Ex Parte Fraser

Patent Trial and Appeal Board

Nov 7, 2013

11571137 (P.T.A.B. Nov. 7, 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.
11/571,137 04/26/2007 Leigh Hugh Fraser 9939
60333 7590 11/07/2013
EDWIN D. SCHINDLER
4 HIGH OAKS COURT
P.O. BOX 4259
HUNTINGTON, NY 11743-0777
EXAMINER
NEGRON, ISMAEL
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
11/07/2013 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 LEIGH HUGH FRASER
____________________

Appeal 2011-006919
Application 11/571,137
Technology Center 2800
____________________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
BRIAN P. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006919
Application 11/571,137

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
16, 17, 19, 22, 24, 28, and 31 pursuant to 35 U.S.C. § 103. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.

BACKGROUND
The claimed invention relates to portable signal lanterns used, for
example, in railway operations. (Spec. 1: 5-6). The claimed portable signal
lantern contains at least two concentric “closed loop” (circular) solid-state
lamp arrays. (Id. 7:5-7; Fig. 1). Each closed loop array contains a series of
LEDs, each LED successively tilted in an alternating pattern: inwardly
relative to a “normal” central axis of symmetry, then outwardly relative to
normal, inward, outward et cetera, the tilt of each LED successively
alternating around the closed loop array. (Id. 8: 11-17; Fig. 3). The
successively alternating tilt of the axis of illumination of LEDs around the
ring widens the effective divergence angle of the composite beam emitted by
the lantern. (Id. 4: 13-15). The wider angle of divergence enhances “the
visibility of the signal at a distance ….” (Id. 8: 11-14).
Figure 1, a portion of which is reproduced below, illustrates the two
concentric “closed loop arrays” comprising an inner ring array of LEDs (30,
31) and an outer ring array of LEDs (32, 33):
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Appeal 2011-006919
Application 11/571,137

5
a lamp on a face of said housing actuable for illuminating a zone
proximate of said housing;
at least two closed loop arrays of solid state lamp devices disposed on
said face of said housing about said lamp, said at least two closed loop
arrays of solid state lamp devices being arranged one inside another and,
when activated, have a plurality of color outputs with each color output of
said plurality of color outputs being visually distinguishable from one
another at a predetermined distance from said at least two closed loop arrays
of said solid state lamp devices, said at least two closed loop arrays of said
solid state lamp devices, respectively, comprising a red solid state lamp
array and a green solid state lamp array, so that said portable signaling
lantern is deployable for displaying a "stop" or "go" signal to a remote
viewer with said red solid state lamp array being alternately tilted
oppositely to normal to said face of said housing; and,
means for selectively activating said lamp or any of said at least two
closed loop arrays of said solid state lamp devices utilizing a battery located
in said battery chamber for powering said lamp or one closed loop array of
said at least two closed loop arrays of said solid state lamp devices.

19. The portable signaling lantern according to Claim 16, wherein
said green
solid state lamp array is inside said array of red solid state lamp
array.
Appeal 2011-006919
Application 11/571,137

6
REJECTIONS
The Examiner rejected claims 16, 17, 19, 22, 24, 28 and 31 under
Section 103(a) as obvious over Stephens, US 6,722,771 issued April 20,
2004 (hereafter Stephens).
ANALYSIS

1. The Examiner’s Section 103(a) Rejection in view of Stephens and
the Common Knowledge of those Skilled in the Illumination Art

Appellant accurately quotes the Examiner’s statement in the final Office
Action and in the Answer that “Examiner readily admits that STEPHENS is
silent as to alternatively tilting the solid state lamps oppositely to normal to
the face of the housing.” (App. Br. 8 (quoting June 15, 2010 final Office
Action 7 and Ans. 9)). The relevant question, then, is whether the Examiner
has established a prima facie case of obviousness with respect to Appellant’s
claimed invention, particularly Appellant’s use of a successively alternating
tilt pattern of LEDs in a closed loop array. The Examiner explains:
Claim 16 was not rejected over STEPHENS alone, but in
combination with the knowledge available to one of ordinary
skill in the art. It is old and well known in the illumination arts
to tilt a plurality of narrow angle light sources, with respect to a
line normal the face of the supporting surface, in order to
increase the combined illumination angle of such plurality of
light sources. See section 10 of the Final Office Action mailed
November 30 of 2009, where Prior Art documents were
provided disclosing illumination devices including a plurality of
light emitting diodes arranged with tilted illumination axes to
Appeal 2011-006919
Application 11/571,137

