Ex Parte 9869459 et al

Patent Trials and Appeals Board

Jun 26, 2019

90014067 - (D) (P.T.A.B. Jun. 26, 2019)

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.
90/014,067 01/16/2018 9869459 706/87259-PAT-7-RE 5971
23432 7590 06/27/2019
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/27/2019 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 TELEBRANDS CORP.
____________________

Appeal 2019-003785
Reexamination Control 90/014,067
Patent US 9,869,459 B21
Technology Center 3900
____________________

Before MEREDITH C. PETRAVICK, BRETT C. MARTIN,
JEREMY M. PLENZLER, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Lou Lentine on January 16, 2018.
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Patent US 9,869,459

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 18–33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claims are directed “generally to lighting devices, and
more particularly to an improved landscape lighting apparatus.” Spec. col.
1, ll. 16–18. Claim 18, reproduced below, is illustrative of the claimed
subject matter:
18. A landscape light comprising:
a first light-emitting diode (LED) light source producing a
first LED light having a first color;
a second LED light source producing a second LED light
having a second color; and
a pattern generation assembly including:
an interchangeable pattern generation module
including a plurality of pattern generators, and
a mount configured to releasably mount the
interchangeable pattern generation module in a path of the
first and second LED lights such that the LED lights
passing through the plurality of pattern generators of the
interchangeable pattern generation module are projected
onto a surface in a pattern defined by the plurality of
pattern generators of the interchangeable pattern
generation module.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
MacKay
Haase
Zhang
US 5,831,391
US 8,013,719 B2
US 9,395,608 B2
Nov. 3, 1998
Sep. 6, 2011
Jul. 19, 2016
Wang
Lin
US 2007/0091597 A1
US 2011/0051097 A1
Apr. 26, 2007
Mar. 3, 2011

REJECTIONS
The Examiner made the following rejections:
Claims 30 and 33 stand rejected under 35 U.S.C. § 112 first paragraph
as failing to comply with the written description requirement. Final Act. 12.
Claims 25 and 30 stand rejected under 35 U.S.C. § 112 second
paragraph as being indefinite. Final Act. 14.
Claims 18, 19, 25–28, and 31–33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zhang. Final Act. 15.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang and Lin. Final Act. 20.
Claims 21 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang and Wang. Final Act. 20.
Claims 22 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang and McKay. Final Act. 21.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang and Haase. Final Act. 22.

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ANALYSIS
Claim Interpretation
The Examiner initially rejected claims 18–33 as failing to comply
with the written description requirement and interpreted certain claim terms
as means-plus-function limitations that were not sufficiently described in the
Specification so as to fail the written description requirement. Final Act. 6–
14. The Examiner withdrew the written description rejection as to all claims
except claims 30 and 33 and accepted that the other claim terms at issue
complied with the written description requirement. Ans. 3. The Examiner,
however, did not rescind the interpretation of the claim terms subject to the
withdrawn rejections as means-plus-function limitations. The purpose of
such interpretation is to support the written description rejection, but once
that rejection was withdrawn there was no longer a reason to interpret these
limitations as means-plus-function during examination. We do not address
these interpretations because it is not necessary in order to resolve the issues
remaining before us.
Written Description
Claims 30 and 33 stand rejected under 35 U.S.C. § 112 first paragraph
as failing to comply with the written description requirement. Final Act. 12–
13. The Examiner rejected claim 30 because the Specification does not
describe the claim term “selection mechanism.” Id. The Examiner also
rejected claim 33 because the Specification does not describe positioning the
1st and 2nd pattern generators in the path of the 1st and 2nd LEDs,
respectively. Id. at 13.
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We agree with Appellant that the claim terms and limitation at issue
find sufficient support in the written description and therefore do not sustain
these rejections. See, e.g., Reply Br. 5–6. As Appellant points out, slide
cartridge 454 may allow a user to select between multiple pattern generators
452, thus properly supporting the term “selection mechanism” in claim 30.
Regarding the light paths in claim 33, we agree that this is sufficiently
described at least in paragraph 34, which states “[p]attern generators 452a
can be positioned in mounting locations 456a to secure pattern generators
452a in the path of the light generated by landscape light 410.” See, e.g.,
Reply Br. 6. As also disclosed at paragraph 24, “landscape light 10 can
include light sources 14 and 16” such that one of ordinary skill in the art
would understand that “each mounting location 456a . . . can correspond to
one light source.” Accordingly, the Specification sufficiently supports the
subject matter of claim 33.
Indefiniteness
The Examiner rejects claims 25 and 30 as indefinite. The rejection of
claim 30 is based upon the Examiner’s interpretation of claim 30 as
including means-plus-function language that is not properly disclosed in the
Specification. Having found above that the subject matter of claim 30 is
properly disclosed, we do not sustain this rejection.
As to claim 25, however, the Examiner’s rejection is based upon a
lack of antecedent basis. Appellants provide no argument to overcome this
rejection and only state that the rejection was due to “an apparent
typographical error.” App. Br. 4. Presumably, Appellants plan to address
this rejection by correcting the error, but at this time the rejection remains
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uncontested and as such we summarily affirm the Examiner’s indefiniteness
rejection of claim 25.
Obviousness
Regarding claim 18, Appellants argue that “Zhang is completely silent
as to having a plurality of pattern generators.” App. Br. 15. Appellants
focus on the fact that “Zhang, at most describes a slide 70 containing a
single image.” Id. at 14. This argument ignores the Examiner’s finding that
“it would have been obvious to modify Zhang’s disclosed ‘single image’ so
that it comprises various shapes, patterns, or optical features such as trees,
hearts, angels, snowflakes, butterflies, bells, animals, balloons, jack-o-
lantern, etc.” Final Act. 16–17. The Examiner does not rely on Zhang for
teaching the content of the image, but finds that it would have been obvious
to include an image having multiple optical features, for example.
Appellants appear to argue that the term “pattern generator” imparts
some physical structure, but given the disclosure that a pattern generator
“may include any shape, pattern, or optical feature that can be used to obtain
any desired visual effect,” we agree with the Examiner that a single image
containing multiple objects is properly within the scope of at least an optical
feature for obtaining a visual effect. Spec. col 7, ll. 20–22 (emphasis added).
Both of the terms “optical feature” and “visual effect” provide sufficient
breadth as to what constitutes a pattern generator that the Examiner’s
interpretation is reasonable. Accordingly, a single image having both a tree
and a heart, for example, would comprise at least two optical features as
described in the Specification with each optical feature constituting a pattern
generator.
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Appellants also focus on the Examiner’s example of an image divided
into quadrants (see e.g., Reply Br. 7), but as stated by the Examiner, this is
merely an example (Final Act. 17). The Examiner’s actual interpretation, as
stated above, is broad enough to encompass a single, undivided image that
contains multiple optical features. As such, a single image with multiple
optical features is properly characterized as a plurality of pattern generators.
Appellants repeatedly argue that “there is no disclosure, teaching or
suggestion in Zhang” to modify the image to include various shapes,
patterns, or optical features. App. Br. 15; see also Reply Br. 8. There is,
however, no requirement that the suggestion or motivation actually be found
in the prior art. It may simply be something within the knowledge of one of
ordinary skill in the art. The Examiner has made a reasonable finding that
an image may contain multiple optical features. It would have been well
within the knowledge of one skilled in the art that a slide image may include
multiple optical features within a single image. Appellants provide no
persuasive argument against the Examiner’s finding of sub-images within an
image as constituting a plurality of optical features.
Again, Appellants appear to be arguing that the term “pattern
generator” implies some structural feature not found in Zhang’s slide 70.
Wedo not agree that this is commensurate with the scope of the claim term
given the broad language used in the Specification. It is clear that the
Examiner interprets Zhang’s slide 70, which has an image, as the “pattern
generator” and determines that the images (i.e., patterns) on the slide are a
“mere aesthetic design change.” Final Rejection 17. As the Examiner
states, “[m]atters relating to ornamentation only which have no mechanical
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function cannot be relied upon to patentably distinguish the claimed
invention from the prior art.” Id. (citing MPEP § 2144.04(I)). We agree
with the Examiner that the content of the image (i.e., patterns) serves no
mechanical function. Therefore, we conclude that the Examiner has
correctly interpreted the term “pattern generator” as not requiring a physical
structure beyond what is found in Zhang’s slide 70.
Appellants further argue that “Zhang fails to disclose, teach, or even
suggest ‘an interchangeable pattern generation module including a plurality
of pattern generators.” App. Br. 15. The Examiner is correct, however, that
“slide (#70) can be changed to project different images and is therefore
‘interchangeable.” Final Rejection. 15. Given the Examiner’s
interpretation, the slide itself is the pattern generation module, which may
contain multiple optical features or patterns within the image. As Zhang
teaches, “[t]he slide 70 that is inserted in the indoor-outdoor projector can be
changed to project different images,” thus making the slide interchangeable.
Zhang col. 4, ll. 15–17. Accordingly, the Examiner is correct. As such, we
sustain the Examiner’s rejection of claim 18 as obvious over Zhang.
As to the remaining dependent claims, Appellants’ arguments merely
state that the additional references fail to cure the deficiencies of the
Examiner’s rejection of claim 18. See App. Br. 16–18. Having already
determined that the Examiner’s rejection of claim 18 is proper, Appellants
arguments do not persuade us of error in the rejections of the dependent
claims.
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DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 30 and 33 as failing to meet the written description
requirements; we AFFIRM the Examiner’s indefiniteness rejection of claim
25, but REVERSE the indefiniteness rejection of claim 30; and we AFFIRM
the Examiner’s decision to reject claims 18–29 and 31–33 as obvious.

AFFIRMED-IN-PART