Shepherd, Stephen John.

Patent Trials and Appeals Board

Oct 13, 2020

2019002181 (P.T.A.B. Oct. 13, 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.
14/954,660 11/30/2015 Stephen John Shepherd 2015P8066US 5818
138325 7590 10/13/2020
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
CHAI, RAYMOND REI-YANG
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
10/13/2020 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):
Gigi.Miller@signify.com
jo.cangelosi@signify.com
kim.larocca@signify.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN JOHN SHEPHERD
____________

Appeal 2019-002181
Application 14/954,660
Technology Center 2800
____________

Before JEFFREY B. ROBERTSON, 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 the
Examiner’s decision to reject claims 1–13, 19, and 20. 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. Appellant identifies Eaton Intelligent Power Limited as
the real party in interest. Appeal Br. 2.
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The invention relates generally to control of devices including lighting
fixtures and more particularly to provisioning, configuring and operating a
Digital Addressable Lighting Interface (DALI) network system. Spec. ¶ 1.
According to the Specification, a DALI controller typically assigns
addresses to the DALI devices that are installed on the DALI network. Id.
¶ 3. However, identifying individual DALI devices or groups of DALI
devices based on addresses assigned by the DALI controller may be time
consuming when a large number of DALI devices are installed on the DALI
network and/or when the DALI controller assigns the addresses
independently of user control. Id. The invention is said to facilitate
provisioning, configuration and operation including identification of
installed individual DALI devices and groups of DALI devices. Id. ¶ 4.
Claim 1 is illustrative of the subject matter claimed and is reproduced below
(formatting added):
1. A method of configuring and managing a Digital
Addressable Lighting Interface (“DALI”) network, the method
comprising:
displaying rows of cells on a display of a mobile device,
wherein DALI network addresses are associated with the cells
prior to DALI devices on a DALI network being associated
with the cells;
selecting, by the mobile device, a DALI controller,
wherein the DALI controller is connected to the DALI network;
detecting, by the DALI controller, the DALI devices that
are on the DALI network, wherein the DALI devices are
controllable by the DALI controller, wherein the DALI
controller is configured to detect the DALI devices in response
to the step of selecting the DALI controller from a list of one or
more DALI controllers displayed on the display of the mobile
device and wherein at least one DALI device of the DALI
devices is assignable to a DALI group; and
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displaying, within some or all cells in the row of cells
displayed on the display of the mobile device, DALI device
icons representing the DALI devices, wherein each cell having
a DALI device icon displayed therein is associated with an
address of a respective DALI device on the DALI network.
Independent claim 14 is directed to a method similar to the method of
claim 1 but including additional features. Independent claim 19 recites a
computer program to execute the method of claim 1.
Appellant requests review of the following rejections from the
Examiner’s Non-Final Office Action dated February 5, 2018 (see generally
Appeal Br.):
I. Claims 1, 2, 4, 8–12, 19, and 20 rejected under 35 U.S.C. § 103
as unpatentable over Pharos (Pharos Architectural Control Limited, Pharos
Designer User Manual, 06/22/2009, v.1.6, pg.47–54).
II. Claim 3 rejected under 35 U.S.C. § 103 as unpatentable over
Pharos and Yen (US 2015/0223308 A1, published August 6, 2015).
III. Claim 5 rejected under 35 U.S.C. § 103 as unpatentable over
Pharos and Kim (US 2012/0212140 A1, published August 23, 2012).
IV. Claims 6 and 7 rejected under 35 U.S.C. § 103 as unpatentable
over Pharos and Jacob (US 2008/0092075 A1, published April 17, 2008).
V. Claim 13 rejected under 35 U.S.C. § 103 as unpatentable over
Pharos and Chandler (US 7,307,542 B1, issued December 11, 2007).
OPINION2
Rejection I
After review of the positions the Appellant provides in the Appeal and
Reply Briefs and the Examiner provides in the Non-Final Action and the

2 We limit our discussion to independent claim 1. We note that independent
claims 14 and 19 recite similar limitations to those recited in claim 1.
Therefore, our discussion applies equally to these claims.
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Answer, we REVERSE the Examiner’s prior art rejections of claims 1–13,
19, and 20 under 35 U.S.C. § 103 for essentially the reasons Appellant
presents. We add the following for emphasis.
CLAIM INTERPRETATION
As a preliminary matter, our review of the Examiner’s analysis
requires that the claims must first be construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457 (Fed. Cir. 1997).
Claim 1 recites:
selecting, by the mobile device, a DALI controller,
wherein the DALI controller is connected to the DALI network;

detecting, by the DALI controller, the DALI devices that
are on the DALI network, wherein the DALI devices are
controllable by the DALI controller, wherein the DALI
controller is configured to detect the DALI devices in response
to the step of selecting the DALI controller from a list of one or
more DALI controllers displayed on the display of the mobile
device and wherein at least one DALI device of the DALI
devices is assignable to a DALI group.

