Murphy, Matthew

Patent Trials and Appeals Board

Jul 2, 2020

2019004903 (P.T.A.B. Jul. 2, 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.
15/628,117 06/20/2017 Matthew Murphy 07133.18132 8650
24382 7590 07/02/2020
JOSEPH S. HEINO, ESQ.
DAVIS & KUELTHAU, S.C.
111 E. KILBOURN
SUITE 1400
MILWAUKEE, WI 53202-6613
EXAMINER
CHAN, WEI
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
jheino@dkattorneys.com
jlowe@dkattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW MURPHY
Appeal 2019-004903
Application 15/628,117
Technology Center 2800
Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
HOUSEL, 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 13–17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

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 the Inventor,
Matthew Murphy. Appeal Brief (“Appeal Br.”) filed March 12, 2019, 1.
2 This Decision also cites to the original Specification (“Spec.”) filed June
20, 2017, the amended Specification (“Amended Spec.”) filed September 7,
2018, the Final Office Action (“Final Act.”) dated November 1, 2018, the
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CLAIMED SUBJECT MATTER
The invention relates to a linear control system and method for color
rendering of red, green, and blue (“RGB”) light emitting diode (“LED”)
light sources. Spec. Title, ¶ 2. Appellant discloses that LED light color and
intensity (or brightness) are typically controlled by pulse width modulation
(“PWM”) because it is easier to implement, more efficient, smaller, and
generates less heat than linear control wherein the load driver current is not
digital, i.e., analog. Id. ¶¶ 2, 4, 5. However, Appellant further discloses that
linear control, unlike PWM, does not generate electrical magnetic
interference (“EMI”) which emits radio frequency interference (“RFI”) noise
that can adversely affect other electronic equipment operating in the vicinity.
Id. ¶¶ 2, 3, 5. For example, Appellant discloses that, in the case of RGB
LED lighting control for color reproduction in a magnetic resonance
imaging (“MRI”) scan room, PWM control generates artifacts in the MRI
scan image that can seriously impair the quality of the imaging results. Id.
¶¶ 3, 4. According to Appellant, linear control, wherein the load driver
current is not digital, does not have sharp edges, and the only frequency is a
sinewave ripple, solves this EMI problem. Id. ¶ 5.
Claim 13, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
13. A method, comprising:
generating a control signal;
transmitting the control signal to a plurality of RGB
LEDs;

Examiner’s Answer (“Ans.”) dated April 4, 2019, and the Reply Brief
(“Reply Br.”) filed June 4, 2019.
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receiving an intensity value for the plurality of RGB
LEDs;
scaling an output value for the RGB LEDs; and
changing a color of at least one RGB LED of the
plurality of RGB LEDs.

REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Wibben et al. (“Wibben”) US 2011/0115407 A1 May 19, 2011
Bora et al. (“Bora”) US 2015/0312995 A1 Oct. 29, 2015

