Ex parte KOZEK et al.

Board of Patent Appeals and Interferences

Sep 16, 1997

08097572 (B.P.A.I. Sep. 16, 1997)

Application for patent filed July 26, 1993. According to1
the appellants, the application is a continuation of Application
07/591,719, filed October 2, 1990, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 49
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDWARD P. KOZEK and ROBERT M. JOHNSTONE
____________
Appeal No. 95-4678
Application 08/097,5721
____________
ON BRIEF
____________
Before COHEN, LYDDANE, and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 through
9, 14 through 22 and 28 through 31. Claims 10 through 13 and 23
through 27, the only other claims pending in the application,
stand allowed.
Appeal No. 95-4678
Application 08/097,572
2
The subject matter on appeal relates to an illuminated exit
sign. Claim 1 is illustrative and reads as follows:
1. An exit sign assembly adapted for attachment to an
electrical junction box found in a wall or ceiling of a building,
comprising:
A. an exit sign housing defining an exit sign housing
enclosure therein and including means defining indicia thereon;
B. means on said exit sign housing adapting said exit
sign housing for attachment to the electrical junction box;
C. primary illumination means mounted within said exit
sign housing enclosure comprising:
i. at least one low voltage primary lamp mounted
within said exit sign housing enclosure to
fully illuminate said indicia defining means
in a uniform manner; and
ii. a primary electric power circuit
operationally connected to said at least one
low voltage primary lamp for supplying power
to said at least one low voltage primary
lamp; and
D. emergency illumination means mounted within said
exit sign housing enclosure and operationally connected to said
primary illumination means to detect failure thereof and
thereafter provide auxiliary illumination to said indicia
defining means comprising:
i. an emergency power pack housing
defining an emergency power pack
housing enclosure therein;
ii. at least one low voltage emergency
lamp mounted on said emergency
power pack housing;
Appeal No. 95-4678
Application 08/097,572
3
iii. an emergency electric power supply
located within said emergency power
pack housing enclosure and
operationally connected to said at
least one low voltage emergency
lamp for supplying power to said at
least one low voltage emergency
lamp; and
iv. an emergency electric power circuit
within said emergency power pack housing
enclosure for detecting failure of
said primary electric power circuit
and for switching to said emergency
electric power supply.
The references relied upon by the examiner as evidence of
obviousness are:
Shine 3,931,689 Jan. 13, 1976
Duncan, 686,796 Jan. 28, 1953
British Patent Document
Claims 1 through 9, 14 through 22 and 28 through 31 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Duncan
in view of Shine.
Reference is made to the appellants’ main and reply
briefs (Paper Nos. 41 and 45) and to the examiner’s main and
supplemental answers (Paper Nos. 43 and 46) for the respective
positions of the appellants and the examiner with regard to the
propriety of these rejections. To support their position that
Appeal No. 95-4678
Application 08/097,572
4
the subject matter on appeal would not have been obvious within
the meaning of 35 U.S.C. § 103, the appellants rely on the
37 CFR § 1.132 declarations and affidavits of record which are
listed on pages 17 and 18 in the main brief.
Claims 1 and 20, the two independent claims on appeal,
respectively recite an exit sign assembly and kit comprising,
inter alia, an exit sign housing defining an exit sign housing
enclosure, means on the exit sign housing adapting it for
attachment to an electrical junction box, and emergency
illumination means mounted (claim 1) or mountable (claim 20)
within the exit sign housing enclosure. The emergency
illumination means are required to comprise an emergency power
pack housing defining an emergency power pack housing enclosure,
at least one low voltage emergency lamp mounted on the emergency
power pack housing, an emergency electric power supply located
within the emergency power pack housing enclosure, and an
emergency electric power circuit within the emergency power pack
housing enclosure for detecting failure of the primary electric
power circuit and switching to the emergency electric power
supply. Claim 20 additionally calls for an access plate
Appeal No. 95-4678
Application 08/097,572
5
mountable on the exit sign housing when the emergency
illumination means is not mounted within the exit sign housing
enclosure.
Duncan discloses a “lighting unit embodying a secondary
lighting system which will function to maintain illumination in
the event of a break down [sic] in the main lighting system due
either to a failure in the supply current or to failure of the
lamp itself” (page 1, lines 12 through 17). As described by
Duncan,
[r]eferring first to Fig. 1, there is shown a
sign 1 of general box-like form and having a removable
front panel 2 which has the words [e.g. EXIT] or matter
to be displayed cut out or stencilled [sic] thereon.
An angle section strip 3 is fixed within the casing as
shown to provide a supporting surface 4 for the lamps,
said strip also defining a rear compartment 5 which
houses the relay and associated mechanism. A dry
battery 6 for operating the secondary lighting system
is shown supported on the platform 4 but it will be
understood that the battery also may be accommodated in
the rear compartment, if desired, or the several
components may be arranged in any other convenient
manner within the casing.
Referring now to Fig. 2, the primary lighting
system is shown as comprising a lamp 7 connected to an
A.C. “mains” supply 8 for operation at the mains
voltage and, in association therewith, there is
provided a low voltage secondary lighting system.
. . . The secondary system in this instance comprises
two lamps 13, although the number of these lamps may of
course vary according to requirements, and to feed
these lamps a suitably reduced voltage is taken from
the mains through a step-down transformer 14 or, if
desired, by a direct drop through a resistance or a
Appeal No. 95-4678
Application 08/097,572
6
capacitive or inductive reactor. An alternative source
of current is provided by the battery 6, selection of
the transformer or battery circuit being effected by a
two-way switch 15 actuated by the armature 16 of relay
10 [page 1, line 77 through page 2, line 27].
According to the examiner, the Duncan reference does not
meet the limitations in independent claims 1 and 20 noted above
because Duncan “does not disclose making the power pack housing
in the form of an enclosure or the use of attachment means to
secure the sign to a support structure” (main answer, page 4).
Shine discloses an illuminated exit sign assembly comprising
a main housing 20, a self-contained auxiliary power supply 22
removably mountable to the top of the housing, and means on the
housing for attaching it to an electrical junction box (see
column 4, line 64 through column 5, line 24).
In explaining the appealed rejection, the examiner states
that
[i]n view of the teachings of Shine it would have been
obvious to one in the art to modify [Duncan] by placing
an attachment means on the exit sign since this would
allow the sign to be attached to a support structure.
In view of the teachings of Shine it would have been
obvious to one in the art to modify [Duncan] by making
the power pack housing in the form of an enclosure
since this would allow the power pack housing to be
easily attached and removed from the sign housing to
allow easy access to the components inside the power
pack housing [main answer, page 4].
Appeal No. 95-4678
Application 08/097,572
7
The appellants do not dispute the examiner’s conclusion that
Shine would have suggested providing the Duncan sign with
attachment means of the sort recited in independent claims 1 and
20. Indeed, the combined teachings of Duncan and Shine provide
ample justification for this conclusion.
The appellants do contend, however, that “the [Duncan]-Shine
combination clearly does not teach what is set out in the
appellants’ claims regarding the emergency battery pack housing
defining an enclosure, which houses the electrical components
including the battery pack, all within the enclosure of the exit
sign housing” (main brief, page 10). In this vein, it is argued
that
[i]n attempting to substitute one emergency
lighting system for another as is being done in the
subject rejection, it is improper to ignore the logical
teachings (i.e., mounting a power supply container 35
on the exterior of the exit sign and using a removable
cover 36 to permit access to the components (37, 38) in
the container 35) found in the applied secondary
reference to Shine or to force the Shine teachings into
the primary reference. Such improper modifications can
only be made with use of impermissible hindsight in
view of appellants’ own invention [main brief, pages 11
and 12].
This impermissible hindsight argument is well taken. There
is nothing in the combined teachings of Duncan and Shine which
would have suggested mounting a self-contained emergency power
supply or module of the sort disclosed by Shine within the sign
Appeal No. 95-4678
Application 08/097,572
8
housing disclosed by Duncan as proposed by the examiner. At
best, Shine would have suggested replacing Duncan’s emergency
lighting system, which is enclosed within the sign housing,
with a self-contained emergency power supply or module mounted
on the exterior of the housing.
Be this as it may, the combined teachings of Duncan and
Shine nonetheless establish a prima facie case of obviousness
with respect to the subject matter recited in claim 1, and in
claim 9 which depends from claim 1. In this regard, Duncan’s
secondary or emergency lighting system meets all of the
limitations in claim 1 relating to the emergency illumination
means. More specifically, Duncan’s emergency system is mounted
within its exit sign housing enclosure and is operationally
connected to the primary illumination system to detect failure
thereof and thereafter provide auxiliary illumination. Duncan’s
angle section strip 3 (see Figure 1), lamps 13, battery 6 and
secondary lighting system power circuit (see Figure 2)
respectively constitute an emergency power pack housing defining
an emergency power pack housing enclosure, at least one low
