Ex Parte Knutson

Patent Trial and Appeal Board

Jul 26, 2017

13470944 (P.T.A.B. Jul. 26, 2017)

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.
13/470,944 05/14/2012 Lara Knutson KNU 1.002 8606
39863 7590
SONNABENDLAW
600 PROSPECT AVE
BROOKLYN, NY 11215
EXAMINER
HAN, JASON
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
j sonnabend @ sonnabendlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARA KNUTSON1
Appeal 2016-008000
Application 13/470,944
Technology Center 2800
Before TERRY J. OWENS, JEFFREY T. SMITH, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
1 Applicant-Appellant is the real party in interest. App. Br. 3.
Appeal 2016-008000
Application 13/470,944
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6.
Claim 1 illustrates the invention:
1. A display device, comprising:
a. a reflective substrate;
b. a first layer attached to the substrate comprising glass
beads; and
c. an LED light source for shining upon the first layer
and thereby creating a 3-D halo effect.
Appellant (App. Br. 6) requests review of the following rejections
from the Examiner’s Final Office Action mailed September 14, 2015:
I. Claims 1—20 are rejected under 35 U.S.C. § 35 U.S.C. 112, first
paragraph, as failing to comply with the enablement requirement.
II. Claims 1—20 rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention.
III. Claims 1 and 2 rejected under 35 U.S.C. § 103(a) as
unpatentable over Mori (US 5,962,121, issued October 5, 1999) and Helbing
(US 2010/0320486 Al, published December 23, 2010).
IV. Claims 3—10 rejected under 35 U.S.C. § 103(a) as unpatentable
over Mon, Helbing and IBR (Technical Data Sheet for material M1-SP20
dated June 15, 2011).
V. Claims 11—20 rejected under 35 U.S.C. § 103(a) as
unpatentable over IBR and Helbing.
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OPINION
We AFFIRM
REJECTION UNDER § 112, FIRST PARAGRAPH - Enablement
“The enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation.” AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234,
1244 (Fed. Cir. 2003). It is well settled that “the specification must teach
those of skill in the art ‘how to make and how to use the invention as
broadly as it is claimed.”’ In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir.
1993) (citing In re Vaeck, 947 F.2d488, 496 (Fed. Cir. 1991)).
Enablement is a question of law involving underlying factual
inquiries. See Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365
(Fed. Cir. 1997); see also In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner finds the Specification does not enable one of ordinary
skill in the art to create a 3-D halo effect recited in independent claims 1,11,
and 13 because the Specification, while stating that the display forms a 3-D
effect (typically a sphere effect) when illuminated by a light source, does not
explain what a 3-D halo effect is, or how to create it. Final Act. 6—7; Spec.
Figures 4—5,122.
In addressing this rejection, Appellant contends paragraph 8 of the
Declaration under 37 C.F.R. § 1.132 by Dr. Stephen Spiegelberg
(Declaration)2 supports enablement of the claimed invention by confirming
that the floating image of sphere 14 in Figure 4 of the Specification is the
2 The Declaration was filed on June 30, 2015 and entered into the record by
the Examiner in the Final Action of September 14, 2015. Final Act. 3.
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Application 13/470,944
claimed 3-D halo effect. App. Br. 11, 13—14. According to Appellant, the
Declaration and the Figure accompanying the Declaration refute the
Examiner’s determination of lack of enablement by providing an
understanding of the how and why the 3-D halo effect is created. Id. at 14.
We find these arguments unavailing and agree with the Examiner’s
determination that the Specification does not enable one skilled in the art to
make or use the invention. Final Act. 6—7; Ans. 3. We also agree with the
Examiner that Dr. Spielgelberg’s declaration is insufficient to overcome the
stated rejection because Declarant’s statements are not supported by
objective evidence. Ans. 2-A. Moreover, Appellant argues that the prior art
display device having the same structure does not enable a 3D halo effect.
App. Br. 21. Therefore, given that the prior art structure and the claimed
structure are the same, Appellant has not disclosed how one skilled in the art
is enabled to practice the invention without undue experimentation.
Accordingly, on this record, the Specification, as originally filed, does
not enable one skilled in the art to make or use the subject matter described
in claims 1—20.
REJECTION UNDER § 112, SECOND PARAGRAPH - Indefiniteness
The second paragraph of 35 U.S.C. § 112 requires the specification
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.”
35 U.S.C. § 112 12 (2011). “As the statutory language of ‘particularity]’
and ‘distinctness]’ indicates, claims are required to be cast in clear—as
opposed to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014). Exact precision is not required. The test for
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Application 13/470,944
determining the question of indefiniteness may be formulated as whether the
claims “set out and circumscribe a particular area with a reasonable degree
of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA
1971). With regard to the reasonableness standard, one must consider the
language in the context of the circumstances. Packard, 751 F.3d at 1313.
Language is an imprecise method of drawing boundaries delineating patent
rights, thus unreasonable precision cannot be demanded. Id. On the other
hand, the claims must notify the public of what they are excluded from
making and using. Id. For this reason, an applicant is required to use
language as precise as the subject matter reasonably permits. Id.
The Examiner finds the term “3-D halo effect” recited in independent
claims 1,11, and 13 indefinite because it lacks a clear meaning as to its
