Ex Parte 6719434 et al

Board of Patent Appeals and Interferences

May 24, 2012

95000383 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,383 10/23/2008 6719434 160702-0015 6595
22206 7590 05/24/2012
FELLERS SNIDER BLANKENSHIP
BAILEY & TIPPENS
THE KENNEDY BUILDING
321 SOUTH BOSTON SUITE 800
TULSA, OK 74103-3318
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

MOLE-RICHARDSON CO.
Requestor, Appellant
v.

BRUCE L. FINN
Patent Owner, Respondent
____

Appeal 2011-006144
Inter partes Reexamination Control No. 95/000,383
United States Patent 6,719,434 B1
1

Technology Center 3900
____________

Before JAMESON LEE, KARL D. EASTHOM, and KEVIN F. TURNER,
Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1
Foldable Light Diffusion Box With Frame Assembly, originally issued to
Bruce L. Finn and Robert E. Lee (April 13, 2004). During prosecution of
the ‘434 patent application, Respondent, Patent Owner, filed a request to
remove Lee as an inventor, leaving Finn. (See Resp. Br. 17.)
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

Respondent, Patent Owner Finn, seeks relief in a Request for
Rehearing, see 37 C.F.R. § 41.79, from the Decision of the Board of Patent
Appeals and Interferences (“Dec.”) reversing the Examiner’s decision to
confirm claims 1-26, 28-48, 50-84, and 87-89 in the ‘434 patent.
2

Respondent’s sought-after relief requests a reconsideration of the Board’s
Decision. (Rehear. Req. 2-3.) The reconsideration request is deemed to
include an implicit request to reinstate the Examiner’s confirmation of the
above-listed claims, which we deny for the reasons that follow.
We have jurisdiction under 35 U.S.C. §§ 134(b) and (c) and 306.

STATEMENT OF THE CASE
The ‘434 patent describes a housing having multiple “par lights,” also
called “par cans” or “pars.” (Col. 2, ll. 18-22, col. 7, ll. 48-52; Fig. 2.) Each
“can” includes a par lamp therein. The par lights attach to a frame
supporting the surrounding housing. The lights project through a diffusion
element on the front of the housing which softens the emanating light. (See
‘434 Patent Abstract; Figs. 2.)
In lieu of cans, another embodiment employs par collars 282 to hold
the par lamps. (Figs. 41, 42; col. 13, ll. 1-13.) This latter embodiment does
not appear in a grand-parent patent to inventors Lee and Finn,
U.S. 6,106,125. (See note 1; Dec. 12.) The prior art status of the ‘125 patent
is one subject of dispute on appeal. (See Dec. 18-25.)
Claim 1 on appeal reads as follows:
Claim 1 (original): A lighting projection device for controlling and directing
light from multiple lights, the lighting projection device comprising:

2
Decided October 13, 2011 after hearing on July 13, 2011.
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

3
(i) a housing having multiple sides and a front, wherein the sides are
adjacent one another;
(ii) a frame for supporting the housing, the frame comprising lamp
holding means for receiving and holding multiple par lamps;
(iii) multiple par lamps supported in the lamp holding means; and
(iv) means in the housing for supporting a primary diffusion element
holder proximate the front of the housing, whereby when a primary diffusion
element is disposed in the primary diffusion element holder, light diffusion
will be provided for converting light from the par lamps directed thereat to a
soft diffused projected light.
(See Dec. 3.)
DISCUSSION
Third Party Requestor and Appellant Mole-Richardson addresses
Patent Owner Finn’s arguments in the Third Party Requestor’s Comments in
Opposition to Patent Owner’s Request for Rehearing Under 37 C.F.R.
§ 41.79(a)(1) (“Comments”). Requestor’s Comments persuasively show
that the Patent Owner fails to show error in the Decision or that the Decision
overlooks or misapprehends points of contention redounding to claims
which should have been confirmed.
A1. Patent Owner alleges that the Board erred in finding that the Obie
Flyer, which discloses PAR-36 lamps, discloses “par lamps” as recited in
claim 1. (Rehear. Req. 3-6.) The Decision finds that Obie’s PAR-36 lamp
constitutes a par lamp according to the ‘434 patent’s description. (Dec. 13-
18.) As Requestor summarizes, Patent Owner fails to address the following
evidence in the Decision: “the Patent Owner’s own declaration from the
prior reexamination, the Hankins patent, the catalogs, the Box declaration, or
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

