Ex Parte Cleary et alDownload PDFPatent Trial and Appeal BoardDec 27, 201611825912 (P.T.A.B. Dec. 27, 2016) 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. 11/825,912 07/10/2007 Daniel Cleary P005-US 7863 72932 7590 Steinfl & Bruno LLP 155 N. Lake Ave. Ste 700 Pasadena, CA 91101 12/27/2016 EXAMINER TSIDULKO, MARK ART UNIT PAPER NUMBER 2875 MAIL DATE DELIVERY MODE 12/27/2016 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 DANIEL CLEARY, CARLOS I. FONCK, HENRY A. LESTER, and MICHAEL P. WALSH Appeal 2015-005235 Application 11/825,912 Technology Center 2800 Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and N. WHITNEY WILSON, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1—20, 24—26, 28, 33, and 35—39. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). Appeal 2015-005235 Application 11/825,912 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below: 1. An illumination and monitoring device comprising: a container; a container lid configured to close said container; a circuit board attached to the container lid; and a plurality of controllable infrared light emitting diodes (LEDs) and controllable broad-spectrum LEDs, wherein the infrared LEDs and the broad-spectrum LEDs are distributed on the circuit board and provide light inside the container, the circuit board being located at a distance from and mounted spaced above a container top to allow air circulation, and wherein the illumination and monitoring device includes a filter paper located inside the container lid, the filter paper acting as a dispersion device, and the circuit board is located above the filter paper to shine light onto the container through the filter paper. App. Br. 40 (Claims Appendix). The Examiner relies on the following prior art references as evidence of unpatentability: Ferdinand US 3,621,233 Nov. 16, 1971 Hall US 4,015,366 Apr. 5, 1977 Matsuda US 5,608,209 Mar. 4, 1997 Yoneda et al. (hereafter “Yoneda”) US 2003/0005626 Al Jan. 9, 2003 Fang et al. (hereafter “Fang”) US 6,554,450 B2 Apr. 29, 2003 Matsutori US 2005/0115865 Al June 2, 2005 Sanders et al. (hereafter “Sanders”) US 7,158,379 B2 Jan. 2, 2007 2 Appeal 2015-005235 Application 11/825,912 THE REJECTIONS 1. Claims 1—8, 11—15, 18—20, 24—26, 28, 36—39 are rejected under 35U.S.C. § 103(a) as being unpatentable over Yoneda in view of Fang and Ferdinand. 2. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoneda in view of Fang and Ferdinand, as applied to claim 1 above, and further in view of Matsuda. 3. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoneda in view of Fang and Ferdinand, as applied to claim 12 above, and in further view of Hall. 4. Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoneda in view of Fang and Ferdinand, as applied to claim 1 above, and in further view of Sanders. 5. Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoneda in view of Fang, Matsutori, and Ferdinand. ANAFYSIS While many issues are argued in the record, we focus on the outcome determinative issues set forth, infra, in making the determinations herein. Appellants’ claimed illumination and monitoring device is depicted in their Figure 4, reproduced below. 3 Appeal 2015-005235 Application 11/825,912 Figure 4 shows an embodiment where a layer of filter paper 30 is provided inside container lid 2. More specifically, Figure 4 shows container lid 2, circuit board 3 having a plurality of LEDs distributed thereon, screws 1, that connect the circuit board to container lid 2 in such a way that circuit board 3 is located at a distance from and mounted space above container top 2, to allow for air circulation, and filter paper 30 is located inside container lid 2 that acts as a dispersion device, and the circuit board is located above filter paper 30. We refer to pages 2—11 of the Final Office Action regarding the Examiner’s stated positon and findings. One of the arguments raised by Appellants concerns the recitation that the circuit board is at a location at a distance from the top of the container. Appellants argue that because the Examiner admits that “[t]he circuit board 4 Appeal 2015-005235 Application 11/825,912 of Yoneda et al. is a part of the lid” (Ans. 7), then the lid is in contact with the container. Reply Br. 5. As such, Appellants submit that it cannot be said that the circuit board of Yoneda is at a distance from the container as required by the claim. Id. We agree. Yoneda’s Figure 2 shows circuit board 16a, part of which sits on 1 la (top of container 2). Yoneda’s Figure 2 is reproduced below: Fig. 2 1 We add that the rejection does not adequately address as to how the proposed modification of Yoneda locates the filter paper inside the container lid as recited in claim 1 \ including any motivation for so doing. Hence, it 1 On page 3 of the Final Office Action, the Examiner states that the paper of Ferdinand obviously has to be disposed below the circuit board. However, this does not address the claim limitation of the filter paper being located inside the container lid. 5 Appeal 2015-005235 Application 11/825,912 appears that an element of the claim has not been properly addressed in the rejection. See generally, Final Action and Answer. In view of the above, we agree with Appellants that a prima facie case has not been made. We thus reverse Rejection 1. Because the Examiner does not rely upon the other applied references used in Rejection 2—5 to cure the stated deficiencies of the combination applied in Rejection 1, we also reverse these rejections for similar reasons. DECISION Each rejection is reversed. ORDER REVERSED 6 Copy with citationCopy as parenthetical citation