Ex Parte Bruning

Board of Patent Appeals and Interferences

Feb 7, 2008

09888899 (B.P.A.I. Feb. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERT W. BRUNING
____________

Appeal 2007-3457
Application 09/888,899
Technology Center 3600
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Decided: February 7, 2008
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Before WILLIAM F. PATE, III, TERRY J. OWENS and
JOHN C. KERINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Gert W. Bruning (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-13. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and REMAND, pursuant to 37 C.F.R.
§ 41.50(a)(1) (2007).
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THE INVENTION
Appellant’s claimed invention is to a method for selling lighting
solutions and a lighting solutions system which involve installing a
lighting system, measuring either lumen output or changes in the light
spectrum output, and determining a customer’s light usage fee based
upon the measurement taken. Claims 1, 5 and 10, reproduced below,
are representative of the subject matter on appeal.
1. A method for selling lighting solutions
comprising:

installing a lighting system for a customer;

measuring lumens generated from the lighting
system; and

determining a customers light usage fee based on
the lumens.

5. A method for selling lighting solutions
comprising:

installing a lighting system for a customer;

measuring changes of light spectrum generated
by the lighting system; and

determining a customers light usage fee based on
the changes of light spectrum.
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10. A lighting solutions system comprising:

means for measuring lumen output of a lighting
system; and

means for determining a fee based on the lumen
output.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Lys US 6,211,626 B1 April 3, 2001
Yablonowski US 6,535,859 B1 March 18, 2003

The following rejection is before us for review:
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the Lys patent in view of the teachings of the
Yablonowski patent.

ISSUES
The principal issue raised in this appeal is whether Appellant
has shown that the Examiner erred in rejecting Claims 1-13 under
35 U.S.C. § 103(a) as being obvious in view of the Lys and
Yablonowski references.
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FINDINGS OF FACT
We find that the following enumerated findings are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg,
849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Lys patent discloses at least several environments in
which its lighting system may be used, which environments would
generally involve the lighting system being installed for a customer.
(Lys, Figs. 60, 65; several examples discussed in Columns 34-38).
2. The Yablonowski patent discloses a method for installing or
retrofitting power-conserving lighting equipment in a facility, and
establishing a fee agreement whereby the customer is charged a fee
that is a function of the difference between an original power
consumption and the power consumption of the newly operating
lighting system. (Yablonowski, Col. 1, l. 54-Col. 2, l. 22).
Yablonowski discloses that this method may be performed by one or
more entities, including, for example, an Engineering Firm/Project
Manager, a Construction Manager/Contractor, a wholesale light
fixture company, a lighting service company, and others.
(Yablonowski, Col. 5, ll. 50-65)
3. The Lys patent discloses embodiments in which the emitted
light intensity is measured (Lys, Col. 42, ll. 3-11, for example), and
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embodiments in which changes in light spectrum are measured. (Lys,
Col. 52, ll. 33-43, for example). These measurements enable
monitoring for proper operation of the lighting units, and/or enable the
lighting units to be controlled in different operating modes. (Lys, Col.
9, ll. 53-65; Col. 13, ll. 10-22, for example).

PRINCIPLES OF LAW
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
18, (1966), the Supreme Court set out a framework for applying the
statutory language of § 103:
[T]he scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to
be ascertained; and the level of ordinary skill in the pertinent art
resolved. Against this background the obviousness or
nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.”

While the sequence of these questions might be reordered in
any particular case, the factors continue to define the inquiry that
controls. If a court, or patent examiner, conducts this analysis and
concludes the claimed subject matter was obvious, the claim is invalid
or unpatentable under § 103. See KSR Int’l v. Teleflex Inc., 127 S.Ct.
1727, 1734 (2007). To facilitate review, this analysis should be made
explicit. Id. at 1741. It can be important to identify a reason that
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would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed invention does. This is
so because inventions in most, if not all, cases rely upon building
blocks long since uncovered. Id.

ANALYSIS
Rejection of claims under 35 U.S.C. § 103(a)
All of Claims 1-13 on appeal stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the Lys patent, in view of the
Yablonski patent.
Claims 1, 5, and 10 are independent claims. Appellant presents
arguments under separate subheadings that purport to address the
patentability of Claims 5 and 10 separate and apart from the
patentability of Claim 1. However, with respect to Claim 10, the
arguments presented in these sections do not address claim elements
that are peculiar to or specific to that claim, and instead address
elements that are common with Claim 1. Accordingly, we will treat
Claim 10 as standing or falling with Claim 1 in the instant appeal.
None of the dependent claims were separately argued, therefore these
claims will also either stand or fall with the claims from which they
depend. We will take Claims 1 and 5 as the representative claims in
determining whether Appellant has established that the rejection of
the claims is in error.
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Claim 1 is directed to a method for selling lighting solutions
including the steps of installing a lighting system, measuring the
lumens generated from the lighting system, and charging a light usage
fee based upon the measured lumens. Claim 5 differs in that the
method requires measuring changes in the light spectrum output by
the lighting system, and charging a usage fee based on the spectrum
changes.
The rejection of the claims is based on assertions that the Lys
patent discloses a lighting system that (1) is installed for a customer,
and (2) measures the intensity of the illumination generated by the
lighting system. The rejection further asserts that it would have been
obvious, in view of the Yablonowski patent, to charge a customer a
usage fee based upon the measured intensity of the illumination (i.e.,
based on the lumens). (Answer 3-5).
Appellant contends that the rejection is erroneous because the
Lys patent does not teach or suggest installing a lighting system for a
customer, and because the combined teachings of Lys and
Yablonowski do not render obvious the charging of a usage fee to a
customer based upon the measured lumens or measured change in
light spectrum. (Appeal Br. 6-9).
The first contention lacks merit. The Lys patent was cited as
disclosing “initially placing the modular LED unit…in an
environment.” (Answer 9). Appellant states that this “is not the same
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as installing a lighting system for a customer,” in that “an
environment” could be simply a bench in a laboratory. (App. Br. 9,
Reply Br. 3). Appellant fails to note, however, that the disclosed
“environment” can be a motion picture theater (Fig. 60), a subway
tunnel (Fig. 65), or any of the several other environments that Lys
explicitly discloses. Lys does not explicitly state that the LED unit
manufacturer would or could install these devices for a customer,
however, it is plainly apparent that, in at least several of the disclosed
environments, a lighting contractor or subcontractor would install the
lighting system for a customer (e.g., the owner of the movie theater,
the operator of the subway system).1 (Finding of Fact 1).
Appellant also asserts (Appeal Br. 6-9) that the Examiner has
not demonstrated how the Yablonowski patent teaches or suggests a
system or method by which a customer is charged based upon
measuring the light output (the lumens) of a lighting system, or, as it

1 As discussed in greater detail in the section below ordering remand
to the Examiner, the claims should be examined, in their broadest
reasonable interpretation, with consideration being given to the
possibility that a single entity might not perform all of the steps of the
claimed method, and/or that the manufacturer of the lighting units in
Lys might not be involved in performing any of the steps. For
example, in Yablonowski, the business entity installing the power
conservation equipment and then measuring power consumption and
charging the customer based upon the savings in power consumption,
is not necessarily involved in manufacturing any of the installed
components. (Finding of Fact 2).
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pertains to Claim 5, based upon measuring changes in the light
spectrum output by the lighting system. Here, we agree with
Appellant.
The Lys patent does monitor or measure, in various
embodiments, the intensity of the illumination, and the light spectrum
output of the lighting system, in order to ensure proper operation of,
and to allow for specific control modes of, the system. (Finding of
Fact 3). Yablonowski, on the other hand, is directed to a method
which involves installing a more efficient lighting system including
power saving devices, and charging the customer a fee that is based in
some way upon the energy savings of the new system as compared to
the previous system. (Finding of Fact 2).
The Examiner’s position is that, since the Lys system does go
about measuring the lumen output, and since the manufacturer of the
Lys system requires funds to operate its business, the teachings of
Yablonowski would suggest to persons of ordinary skill in the art that
the manufacturer of the Lys devices could generate such income by
charging a usage fee based upon the lumen output or the changes in
light spectrum. The rejection is deficient in providing persuasive
reasoning as to how or why a person of ordinary skill in the art would
find it obvious for an equipment manufacturer (the entity in Lys) to
forego a traditional means of generating income (such as selling to
wholesalers or retailers), and to adopt the income-generating system
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of Yablonowski. In addition, no persuasive reasoning is provided
addressing the obviousness of modifying that system to charge fees
based not on energy or power savings, but instead on system output
characteristics, e.g., the amount of lumens output or changes in the
light spectrum. Such reasoning may exist, we simply do not find it in
the record before us.
The rejection of Claims 1-13 under 35 U.S.C. § 103(a) will thus
be reversed.

Remand to the Examiner
We are of the view that one source of error in the § 103(a)
rejection above is that the claims were incorrectly interpreted and/or
that the proper scope of the claims was not fully understood.
Accordingly, we will remand the case to the Examiner for further
consideration of the application, addressing the issues set forth below.
The proper scope of Claims 5-9, 12, and 13, was not taken into
account in the rejection of those claims. These claims involve steps of
measuring changes of a light spectrum and determining a light usage
fee based on such changes. In presenting the ground of rejection
relative to these claims, the Examiner erroneously attempted to apply
a teaching of determining a customer light usage fee “based on the
lumens”. (Answer 4, section addressing Claim 5). The Examiner
instead must assess whether the Lys patent or any other prior art
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teaches or suggests what is actually claimed, in particular, method
steps involving measuring changes in a light spectrum generated by a
lighting system, and determining a customer light usage fee based at
least in part on the changes in spectrum. The rejection of Claim 5 and
claims depending therefrom nowhere evidences that this claim
element was taken into account.
Further, it appears that the Examiner may not have given the
claims their broadest reasonable interpretation in examining the
claims for patentability. In particular, method Claims 1 and 5, and the
claims depending therefrom, are not limited such that the steps must
be performed by a lighting equipment manufacturer or by any other
single entity, for that matter. The grounds of rejection set forth in the
Examiner’s Answer were premised on the lighting equipment
manufacturer (the entity in Lys) performing the entire claimed
method. This led to the unsound conclusion that the manufacturer
would find it obvious to generate its income by charging user fees for
its equipment, rather than the more traditional business practice of
selling products outright.
The Examiner should evaluate the prior art to determine if the
claimed method, as performed by an entity other than a manufacturer,
or by more than one entity, is disclosed or rendered obvious. In this
regard, we note that the Yablonowski patent describes that its business
approach may involve one or more entities, including entities from
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among the following categories: Engineering Firm/Product Manager;
Construction Manager/Contractor; wholesale fixture company, and/or
a lighting service, or others. (Finding of Fact 2).
Appellant’s claims leave open the possibility that the
installation step could be performed by an entity other than the
manufacturer of the lighting system (e.g., a general contractor or an
electrical contractor or subcontractor). In addition, an entity different
than the installer, such as a utility company, for example, could,
within a reasonable interpretation of the scope of the claims, perform
the remaining steps of measuring lumens or changes of light
spectrum, and determining the customer’s light usage fee based on the
measurement. The prior art should be reassessed in light of these
considerations.
It appears further that another element of the claims was likely
interpreted more narrowly than it should have been. Specifically, the
claimed determination of a fee “based on the lumens” (Claim 1), or
“based on the changes of light spectrum” (Claim 5), or “based on the
lumen output” (Claim 10), appears to have been interpreted as the
determination being based solely or exclusively on that parameter or
factor, whereas a broader reasonable interpretation might allow for the
determination of the fee to be based only in part on that parameter or
factor. The Examiner should address this, including whether
Yablonowski or other prior art involves determining a customer’s fee
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that is based at least in part on the measured lumens or the measured
change in light spectrum.

CONCLUSIONS OF LAW
We conclude that Appellant has established that reversible error
occurred in the rejection of Claims 1-13 under 35 U.S.C. § 103(a).
We further conclude that remand of the case to the Examiner under 37
C.F.R. § 41.50(a)(1) is appropriate in order to have the proper scope
of the claims considered.

ORDER
The decision of the Examiner to reject Claims 1-13 under
35 U.S.C. § 103(a) is REVERSED.
The application is REMANDED to the Examiner for
appropriate action in accordance with the matters discussed above.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED; REMANDED, 37 C.F.R. § 41.50(a)(1)

JRG

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