Ex Parte Arner et al

Patent Trial and Appeal Board

Sep 21, 2017

14093434 (P.T.A.B. Sep. 21, 2017)

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.
v0306 3927
EXAMINER
KIM, EUGENE LEE
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
14/093,434 11/30/2013
17614 7590
John F. Vodopia PC
191 New York Avenue
Huntington, NY 11743
09/21/2017
Mark Arner
09/21/2017 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 MARK ARNER and ANTHONY ANNUNZIATA1
Appeal 2016-007161
Application 14/093,434
Technology Center 3700
Before DANIEL S. SONG, STEFAN STAICOVICI, and
BRANDON J. WARNER, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s final
rejection of claims 1—6, 8, 9, and 11—20 in the present application. We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 Collectively referred to as “Appellant” herein. The applicant and real party
in interest is Partner Sales Channel, LLC. (Appeal Brief (hereinafter “App.
Br”) 4).
Appeal 2016-007161
Application 14/093,434
The claimed invention is directed to an illuminating lacrosse shaft
(Spec., Title). Illustrative independent claim 1 reads as follows (App. Br. 28
(Claims App.) (emphasis added)):
1. An illuminating lacrosse shaft configured for attachment
to a lacrosse head to form a lacrosse stick for low-light use, the
lacrosse shaft comprising:
a one-piece, elongated, cylindrical, substantially hollow
translucent shaft formed with a head end axially separated from
a butt end;
a connecting means for attaching a lacrosse head to the
head end of the shaft;
a light source positioned within the shaft;
an electronic controller connected to the light source to
control the light source operation; and
an ambient light signal sensor,
wherein the electronic controller activates the light source
to radiate light axially within the shaft between the head end and
the butt end in response to a signal generated by the ambient
light sensor indicating that an ambient light level is below a
predetermined ambient light level.
Independent claim 12 is similar to claim 1 but recites a “switch,
sensor, or both” while independent claim 18 does not recite an electronic
controller, but recites a switch and a battery2 (App. Br. 29—31). The
Examiner rejects various claims under 35 U.S.C. § 103(a) over the
combination of prior art references as follows:
1. Claims 1,2, 12, 13, 18, and 19 as unpatentable over Brine (US
6,752,730 Bl; iss. June 22, 2004) in view of Swanson (US 5,370,390;
2 We note that the recitation to “the battery” lacks proper antecedent basis.
2
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Application 14/093,434
iss. Dec. 6, 1994) and Evilmadscientist20073 (Final Office Action
(hereinafter “Final Act.”) 3).
2. Claims 2—5 and 20 as unpatentable over Brine in view of
Swanson, Evilmadscientist2007, and Xuexing (CN2748134 (Y); publ.
Dec. 28, 20054) (Final Act. 4).
3. Claims 6, 8, and 9 as unpatentable over Brine in view of
Swanson, Evilmadscientist2007, and Connelly (US 5,236,383; iss.
Aug. 17, 1993) (Final Act. 5).
4. Claims 16 and 17 as unpatentable over Brine in view of
Swanson, Evilmadscientist2007, and Zur (US 5,833,549; iss. Nov. 10,
1998) (Final Act. 5).
5. Claims 1—5, 12, 13, 18, and 19 as unpatentable over DiZazzo
(US 2007/0197316 Al; publ. Aug. 23, 2007) in view of
Ghostshaft2014,5 Gill (US 2013/0040767 Al; publ. Feb. 14, 2013),
and Talkingelectronics20076 (Final Act. 6).
6. Claims 6, 8, and 9 as unpatentable over DiZazzo in view of
Ghostshaft2014, Gill, Talkingelectronics2007, and Connelly (Final
Act. 7).
3 Winded Oskay, A Simple and Cheap Dark-Detecting LED Circuit (2007)
(http://www.evilmadscientist.com/2007/a-simple-and-cheap-dark-detecting-
led-circuit/) (“Evilmadscientist2007”).
4 Citations to the English translation of record.
5 Mark Donahue, Gear Review: Ghost Shaft from Wolf Athletics, Equip. Rev.
(2014) (“Ghostshaft2014”).
6 Solar Garden Light: How a Solar Garden Light works (2007)
(http://www.talkingelectronics.com/projects/Solarlight/Solarlight.html)
(“Talkingelectronics2007”).
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Application 14/093,434
7. Claims 16 and 17 as unpatentable over DiZazzo in view of
Ghostshaft2014, Gill, Talkingelectronics2007, and Zur (Final Act. 8).