4
most importantly, the Patent Owner’s own defining statement in the
‘434 patent.” (Comments 1-3.)
Claim 1 recites a “par lamp” which the ‘434 patent describes, in part,
as follows:
In each embodiment, the invention provides a light box which
is preferably lightweight, foldable, modular and provides for
soft projected light regardless of the lighting elements used.
The invention, though not limited to the use of nonfocusable
lights, makes the use of inexpensive par lamps practical. Such
lamps have an internal parabolic reflector which creates an
extremely parallel beam of light.
(Dec. 8-9 (quoting ‘434 patent at col. 3, ll. 9-18).)

Patent Owner relies on declaration testimony by inventor Finn, as to
what those in the light industry would consider a “par lamp,” but Patent
Owner does not address the thrust of the Decision which focuses on
language in the ‘434 patent describing “par lamps” and other evidence.
(Rehear. Req. 4.)
For example, the Decision finds that Finn admits in a declaration that
“FAY lamps [the Obie Flyer lamps according to Respondent] are sometimes
loosely referred to as ‘par lamps.’” (Dec. 15.) The Decision also finds that
“both experts agree that a par lamp constitutes a metalized parabolic
reflector like a headlight and includes various sizes.” (Dec. 15.) The
Decision further relies on the ‘434 patent which states that “‘pars . . . are
available in a wide variety of intensities’.” (Dec. 14 (quoting the ‘434
patent).) Patent Owner does not address these findings.
The Decision also notes that Finn testifies in a declaration that the
acronym “PAR” stands for “‘parallel aluminized reflector,’” but that Patent
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

5
Owner does “‘not argue specifically that the par lamps recited in the claims
require an aluminum reflector.’” (Dec. 15.) In the Request, Patent Owner
repeats similar assertions made in the Responsive Brief that “FAY lamps
have a dichroic – rather than aluminized - reflector” (Rehear. Req. 4), but as
Requestor and the Decision point out, the Obie Flyer discloses other PAR-36
lamp types not having a dichroic coating, such as, for example, FCX and
FCW lamps. (See Comments 2, Dec. 16.) As the Decision states, “[e]ven
the acronym ‘PAR’ for the Obie-Flyer ‘PAR-36’ lamps indicates to skilled
artisans that it is a type of par lamp.” (Dec. 15.)
At the oral hearing before the Board, Patent Owner’s counsel admitted
that “a par 36 is technically, under a giant category, a par” lamp, but
contended that “on the set,” it would not be considered a par lamp. (BPAI
Transcript 27:8-9). As the Decision explains, the claims are not limited to
interpretations involving a limited choice of one or two devices on a stage
set. (See Dec. 17-18; Box Decl. ¶¶ 12, 17.)
Patent Owner fails to show an overlooked point or error in the
Decision concerning the finding that Obie’s PAR-36 lamps constitute par
lamps as set forth in the claims, as described in the ‘434 patent, according to
Finn’s and Box’s declaration testimony, and according to other evidence of
record, including prior inconsistent positions by declarant Finn (see Dec.
16).
A2. Patent Owner also argues that “neither the Board nor the
Examiner fully considered Patent Owner’s argument that the Obie Flyer fails
to teach or even suggest the use of a frame and housing” recited in claim 1.
(Rehear. Req. 5.) But Patent Owner fails to point out where such an
argument exists in the Respondent Brief. Patent Owner did present a
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

6
“conclusory statement” premised on the lack of par lamps in Obie.
(Compare Resp. Br. 41 with Dec. 18 (discussing Patent Owner’s
“conclusory statement”).) The Decision addresses the alleged lack of a par
lamp and does not overlook particularly raised points of contention.
37 C.F.R. § 41.79 (b) (2) allows the Patent Owner to present new
arguments in a rehearing request in response to a new ground of rejection.
But contrary to Patent Owner’s assertion that “there has never been a
demonstration either by the Examiner or by the Board that the Obie Flyer”
discloses a frame, housing and other unnamed claim elements (Rehear.
Req. 5), Requestor, relying on the record, shows otherwise. In other words,
the thrust of the rejection as to these elements does not constitute a new
ground.
In any event, relying on its Corrected Request for Inter Partes
Reexamination, Requestor explains that the original Examiner adopted the
proposed Obie rejection detailing the claim elements in a first Office Action
(March 13, 2009 at 11-12). (Comments 3 (citing Cor. Req. at 11-12,
Appx. C at 79-80).) Requestor further explains that Obie’s frame and
reflector hood satisfy the disputed limitations. (Comments 4.)
Patent Owner argues in the Request that Obie’s “reflector hood . . .
cannot be both the housing and frame.” (Rehear. Req. 6.) But Requestor
identifies Obie’s reflector hood as the housing and identifies Obie’s “chassis
or frame for receiving and holding three PAR-36 lamps” and further
explains that “three collars or globe retainers are built into the chassis or
frame.” (Cor. Req. Appx. C at 80.) Patent Owner does not address these
two separately identified housing and frame structures which are plainly
depicted and described in Obie at pages 4-5. As Requestor also points out,
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

