Ex Parte Hodulik

Board of Patent Appeals and Interferences

Jul 10, 2012

11903126 (B.P.A.I. Jul. 10, 2012)

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.
11/903,126 09/20/2007 Michael Gerard Hodulik M. Hodulik 1 8723
7590 07/11/2012
Michael Hodulik
P.O. Box 579
Killington, VT 05751
EXAMINER
SEMBER, THOMAS M
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
07/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL GERARD HODULIK
____________

Appeal 2010-004366
Application 11/903,126
Technology Center 2800
____________

Before LANCE LEONARD BARRY, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/903,126

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-19 (App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. An exterior streetlight apparatus of the type used to
connect to a light pole or building structure comprising:

a solar collection unit for collecting solar energy;

a power converter coupled to said solar collection unit
and to an AC power grid for enabling energy collected from
said solar collection unit to be channeled onto said AC power
grid as electricity; and

a light source coupled to said power converter which
receives electricity from said AC power grid for operation
thereof,

said streetlight apparatus being a dual use device for
supplying energy to said AC power grid during times when said
solar collection unit collects solar energy and for providing
light during times of operation as a streetlight, energy for
operation as a streetlight being provided from said AC power
grid.

The Examiner rejected claims 1, 7, 8, 11, 12, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Kishimura (U.S. 6,942,361 B1) in view
of Bower (U.S. 2003/0111103 A1), Mattiuzzo (U.S. 6,930,237 B2), or
Evans (U.S. 4,217,633) (Ans. 3-4).
The Examiner rejected claims 2, 3, 13, and 14 under 35 U.S.C.
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Application 11/903,126

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§ 103(a) as being unpatentable over Kishimura in view of Bower, Mattiuzzo,
or Evans and Liu (U.S. 2005/0139258 A1) (Ans. 4-5).
The Examiner rejected claims 4-6, 9, 10, and 14-18 under 35 U.S.C.
§ 103(a) as being unpatentable over Kishimura in view of Bower, Mattiuzzo,
or Evans and Kuelbs (U.S. 7,204,618 B1) (Ans. 6).

FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
(Ans. 3, et seq.).

ISSUE
Appellant’s responses to the Examiner’s positions present the
following issue:
Did the Examiner err in ruling that the combination of Kishimura with
Bower, Mattiuzzo, or Evans teaches or suggests a “streetlight apparatus
being a dual use device for supplying energy to said AC power grid during
times when said solar collection unit collects solar energy and for providing
light during times of operation as a streetlight, energy for operation as a
streetlight being provided from said AC power grid,” as recited in
independent claim 1 and as similarly recited in independent claim 11?

ANALYSIS
We disagree with Appellant’s conclusion regarding the Examiner’s
rejection of the claims. 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 set forth by the Examiner in the Answer (Ans. 3-19) in
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response to arguments made in Appellant’s Appeal Brief. We concur with
the conclusion reached by the Examiner. We highlight and address certain
findings and arguments below.
Appellant argues that the Examiner erred in rejecting independent
claims 1 and 11 as obvious because the combination of Kishimura with
Bower, Mattiuzzo, or Evans does not “suggest a dual use streetlight device
for supplying energy to the AC power grid during times when the solar
collection unit collects solar energy and for providing light from power
consumed from the AC power grid when the device operates as a streetlight”
(App. Br. 12). Appellant further argues that Kishimura “teaches away from
being an AC utility (versus low voltage) grid-tied device, since a person
skilled in the art would not look to a reference which discloses only an
isolated solar powered device for the purposes of making improvements to
grid-tied devices” (id.). Appellant therefore “submits that the combination
of references as applied to be [sic] improper” (id. at 13).
As explained by the Examiner, however, Kishimura “teaches a
streetlight having a solar collector 5 that provides DC power to a battery 4”
(Ans. 4; see also Kishimura, col. 5, ll. 3-28). Indeed, Kishimura “discloses
the claimed invention except for the teaching that the solar collector supplies
energy to an AC power grid” (Ans. 7). And Bower teaches a solar collector
on a billboard that supplies energy to an AC power grid (Ans. 7).
Accordingly, contrary to Appellant’s argument, the combination of
Kishimura and Bower teaches all the limitations of independent claims 1 and
11.
Moreover, Kishimura teaches that “in the event of emergency
operation being necessary, electric power can be received from a low
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Application 11/903,126

