Ex Parte Kinzer et al

Patent Trial and Appeal Board

Sep 21, 2016

13229379 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/229,379 09/09/2011
23409 7590 09/23/2016
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
David J. Kinzer
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.
025630-9043-03 9460
EXAMINER
GYLLSTROM, BRYON T
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. KINZER and FRANK TORNY AI
Appeal2015-000311
Application 13/229,379
Technology Center 2800
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
LILAN REN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1-8,
10-15, and 17-20. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants state that the real party in interest is "Electronic Theatre
Controls, Inc." (Appeal Brief filed March 14, 2014, hereinafter "Appeal
Br.," 2).
2 Appeal Br. 1, 6-16; Final Office Action delivered electronically on
December 23, 2013, hereinafter "Final Act.," 1, 3-9.
Appeal 2015-000311
Application 13/229,379
BACKGROlH~D
The subject matter on appeal relates to a lighting fixture
(Specification, hereinafter "Spec.," i-fi-f l-3). Representative claims 1 and 17
are reproduced from pages 17 and 18 of the Appeal Brief (Claims Appendix;
italics and some indentations added), as follows:
1. A lighting fixture comprising:
a light source including an array of LEDs;
a collimating optic positioned to collimate light from at
least one of the LEDs; and
a light-mixing assembly positioned to receive light from
the collimating optic, the light-mixing assembly comprising a
reflective tube having a converging section and a diverging
section,
wherein the reflective tube includes an inlet end adjacent
the light source and the collimating optic and an outlet end
opposite the inlet end,
wherein the reflective tube further includes an interior
reflective surface that converges along the converging section
and the interior reflective surface diverges along the diverging
section;
wherein the converging section of the reflective tube is
closer to the inlet end than the diverging section,
wherein the reflective tube includes a waist between the
converging section and the diverging section, the waist being a
narrowest portion of the reflective tube, and
wherein the waist is closer to the inlet end of the
reflective tube than the outlet end of the reflective tube.
17. A lighting fixture comprising:
a light source including an array of LEDs;
a collimating optic positioned to collimate light from at
least one of the LEDs; and
a light-mixing assembly positioned to receive light from
the collimating optic, the light-mixing assembly comprising a
hollow reflective tube having a converging section and a
diverging section and a smooth interior reflective surface,
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Application 13/229,379
wherein the reJ1ective tube has a hexagonal cross-
sectional area that decreases along the converging section and
the cross-section area of the reflective tube increases along the
diverging section, and
wherein the converging section of the reflective tube is
between the light source and the diverging section.
THE REJECTIONS
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 2, 4--8, 3 and 10-15 as unpatentable over Cassarly et
al. (hereinafter "Cassarly")4 in view of Ansems et al.
(hereinafter "Ansems")5 and Shahidi et al. (hereinafter
"Shahidi"); 6
II. Claims 17-20 as unpatentable over Cassarly in view of Ansems
and Ciancotto et al. (hereinafter "Ciancotto"); 7 and
III. Claim 3 as unpatentable over Cassarly in view of Ansems,
Shahidi, and Marshall et al. (hereinafter "Marshall"). 8
3 The Examiner included claim 3 in the statement of rejection but did not
provide any analysis in support of an obviousness conclusion as to that claim
(Final Act. 3-6). Indeed, claim 3 was separately rejected in Rejection III,
listed below. Conversely, the Examiner did not include claim 5 in the
statement of rejection but did provide an analysis in support of an
obviousness conclusion for that claim (id. at 3, 5). Therefore, we determine
that the claims subject to this ground of rejection are: claims 1, 2, 4--8, and
10-15.
4 US 2007/0024971 Al, published February 1, 2007.
5 US 7 ,506,998 B2, issued March 24, 2009.
6 US 4,961,617, issued October 9, 1990.
7 US 7,443,591 Bl, issued October 28, 2008.
8 US 2003/0076034 Al, published April 24, 2003.
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Application 13/229,379
(Examiner's Answer delivered electronically on July 31, 2014, hereinafter
"Ans.," 3; Final Act. 3-9.)
DISCUSSION
Grouping of Claims
For Rejection I, the Appellants provide separate arguments for:
claims 1, 2, and 10-15 as a group; claim 10; claim 11; and claim 12 (Appeal
Br. 6-12). Therefore, we confine our discussion of Rejection I to: (A) claim
1; (B) claim 1 O; (C) claim 11; and (D) claim 12. By rule, all other claims
that are subject to Rejection I stand or fall with representative claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).
For Rejection II, the Appellants provide separate arguments for claims
17-19 as a group and claim 20 (Appeal Br. 12-16). Therefore, we confine
our discussion of Rejection II to: (A) claim 17, which we select as
representative of claims 17-19; and (B) claim 20.