7
Obie’s structure, showing lamps built into a frame (which includes globe
retainer 55416) and a surrounding housing, is similar to the ‘434 patent’s
collar embodiment. (Cor. Req. Appx. C at 80.)
Based on the foregoing discussion, Patent Owner fails to show error in
the Decision which implicitly relies upon the Examiner’s previous findings
including adopted portions of the Corrected Request, all of which went
unchallenged until Patent Owner’s conclusory arguments on appeal and
unpersuasive arguments here.
B. Patent Owner also argues that the Board erred in determining, with
respect to the ‘125 patent based rejection, that the “means for mounting at
least four par lamps” recited in the claim 58 preamble is not a limitation
because the claim body phrase “a frame for holding the at least four par
lamps therein” does not refer back to the preamble. (See Rehear. Req. 7-8.)
But as the Decision explains, “the at least four par lamps” specifically refers
back to “at least four par lamps” in the preamble and thereby defines the
lamps has having been mounted by the means recited in the preamble. (See
Dec. 28 (citing Bell Comm. Research, Inc. v. Vitalink Comm. Corp., 55 F.3d
615, 621 (Fed. Cir. 1995) (claimed method includes preamble limitations
describing a packet where the claim body refers back to the preamble with
“said packet”).)
As Requestor also points out, Patent Owner does not explain
persuasively how a frame, by itself, can hold the par lamps “therein” as
recited in claim 58. The frame must have structure to support that function,
such as the ‘434 patent’s disclosed built-in collar and ring structure for
holding lamps therein. (See Comments 5-6 and further discussion below.)
In other words, the ‘434 patent indicates, in line with the reference to the
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

8
antecedent “four par lamps,” that the preamble is required to support the
function of “holding the at least four lamps therein” recited in the claim
body.
Contrary to Patent Owner’s alternative argument (Rehear. Req. 8), the
recited “frame,” which modifies the means clause in the preamble, lacks
sufficient structure to take the means clause out of a 35 U.S.C. 112, ¶ 6
analysis. Alternatively, the “frame for holding the at least four par lamps”
implicitly includes the “means for mounting at least four lamps,” in light of
the frame including collar and ring structure as depicted in Figure 41 of the
‘434 patent. Under this latter alternative, the recited frame does not create
any structure which would otherwise take the recited means clause outside
the ambit of 35 U.S.C. 112, ¶ 6.
The Decision alternatively points out that regardless of whether
claim 58 requires a means for mounting under 35 U.S.C. 112, ¶ 6, the
‘125 patent does not disclose the collar and ring structure. If claim 58 (and
the other claims) read on the ‘125 patent’s can embodiment and the
‘434 patent’s collar embodiment as Patent Owner maintains, then the
‘125 patent does not support the full breadth of independent claims 1, 31, 58,
and 61 as discussed further below. (Dec. 7-8, 20-21, 28.) Also, then, the
‘125 patent anticipates claims 1, 31, 58, and 61 (see Dec. 25).
3
And under

3
The Decision reasoned, inter alia, as follows:
Therefore, ‘125 patent does not support the independent
claims either because (1) the recited means-plus-function
clauses are linked clearly only to the later-filed ‘434 patent
collar structure under Braun Medical, 124 F.3d at 1424 ; (2)
even if not in means-plus function format, the disputed clauses
refer to the disclosed collar embodiment and do not read on the
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

