Ex Parte Brass et al

Patent Trial and Appeal Board

Aug 16, 2016

12503304 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/503,304 07/15/2009
27160 7590 08/18/2016
KATTEN MUCHIN ROSENMAN LLP
(C/O PATENT ADMINISTRATOR)
2900 K STREET NW, SUITE 200
WASHINGTON, DC 20007-5118
FIRST NAMED INVENTOR
JACK BRASS
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.
213899-00038 7847
EXAMINER
PAYNE, SHARONE
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
08/18/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
W ashington.PatentAdministrator@Kattenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK BRASS, RICHARD J. DORAN,
DONALD L. KLIPSTEIN, THOMAS M. LEMONS,
BJARKI HALLGRIMSON, and SARAH DOBBIN
Appeal2015-002080
Application 12/503,304
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JULIA HEANEY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 1-5, 7-16, and 19-22 under 35 U.S.C. § 103(a) as being
unpatentable based on at least the combined prior art of Cooper et al. (US
6,491,408 Bl, issued Dec. 10, 2002) ("Cooper") and Lebens et al. (US
6,095,661, issued Aug. 1, 2000) ("Lebens"). 1
We have jurisdiction under 35 U.S.C. § 6(b).
1 The rejection of claims 9, 10, 20, and 21 includes additional prior art (Final
Action 9, 10).
Appeal2015-002080
Application 12/503,304
Claim 1 is illustrative of the claimed subject matter (emphasis added):
1. An inspection lamp comprising:
a handle;
light emitting diodes as a source of radiation suitable for causing
visible fluorescence of fluorescent materials, where said light emitting
diodes are substantially non-identical in spectral characteristics of their
emitted radiation, such that at least one but not all of said light emitting
diodes in said inspection lamp produce first wavelengths of radiation that are
favorable for causing visible fluorescence of some fluorescent materials, and
such that one or more different said light emitting diodes in said inspection
lamp produce substantially different second wavelengths of radiation which
are more favorable than the wavelengths of first said light emitting diode(s)
for causing visible fluorescence of some fluorescent materials other than
first said fluorescent materials; and
a respective electrical switch each for selectively activating each type
of light emitting diode as a collective group, wherein in one activation mode
all of said light emitting diodes are activated wherein if one light emitting
diode is emitting radiation of the first wavelengths then at least one other
light emitting diode is emitting radiation of the second wavelengths, and
wherein the first wavelength radiation and the second wavelength radiation
ernit unblocked frorn the larnp, and wherein in another activation rnode only
one type of light emitting diode is activated as a collective group.
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
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Appeal2015-002080
Application 12/503,304
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
We need address only independent claims 1, 13, and 16 which each
recite a respective electrical switch each for selectively activating two types
of LED sources as a group, "wherein in one activation mode" all of said
light emitting diodes are activated, with first and second different
wavelengths that "emit unblocked from the lamp," to cause visible
fluorescence in different leak detection dyes, and "wherein in another
activation mode only one type of light emitting diode is activated as a
collective group."
The Examiner relies upon Lebens as meeting this feature (Ans. 3;
Final Action 3, 4; relying upon col. 4, 11. 30-40 and col. 6, 11. 45-50 of
Lebens to teach the activation mode of two different wavelengths emitting
unblocked from the lamp). There is no dispute that Cooper explicitly
describes emitting, unblocked, only one wavelength at a time for detecting
different fluorescent compounds (App. Br. 11; Ans. 3; Cooper col. 4, 1. 58 to
col. 5, 1. 6 and col. 6, 11. 40-48). Lebens teaches controlling "a pulse
characteristic" in order to control the proportion of light from one color
spectrum to that having a second color spectrum (col. 4, 11. 30-40; see also
col 6, 11. 38--44). Appellants contend, however, that the Examiner has not
shown where Lebens describes a respective electrical switch each for
selectively activating each type of light emitting diode as a collective group
for two different modes including one mode wherein two different
wavelengths are emitted unblocked from the lamp at the same time for
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Appeal2015-002080
Application 12/503,304
detecting different fluorescent materials as de facto required by the claims
(Reply Br. 4, 5; see also App. Br. 12, 13).
A preponderance of the evidence supports Appellants' position that
the Examiner has not pointed to any evidence to adequately establish that the
applied prior art teaches or suggests the required first and second activation
modes, as recited in each of Appellants' independent claims. As stated by
Appellants, "[t]here is no suggestion in the cited prior art references that a
person would have reasonably expected to arrive at the claimed device that
can emit unblocked two different fluorescing wavelengths [at the same time]
for different fluorescing materials." (Reply Br. 5). Furthermore, the
Examiner has not offered any reasoning based on the skilled artisan's
knowledge or inferences and creativity employed that would support an
obviousness conclusion.
On the record before us, the Examiner has not shown that each and
every limitation of the claim is either described or suggested by the prior art
or would have been obvious based on the knowledge or inferences and
creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also
In re Warner, 379 F .2d 1011, 1017 (CCP A 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art").
It further appears that the proposed modification of Cooper, which
explicitly describes emitting only one wavelength at a time out of LEDs
emitting different wavelengths for detecting different fluorescent
compounds, would be based on improper hindsight reconstruction. The fact
finder must be aware "of the distortion caused by hindsight bias and must be
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Application 12/503,304
cautious of arguments reliant upon ex post reasoning." KSR Int? Co. v.
Teleflex Inc., 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1,
3 6 ( 1966) (warning against a "temptation to read into the prior art the
teachings of the invention in issue")).
The Examiner does not rely upon any of the other references applied
in the§ 103 rejections of dependent claims 9, 10, 20, and 21 or other
rationale to cure these deficiencies. Accordingly, we reverse all § 103
rejections on appeal.
ORDER
It is ordered that the Examiner's decision is reversed.
REVERSED
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