Ex Parte Cousaine et al

Patent Trial and Appeal Board

Sep 11, 2013

11974008 (P.T.A.B. Sep. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/974,008 10/11/2007 Charles M. Cousaine 200718634US 3911
24252 7590 09/11/2013
OSRAM SYLVANIA INC
100 ENDICOTT STREET
DANVERS, MA 01923
EXAMINER
MAY, ROBERT J
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
09/11/2013 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 CHARLES M. COUSHAINE and LAURA PEACH
____________

Appeal 2011-004965
Application 11/974,008
Technology Center 2800
____________

Before CHUNG K. PAK, DONNA M. PRAISS and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2011-004965
Application 11/974,008
2
The named inventors (hereinafter “Appellants”)1 appeal under
35 U.S.C. § 134 from the Examiner’s refusal to allow claims 1, 4, 5, 6, and
9, all of the claims pending in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
The subject matter on appeal is directed to electric lamps, and more
particularly, to portable LED lamp assemblies that are suitable for providing
illumination under wall or ceiling mounted cabinets. Spec. 2, ¶ [0002].
Details of the appealed subject matter are recited in illustrative claims 1 and
9, reproduced below:
1. A portable light comprising;
a housing;
said housing having at least one metallic element
comprising a planar base and including a depressed area having
a given depth capable of receiving a magnet;
a magnet positioned in said depressed area, said magnet
having a thickness equal to said given depth:
a sub-assembly within said housing comprising a light
source, a power supply comprising at least one battery for
illuminating said light source and a switch for connecting said
power supply to said light source, said light source and said
switch being mounted on a printed circuit board connected to
said planar base in a heat-transferring relation; and
a removable cover attached to said housing.

1 Appellants identify the real party in interest as OSRAM SYLVANIA Inc., a
wholly owned subsidiary of Siemens Corp. See Appeal Brief filed September
7, 2010 (“App. Br.”) at 2.
Appeal 2011-004965
Application 11/974,008
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9. A lighting arrangement comprising:
a lower cabinet having a first surface to be illuminated;
an upper cabinet including a second surface vertically
spaced from and facing said first surface;
a magnet attached to said second surface and extending a
particular distance from said second surface; and
a portable light affixed to said magnet, said portable light
comprising;
a housing comprising a magnetic planar base that
includes a depressed area for receiving said magnet, said
depressed area having a depth equal to said particular distance,
whereby said portable light has a mounting distance from said
second surface that is substantially equal only to said particular
distance;
a sub-assembly within said housing comprising a light
source, a power supply comprising at least one battery for
illuminating said light source and a switch for connecting said
power supply to said light source, said light source and said
switch being mounted on a printed circuit board connected to
said planar base in a heat-transferring relation; and
a removable cover attached to said housing.
App. Br. 17 and 18-19 (Claims App’x).
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer mailed October 27, 2010
(“Ans.”):
1. Whether claims 1, 4 and 9 are patentable under 35 U.S.C.
§ 103(a) over Bohler, U.S. Patent No. 6,641,283 B1 (issued November 4,
2003) in view of Abdelhafez et al., U.S. Patent Application No.
2002/0122309 A1 (filed February 16, 2001), Lee, U.S. Patent No. 6,923,550
Appeal 2011-004965
Application 11/974,008
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(issued August 2, 2005) and Chien, U.S. Patent No. 5,465,197 (issued
November 7, 1995).
2. Whether claim 5 is patentable under 35 U.S.C. § 103(a) over
Bohler in view of Abdelhafez, Lee, and Chien as applied in claim 1 and
further in view of Pearce, U.S. Patent No. 5,416,684 (issued May 16, 1995).
3. Whether Claim 6 is patentable under 35 U.S.C. § 103(a) over
Bohler in view of Abdelhafez, Lee, and Chien as applied in claim 1 and
further in view of Hanis, U.S. Patent Application No. 2005/0078481 A1
(filed October 12, 2004).
App. Br. 6.

On the record before us, we agree with Examiner that Appellants’
arguments are not persuasive for the reasons set forth in the Answer, and add
the following primarily for emphasis and completeness.

