Ex Parte JacksenDownload PDFPatent Trials and Appeals BoardMay 13, 201914038596 - (D) (P.T.A.B. May. 13, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/038,596 09/26/2013 30076 7590 05/15/2019 STEPTOE & JOHNSON LLP 1330 CONNECTICUT A VENUE NW WASHINGTON, DC 20036 FIRST NAMED INVENTOR Mark Jacksen 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. 83646.0007 Cl 2914 EXAMINER TUMEBO, TSION M ART UNIT PAPER NUMBER 2875 NOTIFICATION DATE DELIVERY MODE 05/15/2019 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): IPDocketing@s teptoe. com dpeterson@steptoe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK JACKSEN 1 Appeal2018-005897 Application 14/038,596 Technology Center 2800 Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-3, 5, 6, 10, 12, 14--17, 26, 27, and 29-31. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. BACKGROUND The subject matter on appeal relates to optical light-masking projector assemblies and associated methods. E.g., Spec. ,r 4; Claims 1, 12. Claim 1 is reproduced below from page 17 (Claims Appendix) of the Appeal Brief: 1 The Appellant is the Applicant, Jacksen International, Ltd., which is also identified as the real party in interest. See App. Br. 3. Appeal2018-005897 Application 14/038,596 1. A light projector device, comprising: a light source for producing a light beam; a gate area having a light mask retainer; a light mask disposed forward of the light source, along the path of the light beam, and within the light mask retainer of the gate area, the light mask blocks a portion of the light beam; an objective focal lens sub assembly having an objective focal lens within a focal cone, the objective focal lens sub assembly disposed forward of the gate area along the path of the light beam, the objective focal lens sub assembly is moveable along the path of the light beam to field adjust the focus of unblocked light passing through the light mask; and a diffusion element disposed within or attached to the objective focal lens sub assembly to scatter light; wherein the portion of the light beam focused by the objective focal lens at an illumination zone on a surface where it can be seen to include a diffused illumination zone edge. REJECTIONS ON APPEAL The claims stand rejected under 35 U.S.C. § I03(a) as follows: 1. Claims 1, 2, 5, 10, 12, 14--17, 26, 27, and 29 as unpatentable over Dedoro (US 6,834,982 B2, issued Dec. 28, 2004) and Kretzschmar (US 7,517,088 Bl, issued Apr. 14, 2009); 2. Claims 3, 6, 30, and 31 as unpatentable over Dedoro, Kretzschmar, and Conti (US 4,623,956, issued Nov. 18, 1986). ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner's rejections. Accordingly, we affirm the rejections for reasons set forth below, in the 2 Appeal2018-005897 Application 14/038,596 Final Action, and in the Examiner's Answer. See generally Final Act. 2-15; Ans. 2-5. For Rejection 1, the Appellant presents separate arguments only for claims 1 and 12. We address those claims below. Claims 2, 5, 10, 26, 27, and 29 will stand or fall with claim 1. Claims 14--17 will stand or fall with claim 12. For Rejection 2 (claims 3, 6, 30, and 31), the Appellant relies on the same arguments presented for claim 1. Therefore, our ruling on claim 1 will control the outcome for the claims subject to Rejection 2. Claim 1. The Examiner's analysis of claim 1 appears at pages 2--4 of the Final Action. Of particular relevance to the issues raised by the Appellant, and with reference to Figures 1-5 of Dedoro, the Examiner finds (1) that Dedoro's optical element 4 constitutes an "objective focal lens" that makes up part of Dedoro's objective focal lens sub assembly, which is "moveable along the path of the light beam to field adjust the focus of unblocked light passing through the light mask," Final Act. 2-3, (2) that the "entry portion of the beam adjusting means 1 O" of Dedoro constitutes a "gate area," id. at 2, (3) that Dedoro's adjusting means 10 is "disposed forward of the gate area," id. at 3, and (4) that Dedoro's Fresnel lens 5 constitutes "a diffusion element disposed within or attached to the objective focal lens sub assembly to scatter light," id. The Examiner finds that "Dedoro fails to disclose or fairly suggest having [a] focal cone such that the objective focal lens is within the focal cone." Id. The Examiner finds that Kretzschmar discloses a similar apparatus in which an objective focal lens is "within a focal cone," as recited by claim 1. Id. In the Final Action, the Examiner determines that it would have been obvious to a person of ordinary skill in the art "to modify Dedoro 3 Appeal2018-005897 Application 14/038,596 by including placing the objective lens within a focal cone in order to keep the objective lens relative to the light source," and that a person of ordinary skill in the art would have been "motivated [to] include a housing such as a focal cone to place the objective lens." Id. at 4. In the Examiner's Answer, the Examiner elaborates and further explains that a focal cone "would help to improve the lighting device by providing protection and holding the lens in a desired position relative to the other components of the lighting device." Ans. 4. In view of those and other findings less material to the issues raised by the Appellant, the Examiner concludes that the subject matter of claim 1 would have been obvious to a person of ordinary skill in the art. See Final Act. 2--4. The Appellant raises several arguments against the Examiner's rejection, which we address in tum below. 