OBJECTIONS AND REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following objections and rejections:
1. the objection to the amendment to the Specification filed
September 7, 2018 under 35 U.S.C. § 132(a) as introducing new
matter into the disclosure;
2. the objection to the drawings under 37 C.F.R. § 1.83(a) as failing
to show every feature of the claimed invention;
3. the objection to claim 14 as including an informality;
4. the rejection of claim 17 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement;
5. the rejection of claims 13–16 under 35 U.S.C. § 103 as
unpatentable over Wibben; and
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6. the rejection of claim 17 under 35 U.S.C. § 103 as unpatentable
over Wibben in view of Bora.
OPINION
Objections 1–3
The Examiner raises several objections to the September 7, 2018
amendment to the Specification, the drawings, and a claim. An appeal under
35 U.S.C. § 134(a) to the Patent Trial and Appeal Board is generally limited
to the review of the merits of rejections of claims and those matters which
directly relate to rejections of claims, i.e., are determinative of a rejection. 35
U.S.C. §§ 6(b) and 134(a) (2018); In re Berger, 279 F.3d 975, 984–985
(Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA
1971)); see also MPEP § 1201. As stated in Hengehold:
There are a host of various kinds of decisions an examiner
makes in the examination proceeding—mostly matters of a
discretionary, procedural or nonsubstantive nature—which have
not been and are not now appealable to the board or to this
court when they are not directly connected with the merits of
issues involving rejections of claims, but traditionally have
been settled by petition to the [Director].
Hengehold, 440 F.2d at 1403.
Within this context, we note that neither the Examiner nor Appellant
assert that the objection to the drawings in this case is related in any way to
any of the pending claim rejections. Although claim 16 recites “a plurality of
linear regulators coupled to the plurality of RGB LEDs,” neither the
Examiner nor Appellant assert that any of the rejections of claims are
dependent upon whether or not the drawings show this feature. Therefore,
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the Examiner’s objection to the drawings under 37 C.F.R. § 1.83(a) is a
petitionable matter which we do not reach in this appeal.
Similarly, neither the Examiner nor Appellant assert that the
Examiner’s objection to claim 14 includes an informality that relates in any
way to any of the pending claim rejections. Although the Examiner states
that this objection is raised because “[t]here is insufficient antecedent basis”
for the limitation in question in the claim (Final Act. 7), the Examiner does
not take the position that this matter creates an indefiniteness issue in claim
14. Therefore, the Examiner’s objection to claim 14 is a petitionable matter
which we do not reach in this appeal.
On the other hand, we note that the subject matter the Examiner
deems to be new matter in the rejection of claim 17 under 35 U.S.C. §
112(a) overlaps with the subject matter the Examiner deems to be new
matter in the September 7, 2018 amendment to the Specification under 35
U.S.C. § 132(a). Thus, the disposition of the new matter rejection of claim
17 directly relates to the disposition of the new matter objection to
Appellant’s amendment to the Specification. As such, the Examiner’s
objection under 35 U.S.C. §132 of the September 7, 2018 amendment to the
Specification is an appealable matter which we decide in this appeal. See
MPEP § 2163.06(II).
Objection 1 and Rejection 4: New Matter under 35 U.S.C. §132 and 112(a)
The Examiner objects to the September 7, 2018 amendment to the
Specification under 35 U.S.C. § 132 as introducing new matter into the
disclosure. The Examiner also rejects claim 17 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
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The Examiner finds that the September 7th amendment included new
matter, i.e., matter not supported by the original disclosure, specifically
newly added paragraphs 14–16. Final Act. 2–4.
Appellant argues principally that this amendment “actually serve[s] to
narrow the [S]pecification by providing more concrete examples of concepts
that were only broadly discussed initially.” Appeal Br. 3. Appellant asserts
that the original Specification teaches that LED current is supplied by Q1
and that each linear regulator controls a given color LED’s current which
varies the LED intensity. Id. Appellant contends that the Examiner fails to
recognize this inherent and well-known property of LED control. Id.
Appellant also asserts that the original Specification teaches the current
regulator response may be non-linear and unique, and that Figure 2 shows,
graphically, the linear to non-linear color algorithm input and output values.
Id. Appellant contends that the example involving a purple color was added
solely to provide a more concrete example of the process and results shown
in Figure 2. Id.
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s § 132 new matter objection. Appellant admits that the
September 7th amendment to the Specification narrows the original
Specification. Amendments that do not affect the scope of the original
disclosure, either through rephrasing (MPEP §2163.07(I)), correcting
obvious errors (id. § 2163.07(II)), adding inherent disclosures (id. §
2163.07(a)), or adding material already properly incorporated by reference
(id. 2163.07(b)), typically are supported by the original disclosure. On the
other hand, amendments that alter the scope of an original disclosure, either
by broadening or narrowing the scope, are new matter. For example, adding
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species to a disclosure that originally only disclosed a genus may be new
matter. Here, for example, Appellant’s amendment to add an example, i.e., a
generating a purple color, in the Specification is new matter because there
were no examples in the original disclosure and Appellant makes no attempt
to demonstrate that this example does not alter the scope of the original
disclosure, e.g., an ordinary artisan would have immediately envisaged this
example from the generic description and that Appellant, therefore, was in
