Ex Parte 6543911 et al

Patent Trial and Appeal Board

Jun 1, 2016

95001410 (P.T.A.B. Jun. 1, 2016)

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.
95/001,410 07/27/2010 6543911 7248
64828 7590 06/01/2016
Harold McGurk
The Law Office of Clay McGurk
P.O. BOX 1488
Orange, CA 92856
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/01/2016 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
____________

VOLKSWAGEN GROUP OF AMERICA, INC.,
Requester,

v.

LIGHT TRANSFORMATION TECHNOLOGIES LLC,
Patent Owner.
____________

Appeal 2016-001446
Reexamination Control 95/001,410
Patent 6,543,911 B1
Technology Center 3900
____________

Before STEPHEN C. SIU, JONI Y. CHANG, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

NEW DECISION
37 C.F.R. § 41.77(f)
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I. BACKGROUND
In an earlier Decision, 2012-002458, mailed January 10, 2012
(“Decision”), we reversed the Examiner’s decision not to adopt a certain
ground of rejection proposed by Third Party Requester, Volkswagen Group
of America, Inc. (“VGA”). In particular, we reversed the Examiner’s
decision not to reject claim 6 of U.S. Patent No. 6,543,911 B1 (the “’911
patent”) under 35 U.S.C. § 102(b) as anticipated by Brown.1 By operation
of 37 C.F.R. § 41.77(b), that reversal constituted a new ground of rejection
applied to claim 6.
Patent Owner, Light Transformation Technologies LLC (“LTT”), was
given the option to either request the reopening of prosecution or request
rehearing. LTT elected to reopen prosecution.2 On March 12, 2012,
pursuant to 37 C.F.R. § 41.77(c), VGA filed comments in reply to the
Response.3 In an Order dated November 7, 2012, the proceeding was
remanded to the Examiner. In due course, the Examiner mailed a
Determination as required by 37 C.F.R. § 41.77(d).4 In that Determination,
the Examiner determined that the rejection of claim 6 as anticipated by

1 “Brown” is UK Patent Application GB 2 282 700 A published April 12,
1995.
2 See “Patent Owner’s Response and Request to Reopen Prosecution
Pursuant to 37 C.F.R. § 41.77(b) After a Decision by the Board of Appeals
and Interferences” filed October 2, 2012 (“Response” or “PO Resp.”).
3 See “Comments of Requester, Volkswagen Group of America, Inc.,
Pursuant to 37 C.F.R. § 41.77(c)” (“Comments”).
4 See “Determination Under 37 CR 41.77(d)” mailed December 26, 2012
(“Determination”).
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Brown is maintained. Neither party filed any comments under 37 C.F.R.
§ 41.77(e) in response to the Examiner’s Determination.
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.5, 6
II. DISCUSSION
In exercising our authority under 37 C.F.R. § 41.77(f) here, we must
inquire if the record now before us conveys that the Examiner was incorrect
in her recommendation that the rejection of claim 6 of the ’911 patent as
anticipated by Brown should be maintained. In making that inquiry, we
discern that a central issue concerns the meaning of “redistributes” when
used in connection with the distribution of light from a source. Indeed, it is
the meaning of that term that has been at the heart of the reexamination and
appeal proceedings involving the ’911 patent.
In our earlier Decision, we determined that “the term ‘redistributes’
in the context of light means that light emanating from a source must

5 37 C.F.R. § 41.77(f) reads:
(f) After submission of any comments and any reply pursuant to
paragraph (e) of this section, or after time has expired, the
proceeding will be returned to the Board which shall reconsider
the matter and issue a new decision. The new decision is deemed
to incorporate the earlier decision, except for those portions
specifically withdrawn.
6 We observe that on July 8, 2015, subsequent to this proceeding again
reappearing before the Board, counsel who had represented LTT filed a
paper titled “Notice of Expiration of Patent” indicating that the ’911 patent
“has expired due to the non-payment of the required maintenance fees on
April 8, 2015.”
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undergo a change in its angular intensity distribution upon reflection by a
reflective surface.” Decision 9. In making that determination, we observed
the following:
That definition of the term “redistributes”: (1) was the definition
advanced by LTT in prosecution before the Examiner in this
reexamination proceeding (see, e.g., “Patent Owner's Response
and Amendment in Inter Partes Reexamination” filed November
23, 2010); (2) is supported by the specification of the ’911 Patent
and the declaration testimony of Dr. Pepper;[7] (3) was accepted
by the Examiner as correct (see ACP 4);[8] and (4) is not disputed
by VGA.
Id. at 9–10.
We also were unpersuaded by LTT’s belated assertion that, in
addition to the meaning of “changing the angular intensity distribution,” the
term “redistributes” also requires that there be a change in “the relative order
or sequence” of reflected light rays. Id. at 10. In particular, we were not
satisfied that the record supported adequately LTT’s assertion.
In its Response, LTT once again represents that the term
“redistributes” with respect to reflected light requires “changing the order of
emerging light rays.” PO Resp. 5. According to LTT, Brown’s reflecting
structure, shown for instance in Figure 12, does not redistribute light because
it “does not show light paths that are reordered.” Id. at 7. In conjunction
with its Response, LTT introduced into the record a second “Declaration of

