Ex Parte Calmes

Patent Trial and Appeal Board

Oct 29, 2014

12355510 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JACK CALMES1
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Appeal 2012-012564
Application 12/355,510
Technology Center 2800
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Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision finally rejecting claims 1–7 and 15-27 under 35 U.S.C.
§ 103(a) for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the Real Party in Interest is Jack Calmes. App.
Br. 4.
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STATEMENT OF CASE
Appellant’s invention relates to flexible filter material for changing
properties of a light beam fastened together to form a sequence of light
filters. Spec. ¶¶ 3–4.
Independent claim 1 is directed toward a method of manufacturing a
string of filter material (i.e., gel string) for a lighting fixture. Independent
claim 15 is directed to a gel string. Independent claim 21 is directed to a
method of manufacturing a gel string and installing it on a lighting fixture.
Independent claims 1 and 15, representative of the invention, are
reproduced below from the Claims Appendix to the Appeal Brief:

1. A method comprising:
overlapping a first portion of a first piece of flexible filter
material and a second portion of a second piece of flexible filter
material, wherein the first piece of flexible filter material
produces a first desired change in a first characteristic of a light
beam and the second piece of flexible filter material produces a
second desired change in one of the first and a second
characteristic of the light beam;
clamping the first portion and the second portion between
a first element and a second element; and
producing ultrasonic vibrations in the first element,
whereby the first portion and the second portion are bonded to
form a string of filter material for a lighting fixture having
improved performance when heated.

15. A gel string for a lighting fixture prepared by a
process comprising:
providing a first portion of a first piece of flexible filter
material;
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providing a second portion of a second piece of flexible
filter material;
clamping the first portion and the second portion between
a first element and a second element; and
producing ultrasonic vibrations in the first element,
whereby the first portion and the second portion are bonded to
form the gel string for the lighting fixture having improved
performance when heated.

Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Calmes US 2006/0268558 A1 Nov. 30, 2006
Handel US 2007/0068991 A1 March 29, 2007
Kotchick US 2007/0222914 A1 Sept. 27, 2007

Rejections on Appeal
The Examiner rejects claims 1–7 and 15-27 under 35 U.S.C. § 103(a)
for obviousness as follows:
Claims 1–5, 15–18, 21–24, and 26–27 over Kotchick in view of
Calmes. Ans. 3-8.
Claims 6, 19, and 25 over Kotchick in view of Calmes and Handel.
Id. at 8–9.

ANALYSIS
We have reviewed the Examiner’s rejections under 35 U.S.C. § 103(a)
in light of arguments advanced by the Appellant in their Appeal and Reply
Briefs. However, for essentially the same reasons set forth in the Answer,
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we are not persuaded the Examiner erred reversibly in concluding the claims
are unpatentable for obviousness. We add the following for emphasis.2
The Examiner finds Calmes teaches a flexible filter material where
panels of a color string are bonded to form a color filter string for
installation on a lighting fixture having improved performance when heated.
Ans. 4. The Examiner finds Kotchick teaches overlapping portions of pieces
of flexible material that control optical characteristics and bonding them
together using ultrasonic welding. Id. at 3-4. The Examiner concludes it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to modify the material of Kotchick as taught by Calmes
to produce color filter material that stays cooler and requires less frequent
replacement. Id. at 4. In other words, the Examiner finds one of ordinary
skill would have found it obvious to manufacture the color filter string of
Calmes by overlapping filter panels and ultrasonic welding them together.
The Examiner finds Handel discloses an ultrasonic welding system with a
controller to control various parameters. Id. at 8.
Appellant requests that the claims should be considered separately or
at least in accordance with the sections of the Brief. App. Br. 35. However,
finding the arguments Appellant raises across various groupings to be
identical, we instead consider the claims as grouped by the arguments put
forward in favor of their patentability. See footnote 3 below.