possession of this example at the time of filing. Further, we note that
Appellant makes no attempt to identify any written description support in the
original disclosure for any of the material included in the September 7th
amendment.
Turning to the written description rejection of claim 17, the Examiner
finds that the original disclosure (Specification and drawings) fails to
provide written description support for claim 17’s steps of “determin[ing]
that a current level is below a rated current for the plurality of RGB LEDs,”
and “determin[ing] an amount of wavelength shift to occur as a result of
transmitting the current level that is below the rated current.”
Appellant states that “[c]laim 17 was written in light of the
[September 7, 2018] amendments to the [S]pecification.” Appeal Br. 4.
Appellant argues that claim 17 is supported by the original Specification
because the Examiner erred in objecting to the September 7, 2018
amendment to the Specification under 35 U.S.C. § 132 as introducing new
matter into the disclosure. Id. Thus Appellant’s argument against the
Examiner’s written description rejection of claim 17 is premised on the
merits of the Examiner’s objection to the September 7, 2018 amendment to
the Specification under 35 U.S.C. § 132. Because Appellant fails to persuade
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us of reversible error in the Examiner’s §132 objection, we likewise are not
persuaded of reversible error in the Examiner’s §112(a) rejection of claim
17.
Rejection 5: Obviousness over Wibben
The Examiner rejects claims 13–16 under 35 U.S.C. § 103 as
unpatentable over Wibben. Appellant does not argue the claims under this
rejection separately. Instead, Appellant’s arguments focus on the limitations
of claim 13 only. In accordance with 37 C.F.R. § 41.37(c)(1)(iv) (2018),
claims 14–16 stand or fall with claim 13.
We review this rejection for error based upon the issues Appellant
identifies, and in light of the arguments and evidence produced thereon. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections.”). After considering the argued claims and each
of Appellant’s arguments, we are not persuaded of reversible error in the
appealed rejection. We offer the following for emphasis only.
The Examiner finds that Wibben discloses a method as recited in
claim 13 except for scaling an output value for the RGB LEDs. Final Act. 8.
However, the Examiner finds that Wibben, in another embodiment, discloses
scaling an output value for the RGB LEDs. Id. The Examiner concludes that
it would have been obvious to modify Wibben’s method with scaling an
output value for the RGB LEDs as taught in another embodiment in order to
provide more color flexibility, very good efficiencies across all color
temperatures, and at relatively low cost. Id.
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Appellant argues that Wibben discloses that the method to prevent
undesired color shifts is to use a PWM control signal for the LEDs. Appeal
Br. 5–7. Appellant asserts that the present invention specifically avoids the
use of PWM because such signals produce noise that can adversely affect
other electronic equipment operating in the vicinity. Id. at 6. Appellant
contends that Wibben, in contrast, teaches away from the claimed method by
teaching that linear control of LEDs is undesirable and creates issues with
color shifting. Id. at 7.
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s obviousness rejection over Wibben because they are directed to
a limitation, PWM, which is neither recited in nor excluded from claim 13.
See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting
appellants’ nonobviousness argument as based on limitation not recited in
claim); In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s
arguments fail from the outset because, as the solicitor has pointed out, they
are not based on limitations appearing in the claims.”). To the extent that
Wibben teaches that PWM control signals may be used to provide a change
of LED intensity without wavelength shifting, we note claim 13 does not
exclude PWM control signals. Claim 13 broadly recites “a control signal,”
but is not specific as to whether that control signal is analog (linear) or
digital (PWM). Thus, Appellant’s arguments are directed to a limitation that
is not recited in claim 13.
Moreover, Appellant’s arguments fail to address the Examiner’s
findings that, although Wibben teaches that PWM may be used, Wibben also
teaches a method using linear control of LEDs. For example, Wibben
teaches control circuitry that is configured to control LEDs “to provide a
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color point that is linearly controlled to approximate a non-linear target
lighting behavior in the CIE 1931 color space.” Wibben Abstract and ¶ 6.
Moreover, Wibben teaches that there are many well-known methods of
driving an LED, that LED light intensity and color are a function of the
driving current, and that an LED is best suited to be current regulated. Id.
¶ 38. Although Wibben does teach that PWM can be used to control LED
intensity and prevent undesired color shifts, Wibben teaches that an
alternative input method is to provide an analog (i.e., linear) signal that
corresponds to the desired duty cycle. Id. ¶¶ 42, 43. Further, like Appellant,
Wibben recognizes that a microprocessor may replace a resistor divider
network used to control LED intensities for implementing a linear function
control. Wibben ¶¶ 51, 52.
“A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004));
see also In re Dunn, 349 F.2d 433, 438 (CCPA 1965). In addition, our
reviewing court has recognized that a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate any or all reasons to combine teachings, much less constitute
teaching away from the combination. See Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
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the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”).
Here, though Wibben teaches that PWM may be a preferred
alternative to linear or analog LED dimming, Wibben also teaches that linear
dimming can reduce the complexity of the control circuitry employed. Id. ¶
56 (“Though PWM dimming provides high performance, it is also possible
in alternative embodiments for the three control signals for adjusting the
color temperature to control an analog dimming function to control the
intensity of each channel, which changes the LED forward current.”); see
also ¶ 60. As such, Wibben’s discussion of PWM as an alternative to linear
control is not a teaching away from the use of linear control, especially when
it is desired to reduce complexity of the control circuitry.
Accordingly, Appellant has not identified reversible error in the
Examiner’s obviousness rejection of claim 13 over Wibben. We, therefore,
sustain the Examiner’s obviousness rejection of claims 13–16.
Rejection 6: Obviousness over Wibben and Bora
Claim 17 depends from system claim 16, and further requires that the
microprocessor further determines whether the current level is below the
LEDs rated current, determines an amount of wavelength shift due to the
transmitted current being below the rated current, determines a correction to
the wavelength shift to reproduce the desired CIELUV color, and transmits a
linear control signal including wavelength shift correction to the LEDs.
The Examiner rejects claim 17 under 35 U.S.C. § 103 as unpatentable
over Wibben in view of Bora. The Examiner finds that Wibben discloses the
system of claim 16, but fails to disclose the additional steps recited in claim
17. Final Act. 10–11. However, the Examiner finds that Bora discloses the
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steps recited in claim 17. Id. at 11. The Examiner concludes that it would
have been obvious to modify Wibben to perform these steps for the purpose
of producing a blended light at reduced current requirements, thus avoiding
catastrophic failure. Id. at 11–12.
Appellant argues that the Examiner creates an incongruity in the
rejection of claim 17. Appeal Br. 8. Appellant asserts that, on the one hand,
the Examiner admits that Wibben fails to teach transmitting a linear control
signal including the wavelength shift correction. Id. Appellant further asserts
that, on the other hand, the Examiner finds that Wibben teaches transmission
of a linear control signal that is broader than the linear control signal of
claim 17. Id. Appellant contends that if Wibben teaches a broader control
signal, then it must also teach the narrower control signal. Id. According to
Appellant, since the Examiner admits that Wibben fails to teach the linear
control signal of claim 17, this admission should be applied to all the claims.
Id.
Appellant’s arguments regarding an incongruity in the Examiner’s
position is not persuasive because it mischaracterizes the Examiner’s
findings and is also logically incorrect. The Examiner has not admitted that
Wibben fails to teach transmitting a linear control signal. As indicated
above, Wibben clearly teaches transmitting a linear control signal. However,
although a species or narrower embodiment may be encompassed by a genus
or broader embodiment, it does not follow that the genus or broader
embodiment necessarily discloses the species or narrower embodiment.
Appellant next asserts that Bora discloses selecting “a color for the
LEDs to show, using perhaps a color slider or fixed color selection.” Appeal
Br. 8. Appellant argues that this selection is not akin to determining an
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amount of wavelength shift to occur. Id. at 9. Appellant urges that
wavelength shift is an inherent result of driving LEDs at a current below the
LEDs rated current level. Id. Appellant contends that, unlike color,
wavelength shift cannot be selected. Id. Instead, Appellant asserts that
wavelength shift is an automatic and intrinsic feature of LEDs that must be
corrected in order for a user to see the selected color. Id. Thus, Appellant
contends that the Examiner erred in finding that Bora teaches an amount of
wavelength shift to occur. Id.
Appellant’s arguments are unpersuasive of reversible error. Initially,
we again note that Wibben teaches a transmitting a linear control signal to
the LEDs to approximate a non-linear target lighting behavior in the CIE
1931 color space. Wibben ¶ 6. Wibben also teaches that the linear fit of the
LED light can be provided based on feedback such as the color point,
temperature, or some other input. Id. ¶ 52. Thus, Wibben teaches that
wavelength shift can be determined to adjust the linear fit of the LED light,
thereby correcting for the wavelength shift. The Examiner finds that Bora,
Figure 38, item 3860, and paragraphs 245–247, teach determining the
wavelength shift resulting from a reduced LED driving current. Final Act.
11; Ans. 14. Specifically, Bora teaches that changes in brightness (intensity)
are derived from changes in LED driver current, “but in the same proportion
as that required for the selected color.” Bora ¶ 247. Bora also teaches that
the color will stay constant when adjusting brightness. Id. Therefore, a
preponderance of the evidence supports the Examiner’s conclusion that a
combination of Wibben and Bora would provide a linear control signal,
including feedback on color point, such that this signal includes a correction
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for the wavelength shift occurring due to changes in current as recited in
claim 17.
Accordingly, Appellant has not identified reversible error in the
Examiner’s obviousness rejection of claim 17 over Wibben and Bora. We,
therefore, sustain the Examiner’s obviousness rejection of claim 17.

CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 13–17 is affirmed.
More specifically,
the objection under 35 U.S.C. § 132 to the September 7, 2018
amendment to the Specification as introducing new matter into the
disclosure is affirmed;
the objection to the drawings under 37 C.F.R. § 1.83(a) is a
petitionable matter and is not reached in this appeal;
the objection to claim 14 as including an informality is a petitionable
matter and is not reached in this appeal;
the rejection of claim 17 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement is affirmed;
the rejection of claims 13–16 under 35 U.S.C. § 103 as unpatentable
over Wibben is affirmed; and
the rejection of claim 17 under 35 U.S.C. § 103 as unpatentable over
Wibben in view of Bora is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17 112(a) Written
Description
17
13–16 103 Wibben 13–16
17 103 Wibben, Bora 17
Overall
Outcome
13–17

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED