Ex Parte Bauer et al

Patent Trial and Appeal Board

Jun 14, 2016

12549041 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/549,041 08/27/2009
27367 7590 06/14/2016
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND A VENUE SOUTH
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
Joshua G. Bauer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
141.12-0001 8221
EXAMINER
PAYNE, SHARONE
ART UNIT PAPER NUMBER
2875
MAILDATE DELIVERY MODE
06/14/2016 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 JOSHUA G. BAUER and PATRICK TRESE
Appeal2014-006526
Application 12/549,041
Technology Center 2800
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1-20 of Application 12/549,041 under
35 U.S.C. § 103(a) as obvious. Non-Final Act. (July 12, 2013). Appellants
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). Because
one or more of the appealed claims has been at least twice rejected, see Final
Act. (November 5, 2012), 1 we have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE. We, however, enter
NEW GROUNDS OF REJECTION for claims 1-20.
1 After Appellants filed a notice of appeal and an appeal brief, the Examiner
reopened prosecution. See Non-Final Act. 2.
Appeal2014-006526
Application 12/549,041
BACKGROUND
The '041 Application describes a lighting system for illuminating
products arrayed in the interior of a cabinet display case. Spec. 1. In
particular, the lighting system comprises an array of light emitting diodes
(LEDs). Id. The lighting system described in the '041 Application evenly
distributes the light produced by these LEDs. Id.
Claims 1 and 20 are representative of the '041 Application's claims
and are reproduced below:
1. A lighting system comprising:
a base;
an end cap;
a printed circuit board including;
a plurality of light emitting diodes; and
a bezel including,
a plurality of lenses, a lens for each of the plurality
of light emitting diodes, each lens disposed in
relation to its respective light emitting diode to
provide a light output pattern wherein the highest
intensities of light are directed at substantially
right and left angles to said base.
Appeal Br. 17 (Claims App.).
20. A lighting system mounted to the mullion within a
cabinet display case comprising:
a base comprising
a mounting engaging channel and
a bezel retaining channel;
an end cap comprising
a mounting flange and
a conductor throughput;
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Application 12/549,041
a printed circuit board comprising
a plurality of light emitting diodes,
a circuit connector, and
a pass through circuit; and
a bezel comprising
a plurality of lenses, a lens for each of the plurality of
light emitting diodes, each lens disposed in relation to its
respective light emitting diode to provide a light output
pattern wherein the highest intensities of light is directed
at angles from 70 degrees to 90 degrees right and left of
said base, and
contouring to provide proper relative placement of each
light emitting diode to its respective lens.
Appeal Br. 19-20 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-3, 5-11, and 13-19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Blackman,2 Santosuosso,3
and Klipstein.4 Final Act. 3-7.
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Blackman, Santosuosso, Klipstein, and
Collins. 5 Final Act. 7.
2 US 5,548,494, issued August 20, 1996.
3 US 5,301,092, issued April 5, 1994.
4 US 8,066,402 B2, issued November 29, 2011.
5 US 7,407,240 B2, issued August 5, 2008.
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Application 12/549,041
3. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Blackman, Santosuosso, Klipstein, and Monk. 6
Final Act. 7.
4. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Blackman, Mrakovich, 7 Santosuosso, Klipstein,
and Monk. Final Act. 8-9.
DISCUSSION
Rejections 1-3. Appellants only present substantive argument for the
reversal of the rejection of independent claim 1. See Appeal Br. 10-13.
Appellants do not present any argument with respect to claims 2-19, which
depend from claim 1. We shall assume that Appellants meant to argue that
these claims are not obvious because they depend from a non-obvious
claim. 8 We, therefore, will confine our analysis to claim 1. Claims 2-19
will stand or fall with claim 1.