1. The Appellant argues that "optical element 4 of Dedoro is not an objective focal lens as claimed." App. Br. 10. In the Answer, the Examiner responds that Dedoro teaches that optical element 4 may be "a planoconvex, parabolic or elliptical lens" that is movable to focus unblocked light, and that Dedoro's optical element 4 falls within the scope of claim 1. Ans. 3. Although the Appellant files a Reply Brief, the Appellant does not contest the Examiner's finding that a "planoconvex, parabolic or elliptical lens," such as that described by Dedoro, constitutes an "objective focal lens" as recited by claim 1. See generally Reply Br. Additionally, we observe that, in the Appeal Brief, although the Appellant states that "optical element 4 ofDedoro is not an objective focal lens as claimed," App. Br. 10, the 4 Appeal2018-005897 Application 14/038,596 Appellant provides no reasoning ( such as by pointing to a limiting definition in the Specification for "an objective focal lens" that would exclude Dedoro's optical element 4) to support that assertion. The Appellant's argument amounts to little more than a naked assertion that the relevant claim limitation is not taught by the prior art. Cf In re Lovin, 652 F .3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.3 7 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). On this record, we are not persuaded of reversible error in the Examiner's determination that Dedoro discloses a light projector device comprising "an objective focal lens" as recited by claim 1. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections .... "). 2. The Appellant argues that "Dedoro does not disclose a focal lens sub assembly forward of a gate area [along the path of the light beam] as claimed." App. Br. 10. That argument is not persuasive. The Appellant does not contest the Examiner's determination that the "entry portion of the beam adjusting means 1 O" of Dedoro constitutes a "gate area" as recited by claim 1. Final Act. 2. Nor does the Appellant persuasively contest the Examiner's finding that light mask retainer plate 30 and laminar shutters 32 (light mask) can be considered part of Dedoro' s "gate area." See id.; cf Spec. ,r 31 ("The Gate Area (21) is the lateral area starting at the last Condensing Lens ( 5) surface ... and end[ing] at the first potential position for a short focal length non-specific Objective Focal Lens (3) that is the Objective Focal Lens 5 Appeal2018-005897 Application 14/038,596 (3) surface closest to Light Mask (2)." ( emphasis added)). Other than Dedoro' s (a) light source 2 (lamp) and reflector 3, which are not part of the objective focal lens sub assembly or part of the gate area, and (b) retainer 30 and laminar shutters 32, which the Examiner identifies as part of the gate area, the remaining elements of Dedoro' s apparatus, including the components of beam adjusting means 10, are each disposed forward along the path of the light beam of what the Examiner as identifies as the "gate area." See, e.g., Dedoro Fig. 3. The Appellant does not persuasively argue or direct us to any scope-limiting definition demonstrating that the claim precludes the gate area from being connected to the objective focal lens sub assembly. Cf Spec. Fig. 9B ( depicting gate area 21 apparently connected to objective focal lens sub assembly 30 by element 37). Nor does the Appellant persuasively argue that the claim precludes the gate area from being moveable with the sub assembly. On this record, we are not persuaded of reversible error in the Examiner's determination that Dedoro's focal lens sub assembly is disposed forward of the gate area, as recited by claim 1. See Jung, 637 F.3d at 1365. 3. The Appellant argues that, because Dedoro's "optical element 4 and laminas 32 [light mask, as identified by the Examiner, see Final Act. 2] move together simultaneously," "Dedoro does not disclose an objective focal lens sub assembly that 'is moveable along the path of the light beam to adjust the focus of unblocked light passing through the light mask"' as recited by claim 1. App. Br. 11. That argument is not persuasive. The Appellant reproduces Figures 3 and 4 of Dedoro at page 9 of the Appeal Brief, annotating the figures to show movement of Dedoro's elements. See App. Br. 9. Claim 1 requires 6 Appeal2018-005897 Application 14/038,596 only that "the objective focal lens sub assembly is moveable along the path of the light beam to field adjust the focus of unblocked light passing through the light mask." It is unclear, based on the Appellant's argument and annotated figures, why the movement of Dedoro's assembly that includes lens 4, does not fall within the scope of that language. The Appellant's own annotated figures show that Dedoro's focal lens sub assembly moves along the path of the light beam. See App. Br. 9. The Appellant provides no reason to believe that moving the assembly (including lens 4 and light mask 32) relative to the light source would not have at least some effect on the focus (i.e., "adjust the focus") of unblocked light that passes through the light mask. The Appellant has not adequately explained why the fact that optical element 4 and laminas 32 may "move together simultaneously" allegedly causes Dedoro' s structure to fall beyond the scope of claim 1. See App. Br. 11. On this record, we are not persuaded of reversible error in the Examiner's finding that Dedoro' s apparatus falls within the scope of the disputed limitation. See Jung, 637 F.3d at 1365. 