Ex Parte Agostinelli

Patent Trial and Appeal Board

Jun 21, 2013

10476139 (P.T.A.B. Jun. 21, 2013)

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.
10/476,139 10/24/2003 Paolo Agostinelli 206,314 6352
38137 7590 06/21/2013
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
CAVALLARI, DANIEL J
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
06/21/2013 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 PAOLO AGOSTINELLI
____________________

Appeal 2011-000064
Application 10/476,139
Technology Center 2800
____________________

Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000064
Application 10/476,139

2
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
2, 3, 4, 6, and 9–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Illustrative Claim
The disclosure relates to a power supply for electronic equipment
using solar cells and artificial light (Spec., p. 1, ll. 5–7).
Claim 2 is illustrative and is reproduced below:
2. A power supply device for providing an electrical output
power having low background noise and static level to
electronic equipment, comprising: a light source (3) and a
structure (1) circumscribing the light source (3), the surface of
the structure facing the light source being covered with solar
cells (2) for directly receiving illumination from the light
source; and at least one electrical output through which said
power supply provides said electrical output power having low
background noise and static level to said electronic equipment.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jones
Laidig
Dunn Thompson
Camus
Virtudes
Voelkner
Smith
US 4,382,273
US 4,763,589
US 5,012,160
US 6,216,480 B1
US 6,326,764 B1
US 6,339,188 B1
GB 2 047 486 A
May 3, 1983
Aug. 16, 1988
Apr. 30, 1991
Apr. 17, 2001
Dec. 4, 2001
Jan. 15, 2002
Nov. 26, 1980
Appeal 2011-000064
Application 10/476,139

3
Rejections
The Examiner made the following rejections:
Claims 2–4, 6, 10, 12–16 and 20 stand rejected under 35 U.S.C
§ 103(a) as unpatentable over Laidig and Camus (Ans. 4–10), either alone or
in combination with other cited art.
Claims 2–4, 6, and 9–20 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Virtudes and Smith (Ans. 10–17), either alone or in
combination with other cited art.

ANALYSIS
I. Rejections over Laidig and Camus,
alone or in combination with other references

Claims 2 and 3
1

Appellant’s contentions (App. Br. 10–19; Rep. Br. 2–7) present us
with the following issues:
(1) Whether the Examiner erred in finding Laidig discloses “the
surface of the structure facing the light source being covered with solar
cells”;
(2) Whether the Examiner erred in finding Camus discloses a
plurality of solar cells;
(3) Whether the Examiner erred in combining the teachings of Laidig
and Camus; and
(4) Whether the Examiner erred in finding Laidig discloses “a
structure … circumscribing the light source.”

1
Appellant indicates that claims 2 and 3 stand or fall together (App. Br. 19).
Appeal 2011-000064
Application 10/476,139

4
With respect to the first issue, we agree with the Examiner that the
wall on which the sensor in Laidig is mounted forms part of the recited
“structure” (Ans. 18). In addition, Appellant’s proposed construction of “the
surface … being covered with solar cells” as requiring that the entire surface
be so covered (Rep. Br. 4–5) is not consistent with the broadest reasonable
interpretation afforded to claims during patent examination. See Phillips v.
AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005). Applying the broadest
reasonable interpretation consistent with the Specification, we disagree that
the Examiner has erred.
With respect to the second issue, Appellant’s assertion that
“[n]owhere in … Camus … is there any disclosure whatsoever that the solar
panel includes a plurality of solar cells” (App. Br. 12) is belied by Camus’s
disclosure of “at least one solar panel provided with solar cells” at col. 3, l.
26 (Ans. 21). We therefore disagree that the Examiner has erred.
With respect to the third issue, Appellant’s argument that Laidig is not
a pertinent reference (App. Br. 15–16) relies on features not recited in the
claim. In addition, Laidig’s observation that power may be conserved with a
smaller solar cell (Laidig, col. 4, ll. 23–29) does not teach away from the use
of multiple solar cells as Appellant argues (App. Br. 16). See, e.g. In re
Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994) (holding that recognition of
inferiority in a reference is insufficient to find that it teaches away). We
therefore disagree that the Examiner has erred.
With respect to the fourth issue, Appellant’s argument that the
combination of Laidig and Camus does not suggest “a circumscribing
structure with solar cells all around the light source” (App. Br. 17) is
unpersuasive since it is incommensurate with the scope of the claim. The
Appeal 2011-000064
Application 10/476,139

5
claim requires only that the “structure” circumscribe the light source, not
that the solar cells be “all around the light source.” We therefore disagree
that the Examiner has erred.
For these reasons, we sustain the rejections of claims 2 and 3 under 35
U.S.C. § 103 as unpatentable over Laidig and Camus.