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voltage AC distribution line” (Ans. 4, citing Kishimura, col. 5, ll. 26-31).
Because Kishimura’s solar device is connected to an AC line, it does not
teach away from a connection to an AC power grid as argued by Appellant.
Therefore, as explained by the Examiner, one of ordinary skill in the art
would have modified Kishimura’s solar collector to supply energy to an AC
power grid as taught by Bower to provide power from the AC power grid to
the solar collector when it is needed at a later time (Ans. 7). Accordingly,
we find no error in the Examiner’s obviousness rejection of independent
claims 1 and 11.
Appellant also contends that the Examiner erred in rejecting claim 12
because “[t]he Examiner’s arguments fail to explain why it was obvious to
modify the arrangement of references in order to provide a non-net metered
grid tied solar solution” (App. Br. 16). Appellant also contends that the
Examiner did not show that it would have been obvious to use a leasing
model with a grid connected solar device as required by claim 19 (id. at 17).
As explained by the Examiner, however, it would not have been necessary to
modify the arrangement in Bower to provide a non-net metered grid-tied
solar solution because the grid-connected, solar billboard of Bower does not
have a meter (Ans. 15, citing Bower, ¶ [0109]). Moreover, as also explained
by the Examiner, it would have been obvious to lease a grid-tied solar
streetlight in light of the availability of leasing options to consumers for
other items, such as automobiles (Ans. 17). Accordingly, we find no error in
the Examiner’s obviousness rejections of claims 12 and 19.
Appellant also contends that the combination of references cited by
the Examiner do not teach or suggest the arrangement and shape of the light
source and housing recited in dependent claims 4-6, 9, 10, and 14-18 (App.
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Br. 18-21). As explained by the Examiner, however, Kuelbs teaches the
limitations of these dependent claims by disclosing “a trapezoidal shaped
solar panel structure 13 integrated with a lamp housing” (Ans. 18, citing
Kuelbs, Fig. 1). Moreover, as further explained by the Examiner, one of
ordinary skill in the art would have been motivated to use the arrangement
and shape of the Kuelbs’s device in the lighting device of Kishimura “in
order to provide a more compact device which efficiently collects light from
all angles” (id. at 18). Accordingly, we find no error in the Examiner’s
obviousness rejection of claims 4-6, 9, 10, and 14-18. We also find no error
in the Examiner’s rejection of the remaining claims on appeal because
Appellant did not set forth any separate patentability arguments for them
(See App. Br. 15-22).1

DECISION

1 Because we affirm the rejection of the claims as obvious as
explained in light of the combinations of references discussed supra, we find
it unnecessary to reach a decision about the cumulative rejection of the
claims set forth by the Examiner under the alternate combinations including
Mattiuzzo or Evans. See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the
rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim . . . .”).
Nonetheless, we remind the Examiner that “[t]he PTO Rules of Practice
require the examiner to cite only what he considers the ‘best references.’”
E.I. duPont de Nemours & Co. v. Berkley & Co., 620 F.2d 1247, 1266-67
(8th Cir. 1980). “The examiner is not called upon to cite all references that
may be available, but only the ‘best.’” MPEP § 904.03 ((quoting 37 C.F.R.
§ 1.104(c)). See also MPEP § 706.02 (“Prior art rejections should ordinarily
be confined strictly to the best available art.”) “Multiplying references, any
one of which is as good as, but no better than, the others, adds to the burden
and cost of prosecution and should therefore be avoided.” Id. at § 904.03.

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Application 11/903,126

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We affirm the Examiner’s decision rejecting claims 1-19 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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