Appellants argue that the rejection of claim 1 as unpatentable over the
combination of Blackman, Santosuosso, and Klipstein should be reversed
because, inter alia, substitution of the light redistributing lenses described in
either Santosuosso or Klipstein for Blackman's non-directional diffuser
6 US 6,858,986 B2, issued February 22, 2005.
7 US 7,273,300 B2, issued September 25, 2007.
8 The "Applicable Authorities" section of Appellants' Appeal Brief cites In
re Fine, 837 F.2d 1071 (Fed. Cir. 1988) for the proposition that any claim
depending from a nonobvious claim also is nonobvious. Appellants,
however, do not otherwise explain the relevance of In re Fine to the issues at
hand. See Appeal Br. 9.
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Application 12/549,041
would render Blackman unsuitable for its intended purpose. Appeal Br. 10-
12.
The Examiner responds:
[I]n the rejection[,] the lens of Santosuosso is being
substituted for the lens of Blackman to direct light more
efficiently to the exact places where it is needed. The apparatus
of Blackman with the lens of Santosuosso would still produce
and direct light into an area, such as a room. The fact that the
lens of Santosuosso focuses the light into certain directions
does not make the apparatus of Blackman unfit for lighting a
room. Room lighting can be focused onto a ceiling, a painting,
a set of steps or a railing. Devices such as sconces serve as
room lighting even though the lighting may not be as diffuse as
the original lens allows in the Blackman reference. The light in
Santosuosso still lights up a room, which is the room inside the
display case refrigerator. Thus, combining Blackman with
Santosuosso is appropriate under 35 U.S.C. 103.
Answer 3.
We agree with Appellants. Blackman's apparatus is described as "an
under/counter lighting fixture used as a standard lighting source for a room
or an emergency lighting source and, more particularly, this lighting fixture
includes three components being a detachable flashlight, a night light, and a
fluorescent light fixture." Blackman col. 1, 11. 10-13. Furthermore, as
shown in Blackman's Figures 1 and 2 surrounded by a standard, Blackman's
apparatus includes fluorescent tube 168-a non-directional light source-
surrounded by acrylic diffuser 162, which merely obscures the source of the
light without changing its directional distribution. See also id. at col. 5,
11. 13-23. In the particular embodiment shown in Blackman's Figures 1
through 9, fluorescent tube 168 is mounted such that the light it produces
will radiate away from the tube's axis through approximately 270°. This
non-directional distribution pattern is intended to be used to produce
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Application 12/549,041
ambient lighting in a room. Replacement of non-directional acrylic diffuser
162 with a lens of the sort described in either Santosuosso or Klipstein
would create a highly directional light source that is unsuited for use as a
standard lighting source. Contrary to the Examiner's argument, standard
sources of light for room produce ambient lighting rather than highly
directional lighting intended to spotlight things such as paintings.
Because the Examiner's proposed combination would render
Blackman unsuitable for its intended use, we cannot sustain the Examiner's
rejection of claim 1. Accordingly, we reverse the rejection of claims 1-19.
Rejection 4. The Examiner rejected claim 20 as unpatentable over
the combination of Blackman, Mrakovich, Santosuosso, Klipstein, and
Monk. Final Act. 8.
Appellants again argue that the Examiner's proposed combination
would render Blackman unsuitable for its intended use. For the reasons
expressed above, we agree with Appellants. We, therefore, also reverse the
rejection of claim 20.
NEW GROUNDS OF REJECTION
Rejections Under 35 U.S.C. § 112, ,-i 1
Claim 1. For the reasons set forth below, we reject claim 1 for failing
to comply with the written description requirement of 35 U.S.C. § 112, ,-i 1.
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant's specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541F.3d1115, 1122 (Fed. Cir. 2008)
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Application 12/549,041
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
In the context of the '041 Application's Specification, the ordinary
meaning of the term "bezel" is "a rim that holds a transparent covering (as
on a watch, clock, or headlight)." Webster's Ninth New Collegiate
Dictionary 147 (1985); see also Bezel I Define Bezel at Dictionary.com,
Dictionary.com, http://vvw\v.dictionarv.com/browse/bezel ("a grooved ring
or rim holding a gem, watch crystal, etc., in its setting"); American Heritage
Dictionary of the English Language (5th ed.) ("A ring that secures the crystal
of a watch or chronometer, often rotatable and marked so as to allow
timekeeping functions.") (retrieved from
http://wvvw. thefreedictionarv .cornJbezel); Collins English Dictionary-
Complete and Unabridged (12th ed. 2014) ("a grooved ring or part holding a
gem, watch crystal, etc.") (retrieved from
http://www. thefreedictionm:y .corn/bezel).
This meaning is consistent with the use of the term bezel in
Appellants' Specification. This usage is illustrated in the Specification's
description of the Figure 3. Figure 3 is reproduced below:
Fig. 3 :~ .,_ .4li~\'\
Figure 3 is a perspective view of the lighting system (10),
showing the external components of the assembled unit. The
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Appeal2014-006526
Application 12/549,041
main body of the lighting system (10) consists of a base (12)
that forms a channel to receiver [sic, receive] the unit's interior
components. Capping the channel of the base (12) along the
entire length of the base (12) is a bezel (26) that holds a number
of lenses (30). The lenses (30) are set into the bezel (26) at a
rotational angle so that the light distribution pattern is oriented
to project the broadest field of light perpendicular to the length
of the lighting system (10). The illustration is but an example
of lens (30) placement and length[,] and ... the placement or
spacing of lenses (30) on the bezel (26) may be closer, to the
extent that lenses (30) may be in contact with one another, or
may be very widely spaced lenses (30). Similarly[,] the lenses
(30) may be placed with uniform intervals as shown in Figure 3
or unevenly spaced to accommodate specific or customized
placement of shelves or product within the cabinet display case
(1 ).
Spec. 6 (emphasis added).
In view of the foregoing, we find that Appellants' Specification
describes a bezel as a structure that holds a number of lenses in place in
Appellants' system. Appellants' Specification makes it clear that the bezel
and the lenses are separate components in Appellants' system.
We next tum to the language of claim 1. During prosecution, the PTO
gives the language of the proposed claims "the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054-55 (Fed. Cir. 1997).
The relevant portion of claim 1 states that the claimed lighting system
comprises "a bezel including, a plurality of lenses." In the context of a
patent claim, the word "including" has a special meaning. As the patent
office has explained, the term "including" is synonymous with
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Application 12/549,041
"comprising," "containing," or "characterized by." See MPEP § 2111.03
(81h ed., Rev. 7). Thus, the broadest reasonable interpretation of claim 1
encompasses embodiments in which a plurality of lenses is part of the bezel.
As discussed above, a person having ordinary skill in the art at the
time of the invention would have understood Appellants to have invented a
lighting system which uses a bezel for its ordinary purpose, i.e., to hold or
retain lenses. Because claim 1 specifies that the plurality of lenses is part of
the bezel, claim 1 is not supported by the Specification's written description.
Accordingly, we reject claim 1 for failure to comply with 35 U.S.C. § 112,
ii 1.
Claim 20. Claim 20 reads, in relevant part, "a bezel comprising a
plurality of lenses." As discussed above, this language is directed to
embodiments in which the plurality of lenses are part of the bezel rather than
being retained by the bezel. Because the '041 Application's Specification
does not provide written description support for this claim limitation, we
reject claim 20.
CONCLUSION
For the reasons set forth above, we cannot sustain the Examiner's
rejection of claims 1-20. We, however, have entered new grounds of
rejection with respect to claims 1-20 under 35 U.S.C. § 112, ii 1 as not being
supported by the Specification's written description.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 4 l.50(b) also provides:
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Application 12/549,041
When the Board enters such a non-final decision, the appellant, 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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
REVERSED; NEW GROUNDS OF REJECTION
PUSUANT TO 37 C.F.R. § 41.50(b)
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