Ex Parte Arner et alDownload PDFPatent Trial and Appeal BoardSep 21, 201714093434 (P.T.A.B. Sep. 21, 2017) Copy Citation 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 Appeal 2016-007161 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”). 3 Appeal 2016-007161 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. 4 Appeal 2016-007161 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). 5 Appeal 2016-007161 Application 14/093,434 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). 6 Appeal 2016-007161 Application 14/093,434 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 7 Appeal 2016-007161 Application 14/093,434 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 8 Appeal 2016-007161 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 9 Appeal 2016-007161 Application 14/093,434 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 10 Appeal 2016-007161 Application 14/093,434 (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, 11 Appeal 2016-007161 Application 14/093,434 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. 12 Appeal 2016-007161 Application 14/093,434 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 13 Copy with citationCopy as parenthetical citation