4. The Appellant argues that, because Dedoro's "Fresnel lens 5 must move independent of the adjustable assembly 10 and optical element 4," Dedoro's diffusion element (Fresnel lens 5) is not "disposed within or attached to the objective focal lens sub assembly," as recited by claim 1. App. Br. 11. We understand the Appellant's argument to be that, if Fresnel lens 5 was "attached to" adjustable assembly 10, then the two parts would move with each other rather than independently of each other. See id. That argument is not persuasive. The Appellant identifies no portion of the Specification that indicates the diffusion element and focal lens sub assembly cannot be considered to be "attached to" each other if they are able 7 Appeal2018-005897 Application 14/038,596 to move independently of each other. An annotated version of Dedoro' s Figure 3 is reproduced below. Figure 3, above, has been annotated to include the dashed-line rectangle towards the bottom of the figure. That rectangle encompasses an unlabeled base plate that, contrary to the Appellant's assertion, appears to attach Fresnel lens 5 to adjustable assembly 10. Additionally, with reference to Dedoro Figure 2, threaded bar 52 appears to attach Fresnel lens 5 to adjustable assembly 10. See Dedoro Fig. 2. In the Reply Brief, the Appellant simply maintains that, because lens 5 moves independently of adjustable assembly 10, the two components are not attached to each other. Reply Br. 3. Without elaboration, that argument amounts to little more than a naked assertion that the prior art does not teach the claim limitation. See Lovin, 652 F.3d at 1357. As set forth above, at least Figures 2 and 3 show that the two components are attached to each other. To the extent that the Appellant intended to argue that the "attached to" limitation of claim 1 requires direct attachment with no intervening components, and that, e.g., 8 Appeal2018-005897 Application 14/038,596 the structure depicted in Figures 2 and 3 falls beyond the scope of the claim because Fresnel lens 5 is not attached directly to adjustable assembly 10, the Appellant has not attempted to establish that "attached to" should be construed narrowly to exclude intervening components such as the unlabeled base plate ofDedoro Figure 3. 2 Cf Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1270 (Fed. Cir. 2010) (interpreting "coupled to" as "allow[ing] an indirect attachment."). Particularly in view of the claim construction standard that applies to this proceeding (broadest reasonable interpretation consistent with the specification, see In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)), the Appellant's argument does not persuade us of reversible error in the Examiner's determination that Dedoro' s diffusion element is attached to Dedoro' s objective focal lens sub assembly. Cf In re Zletz, 893 F.2d 319,321 (Fed. Cir. 1989) ("[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed."). 5. The Appellant argues that the Examiner has not adequately established a reason to combine Dedoro and Kretzschmar because "[t]he combination would without reason add an additional component [i.e., a focal 2 In that regard, we note that the Specification does not appear to use the term "attached to" in describing the relationship of the diffusion element and the objective focal lens sub assembly. In the Appeal Brief, the Appellant identifies only Figures 20, 21, 26, and 33 as depicting the relevant limitation, see App. Br. 3--4, and each of those figures appears to depict an embodiment in which the diffusion element is "within" the sub assembly rather than "attached to" the sub assembly. 9 Appeal2018-005897 Application 14/038,596 cone] to Dedoro without accomplishing anything above what Dedoro already provides." App. Br. 13. That argument is not persuasive. The Appellant does not dispute that a focal cone would provide a protective housing to Dedoro' s focal element 4, as the Examiner finds. See Ans. 4. The Appellant states only that "the Examiner provides no reference for this conclusory assertion." Reply Br. 3. However, consistent with the Examiner's finding, it appears from, e.g., Figure 3 of Dedoro, that a focal cone would provide at least some protection for optical element 4, and, as noted above, the Appellant does not actually dispute the Examiner's relevant finding. On this record, we are not persuaded that the Examiner's failure to cite a reference in support of the finding is indicative of error in the Examiner's determination that a person of ordinary skill in the art would have been motivated to add a focal cone to Dedoro's structure to provide protection for the optical element 4. 