90013007 (P.T.A.B. May. 26, 2016)

Ex Parte 8269654 et al

Patent Trial and Appeal BoardMay 26, 2016

90013007 (P.T.A.B. May. 26, 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. 90/013,007 09/27/2013 8269654 00108-0002 3213 86022 7590 05/27/2016 Jerold I. Schneider Schneider Rothman IP Law Group 4651 North Federal Highway Boca Raton, FL 33431 EXAMINER PEIKARI, BEHZAD ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/27/2016 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 ________________ Ex parte RDJONES STOP EXPERTS, INC. ________________ Appeal 2015-005305 Reexamination Control 90/013,007 Patent 8,269,654 B2 Technology Center 3900 ________________ Before MARC S. HOFF, JEREMY J. CURCURI, and JENNIFER L. McKEOWN, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has filed a paper under 37 C.F.R. § 41.52 requesting that we reconsider our Decision of November 27, 2015, wherein we affirmed the Examiner’s rejection of claims 1–6, 9–22, and 25–28. Appeal 2015-005305 Reexamination Control 90/013,007 Patent 8,269,654 B2 2 DISCUSSION I. Regarding the claim construction in our Decision, Appellant presents the following principal arguments: i. “[T]he Board’s claim construction improperly duplicates other language already in the claim.” Req. Reh’g 3; see also Req. Reh’g 4 (“The Board’s claim construction amounted to a double recitation of the number of light flashes of each light unit”). ii. “[T]he Board’s claim construction was legally erroneous because it ignored the embodiment in specification at col. 6, lines 48–57, that expressly used the word ‘simultaneously.’” Req. Reh’g 4. iii. “The language in independent Claims must be construed sufficiently broadly to encompass both simultaneous and sequential flashing.” Req. Reh’g 4. Regarding Appellant’s argument i, this argument does not show any error in our original decision. The Board did not misapprehend or overlook Appellant’s arguments. The Board’s claim construction of “wig-wag flash pattern” includes the language “a flash pattern having two or more flashes of one light followed, sequentially, by three or more flashes of another light.” Dec. 8. In contrast, the original claim language states: “a wig-wag flash pattern, the pattern including emitting within a predetermined time two light flashes from one light unit, and at least three light flashes and no more than five light flashes from the other light unit for each wig-wag cycle.” Claims Appendix, Claim 1. The Board’s claim construction clarifies that sequential Appeal 2015-005305 Reexamination Control 90/013,007 Patent 8,269,654 B2 3 flashing (one light’s flashes followed sequentially by another light’s flashes) is included in the claim scope. The original claim language does not specifically recite this sequential flashing; thus, the claim construction does not amount to an improper double recitation. Regarding Appellant’s argument ii, this argument does not show any error in our original decision. The Board did not misapprehend or overlook Appellant’s arguments. The Board clarified that “a flash pattern having two or more flashes of one light followed, sequentially, by three or more flashes of another light” is included in the claim scope. Dec. 8. The Board’s claim construction does not exclude simultaneous flashing from the claim scope, as described in the embodiment in Appellant’s Specification at col. 6, ll. 48–57. Regarding Appellant’s argument iii, this argument does not show any error in our original decision. The Board did not misapprehend or overlook Appellant’s arguments. As explained above with respect to argument ii, the Board’s claim construction (Dec. 8) does not exclude simultaneous flashing; the Board’s claim construction clarifies that a broad but reasonable interpretation of the claim language for purposes of examination includes sequential flashing. II. Regarding obviousness, Appellant presents the following principal arguments: iv. There is no teaching in the Whelen document that the Comet Flash would have (or could be modified to have) a prolonged “off” time at the beginning of the cycle, and that the Double Flash would have (or could be modified to have) a prolonged “off” time at the end of the cycle. Appeal 2015-005305 Reexamination Control 90/013,007 Patent 8,269,654 B2 4 Req. Reh’g. 7. v. [T]here was no way to predict that the flash pattern relied upon in the rejection with the Board’s claim construction would slow vehicle traffic, i.e. that the claimed flash pattern would provide increased driver compliance. Yet the benefit of the claimed invention must be taken into account when considering