8. Claim 20 as unpatentable over DiZazzo in view of
Ghostshaft2014, Gill, Talkingelectronics2007, and Blum (US
4,644,630; iss. Feb. 24, 1987) (Final Act. 8).
ANALYSIS
We initially observe that only those arguments actually made by the
Appellant have been considered in this decision. Arguments that the
Appellant could have made but chose not to make have not been considered
and are deemed to be waived. See 37 C.F.R. § 41,37(c)(l)(iv); In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011); Ex parte Frye, 94USPQ2d 1072,
1075—76 (BPAI 2010) (precedential). Moreover, a statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim. 37 C.F.R. 41.37(c)(l)(iv).
In its briefs, the Appellant argues independent claims 1, 12, and 18
generally together, but directs most of its arguments to addressing the
Examiner’s rejections of independent claim 1, while asserting that the
limitations of independent claims 12 and 18 are also not met. We address
the Appellant’s arguments accordingly. The Appellant does not specifically
argue the dependent claims depending from these independent claims, and
thus, the dependent claims stand or fall together with their corresponding
independent claims from which they depend.
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Application 14/093,434
Rejections 1—4
The Examiner rejects claim 1 finding that Brine discloses a lacrosse
shaft, but fails to disclose “the use of an illuminated and translucent shaft
having an ambient light signal sensor.” (Final Act. 3). The Examiner relies
on Swanson for disclosing that “the use of an illuminated transparent sport
shaft is known in the art,” and concludes that:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to have utilized the illuminated shaft of
Swanson with the apparatus in order for the players to use and
better see their equipment during times when ambient light is less
than normal.
(Final Act. 3 (citing Swanson Abstr., Figs. 1—3)).
The Examiner also concedes that Swanson does not disclose an
ambient light sensor because Swanson uses a chemical light source, but
finds that “an ordinary artisan would naturally have been aware of
alternative equivalent means of illumination,” and relies on
Evilmadscientist2007 for disclosing that a light source having an ambient
sensor was well-known (Final Act. 3—4). The Examiner concludes that it
would have been obvious to one of ordinary skill to have utilized such a
light source having an ambient light sensor, as disclosed in
Evilmadscientist2007, “in order for the players [to] have their devices
automatically illuminate during times when ambient light is less than normal
in order to better play the game” (Final Act. 4), and that “[a]n ordinary
artisan would have been motivated to select an alternative light source [to
that of Swanson] that would not have to be replaced each time it was used as
a chemical light source is and one that would automatically turn itself on and
off as the playing conditions indicated.” (Ans. 19-20).
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The Appellant disagrees and argues that Swanson merely discloses
receipt of a chemical light stick, and does not overcome the shortcomings of
Brine because the suggested combination does not include an electronic
controller connected to an electronically controllable light source and an
ambient light signal sensor as recited in claim 1 (App. Br. 15—16). The
Appellant also argues that Swanson further fails to disclose “a switch, a
sensor or both for generating at least one signal that is processed by the
electronic controller,” as recited in claim 12, and a “switch electrically
connected to the light source and to the battery to control and activate the
light source,” as recited in claim 18 (App. Br. 15—16). However, these
arguments are unpersuasive because the Examiner relies on
Evilmadscientist2007 for disclosing these limitations, not Swanson.
The Appellant also argues that Swanson merely describes a croquet
mallet and “does not ever refer to an illuminated sport’s [sic] shaft.” (Reply
Br. 6). However, Swanson clearly discloses “[hjandle portion 14 includ[ing]
an elongated rigid hollow tubular member 16 formed of a transparent or
translucent material,” that is, a handle portion comprising a transparent shaft
(Swanson, Fig. 1, col. 2,11. 34—36). In this regard, Brine discloses a
“Handle for a Lacrosse Stick,” having “handle 10” (Brine, Title, col. 3,
11. 33—35; Fig. 1 A), thereby clearly establishing that there is no substantive
distinction between a “handle” and a “shaft,” as the terms relate to these
sport implements.7
7 While not relied upon, we observe that DiZazzo also discloses a
“Lacrosse Handle” (see DiZazzo, Title, Fig. 1).
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The Appellant further argues that “[tjhere is no teaching or suggestion
for use, for example, of a dark-detecting LED circuit in a lacrosse shaft,”
and:
while Evilmadscientist2007 might teach detecting low light
conditions, broadly, the skilled artisan would not have looked
thereto to modify Brine first modified by Swanson because
Swanson teaches only the insertion of a chemical light stick, first
activated by physical force outside hollow shaft 16 and then
inserted therein. There is no suggestion of automatically
activating a light source in either Brine or Swanson—there is no
light source in Brine.