scope. Final Act. 8.
Appellant argues that the Specification describes only one 3-D effect,
namely, the creation of an image away from the substrate as shown in
Appellant’s Figures 4—5. App. Br. 17—20; Spec. Tflf 22, 24, 25.
We have considered Appellant’s argument and find it unavailing. As
noted by the Examiner, the Specification provides no guidance or definition
that describes the disputed term. Ans. 6—7. That is, the Specification does
not provide guidance as to what the disputed claim “3—D halo effect” means.
Further, Appellant does not explain with any reasonable specificity why the
portions of the Specification and Declaration relied upon by Appellant are
considered to reasonably circumscribe the scope of protection sought by the
disputed claim language. App. Br. 17—19; Spec. Figure 4—5, Iff 22, 24, 25;
Deck | 8. See Packard, 751 F.3d at 1313 (“Given the role of the applicant
in the process, it is a reasonable implementation of the examination
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Application 13/470,944
responsibility, as applied to § 112[, second paragraph], for the USPTO, upon
providing the applicant a well-grounded identification of clarity problems to
demand persuasive responses on pain of rejection.”). Therefore, one skilled
in the art would not be able to determine the metes and bounds of the subject
matter of independent claims 1—20.
Accordingly, on this record, claims 1—20 are indefinite for the reasons
given above.
For purposes of the prior art rejection, we interpret the term 3-D halo
effect as the visual effect obtained when an LED light is shined on the
laminated defined in the Specification.
REJECTIONS UNDER § 103(a)
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM for the reasons presented by the Examiner. We add
the following for emphasis.
Claims 1—10 (Rejections III and IV)
Appellant relies on the same arguments in addressing the rejection of
independent 1 and dependent claim 2 (Rejection III). App. Br. 20 (footnote
5). In addressing the rejection of claims 3—10 (Rejection IV), Appellant also
essentially relies on a line of argument similar to the one presented when
discussing claim 1. App. Br. 23—24.3 Accordingly, we select claim 1 as
3 We note that, in addition to relying on a line of argument similar to the one
presented in Rejection III, Appellant also presents arguments for claims 3—
10 that merely recite the limitations covered by each claim. App. Br. 23. “A
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representative of the subject matter before us on appeal. Claims 2—10 stand
or fall with claim 1.
The claimed invention is directed to a display device comprising a
reflective substrate, a first layer attached to the substrate comprising glass
beads, and an LED light source for shining upon the first layer to create a 3-
D halo effect.
The Examiner finds Mori discloses a display device that differs from
the claimed invention in that Mori does not disclose the use of an LED light
source. Final Act. 10; Mori Figures 1—7, Abstract, col. 4,11. 30—55. To
remedy this deficiency, the Examiner turns to Helbing as disclosing the use
of an LED light for shining light upon surfaces. Final Act. 10; Helbing
Figure 1. The Examiner determines it would have been obvious for one of
ordinary skill in the art to have modified Mori by substituting the light
source of Mori with the LED light source of Helbing because LEDs are
commonly known in the art to shine light over surfaces. Final Act. 10;
Helbing | 5.
Appellant argues the cited art does not teach the claimed 3-D halo
effect. App. Br. 21. According to Appellant, the visually distinct lighting
effect of Mori is described as a rainbow effect and not a 3-D halo effect.
App. Br. 22; Mori col. 2,1. 63—col. 2,1. 4. Thus, Appellant argues no
combination of Mori with Helbing or otherwise, can transform Mori’s
rainbow effect into the presently claimed visual halo effect. App. Br. 22.
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R 8
41.37(c)(l)(iv).
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We are unpersuaded by these arguments. Given that the combined
teachings of the cited art disclose a display device comprising the same
materials (reflective substrate having a layer of glass beads attached) and the
same LED lighting source, Appellant has not adequately explained why one
skilled in the art would not have expected the light reflected from the display
device of the combined teachings of the cited art to create a 3-D halo effect
as claimed. Appellant has not directed us to any evidence in support of the
assertion that the display device from the combined teachings of the cited art
would not create a 3-D halo effect.
Accordingly we affirm the Examiner’s prior art rejection of claims 1—
10 under 35 U.S.C. § 103 (a) for the reasons presented by the Examiner and
given above.
Claims 11—20
Claims 11—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over IBR and Helbing. Final Act. 12—14.
In addressing this rejection, Appellant relies on the arguments
presented when discussing claim 1 without disputing that IBR lacks any of
the teachings of Mori. App. Br. 24—25.4
Accordingly we affirm the Examiner’s prior art rejection of claims
11—20 under 35 U.S.C. § 103 (a) for the reasons presented by the Examiner
and given above.
4 Appellant’s arguments for claims 11—20 also merely recite the limitations
covered by each claim. App. Br. 24—25. We again refer to 37 C.F.R 8
41.37(c)(l)(iv).
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Application 13/470,944
ORDER
The Examiner’s rejections of claims 1—20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirements is
affirmed.
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 112,
second paragraph is affirmed.
The Examiner’s prior art rejections of claims 1—20 under 35 U.S.C. §
103(a) are 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).
AFFIRMED
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