Claims 10, 12, 13, and 18
2

Appellant substantially repeats the contentions made for claim 2 (App.
Br. 26–32; Rep. Br. 7–12), directing them at the rejections of claims 10, 12,
13, and 18. Those rejections additionally apply Jones, which is cited by the
Examiner for disclosing that the light source is “adapted to receive power
from a power source” (Ans. 8). Appellant does not meaningfully address the
citation of Jones separate from the arguments that substantially repeat those
made for claim 2. We accordingly disagree that the Examiner has erred for
the reasons expressed supra, and sustain the rejections of claims 10, 12, 13,
and 18 under 35 U.S.C. § 103 as unpatentable over Laidig, Camus, and
Jones.

Claims 4, 6, and 14–16
The rejections of claims 4, 6, and 14–16 apply different art in
combination with Laidig and Camus to support different substitutions of the

2
Appellant argues claims 10 and 12 collectively, asserting that “claims 13
and 18 depend from independent claim 12 and recite additional features
considered inventive” (App. Br. 32). We do not consider this an argument
for patentability. 37 C.F.R. § 41.37(c)(1)(vii). See In re Lovin, 652 F.3d
1349 (Fed. Cir. 2011) (sustaining requirement that Appellants articulate
more substantive arguments if they wish for individual claims to be treated
separately).
Appeal 2011-000064
Application 10/476,139

6
light source shown in Laidig with a fluorescent lamp (claims 4 and 15), an
LED array (claims 6 and 16), or an incandescent lamp (claim 14). Appellant
makes similar arguments for each claim, particularly that the Examiner has
failed to consider each claim “as a whole” (App. Br. 19–21, 23–25, 32–34,
34–36, 36–39). In each instance, we disagree that the Examiner has erred.
What the Examiner has identified in each instance is “the simple substitution
of one known element for another” (KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007))—one form of light source for another.
We accordingly sustain the rejections of claims 4, 6, and 14–16 under
35 U.S.C. § 103(a) as unpatentable over Laidig and Camus, in combination
with the other references cited by the Examiner.

Claim 20
Appellant’s contentions (App. Br. 21–23) present us with the issue of
whether Laidig discloses “an opening sized to dissipate heat generated from
said light source.” As the Examiner finds, Laidig teaches a lens in the
structure circumscribing the light source (Ans. 6, citing Laidig, Fig. 1
3
). To
accommodate the lens, the structure itself includes an opening through
which heat dissipates for the reasons discussed by the Examiner (Ans. 21).
Appellant’s specific argument that the lens is positioned on the bottom of the
sewing head rather than the top is unpersuasive since one of skill in the art
would reasonably understand that the opening may be provided in
alternative portions of the circumscribing structure.

3
As Appellant notes, the Examiner inadvertently cites “Smith” instead of
“Laidig” (see App. Br. 22). This is harmless error.
Appeal 2011-000064
Application 10/476,139

7
We therefore disagree that the Examiner has erred, and accordingly
sustain the rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable
over Laidig and Camus.

II. Rejections over Virtudes and Smith,
alone or in combination with other references

Appellant’s contentions present us with the issue of whether the
combination of Virtudes and Smith reasonably suggest “a structure (1)
circumscribing the light source (3), the surface of the structure facing the
light source being covered with solar cells,” as recited in independent claim
2 (App. Br. 39–41). Similar combinations of limitations are recited in
independent claims 10 and 12.
4

Virtudes discloses a portable, self-contained solar power CD player
and electrical generator that uses a top-mounted solar panel to collect solar
energy, which is converted into electrical energy for storage in a
rechargeable battery (Virtudes, col. 1, ll. 12–22). The Examiner identifies
the sun—i.e., a distant source—as the light source from which illumination
is directly received and acknowledges that Virtudes fails to teach that the
solar cells circumscribe the light source (Ans. 11).
The Examiner finds that Smith teaches a light source and a structure
circumscribing the light source with a face covered with solar cells (Ans.
11). While we agree with this finding, the rejection applies the teachings of
Virtudes and Smith too disparately. The light source identified by the

4
Appellant’s contentions raise additional issues. Because we are persuaded
of error with respect to the identified issue, we do not reach the additional
issues.
Appeal 2011-000064
Application 10/476,139

8
Examiner in Fig. 12b of Smith (Ans. 11–12) is a nearby source. We are not
persuaded that one of skill in the art would reasonably apply Smith’s
disclosure of circumscribing a nearby source to Virtudes’ teaching of using a
distant source as the source of illumination to reach the combinations recited
in the independent claims.
We therefore conclude that the Examiner has erred and do not sustain
the rejections of claims 2–4, 6, and 9–20 over Virtudes and Smith, alone or
in combination with other references.

CONCLUSION
On the record before us, we conclude that:
(1) The Examiner has not erred in rejecting claims 2–4, 6, 10, 12–16
and 20 under 35 U.S.C. § 103(a) as unpatentable over Laidig and Camus,
alone or in combination with other references; and
(2) The Examiner has erred in rejecting claims 2–4, 6, and 9–20
under 35 U.S.C. § 103(a) as unpatentable over Virtudes and Smith, alone or
in combination with other references.
DECISION
The Examiner’s decision rejecting claims 2, 3, 4, 6, and 9–20 is
affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

ELD