(App. Br. 16; see also Reply Br. 4—5).
However, the Appellant’s arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is, therefore, ineffective to rebut the Examiner’s
obviousness rejection. In re Keller, 642 F.2d 413, 425 (CCPA 1981). There
is no dispute that lacrosse shafts are known (see generally Brine). As set
forth in the Examiner’s rejection, sports implements having a transparent
shaft and a light source therein was also well-known, as evidenced by
Swanson. However, as the Examiner explained (Ans. 19—20), the particular
chemical light source disclosed in Swanson needs to be replaced with every
use so a person of ordinary skill would have looked to provide an alternative
light source, an alternative light source being well-known as shown by
Evilmadscientist2007. Hence, the Examiner has articulated reasoning with
rational underpinnings to support the conclusion of obviousness. KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Appellant further argues that “[njone of the references teach use
of a switch with a controller and controlling the light source with the switch
for automatically switching on a light source in a shaft in response to a
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detected low light condition.” (App. Br. 16—17; see also Reply Br. 5).
According to the Appellant, “Brine so modified still would not include an
electronic controller that is connected to an electronically controllable light
source to control operation thereof and an ambient light signal sensor”
(Reply Br. 4), and asserts that “[tjhere is no controller taught by any of the 3
references.” (Reply Br. 6).
These arguments are also unpersuasive. As to claims 1 and 12, the
Specification does not describe a corresponding structure for the recited
“electronic controller,” or otherwise define what constitutes an “electronic
controller.” Instead, the language of claim 1 with respect to the “electronic
controller” is largely functional in nature, claim 1 reciting that the electronic
controller is “connected to the light source to control the light source
operation,” and be operable to “activate^ the light source to radiate light
axially within the shaft between the head end and the butt end in response to
a signal generated by the ambient light sensor.” Similar language is used in
independent claim 12, except that instead of an ambient light signal sensor, a
generic switch or sensor is recited. Claim 18 differs in that it recites “a
switch electrically connected to the light source and to the battery to control
and activate the light source ... in response to an on state of the switch.”
Each of these limitations of claims 1,12, and 18 is satisfied by the
LED circuitry of Evilmadscientist2007. Specifically, the LED circuitry of
Evilmadscientist2007 includes an LED (i.e., light source) and an ambient
light signal sensor (LTR-4206E or LTR-3208E phototransistor). The LED
circuitry of Evilmadscientist2007 also includes one or more 2N3904
transistors and one or more resistors, together with a battery
(Evilmadscientist2007, pgs. 2, 3, 9). It cannot be disputed that the LED
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Application 14/093,434
circuitry of Evilmadscientist2007 turns the LED on and off based on the
ambient light signal from the phototransistor (i.e., a sensor)
(Evilmadscientist2007, pgs. 1—2, 8).
Accordingly, the circuitry disclosed in Evilmadscientist2007,
excluding the LED itself and the phototransistor (i.e., ambient light signal
sensor, or sensor), constitutes an electronic controller that is “connected to
the light source to control the light source operation,” and activates the light
source “in response to a signal generated by the ambient light sensor” as
recited in claim 1, or “in response to the at least one signal” generated by a
switch or sensor as recited in claim 12. Moreover, the circuitry disclosed in
Evilmadscientist2007 is “a switch electrically connected to the light source
[i.e., LED] and to the battery to control and activate the light source ... in
response to an on state of the switch” as recited in claim 18. Therefore, the
Appellant’s arguments are unpersuasive.
In view of the above considerations, we do not agree with the
Appellant that the Examiner erred, and affirm the Examiner’s rejection of
independent claims 1, 12, and 18. As noted above, the Appellant does not
separately argue any of the dependent claims included in Rejection 1, or
Rejections 2-4 that reach additional dependent claims. Accordingly,
Rejections 1—4 are affirmed.
Rejections 5—8
While Rejection 5 relies on different references than Rejection 1 in
rejecting independent claims 1, 12, and 18, the issues raised and arguments
submitted are generally similar. Specifically, in rejecting claim 1, the
Examiner finds that DiZazzo discloses a polycarbonate lacrosse shaft, and
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that “Ghostshaft2014 discloses that polycarbonate can be transparent.”