9
any of the alternative claim interpretation theories, Obie anticipates or
renders obvious the independent claims. (See Dec. 5-6, 38.)
C. Patent Owner’s contentions are without reference to any claim in
this Section of the Request. It is not clear how the contentions redound to a
claim confirmation. (Rehear. Req. 9-10.)
Requestor persuasively responds to Patent Owner’s contention that the
Board erred by finding that the grandparent ‘125 patent treats the par cans
(lights) and frame (bar) differently. (See Comments 6-8.) For example, the
‘125 patent refers to “”multiple stage-type lights . . . mounted on the bar”
(Abstract); “frame” members 36, 38, 40, 42 and 44” (col. 3, ll. 33); “frame
members 52, 54, 56, and 58” (col. 3, l. 36); “[b]ar 14 . . . well known in the .
. . industry for mounting lights such as pars,” (col. 3, ll. 2-5), and “lights 75,
76, 77, and 78 . . . readily clamped on the bar 14 supported by the housing”

can embodiment; or (3), if (1) and (2) are both false as
Respondent maintains, the clauses (whether in means-plus-
function format or not) embrace considerable (i.e., collar)
structure not disclosed in the ‘125 patent under Chester,
Lukach, and Gosteli as discussed supra.

(Decision 28 n.10 (referring to Braun Medical v. Abbott Laboratories, 124
F.3d 1419, 1424 (Fed. Cir. 1997) (claims limited to clearly defined structure
when other unclear structure is disclosed); Chester v. Miller, 906 F.2d 1574,
1577-78 (Fed. Cir. 1990) (citing Lukach, holding that broader CIP claims in
child were anticipated by the parent, which did not support the broader CIP
claims); Application of Lukach, 442 F.2d 967, 969-70 (CCPA 1971) (later-
filed broad range claim not supported by earlier grand-parent disclosure of
point in the range and anticipated by a similar disclosure in a related British
patent); In re Gosteli, 872 F.2d 1008 (Fed. Cir. 1989) (later-filed claims
containing subject matter, a genus, not disclosed in foreign priority
application, disclosing a subgenus of the genus claimed, not entitled to
foreign priority).
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

10
(col. 4, ll. 15-16.) These lights “may be quickly mounted and unmounted
from the bar” (col. 4, ll. 20-21.)
The ‘125 patent clearly indicates that lights, which are equivalent to
pars (i.e., cans with par lamps therein) are distinct entities from a “frame”
such as a bar.
4

Figure 2 of the ‘125 patent is depicted below:

Figure 2 shows the par cans 75, 76, 78, and 79 attached to and distinct
from the frame members 14, 42, 44, etc.

4
See Dec. 12, FL3, 19-20 (finding that the ‘125 patent equates “par cans,”
lights,” and “pars” and that par lamps mounted in par cans are called
“lights.”

Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

11
Figure 41 from the ‘434 patent follows:

Figure 41 of the ‘434 patent depicts the collars 282 directly attached
to the rectangular frame 286. The “built-in par lamps,” or “par lamps in
collars [282,] have a low profile,” and the “par collars 282 are directly
connected to frame 286 by screws, bolts 289 or the like.” (‘434 patent,
col. 13, ll. 8-13.) Also, with respect to Figure 41, “the cans are not used in
this embodiment.” (‘434 patent, col. 13, ll. 1-2.)
Comparing Figure 2 supra, which appears in both the grandchild
‘434 patent (to Finn) and the grandparent ‘125 patent (to Lee and Finn), with
Figure 41, which appears only in the ‘434 patent, reveals a physical
distinction: The collars (Fig. 41, 282) do not constitute complete light
housings for the par lamps while the par cans (Fig. 2, 75, 76) do. The cans
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

12
have internal connectors and wires for the lamps therein, the collars do not.
(See Comments 7.)
Patent Owner directs attention to Figure 9 in the ‘434 patent and
contends that the collars there are described as easily removable. Patent
Owner contends that this shows error in the Board’s rationale which
distinguishes collars and cans partly because the cans are more readily
removable from the frame. (Rehear. Req. 9; Dec. 28-29; see also discussion
supra.)
However, as Requestor contends, the ‘434 patent’s description of
Figure 9 refers to “pars” or “lights” and not collars. For example, the
‘434 patent describes Figure 9 as depicting “lights such as pars 135, 136”
(col. 10, ll. 7). In any event, despite some possible similarities across
different embodiments, lights (i.e., pars, par cans, complete housings) are
distinct from collars. (See supra note 4; discussion supra; Comments 6-8.)
5

In addition, Patent Owner’s discussion of Figure 9 in the ‘434 patent
does not show error in the Board’s finding that the earlier-filed ‘125 patent’s
can embodiment fails to provide written description support for the later-
filed ‘434 patent’s collar embodiment. (Compare Fig. 2 (cans) with Fig. 41
(collars).)
Patent Owner’s arguments fail to show an error sufficient to upset
either an anticipation or obviousness rejection based on the ‘125 patent or
other rejections as set forth in the Decision. (See Dec. 18-38.)