To give proper weight to the evidence of record and the respective positions
of Appellant and the Examiner, we must first determine what does
“selecting, by the mobile device, a DALI controller” and the “detecting”
function of the DALI controller mean. Thus, our review of the grounds of
rejection of the appealed claims necessarily entails the interpretation of the
scope of the appealed claims, giving the broadest reasonable interpretation to
the terms thereof consistent with the written description provided in
Appellant’s Specification as it would be interpreted by one of ordinary skill
in this art. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Terms in the appealed claims must be given their broadest reasonable
interpretation including the ordinary meaning unless another meaning is
intended by Appellant as established in the written description of their
Specification. See, e.g., In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989).
When the Specification does not contain an express definition, a reasonable,
supported interpretation of the appealed claims that differs from that urged
by Appellant can be used to determine the patentability of the claims.
Morris, 127 F.3d at 1055–56 (“Absent an express definition in their
specification, the fact that appellants can point to definitions or usages that
conform to their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that support its
interpretation.”). Indeed, “[i]t is the applicants’ burden to precisely define
the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].”
Morris, 127 F.3d at 1055–56.
A. “selecting, by the mobile device, a DALI controller”
The Specification discloses that a mobile device is connected to a
DALI controller and the DALI controller is communicably coupled to DALI
devices. Spec. ¶ 36. In claim 1, the mobile device is used to select a desired
controller connected to DALI devices. According to the Specification, the
mobile device may execute code to process a user’s input provided via a
display to select the DALI controller/loop chosen by the user for further
interactions and operations. Spec. ¶ 70.
Based on this disclosure, we interpret the claim language “selecting,
by the mobile device, a DALI controller” as reciting that the mobile device
executes a code to select a DALI controller.
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B. “detecting, by the DALI controller, the DALI devices that are
on the DALI network wherein the DALI devices are controllable by the
DALI controller, wherein the DALI controller is configured to detect the
DALI devices in response to the step of selecting the DALI controller . . .”

The Specification discloses that “[t]he DALI controller is configured
to detect the DALI devices in response to a request from the mobile device.”
Spec. ¶ 18, (emphasis omitted). Paragraphs 71–78 of the Specification
describe a process of detecting devices using a DALI controller that also
involves a mobile device executing a code.
Based on this disclosure, we interpret the claimed “detecting” function
of the DALI controller as identifying the DALI devices that are controllable
by a selected DALI controller via execution of a code.

THE REJECTIONS
Claim 1
The Examiner finds Pharos teaches a method of configuring and
managing a Digital Addressable Lighting Interface (“DALI”) network that
differs from the claimed invention in that Pharos does not disclose a DALI
controller configured to detect the DALI devices as claimed. Non-Final Act.
3–5. However, the Examiner finds that “Pharos appears to disclose
manually actuating/clicking the ‘Find addressed ballast’ button to perform
the step of detecting.” Id. at 5.3 The Examiner determines that “it would
have been obvious to one ordinarily skilled in the art to modify Pharos to
automatically find addressed ballast[s] upon selection of [a] DALI interface
in the top drop down menu” because broadly providing a mechanical or

