Ex Parte Herr et al

Patent Trial and Appeal Board

Feb 13, 2018

13370069 (P.T.A.B. Feb. 13, 2018)

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.
13/370,069 02/09/2012 Tobias Herr BOSC.P7313US/11603052 1056
24972 7590 02/15/2018
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
GYLLSTROM, BRYON T
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
02/15/2018 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOBIAS HERR, GEORGIOS MARGARITIS, and
JOERG WELKE
Appeal 2017-005927
Application 13/370,069
Technology Center 2800
Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—28 of Application 13/370,069
under 35 U.S.C. § 103(a) as obvious. Final Act. (May 4, 2016) 2—16.
Appellants1 seek reversal of the rejections of claims 1—19 and 21—282
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 ROBERT BOSCH GmbH is identified as the real party in interest. Appeal
Br. 1.
2 Appellants do not seek review of claim 20 which was canceled by
amendment dated December 8, 2014. Appeal Br. 1.
Appeal 2017-005927
Application 13/370,069
BACKGROUND
The present application generally relates a handheld tool carrying case
that includes an illuminating device. Spec. 1. The illuminating device is
described as having at least one cooling element which includes one or more
“cooling ribs” displaced from the illuminating arrangement and exposed to
an external environment. Id. at 10; Fig. 1.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A handheld tool carrying case, comprising:
an illuminating device, which has at least one
illumination arrangement that provides illumination along an
illumination direction;
wherein the illuminating device has at least one cooling
element for cooling the illumination arrangement, wherein:
the at least one cooling element includes an
opening into which the illuminating arrangement is inserted,
the at least one cooling element includes a plurality
of cooling ribs displaced from the illuminating arrangement and
exposed in an uncovered state to an external environment, and
the uncovered cooling ribs extend toward the
external environment in the illumination direction.
Appeal Br. (Claims App. 1).
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Application 13/370,069
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—5, 7—19, and 21—283 are rejected under 35 U.S.C.
§ 103(a) as obvious over Zampini4 in view of Chen5 and further in
view of Chou6. Final Act. 2—15.
2. Claim 6 is rejected under 35 U.S.C. § 103(a) as obvious over
Zampini in view of Chen and further in view of Gilmore7. Id. at
15-16.
3. Canceled claim 20 is said to be rejected under 35 U.S.C. § 103(a)
as obvious over Zampini in view of Chen and further in view of
Kelly8. Id. at 16.
DISCUSSION
Rejection 1. The Examiner rejected claims 1—5, 7—19, and 21—28 as
obvious over Zampini in view of Chen and further in view of Chou. Id. at
2—15. In support of such rejection, the Examiner found that Zampini teaches
a plurality of cooling ribs displaced from the illuminating arrangement
extending toward the external environment. Id. at 3. The Examiner further
3 This rejection is initially indicated as applicable only to claims 1—5, 7—19,
and 21. Final Act. 3. The rejection, however, specifically addresses claims
22—28 as well. Id. at 11—15.
4 US 7,766,511 B2, issued Aug. 3, 2010.
5 US 2004/0228114 Al, published Nov. 18, 2004.
6 US 2006/0098441 Al, published May 11, 2006.
7 US 5,685,421, issued Nov. 11, 1997.
8 US 4,460,947, issued July 17, 1984.
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Application 13/370,069
found that Chou teaches cooling ribs exposed in an uncovered state to an
external environment. Id. at 4. Appellants argue that the rejection is in error
on several bases.
The references ’ teaching of “ribs . . . exposed in an uncovered state to an
external environment ” and “extend... in the illumination direction ”
First, Appellants argue that Chou does not teach ribs exposed to an
external environment and extending in the illumination direction. Appeal
Br. 3. Appellants argue that the backlight module of Chou teaches fins that
extend in a direction opposite the illumination direction. Id. Appellants
further argue that the fins of Chou extend into the interior of an LCD
housing unit and are therefore not “exposed ... to an external environment.”
Id.
The Examiner responds that the rejection relies upon Zampini, not
Chou, as teaching fins which extend toward the illumination direction.
Answer 3. The Examiner additionally finds that Figure 2 of Zampini teaches
a configuration where the skin does not extend across the entire surface,
thereby leaving certain parts of the core (equivalent to the “fins” of the
claim) exposed to the environment. Id. The Examiner additionally finds
that Chou depicts fins not enclosed by any structure. Id. at 4. The Examiner
determines that Appellants’ argument that the fins of Chou’s backlight
module must necessarily be enclosed is unsupported. Id. The Examiner
further determines that the “external environment” of the claim refers to air
external to the ribs. Id.
We concur with the Examiner’s determination that Appellants’
argument that Chou does not teach ribs exposed to an external environment
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Application 13/370,069
because the subject backlight module will be installed in a larger structure is
unsupported. Appellants’ assertion that “these fins 35 are covered by the
LCD housing in which the backlight module of which fins are part is
installed” (Appeal Br. 3) is merely attorney argument. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to
follow from common experience is just attorney argument and not the kind
of factual evidence that is required to rebut a prima facie case of
obviousness.”); Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380
(Fed. Cir. 2009) (“[Ujnswom attorney argument... is not evidence and
cannot rebut. . . other admitted evidence . . . .”). Even were this assertion
supported, it would not be dispositive of whether the cooling ribs of Chou
are exposed to an external environment.