5
To the contrary of the Decision, the ‘434 patent does not describe Figure 9,
a “second embodiment,” (‘434 patent, col. 4, l. 63), as employing collars.
The collars only appear in Figures 41 and 42 as Requestor explains. (See
Comments 6-8; ‘434 patent, col. 10, ll.6-7; col. 13, ll. 1-15.)
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

13
D. Patent Owner queries whether the Board agreed with the Examiner
that the “lamps” were not enabled by the ‘125 patent. (Rehear. Req. 10-12.)
The Board neither makes nor relies upon a finding regarding enablement of
the lamps. (Accord Comments 9 (describing the Board’s Decision as
determining corresponding structures and means under 35 U.S.C. 112, ¶ 6).)
E. Patent Owner argues that the Decision improperly interprets
claims 58 and 61 in a similar fashion. (Rehear. Req. 12-13.) Patent Owner
does not explain what the result of any such error would be.
Even if the ‘125 patent describes the rigid member for mounting par
lamps recited in claim 61 as embracing the ‘125 patent’s can and frame as
Patent Owner contends (Rehear. Req. 13), the ‘434 patent’s rigid member
recited in claim 61 also embraces considerable other subject matter – the
rings and collars described in the ‘434 patent – subject matter not
contemplated in the ‘125 patent. As such, the ‘125 patent anticipates
claim 61 even if the rigid member embraces the can and a frame, because the
‘125 patent can embodiment does not support the ring and collar subject
matter disclosed and claimed in the ‘434 patent as discussed further below.
On the other hand, if claim 61 does not embrace the can and frame, the
‘125 patent as combined with other references renders claim 61 (and other
claims) obvious.
F. Patent Owner argues that “[c]laim 62 contains a clear scrivener’s
error in that it calls for six par lamps to be mounted in the [sic] ‘the lamp
holding means’” which lacks antecedent basis in claim 61. According to
Patent Owner, the Board erred by relying on Patent Owner’s “defective
claim” 62 as a basis for interpreting claim 61 as implicitly including “a lamp
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

14
holding means” and thereby interpreting it under a means plus function
analysis pursuant to 35 U.S.C. 112, ¶ 6. (Rehear. Req. 13.)
Patent Owner’s argument reduces to the untenable assertion that the
Board erred by relying on Patent Owner’s claim drafting error. 35 U.S.C.
112, ¶ 2 “puts the burden of precise claim drafting squarely on the
applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the
applicant’s burden to precisely define their invention, not the PTO’s.”)
Further, Patent Owner argues both ways; i.e., that 1) a “defective
claim” having a “clear scrivener’s error” (id. at 13); 2) “remained unnoticed”
(id. at 14). If such a “defective claim” has a “clear scrivener’s error,” then
Patent Owner should have noticed and corrected it. Either way, clear error
or not by the patentee, the Decision simply construes claim 62 as implying
an antecedent reference back to claim 61. As Requestor points out, the
relationship between “a rigid member for mounting the par lamps” in claim
61 and “at least six par lamps mounted in the lamp holding means” in claim
62 constitutes a plausible, if not clear, indication that the patentee intended
claim 61 to constitute or comprise a rigid member means for holding a lamp.
(See Comments 11-12.)
Hence while independent claim 61 fails to specifically refer to the
rigid member as constituting or comprising a lamp holding means, claim 62
implies that it does, overcoming the presumption that claim 61 does not
include a means plus function clause. The most plausible explanation for
patentee’s failure to correct his “clear” claim drafting “error” is that patentee
did exactly what he intended – drafted a flexible claim 61 such that “a rigid
member for mounting” could be argued to include a means plus function
clause falling under 35 U.S.C. 112, ¶ 6, or not, depending on the
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