3 A ballast is a DALI device or part of a DALI device. Spec. ¶ 27.
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automatic means to replace manual activity to accomplish the same result
involves only routine skill in the art. Non-Final Act. 5 (citing In re Venner,
262 F.2d 91, 95 (CCPA 1958)). That is, the Examiner determines that it
would have been obvious to one of ordinary skill in the art to configure
Pharos’s controller to detect/identify the DALI devices controlled by the
particular DALI controller as claimed.
There is no dispute that Pharos fails to disclose a DALI controller
configured to detect DALI devices as claimed but, instead, discloses
manually actuating/clicking the “Find addressed ballast” (i.e., find DALI
devices) button to perform the step of detecting. Appeal Br. 4–5; Non-Final
Act. 5; Pharos 48. Appellant contends that one skilled in the art would not
modify Pharos to “automatically” find addressed ballasts in response to a
selection of a DALI interface (i.e., DALI controller) because Pharos
discloses that a DALI-M Expansion Module must already be added to the
system and assigned to the DALI interface before ballasts can be detected in
response to the “Find addressed ballast” module command. Appeal Br. 5;
Pharos 47–48. According to Appellant, “ requiring a DALI-M Expansion
Module to be added and assigned to a DALI interface before using the ‘Find
addressed ballast’ command is different from requiring a DALI-M
Expansion Module to be added and assigned to a DALI interface before
selecting the DALI interface.” Reply Br. 4. Thus, Appellant asserts that
Pharos does not teach that a user must first select a DALI interface before
adding a DALI-M Expansion Module or assigning a DALI-M Expansion
Module to a DALI interface and that the Examiner’s modification of Pharos
imposes on the user the requirement that a DALI-M Expansion Module must
be added and assigned to a DALI interface before the DALI interface can be
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selected by a user. Appeal Br. 5. Appellant additionally argues that Pharos
teaches that selected DALI interfaces may need to be configured before
actuating/clicking the “Find addressed ballast” button to find addressed
ballasts. Appeal Br. 5–6; Pharos 47–48. Appellant contends that modifying
Pharos to automatically find the ballasts in response to selecting a DALI
interface forecloses the opportunity to configure the DALI interface after the
selection of the DALI interface and before finding addressed ballasts.
Appeal Br. 6.
We agree with Appellant that there is reversible error in the
Examiner’s determination of obviousness. The Examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). The fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383
U.S. 1, 36 (1966) (“warning against a ‘temptation to read into the prior art
the teachings of the invention in issue’”)).
The premise of the Examiner’s rejection is that “[Pharos’s]
‘configuring the DALI interface’ is in reference to ballast configuration, and
the modification of replacing [Pharos’s] manual activity of
actuating/clicking on the Find Addressed Ballast with performing the
function upon selection of the interface would speed this process up, as it
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eliminates one manual step.” Ans. 3–4. 4 According to the Examiner, this
modification “broadly provid[es] a mechanical or automatic means to
replace manual activity which [accomplishes] the same result [through] only
routine skill in the art.” Non-Final Act. 5; see Venner 262 F.2d at 95
(holding that “broadly providing an automatic or mechanical means to
replace a manual activity which accomplished the same result is not
sufficient to distinguish over the prior art”).
Here, the Examiner’s reliance on Venner amounts to little more than a
per se rule of obviousness. Such rules are disfavored by our reviewing court.
See In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Assuming arguendo
that Pharos’s manual step can be automated, the Examiner still does not
explain how one skilled in the art would configure Pharos’s DALI controller
to perform this step in an automated fashion and arrive at the claimed
invention. Cf. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380
(Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas
Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). The Examiner provides
no analysis with respect to the capability of Pharos’s DALI controller to
perform such a step. In fact, the Examiner does not point to any portion of
Pharos or provide an adequate technical explanation to support the assertion
that “‘configuring the DALI interface’ is in reference to ballast
configuration.” Ans. 3. In addition, the Examiner does not explain
sufficiently whether such a modified Pharos’s DALI controller would have
been suitable for Pharos’s purposes.

4 Examiner’s Answer is incorrectly paginated with all pages are marked as
page 7. For the purposes of this Opinion, we refer to the pages of the
Answer beginning with the title page “Examiner’s Answer” as page 1.
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Thus, the Examiner does not explain adequately how one skilled in
the art, absent impermissible hindsight, would modify Pharos’s controller to
arrive at the claimed invention.
Accordingly, we reverse the Examiner’s prior art rejections of claims
1–13, 19, and 20 under 35 U.S.C. § 103 for the reasons Appellant presents
and we provide above.
DECISION SUMMARY

In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4,
8–12, 19, 20
103 Pharos 1, 2, 4,
8–12, 19, 20
3 103 Pharos, Yen 3
5 103 Pharos, Kim 5
6, 7 103 Pharos, Jacob 6, 7
13 103 Pharos, Chandler 13
Overall
Outcome
1–13, 19, 20

REVERSED