Ex Parte Damink

Patent Trial and Appeal Board

Aug 31, 2016

12994901 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/994,901 11/29/2010
138325 7590
PHILIPS LIGHTING BY
465 Columbus A venue
Suite 330
Valhalla, NY 10595
09/02/2016
FIRST NAMED INVENTOR
Paulus Henricus Antonius Damink
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.
2008P00619WOUS 6701
EXAMINER
LAMBERT, DAVID W
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
kim.larocca@philips.com
jo.cangelosi@philips.com
Gigi.Miller@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL US HENRICUS ANTONIUS DAMINK
Appeal2013-010370
Application 12/994,901
Technology Center 2600
Before ST. JOHN COURTENAY III, NATHAN A. ENGELS, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
The disclosed and claimed invention on appeal "relates to an optical
receiver for receiving visible light. More specifically, the invention relates
to an optical receiver comprising a photo detector configured for detecting
an intensity modulated signal in visible light." (Spec. 1 ).
Appeal2013-010370
Application 12/994,901
Representative Claim 1
1. An optical receiver for receiving visible light emitted by
a light source, said optical receiver comprising:
[L] an optical intensity modulation filter configured for filtering
an intensity modulated signal from said visible light wherein
the intensity modulated signal comprises an identification code
modulating the visible light for identifying the light
source; and
a photo detector configured for detecting said filtered intensity
modulated signal.
(Emphasis and bracketed lettering added to highlight contested limitation L.)
Rejections
A. Claims 1, 2, 7, 9, 10, 11, and 14 are rejected under 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions ofNakagawa et al. US 2006/0056855 Al; Mar. 16,
2006 (hereinafter Nakagawa), in view of Schenk et al. WIPO
publication No. WO 2008/155697 A2; Dec. 24, 2008 (hereinafter
Schenk).
B. Claims 3, 4, 5, and 12 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings of Nakagawa, Schenk,
and in further view of Koncen (U.S. Patent No. 3,743,835; July 3,
1973).
C. Claim 8 is rejected under 35 U.S.C. § 103(a) as being obvious over
the combined teachings of Nakagawa, Schenk, and Nilsson et al.
(U.S. Patent No. 4,476,875; Oct. 16, 1984).
D. Claims 6 and 13 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings of Nakagawa, Schenk, and
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Application 12/994,901
Koncen, and in further view of C. W. Hoover Jr. et al., "System
Design of the Flying Spot Store," THE BELL SYSTEM TECHNICAL
JOURNAL, pp. 365--401, March 1959.
E. Claim 15 is rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings of Nakagawa, Schenk, Koncen, and
in further view of Suzuki et al. (U.S. Patent No. 4,492,869; Jan. 8,
1985).
F. Claim 16 is rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings of Nakagawa, Schenk, and in further
view of Sarashina (U.S. Patent App. Pub. No. 2009/0208213 Al;
Aug. 20, 2009).
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative independent
claim 1. We address the remaining claims rejected under rejections B-F,
infra. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We disagree with Appellant's arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken; and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant's arguments. (Ans. 16-18). However,
we highlight and address specific findings and arguments for emphasis in
our analysis below.
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Application 12/994,901
Rejection A oflndependent Claim 1under35U.S.C.§103(a)
Regarding the proper claim construction of the contested "optical
intensity modulation filter configured for filtering an intensity modulated
signal from said visible light" (claim 1; emphasis added), Appellant refers to
the Specification, and contends, inter alia:
An optical intensity modulation filter is "a filter tuned to
filter on the basis of the frequency of intensity modulations of
the visible light." See Specification, p. 2, lines 18-19. The
Examiner's construction of optical intensity modulation filter to
include light wavelength filtering is therefore overly broad, and
not consistent with the specification.
(App. Br. 7).
The Examiner disagrees (Ans. 17):
It is noted that the features upon which applicant relies (i.e., the
optical intensity modulation filter filtering on the basis of the
frequency of intensity modulations of the visible light) are not
recited in the rejected claim(s). Although the claims are
interpreted in light of the specification, limitations from the
specification are not read into the claims.
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
combination of Nakagawa and Schenk would have taught or suggested
contested limitation L:
[L] an optical intensity modulation filter configured for filtering
an intensity modulated signal from said visible light wherein
the intensity modulated signal comprises an identification code
modulating the visible light for identifying the light source,
within the meaning of claim 1? 1 (Emphasis added).
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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Application 12/994,901
In reviewing the record, we agree with the Examiner (Ans. 17) that
Appellant is reading limitations from the Specification into the claims. We
find Appellant's contentions in both the Appeal Brief and the Reply Brief
are not commensurate with the broader scope of claim 1, which merely
requires a filter that is "configured to" perform the recited function of
''filtering an intensity modulated signal from said visible light .... " (Claim
1; emphasis added).
Regarding representative claim 1, Appellant repeatedly urges: "[a]n
optical intensity modulation filter is 'a filter tuned to filter on the basis of the
frequency of intensity modulations of the visible light"' (See e.g., App. Br. 7,
emphasis added).
However, we note dependent claim 14 further limits the scope of
independent claim 1 :
14. The optical receiver according to claim 1, wherein the
optical intensity modulation filter filters the intensity modulated
signal from the visible light based on a frequency of intensity
modulations of the visible light."
(Claim 14, emphasis added).
Our reviewing court guides: "[ w ]hen different words or phrases are
used in separate claims, a difference in meaning is presumed." Nystrom v.
TREX Co., Inc., 424 F.3d 1136, 1143 (Fed. Cir. 2005). Under the doctrine
of claim differentiation, "the presence of a dependent claim that adds a
particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim." Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005). This "presumption is especially
strong when the limitation in dispute is the only meaningful difference
between an independent and dependent claim, and one party is urging that
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Application 12/994,901
the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F.3d 1298,
1303 (Fed. Cir. 2003).
This reasoning is applicable here. Because the recited language of
dependent claim 14 ("wherein the optical intensity modulation filter filters
the intensity modulated signal from the visible light based on a frequency of
intensity modulations of the visible light" (emphasis added)) further limits
the "optical intensity modulation filter" recited in claim 1, there is a strong
presumption under the doctrine of claim differentiation that the "optical
intensity modulation filter" recited in claim 1 is not limited to "filter[ing] the
intensity modulated signal from the visible light based on a frequency of
intensity modulations of the visible light," as recited in dependent claim 14,
and as repeatedly argued by Appellant in the Briefs. (See e.g., App. Br. 7;
Reply Br. 7).
Thus, we conclude Appellant adopts an impermissibly narrow
construction of claim 1 by equating the "optical intensity modulation filter"
broadly recited in claim 1, with the narrowing limitations recited in
dependent claim 14. Therefore, on this record, we are not persuaded the
Examiner's claim interpretation of claim 1 is overly broad, unreasonable, or
inconsistent with the Specification. 2
Nor do we find a limiting definition in the Specification for the
"optical intensity modulation filter" recited in claim 1 that would preclude
2 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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the Examiner's broader reading. Instead, we merely find non-limiting
descriptions of exemplary embodiments. (e.g., see Spec. 5, 11. 14--21 ).
Although Appellant's Specification discloses exemplary embodiments of the
claimed invention, the scope of the claims is not limited to those particular
embodiments. 3
Under a broad but reasonable interpretation, we conclude contested
limitation L merely requires a filter "configured to" perform the recited
function of ''filtering an intensity modulated signal from said visible
light .... " (Claim 1 ). See n.1, infra.
As pointed to by the Examiner (Final Act. 5), Nakagawa describes
transmitting intensity modulated light (e.g., i-fi-f 173-17 5) from light emitting
unit 222 through filter 214 to light receiving unit 213, as depicted in Figure
7. Claim 1 is silent regarding exactly how the filtering is performed.
Nakagawa (i-f 17 5) teaches "a filter 214 is provided for selectively
receiving modulated light emitted from the terminal side communication
device 202." We find the light that is filtered by Nakagawa's filter 214 has
3 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir.
2015) ("This court has repeatedly 'cautioned against limiting the claimed
invention to preferred embodiments or specific examples in the
specification."') (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)). "[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments ... [C]laims may
embrace different subject matter than is illustrated in the specific
embodiments in the specification." Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en bane) (citations and internal quotation marks
omitted).
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been intensity modulated before it reaches the filter. 4 Therefore, regardless
of what type of filtering is performed by filter 214 (Nakagawa, Fig. 7), filter
214 at least performs the claimed contested function of ''filtering an intensity
modulated signal from said visible light . ... "(Claim 1 ).
The Examiner (Final Act. 4) looks to the secondary Schenk reference
(e.g., p. 4, 11. 25-27) for teaching or suggesting the recited "identification
code" limitation: "wherein the intensity modulated signal comprises an
identification code modulating the visible light for identifying the light
source," as claimed. (Claim 1, emphasis added).
For these reasons, and on this record, we find a preponderance of the
evidence supports the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness regarding independent claim 1. Because
Appellant has not persuaded us the Examiner erred, we sustain rejection A
of representative claim 1, and rejection A of the associated grouped claims
which fall with claim 1. See Grouping of Claims, supra.
4 See e.g., Nakagawa (i-f 174):
An arbitrary modulation system, such as on-off keying (OOK)
or binary phase shift keying (BPSK), is available. In addition,
all of or some of the illuminative light sources 212 for lighting
may be LEDs, which are controlled to change light intensity or
blinking. Note that since LEDs have a high-speed response
characteristic as described above, change in light intensity
and/or blinking is imperceptible to the human eye, and seems as
if light is emitted continuously. Accordingly, the illuminative
light sources 212 may be used for lighting besides data
communication.
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Application 12/994,901
Rejections B-F of the Remaining Claims 5
Appellant advances no separate, substantive arguments for the
remaining claims on appeal, which are rejected under rejections B-F. (App.
Br. 10-11). Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). Therefore, we sustain rejections B-F of the remaining
claims on appeal.
Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
For at least the aforementioned reasons, and on this record, we are not
persuaded the Examiner erred. We find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for all claims on appeal.
5 Although Appellant nominally argues rejections B-F under separate
headings (App. Br. 10-11 ), Appellant does not advance separate, substantive
arguments under 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
We affirm the Examiner's rejections of claims 1-16 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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