2 Rather than reiterate all arguments of the Appellant and the Examiner, we
refer to the Appeal Brief (filed April 26, 2012), the Answer (mailed July 13,
2012), and the Reply Brief (filed September 13, 2012) for the respective
details.
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I. Rejection of method claims over Kotchick in view of Calmes for
obviousness
A. Claims 1–5, 21–24, and 26

Appellant argues the proposed combination of references do not
disclose or suggest “clamping the first portion and the second portion
between a first element and a second element.” App. Br. 14–18. Appellant
argues Kotchick’s ultrasonic welder describes a rotary anvil pressing films
against an ultrasonic horn, but does not disclose that the films are clamped
“at least because they are moving along rollers and a rotary anvil.” Id. at
16–17. In particular, Applicant cites a definition of clamp as “a device
designed to bind or constrict or to press two or more parts together so as to
hold them firmly.” Id. at 17 (citing (http://www.merriam-
webster.com/dictionary/clamp, Merriam-Webster Dictionary, 1/27/12 (cited
by Examiner)). As Kotchick’s device allows the films to move, Appellant
argues they are “not fastened, held firmly or clamped between any first
element and a second element.” Id. at 17; Reply Br. 4 (“Merely pressing the
two films together [as in Kotchick] . . . do[es] not firmly hold the films
together . . . The ultrasonic horn and anvil of Kotchick do not even hold onto
the films.”).
Having considered the record before us, we are not persuaded that the
Examiner erred in finding Kotchick’s ultrasonic welder would have
suggested “clamping the first portion and the second portion between a first
element and a second element” as claimed to one of ordinary skill in the art.
“In the patentability context, claims are to be given their broadest reasonable
interpretations . . . [m]oreover, limitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
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1993). In finding Kotchick’s ultrasonic horn and anvil held the first and
second films together for at least the duration of the clamping and that the
claims do not require the device to operate under stationary conditions, the
Examiner followed these dictates. See, e.g., Ans. 10. In particular, we find
that Kotchick’s ultrasonic welder holds the two films together. Finding no
requirement in the claims when given their broadest reasonable
interpretation in light of the specification that the films cannot move relative
to the apparatus acting to hold the two films together, we decline to read
such a requirement into the claims.
Appellant argues the proposed combination of references does not
disclose or suggest “whereby the first portion and the second portion are
bonded to form a string of filter material for a lighting fixture having
improved performance when heated.” App. Br. 18–20. Appellant argues
that while a dichroic filter, disclosed in Calmes, “‘stays cooler and requires
less frequent replacement . . . staying cooler [and requiring less frequent
replacement] is not the same as ‘improved performance when heated’ as
recited in Claim 1.” Id. at 18–19. Further with respect to Calmes, Appellant
argues that it is the color filter material and not the bond that causes the filter
material to remain cooler. Id. at 19. Appellant argues it is the “formation of
a bond between films that improves the performance of the string of filter
material as recited in Claim 1.” Id.
Having considered the record before us, we are not persuaded that the
Examiner erred in finding the ability to remain cooler and not require
replacement as frequently constitutes “improved performance when heated”
as recited in claim 1. See, e.g., Ans. 11. While we note the Specification
discusses how filter material joined with adhesive tape can fail or discolor
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when heated (Specification ¶ 29), the claims do not specify the nature of
improved performance of the string of filter material. See, e.g., claim 1.
Further, we find the phrase “when heated,” when given its broadest
reasonable construction, includes not only heating to a particular
temperature, but also subjecting an object to thermal energy that could
increase the temperature of the object. See, e.g., In re Van Geuns, 988 F.2d
at 1184. We are also unpersuaded that requiring less frequent replacement,
i.e., having greater durability, does not constitute improved performance
(App. Br. 19) – particularly where the Specification discusses adhesive tape
failing when heated as a disadvantage of the prior art overcome by their
invention (Spec. ¶ 29).
As to Appellant’s argument that it is the “formation of a bond between
films that improves the performance of the string of filter material” (App.
Br. 19; Reply Br. 5), we find the broadest reasonable interpretation of the
claim does not limit the improved performance of the filter string to that of
the bond itself. In particular, we find “bonded to form a string . . . having
improved performance when heated” (Claim 1) to encompass performance
of individual panels that are bonded together. Accordingly, we are not
persuaded the Examiner erred in finding that using the color filter materials
of Calmes to produce a string of material with individual panels that remain
cooler would improve the performance of the string of filter material. Ans.
6, 11.
Appellant argues Kotchick is non-analogous art because it is not from
the same field of endeavor and is not reasonably pertinent to the particular
problem with which the inventor is involved. App. Br. 20–23. Appellant
argues Kotchick is not in the same field of endeavor because it is “in the
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field of optical displays, such as liquid crystal displays” and the claims are
“in the field of a string of filter material for a lighting fixture.” Id. at 21.
Defining the problems to be solved very narrowly, Appellant argues
Kotchick is not reasonably pertinent to the problem to be solved. Id. at 21–
22. The problem in Kotchick is argued to be “making handling of films
easier which can reduce the number of steps required for assembly of the
display device and the chance of damaging the films.” Id. at 21. The
problem addressed by the claims is argued to be “improving the performance
of a bonded string of filter material for a lighting fixture when the string of
filter material is heated.” Id. Appellant argues the Examiner’s finding that
Kotchick is reasonably pertinent to the problem of bonding two films
together is legally deficient because the problem to be solved should be
construed narrowly. Id. at 22 (citing In re Oetiker, 977 F.2d 1443, 1446–47.
This argument also does not persuade us of Examiner error. We agree
with the Examiner’s determination that the problem to be solved is bonding
two films together. Ans. 12, 17–18. If we were we to define the problems
as narrowly as Appellant argues, the prior art would essentially be limited to
that from the same field of endeavor. As the Examiner concluded, Kotchick
is reasonably pertinent to the particular problem of bonding two films
together and the presence of additional elements does not make the two non-
analogous art. Ans. 12, 17–18. “A reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor’s endeavor, it
is one that because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We find, therefore, no
reversible error in the Examiner’s determination that Kotchick is analogous
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art or in the rejection’s reliance on it for its teaching of how to bond two
films together.
B. Claims 22-24 and 263

Appellant argues the Examiner has not shown that the proposed
combination of references discloses or suggests the “panels [of Calmes] are
connected together to form a seam” or that “the first portion and the second
portion [are] bonded together by overlapping to form a seam.” App. Br. 23–
25 (citing Calmes Fig. 3 and ¶¶ 33–37 cited in the Final Office Action).
Appellant argues the proposed combination of references does not, therefore,
teach or suggest every element recited in the claims. Id. at 23–25.
We do not find Appellant’s argument persuasive of reversible error
because it does not address the combination of references. See In re Keller,
642 F.2d 413, 425 (CCPA 1981). The rejection was over modified Kotchick
where the first portion and second portion were bonded together to form a
seam between panels connected together as in Figure 3 and ¶¶ 33–37 of
Calmes. Final Office Action 7; see also Ans. 4 (“Kotchick do[es] not
explicitly disclose . . . the first portion and the second portion are bonded to
form the gel string . . . Calmes teaches . . . a first portion and a second
portion (i.e. the various panels of the color string) that are bonded to form a
. . . color filter string”). We find, inter alia, ¶ 37 of Calmes teaches the
panels depicted in Fig. 3 are filters joined together to form the color filter
string. Where the Examiner finds Kotchick teaches bonding filters together

3 While Appellant argues these claims in three groups; claims 22 and 26,
claim 23, and claim 24, the basis for why the claim limitations are not
obvious over the cited art is the same across the groups. Accordingly, we
address Appellant’s arguments as to these claims together.
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by overlapping a portion of each and ultrasonic welding them (Ans. 3–4), we
are not persuaded the Examiner erred in finding the combination discloses or
suggests that the “panels are connected together to form a seam” and that the
“first portion and second portion [are] bonded together by overlapping to
form a seam” (id. at 13-14).
In view of the foregoing, we determine that Appellant has not
identified reversible error in the Examiner’s determination that the applied
prior art, namely, Kotchick and Calmes, as a whole, would have rendered
obvious the method of making the gel string recited in the claims on appeal
within the meaning of 35 U.S.C. § 103(a).
Accordingly, we affirm the rejection of claims 1–5, 21-24, and 26
under 35 U.S.C. § 103(a).

