Saito, Nakamori, and
Recker.

X. Claim 18 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ohtsuki, Kanade, Kleewein, Vogt, Saito, Nakamori,
Recker, and Stoxen (US 5,842,554, issued December 1, 1998).

Appellant indicates that all claims are to be considered as a single
group, with independent claim 1 as representative of the group, for the
purposes of this appeal. App. Br. 7. Therefore, consistent with Appellant’s
statement, we limit our discussion to claim 1 and decide the appeal as to all
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grounds of rejection based on the arguments presented for claim 1.
OPINION
After review of the respective positions Appellant provides in the
Appeal Brief and the Examiner provides in the Final Action and the Answer,
we AFFIRM the Examiner’s prior art rejections of claims 1–19 and 21 under
35 U.S.C. § 103(a) for essentially the reasons the Examiner presents in the
Final Office Action and the Answer. We add the following for emphasis.
Claim 12
Claim 1 is directed to an illuminable panel comprising a five-
layer panel. App. Br. 13. The Examiner finds that Ohtsuki teaches a three-
layered assembly comprising a transparent acrylic plate. Final Act. 2–3.
Ohtsuki discloses that the transparent acrylic layer serves a protective
function that improves reliability as well as reduces maintenance costs.
Ohtsuki col. 29, ll. 59–65. The Examiner acknowledges that Ohtsuki does
not disclose a five-layer structure. Final Act. 3. The Examiner finds that
Kleewein discloses as conventional to use a three-layer laminated safety
glass as an exterior surface for an illuminable panel. Final Act. 3–4;
Kleewein ¶ 12. The Examiner finds that Kleewein discloses that the
laminated glass structure makes small amounts of damage less visible and
allows easier management of optical effects. Ans. 6; Kleewein ¶ 15. The
Examiner determines that it would have been obvious to use Kleewein’s
laminated safety glass in place of Ohtsuki’s transparent plate for the

2 We do not need to discuss the reference to Kanade for disposition of this
appeal because the Examiner does not rely on this reference to address the
claimed five-layer structure. Final Act. 3.
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additional safety consideration to arrive to the claimed invention. Final Act.
4.
Appellant argues that Ohtsuki teaches three-layer panel constructions
because Ohtsuki is directed to minimizing the number of layers to provide
thinner display devices with high efficiency. App. Br. 8 (citing Ohtsuki col.
12, ll. 63–64). Appellant additionally argues that, like Ohtsuki, Kleewein is
also directed to a thin panel with a minimum of components that provide
sufficient rigidity for Kleewein’s purposes. App. Br. 9 (citing Kleewein
¶ 23). Thus, Appellant contends that none of the references, alone and in
combination, teaches or suggests the claimed five-layer construction. App.
Br. 9.
Appellant’s arguments do not persuade us of reversible error in the
Examiner’s determination of obviousness. Appellant’s arguments are
unavailing because they do not address the rejection the Examiner presents.
It is well settled that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 425–26 (CCPA 1981) (“The test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
As we note above, Ohtsuki teaches a three-layer illuminated panel
comprising a transparent acrylic layer that provides a protective function to
improve reliability and reduce maintenance costs. Ohtsuki col. 29, ll. 59–65.
As the Examiner finds, Kleewein discloses an illuminable panel comprising
a three-layer laminated safety glass structured so that small amounts of
damage are less visible and optical effects are easier to manage. Final
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Act. 3–4; Ans. 6; Kleewein ¶¶ 12, 15. That is, both Ohtsuki and Kleewein
are directed to illuminable assemblies that use a transparent component for
protective purposes. Thus, there is a reasonable basis for one skilled in the
art to modify Ohtsuki’s illuminable panel by replacing Ohtsuki’s transparent
acrylic layer with Kleewein’s three-layer safety glass structure to arrive at
the claimed five-layer structure and reasonably expect Kleewein’s laminated
safety glass to be suitable for Ohtsuki’s illuminable panel. In re O’Farrell,
853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is
required is a reasonable expectation of success.”).
Appellant’s argument that the cited art does not teach or suggest a
five-layer structure is also unavailing. We note that the Ohtsuki
embodiment the Examiner relies upon is only an embodiment of the
disclosed display device. Ohtsuki col. 27, ll. 29–30. Further, Ohtsuki also
discloses that a scattering sheet for scattering light to maintain the
uniformity in luminance can be added, which suggests more than a
three-layer structure as Appellant argues. Id. at col. 9, ll. 56–63. It is well
settled that a reference stands for all of the specific teachings thereof, as well
as the inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed.
Cir. 1992). In view of Ohtsuki’s teachings noted above, one skilled in the
art would have reasonably inferred that Ohtsuki is not limited to a
three-layer panel nor excludes a five-layer panel. Additionally, Appellant
does not direct us to any disclosure in Ohtsuki that expressly limits the
reference to a three-layer panel or provides an adequate explanation why
Kleewein’s laminated safety glass is unsuitable for Ohtsuki’s illuminable
panel.
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Accordingly, we AFFIRM the Examiner’s prior art rejections of
claims 1–19 and 21 under 35 U.S.C. § 103(a) for the reasons presented by
the Examiner and given above.
ORDER
The Examiner’s prior art rejections of claims 1–19 and 21 under
35 U.S.C. § 103(a) are affirmed.

TIME PERIOD
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).

AFFIRMED