6. The Appellant argues that "Dedoro cannot be combined with Kretzschmar ... because Dedoro requires that the diffusing Fresnel lens 5 and the non-diffusing optical element 4 move independent[ly] of one another." App. Br. 12-13. That argument is not persuasive because the Appellant provides no evidence or reason to believe that the proposed combination would prevent Dedoro's lens 5 and optical element 4 from moving independently. In the Reply Brief, the Appellant quotes the Examiner's finding that modifying Dedoro with Kretzschmar's focal cone would "keep the objective lens relative to the light source," and the Appellant appears to argue that the proposed combination would prevent Dedoro' s optical element from moving to adjust the focus of light passing through the light mask. See Reply Br. 2 10 Appeal2018-005897 Application 14/038,596 ("Thus, the Dedoro's optical element (4) cannot be adjustable to focus onto unblocked light passing through the light mask."). That argument is not persuasive. We do not discern how the addition of a focal cone to Dedoro' s optical element 4 would cause optical element 4' s position relative to the light source ( or relative to Fresnel lens 5) to be maintained or fixed. On the contrary, it appears that, even with a focal cone, optical element 4 would continue to be moveable as depicted by the Appellant in the Appeal Brief. See App. Br. 9. The Appellant provides no persuasive reason to believe otherwise. On this record, the Appellant does not adequately explain why the Examiner's language in the Answer concerning "keep[ing] the objective lens relative to the light source" indicates reversible error in the Examiner's rejection. * * * In summary, we have carefully considered all of the Appellant's arguments concerning claim 1, and we are not persuaded of reversible error in the Examiner's rejection. Claim 12. Claim 12 is a method for "creating a light projector system" possessing elements similar to those of claim 1. Claim 12 recites, prior to the recitation of "positioning a diffusion element," that the "focused unblock[ ed] light at an illumination zone shown on a surface includes a binary illumination zone edge." That limitation appears to state that, if the produced light does not pass through a diffusion element, it has a "binary illumination zone edge," as opposed to the "diffused illumination zone edge" that the produced light yields after passing through the positioned diffusion element. The Appellant argues that Dedoro is "not capable of delivering a binary illumination zone edge" because Dedoro possesses a diffusion 11 Appeal2018-005897 Application 14/038,596 element and therefore allegedly "can only deliver a diffused illumination zone edge." App. Br. 14. That argument is not persuasive. Like Dedoro, the Appellant's apparatus has a diffusion element, and the Appellant's "method for creating a light projector system" requires "positioning a diffusion element." The Appellant's argument is based on the light produced before the diffusion element is positioned, notwithstanding the fact that the system itself ultimately requires a positioned diffusion element. Given that the apparatus of Dedoro as modified by Kretzschmar falls within the scope of claim 1, and likewise falls within the scope of the "system" ultimately produced by claim 12' s "method for creating a light projector system," it follows that, in "creating" Dedoro's light projector system, Dedoro would likewise produce a binary illumination zone edge when its light does not pass through a positioned diffusion element. The Appellant asserts that the "claimed structure in claim 12" is structurally different from Dedoro's and that "Dedoro is not capable of delivering a binary illumination zone edge option because its structure can only provide a diffused illumination zone edge," Reply Br. 3--4, but the Appellant provides no evidence or reason to believe that Dedoro' s apparatus would not produce the same light as the Appellant's apparatus before Dedoro' s Fresnel lens 5 ( diffusing element) is positioned. Dedoro explicitly discloses that the purpose of Fresnel lens 5 is "to diffuse the emitted light beam," and Figure 5 depicts a diffused illumination zone edge. Dedoro at 2:24. If the light were already diffused absent a diffusion element, then the diffusion element would not be necessary. Thus, it is reasonable to believe that, contrary to the Appellant's argument, Dedoro's structure is capable of 12 Appeal2018-005897 Application 14/038,596 delivering a binary illumination zone edge option prior to the positioning of Dedoro's Fresnel lens 5. Based on the arguments presented, we are not persuaded of reversible error in the Examiner's rejection. See Jung, 637 F.3d at 1365. CONCLUSION We AFFIRM the Examiner's rejections of claims 1-3, 5, 6, 10, 12, 14--17, 26, 27, and 29-31. 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 13 Copy with citationCopy as parenthetical citation