For Rejection III, which is entered against claim 3, it appears that the
Appellants are relying on the same arguments offered against the rejection of
claims 1, 2, and 10-15 (id. at 6-10). Therefore, our ruling on claim 1
controls the outcome for claim 3.
Rejection I
A. Claim 1
The Examiner found that Cassarly describes every limitation of claim
1 except for "a collimating optic positioned to collimate light form at least
one of the LEDs" and "the waist is closer to the inlet end of the reflective
tube than the outlet end of the reflective tube" (Final Act. 3--4). To account
for the "collimating optic" limitations, the Examiner relied on Ansems (id.).
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Application 13/229,379
With respect to the claim requirement that "the waist is closer to the inlet
end of the reflective tube than outlet end," the Examiner relied on Shahidi
(id. at 4). In addition, the Examiner determined that altering the waist
position along the reflective tube to provide successful results would have
been within the level of a person having ordinary skill in the art (Ans. 7).
Specifically, in view of Cassarly' s teaching that different reflective tube
arrangements and configurations are possible, the Examiner determined that
"one of ordinary skill in the art would have been motivated ... to orient the
waist portions closer to one end of the reflective tube, in order to evaluate
the color mixing abilities of Cassarly in additional configurations" (id.).
The Appellants do not dispute the Examiner's reliance on Ansems for
the "collimating optic" limitations (Appeal Br. 6-10). Rather, the
Appellants contend that none of the applied prior art references teaches or
suggests a reflective waist having a waist that is positioned closer to the inlet
end of the reflective tube than the outlet end (id. at 6). Specifically, the
Appellants point out that Cassarly teaches a reflective tube in which the
waist is at the center and neither Ansems nor Shahidi cures the perceived
deficiencies in Cassarly relative to the claimed subject matter (id. at 7-10).
Furthermore, with respect to Shahidi, the Appellants argue that the
Examiner's analysis is fatally flawed because, inter alia, "[ t ]he Examiner
fail[ ed] to appreciate the fact that Shahidi merely teaches fiber optic
filaments ... that are gathered into a bundle (like a ponytail)" and "there can
be absolutely no mixing of light in this section" (id. at 9) (citing Shahidi Fig.
2).
We agree with the Appellants that the Examiner's reliance on Shahidi
is misplaced. The Examiner relied on Shahidi' s Figure 2 as teaching "a
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Application 13/229,379
waist or neck near an input side of a light transm1ttmg tube" (Final Act. 4).
Shahidi's Figure 2, however, depicts filaments 3 that are bunched together
by ferrule 8 for coupling to a small aperture light source or the end of a light
conducting fiber optic cable (col. 4, 11. 20-36). Because the Examiner failed
to explain why a person having ordinary skill in the art would have modified
Cassarly's reflective tube in view of Shahidi's bundled filaments, the
Examiner's articulated reason for combining Shahidi with Cassady and
Ansems is insufficient to support an obviousness conclusion as to claim 1.
Notwithstanding our agreement with the Appellants with respect to
Shahidi, we discern no reversible error in the Examiner alternative basis for
concluding that the subject matter of claim 1 would have been obvious to a
person having ordinary skill in the art. Claim 1 does not place any limitation
on how close the waist is positioned relative to the inlet end of the reflective
tube. Thus, when given its broadest reasonable interpretation consistent
with the Specification, claim 1 reads on a reflective tube with a waist that is
positioned only slightly off-center towards the inlet end. Such a reflective
tube with a waist that is only slightly off-center towards the inlet end would
be expected to provide results that are substantially the same as that
provided by the reflective tube having a waist that is positioned at the center,
as disclosed in Cassarly's Figure 20A (Cassady i-f 266) ("the mixer 260
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Application 13/229,379
, 1 , 1 , , 1 ,....., °''° Q f"'f I' T "I T -1 A. Al T""'I ,.... 1 -1 ,.... ,.... /""'\. -1 ,.... Al ,.... narrows towara me center mereorJ.J LJ. 1n re 1v.iayne, 1U4 1'.jQ ljj'J, lj4j
(Fed. Cir. 1997) (explaining, in the context of the unpredictable biochemical
arts, that structural similarity often provides the requisite motivation or
reason to modify old compounds to form new compounds).
Given Cassarly's disclosure that a wide variety of different
arrangements and configurations are possible (Cassady i1i1376, 378), we
conclude that a person having ordinary skill in the art would have arrived at
various successful tube arrangements and configurations, including
reflective tubes with a waist that is only slightly off-center relative to the
reflective tube shown in Cassarly's Figure 20A, as a matter of obvious
design choice. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) ("We also
agree that the particular placement of the contact provides no novel or
unexpected result. The manner in which electrical contact is made for
Smith's battery would be an obvious matter of design choice within the skill
of the art.").