7
increase the illumination angle of the illumination device.
(Ans. 9) (emphasis added).
The Examiner’s statement regarding the commonly known use of tilted
illumination axes to increase the angle of illumination does not fully address
the question of whether Appellant’s successively alternating tilt pattern of
LEDs in a closed loop array (“said red solid state lamp array being
alternately tilted oppositely to normal to said face of said housing,”) would
have been obvious to one of ordinary skill in the art at the time of
Appellant’s claimed invention. Stephens discloses a closed-loop array of
LEDs set to a normal axis of symmetry without any tilted LEDs. The
Examiner’s explanation stops short of a finding that the use of oppositely
tilted LEDs, in a successively alternating tilt pattern, was disclosed in the
prior art.
In view of the above, this Board went back to Section 10 in the
Examiner’s earlier final Office Action dated November 30, 2009, as quoted
above from the Examiner’s Answer. We found the Examiner had listed nine
prior art patents and published patent applications without column, line, or
paragraph citations to any of them. The explanation provided by the
Examiner was: “[The nine references] disclose illumination devices having
a plurality of light sources disposed at different angles on both side of a
normal to the supporting surface, to increase the divergence angle of
illumination produced by the device.” (11/30/09 Office Action 7 ¶ 10).
This also falls short of explaining how and why the prior art references
provided a reason, suggestion, or motivation for a person of ordinary skill in
the art to use Appellant’s claimed closed loop array in a successively
Appeal 2011-006919
Application 11/571,137

8
alternating tilt pattern of LEDs to increase the angle of illumination and
improve visibility of a lamp.
Apart from the quoted statement above, the Examiner does not cite to
any evidence other than Stephens to support the obviousness rejection under
35 U.S.C. § 103(a), either in the final Office Action of June 15, 2010, from
which this appeal is taken, or in his Answer to Appellant’s Appeal Brief.
(Final Office Action 7-9; Ans. 9-10). It is the Examiner’s burden, not the
Appellant’s burden, to supply such evidentiary support given the Examiner’s
acknowledgment that Stephens fails to disclose a claim limitation added by
amendment during prosecution. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984). Appellant argues, therefore, the Examiner essentially made
inappropriate use of the doctrine of “Official Notice” in an attempt to
substantiate a prima facie case of obviousness. On this record, we agree.
Having framed the issue without the benefit of any evidentiary citations
to support the “common knowledge” component of the final rejection, the
Examiner has failed to satisfy his burden to establish a prima facie case of
obviousness of Appellant’s claimed invention. When rejecting claims under
35 U.S.C. § 103(a), the Examiner bears the initial burden of establishing a
prima facie case of obviousness. In re Oetiker, 977 F.2d at 1445; see also In
re Piasecki, 745 F.2d at 1472, and KSR Int'l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), and
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal
conclusion of obviousness must be supported by facts. . . . The Patent
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Application 11/571,137

9
Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.”). MPEP § 2144.03(B) further states that
when official notice is taken of a fact that is asserted to be “common
knowledge”, “[t]he examiner must provide specific factual findings
predicated on sound technical and scientific reasoning to support his or her
conclusion of common knowledge.” MPEP § 2144.03(B) (citing In re Soli,
317 F.2d 941, 946 (CCPA 1963) and In re Chevenard, 139 F.2d 711, 713
(CCPA 1943)). Appellant’s legal analysis of the appropriate and
inappropriate uses of the doctrine of Official Notice is ably set forth in the
Appeal Brief. (App. Br. 9-12).
We are persuaded by Appellant's arguments. The Examiner's reliance on
“well known” facts of lamp orientation to one skilled in the art to find
Appellant’s claimed invention obvious, without a more complete and
properly supported and reasoned explanation, is improper. See In re Zurko,
258 F.3d 1379, 1385-86 (Fed. Cir. 2001). “Assertions of technical facts in
areas of esoteric technology must always be supported by citation to some
reference work recognized as standard in the pertinent art and the appellant
given, in the Patent Office, the opportunity to challenge the correctness of
the assertion or the notoriety or repute of the cited reference.” In re Ahlert,
424 F.2d 1088, 1091 (CCPA 1970) (emphasis added); see also MPEP §
2144.03(A). Appellant has established error in the Examiner’s fact finding
because the Examiner has not cited a reference, or any other evidence, to
support his conclusion that the claim limitation at issue was “well known” in
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Application 11/571,137

10
the illumination arts, thereby rendering Appellant’s claims obvious. (Ans.
9). Without more complete reasoning and evidentiary citations, the
Examiner has failed to provide core evidence of the “alternately tilted
oppositely from normal” claim limitation in support of his rejection of
Appellant’s claims. See MPEP § 2144.03; Ahlert, 424 F.2d at 1091;
Oetiker, 977 F.2d at 1445.
We REVERSE the Examiner’s rejection and enter a new ground of
rejection.
2. New Ground of Rejection over Stephens in view of Weber and,
optionally, further in view of Kawashima

This Board felt compelled to analyze the nine references mentioned by
the Examiner in his November 30, 2009 final Office Action.1 In summary,
this is what we found from an independent review of the nine references:
1. US 5,101,326 to Roney discloses a motor vehicle lamp comprised
of LEDs (18) all positioned in an arcuate array pattern (bow
shaped) tilted radially outwardly from both sides of a central LED
positioned at a “normal” central axis of symmetry. (Figs. 1, 3, 5,
6, and 10; Col. 3:21-28, 40-45);

1 The importance of citing evidence to supply a claim limitation admittedly
missing from a primary reference is underscored here, where Appellant
represents that “he is aware of no prior art that teaches or suggests the
limitation at issue for which the Examiner has sought to apply Official
Notice.” (Reply Br. 2).
Appeal 2011-006919
Application 11/571,137

11
2. US 5,384,693 to Schwaller et al. discloses a bicycle tail light
having a central LED (1) positioned at a normal axis of symmetry,
with one LED on each side (2, 3) set “off-axis,” both tilted
outwardly relative to normal. (Figs. 1-7; Col. 2:17-34);
3. US 5,567,036 to Theobald et al. discloses a motor vehicle lamp
comprising a central bank of LEDs all set in parallel and
positioned at a normal axis of symmetry, and one row of LEDs on
each side of the central bank all positioned outwardly relative to
normal to form an arc pattern within a common plane. (Figs. 1-4,
10; Col. 1:49-63; Col. 5:38-65);
4. US 6,241,373 to Kelley et al. discloses a clearance and side-marker
lamp on a three–section PC board, where the two side sections are
folded down at a near-90º angle away from the center section.
LEDs (50) in the center section are all set to normal, as are the
LEDs (52) in the two side sections all of which face outwardly
from the center section LEDs due to the folded configuration.
(Figs. 3, 4; Col. 4:55 – Col. 5:30).
5. US 2001/0009510 to Lodhie discloses a dispensing and slot
machine lamp comprised of three LEDs, one in the center set to
normal and one on either side each tilted inwardly at
approximately 90º angles to normal, with a multi-directional
reflector used to improve visibility. (Fig. 4; ¶¶ 29-31);
6. US 2001/0046136 to Weber et al. published November 29, 2001
(hereafter Weber), discloses a light assembly for use in an exterior
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Appeal 2011-006919
Application 11/571,137

13
7. US 6,422,728 to Riggin discloses a vehicle safety light comprising
a straight array of light sources (e.g., laser lights 14) in which the
first light source is set to normal and each successive light source
in the straight array is tilted in the same direction further and
further (increasing angles) away from normal. (Figs. 1, 3; Col.
2:26-37; Col. 3:17-34);
8. US 6,471,371 to Kawashima et al. issued October 29, 2002
(hereafter Kawashima) discloses a display lamp having either two
LEDs or two pairs of LEDs, one placed on either side of the lamp
with both oriented inwardly relative to normal in order to expand
the angle of divergence and improve visibility. (Figs. 1, 2, 9, and
11; Col. 4:11-22; Col. 5:60-Col. 6:23; Col. 9:4-44). Kawashima
explains the use of two inwardly tilted LEDs as follows:
The light from the left-side end LED is spread inside of the
display lamp and directly irradiated to the right-side end and its
vicinity of the globe. Likewise, the light from the right-side
end LED is directly irradiated to the left-side end and its
vicinity of the globe. The lights are directly irradiated to the
globe. Accordingly, higher visibility can be assured as
compared with the case of irradiation of reflected lights which
are readily attenuated.
The light from each of the LEDs is spread in plan elevation as
shown in FIG. 2, and is also spread in the vertical direction as
shown in FIG. 1. The peripheral portions of the lights thus
spread are irradiated also to those zones of the globe between
the center portion and each of the right- and left-side ends.
Thus, the lights are uniformly irradiated substantially to the
whole peripheral surface of the globe. Then, the lights are
diffused by the diffusing lenses of the globe and emitted
uniformly in all the directions.
Appeal 2011-006919
Application 11/571,137

14

9. US 2003/0103348 to Hung discloses a projection lamp having
LEDs in an arcuate array all facing outwardly from normal and at
different angles to increase the light emitting area of the lamp.
(Fig. 3; ¶¶ 20-21).
We conclude from the above analysis that the Examiner generally
referred to, but did not rely upon, prior art in the November 30, 2009 final
Office Action in support of his proposition: the knowledge of those of skill
in the art included the ability to tilt LED light sources at angles relative to a
central axis of symmetry to increase the illumination angle of a lamp and
improve visibility. But we also conclude that many patents have been
granted in this art that include many different types of tilted LED patterns,
which might not necessarily have been obvious to those of ordinary skill in
the art. We find two of the nine references - the Weber and Kawashima
references – particularly material to Appellant’s claimed invention when
viewed in combination with Stephens.
NEW GROUND OF REJECTION

Claims 16, 17, 19, 22, 24, 28, and 31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Stephens in view of Weber, further as needed
in view of Kawashima.
To recap, Appellant and Examiner both agree that Stephens discloses all
limitations of claim 16, including two concentric closed loop arrays of LED
light sources used in a hand held (portable) light to control traffic, except for
the limitation of the “array being alternately tilted oppositely to normal to
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Application 11/571,137

15
said face of said housing.” (Stephens Figs. 1 and 4; Col. 1:9-12; Col. 2:40-
43; Col. 3:22-30).
All LEDs in Stephens are shown oriented relative to a normal axis of
symmetry, and Stephens does not disclose or suggest tilting or angling the
LEDs relative to normal. Weber is directly analogous art and illustrates the
use of an alternating pattern of oppositely tilted LEDs across the width of the
lamp for the purpose of increasing the angle of divergence to improve
visibility and uniformly illuminate the area in the forward (travel) direction.
If necessary, Kawashima demonstrates the level and knowledge of skill in
the art prior to Appellant’s invention as to why and how one of skill in the
art could use tilted LED arrays in various ways to increase the angle of
divergence and improve the uniformity and visibility of a solid state lamp.
It would have taken no more than ordinary creativity in light of the
applied art for one of skill in the art to use Weber’s successively alternating
tilt pattern of LEDs in Stephens’ concentric closed loop arrays, for the
purpose of improving lamp visibility as taught in Weber and further
explained by Kawashima. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416, 421 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results. … A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).

DECISION
For the above reasons, the Examiner’s rejection of claims 16, 17, 19,
22, 24, 28, and 31 under 35 U.S.C. § 103(a) over Stephens is reversed.
Appeal 2011-006919
Application 11/571,137

16
We enter the following new ground of rejection: Claims 16, 17, 19,
22, 24, 28, and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Stephens in view of Weber and further in view of Kawashima.
This is a new ground of rejection under 37 C.F.R. § 41.50(b), which
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that
the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event
the prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. The request for rehearing
must address any new ground of rejection and state with particularity the
points believed to have been misapprehended or overlooked in entering
the new ground of rejection and also state all other grounds upon which
rehearing is sought.

REVERSED
NEW GROUND OF REJECTION 37 C.F.R. § 41.50(b)

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