(Final Act. 6; see also Ans. 21). The Examiner further relies on Gill for
disclosing an illuminated game-playing apparatus, and
Talkingelectronics2007 for disclosing that a light source having an ambient
light sensor was well-known (Final Act. 6). The Examiner concludes that, in
view of Gill, it would have been obvious to one of ordinary skill to
illuminate the lacrosse shaft of DiZazzo (which would be transparent in view
of Gohstshaft2014) with the light source of Talkingelectronics2007 “in order
for the players to use and better see their equipment during times when
ambient light is less than normal.” (Final Act. 6).
Because the issues raised and arguments submitted with respect to
Rejections 5 are similar to those of Rejection 1, we focus on issues and
arguments unique to these rejections. In that regard, the Appellant argues
that Ghostshaft2014 is not prior art (App. Br. 22; Reply Br. 7). However, as
the Examiner explained, Ghostshaft2014 was relied upon for disclosing that
polycarbonate material may be clear, and for disclosing that “transparent
plastic was being used in lacrosse equipment as far back as the 1990’s.”
(Ans. 22). Hence, the record is clear that Ghostshaft2014 is not being used
as prior art for its disclosure of a transparent lacrosse shaft, but rather,
merely for an evidentiary showing as background information that lacrosse
sticks have had clear heads in the past (see Ghostshaft2014, pgs. 2, 4).
Accordingly, the Appellant’s argument directed to Ghostshaft2014 is
unpersuasive.
The Appellant also argues that the shafts of both DiZazzo and Gill
have multiple pieces so that the suggested combination would have resulted
in a multi-piece shaft instead of a one-piece shaft as required by the claims
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(App. Br. 21—22). The Examiner explains that “[ajbsent a showing of
surprising or unexpected results the separation/ integration of parts is not a
patentable feature.” (Ans. 22). Indeed, making elements of a device integral
or separable is considered to be an obvious design choice and does not
render an invention patentable unless such construction is for an unobvious
purpose or results in an unobvious effect. See In re Larson, 340 F.2d 965,
968 (CCPA 1965); In reFridolph, 309 F.2d 509, 512 (CCPA 1962). It
cannot be disputed that one-piece lacrosse shafts were known and
conventional in the art (see, e.g., Brine). Accordingly, the Appellant’s
argument with respect to the one-piece shaft issue is unpersuasive.
The Appellant further argues that Gill has opaque shaft portion 112
that would prevent light from extending to the butt end (App. Br. 22; Reply
Br. 8). However, this argument is misdirected in that the rejection merely
relies on Gill for establishing that it was known to illuminate game-playing
apparatus, and applies this illumination teaching to a transparent lacrosse
shaft. Hence, this argument is unpersuasive because it is based on Gill
individually and fails to take into account what the collective teachings of
the prior art would have suggested to one of ordinary skill. Keller, 642 F.2d
at 425.
The Appellant notes that Talkingelectronics2007 teaches solar garden
light circuits to turn off FED lights during daylight, and argues that “[tjhere
is no suggestion for adding a solar charging circuit or a solar garden light
within a hollow, translucent one-piece shaft.” (App. Br. 23). However, this
argument is largely immaterial as to independent claims 1 and 12, which do
not recite any particular electrical power source at all. Moreover, while
claim 18 does recite a “battery,” Talkingelectronics2007 includes a battery,
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the solar charging circuit merely provides electrical power to charge the
battery (Talkingelectronics2007, pg. 2). Provision of additional features,
such as the charging circuit, is not required in the rejection as there is no
requirement that the entire device of the prior art reference must be
incorporated.
Lastly, the Appellant’s argument that there is no teaching to apply
Talkingelectronics2007 to a hollow, translucent/transparent one-piece shaft,
is again misdirected and unpersuasive in view of the actual rejection applied
and because it fails to take into account the collective teachings of the prior
art and the ordinary creativity/inferences of one of skill in the art. KSR Int 7
v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is
also a person of ordinary creativity, not an automaton.”).
Therefore, in view of the above considerations, we do not agree with
the Appellant that the Examiner erred, and affirm the Examiner’s rejection
of independent claims 1, 12, and 18. As noted above, the Appellant does not
separately argue any of the dependent claims included in Rejection 5, or
Rejections 6—8 that reach additional dependent claims. Accordingly,
Rejections 5—8 are affirmed.
CONCLUSION
The Examiner’s rejections of claims 1—6, 8, 9, and 11—20 are
AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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