Acera LLC

Patent Trials and Appeals Board

Jan 4, 2022

2021001427 (P.T.A.B. Jan. 4, 2022)

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. 15/337,922 10/28/2016 Carlton Jones ACM-089RCE 9892 959 7590 01/04/2022 NELSON MULLINS RILEY & SCARBOROUGH LLP ONE FINANCIAL CENTER SUITE 3500 BOSTON, MA 02111 EXAMINER LEE, NATHANIEL J. ART UNIT PAPER NUMBER 2875 NOTIFICATION DATE DELIVERY MODE 01/04/2022 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): ipboston.docketing@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARLTON JONES, RACHEL TARANTA, and THOMAS V. ROOT Appeal 2021-001427 Application 15/337,922 Technology Center 2800 Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and DONNA M. PRAISS, Administrative Patent Judges. FRANKLIN, 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 23-46. 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 Acera, LLC. Appeal Br. 2. Appeal 2021-001427 Application 15/337,922 2 CLAIMED SUBJECT MATTER Claim 23 is illustrative of Appellant’s subject matter on appeal and is set forth below: 23. An optical assembly, comprising: a lens having a lens body disposed about an optical axis, comprising: a proximal section, comprising at least one input surface having a convex central portion and a peripheral portion surrounding the convex central portion collectively forming a cavity for at least partially receiving light from a light source, and a distal section, comprising at least one output surface through which light exits the lens body; wherein a width of said distal section exhibits a decreasing taper from the proximal section to said at least one output surface through which light exits the lens body; a light guide optically coupled to the at least one output surface of the lens for receiving at least a portion of the light exiting the lens; wherein the proximal section further comprises a substantially elliptical peripheral surface for receiving at least a portion of the light entering the lens via the peripheral portion surrounding the convex central portion of the at least one input surface and for directing at least some of the received light via total internal reflection to the distal section, the substantially elliptical peripheral surface having proximal and distal focal points on the optical axis, wherein the proximal focal point is within the cavity and the distal focal point is positioned external to the lens and at a distance from the at least one output surface such that light rays diverging from the distal focal point exhibit an angular spread commensurate with a numerical aperture of the light guide. Appeal 2021-001427 Application 15/337,922 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sayers US 2004/0213001 A1 Oct. 28, 2004 Cassarly US 2005/0201100 A1 Sept. 15, 2005 Krupa US 2009/0040783 A1 Feb. 12, 2009 REJECTIONS 1. Claims 23-43, 45, and 46 are rejected under 35 U.S.C. §103 as being unpatentable over Cassarly in view of Sayers. 2. Claim 44 is rejected under 35 U.S.C. §103 as being unpatentable over Cassarly and Sayers, and further in view of Krupa. OPINION We review the appealed rejections 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.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. Appeal 2021-001427 Application 15/337,922 4 Rejections 1 and 2 We refer to the Examiner’s statement of the rejection as set forth on pages 4-11 of the Non-final Office Action dated February 6, 2020. Therein, Examiner acknowledges that “Cassarly does not specifically teach ‘wherein a width of the distal section exhibits a decreasing taper from the proximal section to the at least one output surface through which light exits the lens body.’” Non-final Act. 6. The Examiner relies upon Sayers for supplying this missing element. Id. We refer to pages 11-16 of the Appeal Brief (mailed July 8, 2020) regarding Appellant’s response thereto. Therein, Appellant argues that one skilled in the art would have had no reason to modify the shape of the transition portion of Cassarly’s lens as suggested by the Examiner, because the peripheral surface of the transition portion does not participate in guiding the light. Appellant explains that transition section 72 of Cassarly’s lens, and, more specifically, its peripheral surface, is not employed to help direct light to the output surface. Appellant points out that, in fact, Cassarly teaches that “[t]he transitional portion 72 simply serves as a solid spacer to maintain the ideal relationship between the collector portion 68 and the projector portion 70.” Cassarly ¶ 66. Appeal Br. 14. We are persuaded by this line of argument for the reasons provided by Appellant in the record. The Examiner’s response that merely because the transitional portion serves one purpose does not preclude it serving another as well (Ans. 5) overlooks the point being made by Appellant that sufficient motivation to modify Cassarly according to Sayers is lacking in the applied art. Additionally, in the Reply Brief, Appellant explains that, for the first time, on page 6 of the Answer, the Examiner relies upon Casserly’s Figure Appeal 2021-001427 Application 15/337,922 5 18c as supposed evidence that the shape of the transitional portion can be formed without affecting the performance of lens 60 in Cassarly because Cassarly states that the “transition portion 72 of the lens 60 is optically inactive”. Cassarly ¶ 69. Appellant correctly explains how this new position taken by the Examiner contradicts the original proffered motivation to modify Cassidy (i.e., modifying Cassarly according to Sayers’s teachings would help direct light to the output surfaces). Reply Br. 4. Appellant points this out to reiterate the position stated on page 14 of the Appeal Brief that there would be no reason for one skilled in the art to modify the peripheral surfaces of Cassarly’s transition section based on Sayers’s teachings as proposed by the Examiner. We are persuaded by this line of argument and note that setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In view of the above, we reverse Rejection 1. We reverse Rejection 2 for the same reasons (the Examiner does not rely upon the additional reference (Krupa) in Rejection 2 to cure the aforementioned stated deficiencies of the combination of Casserly in view of Sayers). CONCLUSION We reverse the Examiner’s decision. Appeal 2021-001427 Application 15/337,922 6 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23-43, 45, 46 103 Cassarly, Sayers 23-43, 45, 46 44 103 Cassarly, Sayers, Krupa 44 Overall Outcome 23-46 REVERSED