obviousness. Req. Reh’g. 8. [T]he only thing predictable about combining the Whelen Double Flash and the Whelen Comet Flash is that the resulting light units (120 double flashes, i.e., 240 flashes per minute and 120 quadruple flashes, i.e., 480 flashes per minute) would not have been in compliance with the then-existing Federal Requirements and thus would have been illegal. Id. Regarding Appellant’s argument iv, this argument does not show any error in our original decision. The Board did not misapprehend or overlook Appellant’s arguments. The prolonged “off” times are met by Whelen IG’s teachings of synchronizing. See Whelen IG (“To configure specific lightheads to alternate their patterns with other lightheads, advance the pattern of the desired flasher(s) to the Phase 2 mode of the current pattern (see Sync pattern table for pattern list).”) This is explained in the Board’s original decision: Whelen IG teaches a wig-wag flash pattern including emitting within a predetermined time two light flashes from one light unit (Whelen IG’s pattern DoubleFlash (Simultaneous / Phase 1)), and at least three light flashes and no more than five light flashes from the other light unit (Whelen IG’s flash pattern CometFlash (Simultaneous / Phase 2)) for each wig-wag cycle. See Whelen IG; see also Whelen TSS (DoubleFlash patterns Appeal 2015-005305 Reexamination Control 90/013,007 Patent 8,269,654 B2 5 include double flashes, CometFlash patterns include quadruple flashes), Ans. 3, Request 14–15. Dec. 9 (emphasis added). Regarding Appellant’s argument v, this argument does not show any error in our original decision. The Board did not misapprehend or overlook Appellant’s arguments. The Board did consider the benefit of the claimed invention as well as Appellant’s other arguments relating to obviousness, and concluded that a skilled artisan would have recognized that the claimed combination of flash patterns would have been obvious. This is explained in the Board’s original decision. See Dec. 9–13. For example, the Board explained: Whelen IG discloses a pattern table including 20 flash patterns. See Whelen IG. A skilled artisan would have recognized that utilizing any combination of the flash patterns in Whelen IG would have been obvious. See Ans. 5 (“adding such flexibility to the system of Carr, whose disclosure explicitly stated that other embodiments could be envisioned, would have given the combination greater flexibility and optimization for different traffic environments”). Dec. 9 (emphasis added). III. Further, regarding the claim construction in our Decision, Appellant presents the following principal arguments: vi. “Patent Owner submits that this construction of ‘cycle time’ cannot be accurate.” Req. Reh’g. 9. vii. “[T]he Board repeatedly used the term ‘predictable’ but neither the Examiner nor the Board explained why something was predictable.” Req. Reh’g. 9. Appeal 2015-005305 Reexamination Control 90/013,007 Patent 8,269,654 B2 6 Regarding Appellant’s argument vi, this argument does not show any error in our original decision. The Board did not misapprehend or overlook Appellant’s arguments. The Board concluded: we conclude that the cycle time for the first light is interpreted as the total time for the two or more flashes of the first light, and the cycle time for the second light is interpreted as the total time for the three or more flashes of the second light. Dec. 15. Regarding Appellant’s argument vii, this argument does not show any error in our original decision. The Board did not misapprehend or overlook Appellant’s arguments. The Board concluded that a skilled artisan would have recognized that the claimed combination of flash patterns would have been obvious. This is explained in the Board’s original decision. See Dec. 9–13. IV. Finally, Appellant argues that the Board’s decision constitutes an undesignated new ground of rejection. Req. Reh’g. 9–11. We have reconsidered our Decision, and we denominate the affirmance as involving a new ground of rejection under 37 C.F.R. § 41.50(b), for all claims, because our decision relies on additional findings of fact that are materially different than those relied upon by the Examiner. CONCLUSION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2015-005305 Reexamination Control 90/013,007 Patent 8,269,654 B2 7 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen Prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceedings will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceedings be reheard under § 41.52 by the Board upon the same record. . . . GRANTED 37 C.F.R. § 41.50(b)