II. Rejection of product claims over Kotchick in view of Calmes for
obviousness
A. Claims 15–18 and 27

Appellant argues the proposed combination of references do not
disclose or suggest “the gel string prepared by ‘clamping the first portion
and the second portion between a first element and a second element’.”
App. Br. 26–28. Appellant argues, as they did with respect to claim 1, that
Kotchick does not disclose or suggest clamping the two films together. Id.
at 26–27.
We do not find this argument persuasive of reversible error for the
reasons set forth for claim 1 above.
Appellant further argues Kotchick and Calmes, alone or in
combination, do not teach or suggest the structure of the claimed gel string.
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Id. In particular, Appellant argues that Kotchick describes rolling films
through its ultrasonic welder to create a bonded film pair, that is, two films
are layered to produce one layered film instead of the claimed gel string. Id.
at 27. Appellant argues the Examiner has not established Calmes remedies
this deficiency because even if combined, “the combination merely
describes a structure whereby two films are layered to produce one layered
film and that layered film may be a color filter string.” Id. at 28.
We do not find Appellant’s argument persuasive because it does not
address the Examiner’s rejection. The rejection was not based upon literal
incorporation of a layered film from Kotchick as argued by Appellants. See
Ans. 4–5. Rather, the rejection was based on the combined teachings of
Kotchick and Calmes as set forth by the Examiner to use ultrasonic welding
to bond panels together to form the color filter string. Id. at 4 (“Kotchick
do[es] not explicitly disclose . . . the first portion and the second portion are
bonded to form the gel string . . . Calmes teaches . . . a first portion and a
second portion (i.e. the various panels of the color string) that are bonded to
form a . . . color filter string”). In other words, the Examiner found one of
ordinary skill would have found it obvious to manufacture the color filter
string of Calmes by overlapping portions of filter panels and ultrasonic
welding them together. Accordingly, we are not persuaded that the
Examiner erred reversibly in determining the combination rendered claim 15
unpatentable. See In re Keller, 642 F.2d 413, 425 (CCPA) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of a primary reference . . . Rather, the
test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.”).
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Appellant argues the proposed combination of references does not
disclose or suggest “whereby the first portion and the second portion are
bonded to form a string of filter material for a lighting fixture having
improved performance when heated.” App. Br. 28–30. Appellant argues, as
they did with respect to claim 1, that a filter material staying cooler is not the
same as a gel string having “improved performance when heated” and that it
is the bond between films that improves the performance of the string of
filter material. Id.
We do not find these arguments persuasive of reversible error for the
reasons set forth for claim 1 above.
Appellant repeats the arguments raised as to claim 1 that Kotchick is
non-analogous art because it is not from the same field of endeavor and is
not reasonably pertinent to the particular problem with which the inventor is
involved. App. Br. 30–33.
We do not find these arguments persuasive of reversible error for the
reasons set forth for claim 1 above.
B. Claim 27

Appellant repeats the further arguments raised as to claims 22–24 and
26 that the Examiner has not shown that the proposed combination of
references discloses or suggests the “panels [of Calmes] are connected
together to form a seam” or that “the first portion and the second portion
[are] bonded together by overlapping to form a seam.” App. Br. 33 (citing
Calmes Fig. 3 and ¶¶ 33–37 cited in the Final Office Action).
We do not find these arguments persuasive of reversible error for the
reasons set forth for claim 1 above.
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In view of the foregoing, we determine that Appellant has not
identified reversible error in the Examiner’s determination that the applied
prior art, namely, Kotchick and Calmes, as a whole, would have suggested
the gel string recited in the claims on appeal within the meaning of
35 U.S.C. § 103(a).
Accordingly, we affirm the rejection of claims 15–18 and 27 under 35
U.S.C. § 103(a).

III. Rejection of claims 6, 7, 19, 20, and 25 over Kotchick in view of
Calmes and Handel

Appellant argues these dependent claims are patentable for at least the
reasons raised for the independent claims from which they depend. App. Br.
34. Appellant argues the Examiner has “not establish[ed] that Handel
disclosed or suggest the above argued elements of the parent independent
claims.” Id.
We do not find the argument that the claims are patentable on the
basis of which claims they depend from persuasive of reversible error for the
reasons set forth for claims 1 and 15 above. Appellant’s further argument
relating to Handel is not persuasive because it is merely attorney argument.
See, e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument . . . cannot take the place of evidence.”). Further, having
considered the record before us, we find that Handel teaches an ultrasonic
welding system (Ans. 8–9) that operates by “mov[ing] the tip toward the
anvil compressing the workpieces together while . . . the ultrasonic welder
transmits mechanical vibration to the tip for welding the workpieces
together” (Handel Abstract). Where Handel also recognized ultrasonic
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welding can be used to join “plastic to plastic” (id. ¶ 2; see also Ans. 8), we
are not persuaded the Examiner erred in determining one of ordinary skill in
the art would have found it obvious to modify to combine the teachings of
Kotchick, Calmes, and Handel to provide the claimed invention.
In view of the foregoing, we determine that Appellant has not
identified reversible error in the Examiner’s determination that the applied
prior art, namely, Kotchick, Calmes, and Handel, as a whole, would have
suggested the gel string or the method of making the gel string recited in the
claims on appeal within the meaning of 35 U.S.C. § 103(a).
Accordingly, we affirm the rejection of claims 6, 7, 19, 20, and 25
under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–7 and 15–
27.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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