15
circumstances. “The problem in this case is that the appellants failed to
make their intended meaning explicitly clear.” Morris, 127 F.3d at 1056
(“[S]uch evasiveness we cannot condone . . . .”). Patent Owner also fails to
explain clearly how any change in the interpretation of claim 61 would
create an error causing confirmation of claim 61. (See Comments 11-12.)
G. Requestor’s Comments persuasively respond to Patent Owner’s
Request as spelled out in Section G of both documents. The Comments
persuasively explain that Patent Owner re-phrases similar arguments
addressed elsewhere by Requestor and/or the Decision. (Compare Rehear.
Req. 14 with Comments 12; Dec. 30.) The arguments focus on a “rigid
member,” presumably claim 61, but fail to specify show how any purported
error in claim interpretation would result in confirmation of claim 61.
H-L. Requestor’s Comments also persuasively respond to Patent
Owner’s Request in Sections H-L. (Compare Comments 12-15 with Rehear.
Req. 15-24.) Based on Requestor’s Comments in Sections H-L, Patent
Owner fails to show error in the Decision that would result in a claim
confirmation identified by Patent Owner. In addition, many of Patent
Owner’s arguments primarily re-phrase arguments which were addressed in
the Decision or elsewhere. See 37 C.F.R. § 41.79 (d) (prior decision deemed
adopted).
With specific respect to the rejection in Section H, Patent Owner
contends that modifying Obie to employ at least four lamps, instead of three
lamps disclosed there, would not have been obvious. (See Rehear. Req. 21-
24.) Adding another light would have been obvious for producing more
light and more options, where Obie at pages 4-5 discloses individual
switches for intensity control, and also discloses a diffuser of silk or spun
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

16
glass. As Requestor points out, the Decision and the original Examiner also
considered Patent Owner’s other contentions. (See Comments 15-19.) For
example, the Decision at page 18 addresses diffusion and soft light in Obie.
Obie’s diffusers render the emanating par light soft. Requestor’s responses
(Comments 15-19) are persuasive and adopted and incorporated by reference
here.
With specific respect to Section I, as Requestor (Comments 14), the
prior Decision (Dec. 20-21), and this Rehearing Decision each explains,
claim 61 (and claim 62) embrace the collar and ring structure disclosed in
the grandchild ‘434 patent but not disclosed in the grandparent ‘125 patent.
Patent Owner does not dispute that these claims (or any claims on appeal)
embrace the grandchild collar and ring structure. Assuming for the sake of
argument that Patent Owner is correct in that claims 61 and 62 also embrace
the can embodiment disclosed in the grandparent ‘125 patent (see Rehear.
Req. 19), then under Lukach, Gosteli, and Chester, the ‘125 patent
anticipates those claims.
Patent Owners argues that this precedential trilogy is distinguishable
from the circumstances involving claim 61 because the ‘125 patent’s frame
and can structure provides written descriptive support for the rigid member
recited in claim 61. (Rehear. Req. 16-17.) But since the rigid member in
claim 61 also embraces the later-filed ‘434 patent’s disclosed collar
structure, and all manner of other structure not disclosed in the ‘125 patent,
it follows that the ‘125 patent does not provide written descriptive support
for the full scope of claim 61.
In Lukach (supra note 3), as Patent Owner contends (Rehear. Req. 16-
17), an earlier-filed disclosure of a point 2.6 in a later-claimed range of at
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

17
least 2.0 and less than about 3.0, failed to support, and thereby anticipated,
that claimed range. By analogy to Lukach, the earlier-filed can embodiment
arguably supports a species falling within the scope of the later-filed generic
rigid member recited in claim 61, but it does not support the full generic
scope thereof, contrary to Patent Owner’s arguments. The full scope of the
undefined rigid member recited in claim 61 is extremely broad in
comparison to the narrow range involved in Lukach. Even if “rigid”
provides some structural boundary, the recited “rigid member” has no
readily conceivable boundary. As such, Patent Owner fails to demonstrate
why the rationale underlying Lukach, Gosteli, and Chester is not applicable
here.
In Section J, Patent Owner switches streams and argues that the later-
filed collar embodiment in the ‘434 patent does find written descriptive
support in the earlier-filed ‘125 patent. (Rehear. Req. 20-21.) In other
words, Patent Owner’s new position directly contradicts Patent Owner’s
previous position enunciated in the Respondent Brief:
The language of the claims of the ‘434 patent is broad enough
to cover the embodiments that were illustrated for the first time
in this patent, as well as the embodiments disclosed in its parent
cases. As such, the scope of these claims should not be limited
to embodiments that were discussed for the first time in the
instant patent.
(Resp. Br. 41 n. 13 (emphasis added).)