Claims 1, 4, and 9
Appellants contend that rejection of claims 1, 4, and 9, under
35 U.S.C. § 103(a) is in error, based on rejections by the Examiner of those
claims based on Bohler, Abdelhafez, Lee, and Chien. App. Br. 7-8.
Appellants argue claim 4 together with claim 1, from which claim 4
depends. Accordingly, dependent claim 4 stands or falls with independent
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that Abdelhafez does not provide “a disclosure of a
necessary metallic base,” App. Br. 9, and that one of ordinary skill in the art
would not look to Abdelhafez’s hard-wired LED-based beacon to make a
portable light easily transportable. Id. at 9-10. The Examiner finds that
Appeal 2011-004965
Application 11/974,008
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Abdelhafez discloses a planar base made from a thermally conductive
metallic material (i.e. aluminum), Ans. 5, Abdelhafez ¶ [0022], and that it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to fabricate the base of Appellants’ invention from a
conductive metal to dissipate the heat away from the LEDs. Ans. 5. We
note that Abdelhafez specifically teaches that the base “may be formed from
a metal such as aluminum which has good heat dissipation properties” and
that LEDs may be provided with a heat sink (heat dissipating means).
Abdelhafez ¶¶ [0011] and [0022]. Therefore, the Examiner did not err in
finding that one skilled in the art would have a reasonable expectation that a
metallic base, such as that found in Abdelhafez, would dissipate heat away
from LEDs, such as the LED-based portable light device taught by Bohler.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)(“[i]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”); In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (“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 which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem.”)
Appellants further contend that Lee relates to a “flashing, novelty
light,” and that any idea that the Lee structure provides a suggestion for
Appellants’ claimed invention comes only from the instant disclosure. App.
Br. 10-11. The Examiner finds that Lee discloses a portable light, having a
depressed area with a depth that is equal to the thickness or particular
Appeal 2011-004965
Application 11/974,008
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distance of the magnet which would be mounted to a surface. Ans. 5.
Because Bohler already discloses use of a magnet, the Examiner cites Lee to
show that it would have been obvious to one or ordinary skill in the art to
incorporate a recessed area with a depth equal to the thickness of the
magnet, so the portable light is flush mounted with the cabinet surface and
the protruding distance of the portable light would be minimized. Id. at 6.
We agree with the Examiner that Lee’s teaching of a recessed magnet would
have led one of ordinary skill in the art to do the same for the magnet used in
a mounting configuration in the portable light device of Bohler, with a
reasonable expectation of minimizing instability of a portable light and
enabling the light to be affixed in a non-protruding, non-tilting manner to the
bottom of a housing.
Finally, Appellants argue that Appellants’ subassembly, which
includes a printed circuit board with a light source and a switch, must be
mounted in heat-transferring relation to the base of the lamp. App. Br. 11.
Chien, Appellants contend, requires that the printed circuit board be
mounted away from the base by a number of intervening structures. Id. The
Examiner responds that Chien shows that applying a switch and a light
source to a printed circuit board would have been obvious to one of skill in
the art. Ans. 9. The Examiner further notes that any two objects that are in
contact or abutting relationship with each other are indeed in a heat
transferring relation. Id.
Claim 1 and claim 9 both read, in part, “a sub-assembly within said
housing comprising a light source, a power supply comprising at least one
battery for illuminating said light source and a switch for connecting said
power supply to said light source, said light source and said switch being
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mounted on a printed circuit board connected to said planar base in a heat-
transferring relation” (emphasis added). Claims 1 and 9 do not require that
the battery be mounted in any particular relation to the printed circuit board.
Chien teaches a battery located between the printed circuit board 40
and a metal strip 41. Chien, col. 2, lines 40-41. The metal strip 41, the
battery 42, and the printed circuit board 40 all sit within the base 20, with
metal strip 41 and printed circuit board 40 in apparently direct contact with
the base 20. Id. at Fig. 3. In both Appellants’ and Chien’s inventions, it
appears that the printed circuit board is in a heat-transferring relation with a
planar base. Notwithstanding the teachings of Isidor Buchmann, cited by
Appellants to support the proposition that one having ordinary skill in the art
would not place a dry battery as part of or adjacent a heat sink, Chien
nevertheless teaches the arrangement of a battery situated adjacent to both a
printed circuit board and a base. Moreover, Appellants’ claim 1 is not
written in such a manner that it would exclude such placement of the battery.
Finally, Appellants have not directed us to any portion of the record that
indicates that Chien’s claimed invention does not result in a heat-transferring
relation between its printed circuit board and its planar base.
Having considered the respective positions clearly articulated by the
Examiner and Appellants, we find a preponderance of the evidence favors
the Examiner’s obviousness conclusion with respect to claims 1, 4 and 9.

Claim 5
Appellants contend that claim 5, which depends from claim 1, defines
allowable subject matter over Bohler, Abdelhafez, Lee, and Chien, in further
view of Pearce. App. Br. 14-15. Specifically, Appellants argue that, with
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Application 11/974,008
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respect to claim 5, Pearce teaches and claims a luminaire with a lens having
a spread of less than 60 degrees. Id. at 14. The Examiner finds that Pearce
discloses light directed within a 60 degree cone, and that obviousness exists
where claimed ranges and prior art ranges do not overlap but are close
enough that one skilled in the art would have expected the same properties.
Ans. 10, citing Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775 (Fed.
Cir. 1985).
Where the only difference between the prior art and the claimed
subject matter is a difference in a range of a particular variable, the
Examiner has established a prima facie case of obviousness. In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003). In such situation, Appellant must
show the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). For example, the cited
disclosure of Pearce would logically include an angle of, for example, 59.9
degrees. Furthermore, Pearce discloses that “it is possible to modify the first
prismatic surfaces so that the downward direction of the light output is
between 60 and 70 degrees relative to the nadir of the luminaire,” Pearce,
col. 5, lines 65-68, thus not excluding an angle of 60 degrees.
We agree with the Examiner that one skilled in the art would have
reasonably expected a cone angle close to 60 degrees to be successful in the
apparatus of Bohler, based on the teachings of Pearce. Thus, in the absence
of a showing of unexpected results, we find that the Examiner has not erred.

Claim 6
Appellants contend that claim 6, which depends from claim 1, defines
Appeal 2011-004965
Application 11/974,008
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allowable subject matter over Bohler, Abdelhafez, Lee, and Chien, in further
view of Hanis. App. Br. 15. Specifically, Appellants argue that Hanis
discloses a device that can be used in a cabinet, rather than mounted upon a
cabinet as is Appellants’ invention. Id. Examiner cites Hanis for its
teaching of a motion sensing switch incorporated into a portable light, which
light can be attached to cabinetry. Ans. 7, 10; Hanis ¶ [0051]. Appellants
have not directed us to any part of the record that explains why the Hanis
device could not be mounted upon a cabinet. Moreover, claim 1, from
which claim 6 depends, makes no mention of mounting a portable light on
cabinetry, but instead is directed to simply a portable light. Thus, we agree
with the Examiner that Hanis teaches or would have suggested the use of a
motion sensing switch in a light, which light can be used in a number of
portable fashions.
Accordingly, we find no reversible error in the Examiner’s decision
rejecting claims 1, 4, 5, 6, and 9 under 35 U.S.C. § 103(a).

ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the decision of the Examiner rejecting the claims on
appeal under § 103(a) is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a) (2010).
AFFIRMED
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