Ex Parte HodulikDownload PDFBoard of Patent Appeals and InterferencesJul 10, 201211903126 (B.P.A.I. Jul. 10, 2012) Copy Citation 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 Appeal 2010-004366 Application 11/903,126 2 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. Appeal 2010-004366 Application 11/903,126 3 § 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 Appeal 2010-004366 Application 11/903,126 4 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 Appeal 2010-004366 Application 11/903,126 5 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. Appeal 2010-004366 Application 11/903,126 6 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. Appeal 2010-004366 Application 11/903,126 7 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 peb Copy with citationCopy as parenthetical citation