7 The noted Declaration testimony of Dr. Pepper refers to the “Declaration
of Dr. David Pepper Under 37 C.F.R. § 1.132” was filed on November 23,
2010 (“1st Pepper Decl.”).
8 “ACP” refers to the Action Closing Prosecution that was mailed January
13, 2011.
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Dr. David Pepper Under 37 C.F.R. § 1.132”. Notably, we observe that as a
part of that Declaration, Dr. Pepper does not offer any testimony as to the
meaning of “redistributes.” Indeed, we note also that Dr. Pepper does not
elaborate on or revise his earlier testimony that Brown’s reflective surfaces
allegedly do not redistribute light “because there is no change in the angular
intensity distribution of the incoming source light.” See 1st Pepper Decl. ¶
12.
We have considered the record before us, including LTT’s Response,
VGA’s Comments, and the Examiner’s Determination. The record conveys
that the term “redistributes” with respect to light in the context of the ’911
patent is understood as requiring a change in the angular intensity
distribution of reflected light, and does not require reordering of reflected
light rays.9 We do not deviate from our determination in our earlier
Decision that Brown discloses reflective surfaces, e.g., as shown in Figure
12 of that reference, that change the angular intensity distribution of
reflected light, and, thus, show light rays that have been redistributed.
Furthermore, we discern that even if we were to conclude that
“redistributes” does require reordering of reflected light rays, it is not
apparent why such is not shown in Brown. As a part of its Comments, VGA
introduces a Declaration from Dr. Roland Winston (“Winston Decl.”). Dr.
Winston includes two annotated versions of Brown’s Figure 12, which are
offered to show the ordering of light before and after reflection from

9 We conclude that such interpretation reflects the ordinary and customary
meaning of the term “redistributes,” and is correct under both the claim
construction standard of “broadest reasonable interpretation” and that
advanced in Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005).
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surfaces 34 and 40. A portion of paragraph 10 of Dr. Winston’s Declaration
showing those annotated versions of Figure 12 is reproduced below:
Figure 12 of Brown has been annotated below, in which six light
rays denoted A, B, C, D, E, and F have been applied to the light
emitting diode 8 and traced in the absence of the part 50 (below
left figure) and then traced again in the presence of the part 50
(below right figures).

Winston Decl. ¶ 10.
Thus, Dr. Winston testifies that light rays are generated from diode 8
in the order A, B, C, D, E, and F, and upon reflection by part 50 are
reconfigured in the order of A’, B’, F’, E’, D’, and C’. Dr. Winston’s
testimony as to the apparent reodering of reflected light in Brown appears
accurate. It is not apparent to us why Brown is not understood reasonably as
conveying that reflected light rays are reordered as compared with their
ordering before reflection.
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Having considered the record before us, we do not discern error in the
Examiner’s determination that the rejection of claim 6 as anticipated by
Brown is maintained.
III. CONCLUSION
We affirm the Examiner’s determination that claim 6 of the ’911
patent remains unpatentable over Brown. We do not modify our earlier
decision (2012-002458), which forms part of this present decision.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

rvb

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PATENT OWNER:
HAROLD MCGURK
THE LAW OFFICE OF CLAY MCGURK
P.O. BOX 1488
ORANGE, CA 92856

THIRD-PARTY REQUESTER:
KENYON & KENYON LLP
ONE BRAODWAY
NEW YORK, NY 10004