The Examiner determined that the “external environment” of the
claim is air that circulates around the lighting unit. Answer 4. During
examination, claim terms must be given their broadest reasonable
construction consistent with the Specification. In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). An applicant seeking a
narrower construction must either show why the broader construction is
unreasonable or amend the claim to expressly state the scope intended. In re
Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997).
Claim 1 requires “cooling ribs . . . exposed in an uncovered state to an
external environment.” The Specification does not use the term “external
environment.” It does provide that “[a] ‘cooling element’ should be
understood particularly to be provided to carry off heat from the illumination
arrangement, and to release it to the surrounding air.” Spec. 2. Although
not dispositive, this tends to support the Examiner’s determination that the
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“external environment” of the claim refers to air that surrounds the
illumination arrangement and need not be external to the tool carrying case.
Moreover, Zampini explicitly teaches that “[f]or high powered
applications, additional heat sinks may be added on the rear of the LEDs 19
on the upper skin layer 15 or lower skin layer 13.” Zampini 9:67—10:2
(emphasis added).
Accordingly, Appellants have not shown that the rejection is in error
in finding that the cited references teach fins which extend toward the
illumination direction and ribs exposed to an external environment.
Aesthetic and Safety Considerations
For their second argument, Appellants argue that a person of ordinary
skill in the art would not have been motivated to expose the core 27 of
Zampini. Appellants argue that such exposure would be aesthetically
unappealing and may be unsafe as “a person could cut himself against the
thin metal walls of core 27 were he to inadvertently brush up against it.”
Appeal Br. 4.
The Examiner finds that a person of ordinary skill in the art would
have been taught that the core may be exposed by Zampini’s teaching that
“the outside edges of core 27 can also be cut as needed, for example, figure
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2 shows the edge cut an at [sic] angle.” Answer 5 (citing Zampini 7:4—5).
Figure 2 of Zampini is depicted, in part, below:
Zampini, Figure 2 is a simplified schematic side view of an LED light
fixture mounted to a four gang electrical box. Zampini 4:10—11. The
Examiner regards this as a direct teaching of an exposed core.
The Examiner further determines that Appellants’ characterization of
the core 27 of Zampini as sharp enough to cut an individual is unsupported.
Answer 6. The Examiner additionally regards Appellants’ argument that the
hypothetical combination is aesthetically unpleasing as subjective and
lacking force. Id.
We concur with the Examiner’s determination that Appellants’
argument regarding the core of Zampini being a safety hazard is
unsupported. There is no evidence of record cited in support of this
supposition. As above, unsworn attorney argument is not evidence.
Gemtron Corp., 572 F.3d at 1380. Nor is Appellants’ argument regarding
the aesthetics of the exposed core of Zampini persuasive. “[C]ase law does
not require that a particular combination must be the preferred, or the most
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Application 13/370,069
desirable, combination described in the prior art in order to provide [the]
motivation [or reason] for the current invention.” In re Fulton, 391 F.3d
1195, 1200 (Fed. Cir. 2004). Such argument is additionally contrary to
Zampini’s teaching that additional heat sinks (such as core 27) may be added
to the top of the upper skin layer 15. Zampini 9:67—10:2.
The Examiner’s Reliance on “Common Sense ”
For their third argument, Appellants contend that the Examiner
improperly seeks to rely on common sense as an alternative rationale to
justify the proposed combination. Appeal Br. 4—6. Appellants point to the
following portion of the Final Rejection:
Examiner considers the exposure of cooling structures such as
heat sink to outside air to be within the ordinary skill in the art
as one would generally recognize that such a heat sink provides
cooling by thermal diffusion with external air . . . and insulating
such a cooling rib structure from outside air or any other
thermal body would defeat the purpose and utility of having
cooling ribs.”
Appeal Br. 4 (citing Final Act. 17). Appellants assert that this differs from
the stated rejection which relies upon Chou as teaching exposed ribs. Id. at
5. In Appellants’ view, the foregoing is an alternative rationale which
implicitly relies upon common sense rather than a specific teaching of the
prior art. Id. Appellants argue that such reliance is improper as common
sense is typically invoked to provide a reason to combine rather than to
supply a missing limitation. Id. at 5—6.
Appellants further argue that the Examiner’s finding cited above is
substantively flawed. Id. at 6. Appellants contend that the Examiner does
not weigh the aesthetic impact of exposure of the core against the increased
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Application 13/370,069
cooling that would result. Id. Appellants point out that the Examiner makes
no findings regarding the amount of heat that would dissipate through the
skin 15 of Zampini and the degree to which such dissipation would be
improved by removal of the skin. Id. Accordingly, in Appellants’ view, the
Examiner’s finding that a person of ordinary skill would have been
motivated by basic principles and common sense to remove the skin 15 of
Zampini is merely speculative. Id.
The Examiner contends that the passage at issue regards the reason to
combine Chou and Zampini, rather than being an independent basis for
modification of Zampini. Answer 6. The Examiner further determines that
Appellants’ argument is predicated on Chou teaching fins that are not
exposed to an external environment. Id. at 7. As above, Appellants have not
shown error in the Examiner’s finding that Chou teaches exposed fins.
Finally, in regard to one’s motivation to modify Zampini so as to have
exposed cooling ribs, the Examiner determines that an improvement to the
heat dissipation capability of Zampini, even if small, is still desirable. Id. at
7. Appellants have shown no error in the Examiner’s determinations in this
regard. “[A] given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to combine.”
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
Moreover, the foregoing is substantially moot as Appellants have
failed to show error in the Examiner’s stated basis for rejection that Chou
teaches exposed ribs.
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Application 13/370,069
Reason to Combine the Teachings of Zampini and Chen
For their fourth argument, Appellants contend that there is no reason
to combine the teachings of Zampini (light fixture) with Chen (illuminated
toolbox). Appeal Br. 6—7. Appellants acknowledge that Chen teaches a
toolbox with an illumination feature. Id. at 7. They argue, however, that
one would not be led to modify such toolbox according to Zampini as such a
modification presupposes compatibility between a light fixture intended for
a stationary environment and a portable toolbox. Id.', Reply 9.
The Examiner responds that the preamble’s statement of a “handheld
tool carrying case” is merely a recitation of the intended use of the claimed
structure. Answer 7. Moreover, such preamble does not include any
structural limitation. As a result, the Examiner contends, the preamble is
entitled to no weight. Id. at 8. The Examiner further indicates that Chen
was cited in the rejection merely to “facilitate prosecution.” Id.
As above, Chen teaches a toolbox with an external light. This
provides an explicit teaching that a light unit may be combined with a
toolbox. Final Act. 3. The Examiner makes a determination that it would
have been obvious to use the lighting unit of Zampini with a toolbox as
taught by Chen. Id. In order to rebut the Examiner’s finding, Appellants
would have to show that one of skill in the art would have regarded Zampini
as somehow incompatible with use in a portable toolbox environment.
Appellants have not done so. Indeed, Zampini teaches that “[bjecause of the
versatile nature of the present invention, many techniques known in the art
can be applied to the present invention so that it can be used in any
environment.” Id. 10:16—18 (emphasis added).
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Further, “it is not necessary that [the references] be physically
combinable to render obvious the [patent].” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir.
1985) (en banc) (“Etter's assertions that Azure cannot be incorporated in
Ambrosio are basically irrelevant, the criterion being not whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the teachings of the prior art as a whole.”).
Accordingly, Appellants have not shown error in the Examiner’s
combination of the teachings of Chen and Zampini.
Claim 16
Claim 16 depends from claim 1 and further requires “wherein the
illuminating device includes a holder configured to attach to the illumination
arrangement, the holder being attached to the cooling element, wherein the
holder and the cooling element enclose and extend beyond an illumination
area of the illumination arrangement in an illuminating direction and are
adapted to protect the illumination area.” Appeal Br. (Claims App. 2).
In the rejection, the Examiner cites to flange 35 depicted in Figure 2
of Zampini as satisfying the “holder” limitation. Final Act. 7—8.
Appellants’ argue that flange 35 is below the LEDs and, thus, does not
extend beyond than illumination area “in an illuminating direction.” Appeal
Br. 7. In this regard, we adopt the Examiner’s determination as set forth in
the Final Rejection and the Answer. See Final Act. 7—8; Answer 8. In
addition, we determine that Zampini teaches an embodiment where “the
flange may be reversed for flush mounting.” Zampini 7:19—21, Fig. 13
(flange 50). As this embodiment teaches a flange above the level of the
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LEDs, Appellants’ argument is inapplicable. Accordingly, Appellants have
failed to show error in regard to claim 16.
Rejection 2. The Examiner rejected claim 6 as obvious over Zampini
in view of Chen and further in view of Gilmore. Final Act. 15—16. In
challenging the rejection of claim 6, Appellants rely upon the same
arguments presented in regard to the foregoing claims. Appeal Br. 8. As the
foregoing arguments have not been found to demonstrate error in regard to
the rejection of claims 1—5, 7—19, and 21—28, we are constrained to affirm
the rejection of claim 6.
Rejection 3. The Examiner rejected claim 20 as obvious over
Zampini in view of Chen and further in view of Kelly. Final Act. 16. Claim
20, however, was canceled by amendment dated December 8, 2014.
Moreover, Appellants do not appeal the rejection of claim 20. Accordingly,
we need not address such rejection.
CONCLUSION
The rejection of claims 1—5, 7—19, and 21—28 as obvious over
Zampini in view of Chen and further in view of Chou is affirmed. The
rejection of claim 6 as obvious over Zampini in view of Chen and further in
view of Gilmore is affirmed. The rejection of claim 20 as obvious over
Zampini in view of Chen and further in view of Kelly is moot.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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