Setting aside Patent Owner’s contrary earlier position, Patent Owner
now directs attention to the Box Declaration, which describes commonly
known structure for seating par lamps in “fixture housings,” and Patent
Owner imputes this common knowledge as providing implicit possession of
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

18
a (non-discussed) collar embodiment in the ‘125 patent. (Rehear. Req. 21
(quoting Box Dec. at ¶ 12).) First, if expert Box describes the ‘434 patent’s
collar embodiment as common knowledge as Patent Owner now argues, then
Finn cannot be the inventor of it.
6
Second, Patent Owner is not clear as to
what element in Box’s declaration constitutes descriptive support for the
disclosed “collar” in the ‘434 patent. Patent Owner obliquely indicates it is
either a “fixture housing” or “a rib in the fixture housing”: “[T]he [lamp]
lens is seated against a rib in the fixture housing (i.e., a collar).” (Rehear.
Req. 21.)
Box describes the common attachment for large par lamps as follows:
“The most common method is to seat the lens against a rib in the fixture
housing, and hold it there with a spring loaded retaining ring that fits into an
indent around the circumference of the housing.” (Box. Dec. ¶ 12.)
(emphasis added.)
7

Patent Owner does not explain how seating a lens against rib in a
fixture housing (e.g., a par can housing) has anything to do with the

6
Further, it is not clear why Lee was removed as inventor if the subject
matter was common knowledge – and therefore belongs at least to Finn and
Lee, listed inventors of the ‘125 patent. (See n.1; cf. Dec. 18-25 (comparing
Finn and Lee’s disclosed subject matter).) See also Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in
a patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.”); In re
Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (It is a “basic proposition that
a statement by an applicant, whether in the application or in other papers
submitted during prosecution, that certain matter is ‘prior art’ to him, is an
admission that that matter is prior art for all purposes . . . .”).
7
Requestor does not contend that this description by its expert Box was not
common knowledge before the ‘125 patent.
Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

19
Figure 41 embodiment in the ‘434 patent.
8
The ‘434 patent’s description of
Figure 41 does not include any description about seating a lens against
anything, describe a rib, an indent, or employ a par can (i.e., fixture
housing). (See ‘434 patent, col. 12, l. 62 to col. 13, l.15; Fig. 41.) The
‘434 patent’s disclosed par collars 282 are not ribs and are directly
connected (i.e., without an intervening par can housing) to frame 286 by
screws, bolts 289, or the like. (‘434 patent, col. 13, ll. 12-14; Fig. 41.)
Patent Owner fails to explain how a prior art rib in a fixture housing attached
to a frame (i.e., attached pursuant to the ‘125 patent disclosure) provides
written descriptive support for directly connecting a collar to a frame as
disclosed in the later-filed ‘434 patent.
Patent Owner’s original position noted supra is more persuasive than
the new position just discussed – i.e., the ‘434 patent describes a collar
embodiment which is not described in the ‘125 patent. Patent Owner does
not explain clearly how the rib attachment structure described by Mr. Box
places Finn, but not Finn and Lee, the listed inventors of the earlier-filed
‘125 patent, in possession of the Figure 41 collar embodiment in the later-
filed ‘434 patent.
Based on the foregoing discussion and the arguments and responses
presented, Patent Owner fails to show with particularity error in the Decision

8
Expert Box also specifically refers to a “collar” and a “pivoting lever” in
the same paragraph with respect to other attachment structures. (Box. Dec .
¶ 12.) Patent Owner does not rely on that structure for written description
support in the ‘125 patent - but such known structures presumably would be
within the scope of claim 61 if Patent Owner’s position that par can
structures are within that scope is correct.

Appeal 2011-006144
Reexamination Control 95/000,383
Patent 6,719,434 B1

20
or that the Decision overlooks or misapprehends points of contention
redounding to claims which should have been confirmed.

REHEARING DECISION
We decline to modify the Decision reversing the Examiner’s decision
to confirm the claims on appeal.
DENIED

ak

Fellers Snider Blankenship
Baily & Tippens
The Kennedy Building
321 South Boston
Suite 800
Tulsa, OK 74103-3318

Third Party Requester:

Sheppard, Mullin, Richter & Hampton, LLP
333 South Hope Street
48
th
Floor
Los Angeles, CA 90071-1448