For these reasons, we uphold the Examiner's rejection of claim 1.
9 Cassarly's Figure 20A is reproduced below:
Casserly's Figure 20A illustrates a rippled light mixer 260 having a circular
input and output faces 20 and 22, respectively, and a narrow region in
between (i1i13, 82, 266).
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Application 13/229,379
B. Claim 10
Claim 10 depends from claim 1 and recites that "a sidewall of the
reflective tube is longitudinally curved" (Appeal Br. 18).
The Examiner found that Cassarly's Figures 20A and 20C disclose the
additional limitation recited in claim 10 (Final Act. 6; Ans. 9--10). The
Appellants disagree with the Examiner's finding, arguing that "if one holds a
straight edge up to mixer 260 of Fig. 20A, one can readily see that the sides
of the mixer are three sections that are longitudinally straight (not curved)"
(Appeal Br. 10).
We find no merit in the Appellants' argument. Cassarly plainly
teaches that "at the midway location [of the mixer shown in Fig. 20C] are
curved side portions corresponding to portions of the narrowed circular
cross-section of the mixer shown in FIG. 20A" (i-f 268) (emphasis added).
Therefore, we also uphold the rejection of claim 10.
C. Claim 11
Claim 11 depends from claim 10 and recites that "a shape of the
sidewall of the reflective tube comprises an asphere" (Appeal Br. 18).
The Examiner found that Cassarly's Figures 14A and 14B, which
show the cross-sectional views of a shape of the sidewall, describe the
further limitations recited in claim 11 (Final Act. 6). The Appellants
contend "that nothing in Figs. 14A and 14B of Cassarly discloses an
aspheric shape to the longitudinal shape of the sidewall" (Appeal Br. 11)
(emphasis added).
The problem with the Appellants' argument, however, is that claim 11
does not include any limitation requiring the "shape" to be a longitudinal
shape of the sidewall but rather reads on any shape, including the shape as
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Appeal 2015-000311
Application 13/229,379
seen from a cross-sectional view. In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998) (unclaimed features cannot impart patentability to claims).
Therefore, we also uphold the rejection of claim 11.
D. Claim 12
Claim 12 depends from claim 10 and recites that "a shape of the
sidewall of the reflective tube comprises a parabola" (Appeal Br. 18).
The Examiner found that Cassarly's Figure 20A describes the further
limitation recited in claim 12 (Final Act. 6). The Appellants repeat their
argument that Cassarly's Figure 20A shows a sidewall defined by three
straight lines rather than a parabola (Appeal Br. 11-12).
For the same reason given in our discussion of claim 1, we disagree
with the Appellants (see Cassarly's i-f 268).
Rejection II
A. Claim 17
Claim 17 is reproduced above and recites that "the reflective tube has
a hexagonal cross-sectional area" (Appeal Br. 18).
The Examiner found that "Cassarly further fails to explicitly teach a
hexagonal cross section for the reflective tube" but determined that a person
having ordinary skill in the art would have provided a tube with a hexagonal
cross-section in view of Ciancotto (Final Act. 8).
The Appellants acknowledge that Cassarly discloses hexagonal cross-
sections were known but argue that "Cassarly does not disclose that the
mixer 260 can be hollow, have a hexagonal cross-sectional area, or a smooth
interior reflective surface as recited in claim 17" (Appeal Br. 13).
According to the Appellants, "Cassarly teaches away from such an
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Application 13/229,379
embodiment because Cassarly touts the advantages of ridges and valleys 24
and 25, the solid conduit configuration, and the circular cross-section" (id.).
We do not find the Appellants' arguments persuasive. Cassarly
plainly teaches that mixers can have a wide variety of shapes including a
hexagon (i-fi-f 150, 156, 160). Although Cassarly discloses certain advantages
for solid mixers (i-fi-f 157-158) and for ridges and valleys in the mixer
surfaces (i-f 153), it does not negate Cassarly's teachings that hollow mixers
and smooth surfaces are also contemplated (i-fi-f 153, 156). In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) ("A known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.").
B. Claim 20
Claim 20 depends from claim 19, which depends from claim 17 and
requires "a waist between the converging section and the diverging section"
(Appeal Br. 19). Claim 20 recites that "a shape of the sidewall of the
reflective tube comprises a parabola" (id.).
The Appellants advance the same argument offered in support of
claim 12-i.e., that "the sides of mixer include[] three sections that are
longitudinally straight (not parabolic)" (Appeal Br. 16). We find the
argument unpersuasive for the same reason given above (see Cassarly
i1268).
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SUMMARY
Rejections I-III are affirmed. Therefore, the Examiner's decision to
reject claims 1-8, 10-15, and 17-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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