voltage emergency lamp mounted on the emergency power pack
housing, an emergency electric power supply located within the
emergency power pack housing enclosure and an emergency electric
Appeal No. 95-4678
Application 08/097,572
9
power circuit within the emergency powerpack housing enclosure
for detecting failure of the primary electric power circuit and
switching to the emergency electric power supply as recited in
claim 1. As noted above, the appellants do not dispute the
examiner’s conclusion that Shine would have suggested providing
the Duncan sign with attachment means of the sort recited in
claim 1. The assembly resulting from this modification meets all
of the limitations recited in claim 1. Moreover, since Duncan
discloses that section strip 3 is fixed within its sign housing,
these two elements are inherently “dimensionally sized so as to
prevent relative movement therebetween” as recited in dependent
claim 9.
The 37 CFR § 1.132 declarations and affidavits relied upon
by the appellants as evidence of non-obviousness are not
persuasive with respect to claims 1 and 9. This evidence
purportedly establishes that the appellants’ invention solves a
long felt need in the art and has gained significant commercial
success and industry recognition due to its removable emergency
power pack module (see pages 16 through 27 in the main brief).
Neither claim 1 nor claim 9, however, requires a removable
emergency power pack module of the sort discussed in the
declarations and affidavits. In other words, the appellants’
Appeal No. 95-4678
Application 08/097,572
The reference to “said . . . incandescent lamps” in 2
claim 16 lacks a proper antecedent basis. This informality is
deserving of correction in the event of further prosecution
before the examiner.
10
evidence of non-obviousness is not commensurate in scope with the
subject matter actually recited in claims 1 and 9. Thus, such
evidence fails to outweigh the examiner’s reference evidence of
obviousness with respect to these claims.
Accordingly, we shall sustain the standing 35 U.S.C. § 103
rejection of claims 1 and 9 as being unpatentable over Duncan in
view of Shine.
We shall also sustain the standing 35 U.S.C. § 103 rejection
of dependent claims 3 through 6, 16 and 17 as being unpatentable2
over Duncan in view of Shine since the appellants have not
challenged such with any reasonable specificity, thereby allowing
these claims to fall with independent claim 1 (see In re Nielson,
816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987)).
We shall not sustain the standing 35 U.S.C. § 103 rejection
of independent claim 20 or of dependent claims 2, 7, 8, 14, 15,
18, 19, 21, 22 and 28 through 31 as being unpatentable over
Duncan in view of Shine. Each of these claims contains
limitations (e.g., the access plate recitation in claim 20)
Appeal No. 95-4678
Application 08/097,572
11
which are not met by Duncan, and which arguably would be met or
suggested only if Duncan were modified in view of Shine in the
manner proposed by the examiner. As indicated above, however,
the only suggestion for combining these references in such a
manner stems from hindsight knowledge impermissibly derived from
the appellants’ own disclosure. Thus, the combined teachings of
Duncan and Shine fail to establish a prima facie case of
obviousness with respect to the subject matter recited in claims
2, 7, 8, 14, 15, 18 through 22 and 28 through 31.
In summary, the decision of the examiner to reject claims 1
through 9, 14 through 22 and 28 through 31 under 35 U.S.C. § 103
is affirmed with respect to claims 1, 3 through 6, 9, 16 and 17,
and reversed with respect to claims 2, 7, 8, 14, 15, 18 through
22 and 28 through 31. Since the basic thrust of our affirmance
of the rejection of claims 1, 3 through 6, 9, 16 and 17 differs
from that advanced by the examiner in support of this rejection,
we hereby designate the affirmance to be a new ground of
rejection pursuant to 37 CFR § 1.196(b) in order to provide the
appellants with a fair opportunity to react thereto (see In re
Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA
1976)).
Appeal No. 95-4678
Application 08/097,572
12
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals ad Interferences based
upon the same record must be filed within one month from the date
hereof 37 CFR § 1.197.
With respect to the new rejection under 37 CFR § 1.196(b),
should appellants elect the alternate option under that rule to
prosecute further before the Primary Examiner by way of amendment
or showing of facts, or both, not previously of record, a
shortened statutory period for making such response is hereby
set to expire two months from the date of this decision.
Appeal No. 95-4678
Application 08/097,572
13
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM E. LYDDANE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-4678
Application 08/097,572
14
K. BRADFORD ADOLPHSON
WARE, FRESSOLA, VAN DER SLUYS & ADOLPHSON
755 MAIN STREET
P.O. BOX 224
MONROE, CT 06468
JPM/jrg
APPEAL NO. 95-4678 - JUDGE McQUADE
APPLICATION NO. 08/097,572
APJ McQUADE
APJ COHEN
APJ LYDDANE
DECISION: AFFIRMED-IN-PART;
37 CFR § 1.196(b)

Typed By: Jenine Gillis
DRAFT TYPED: 29 Aug 97
Revision: 02 Sep 97
FINAL TYPED: