Ex Parte Krause

Board of Patent Appeals and Interferences

Jul 14, 2008

10355389 (B.P.A.I. Jul. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAMIAN KRAUSE
____________________

Appeal 2007-3061
Application 10/355,389
Technology Center 2600
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Decided: July 14, 2008
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, and 6. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF CASE
Appellant discloses an illumination device controlled by a passive
infrared motion detector, where the housing of the device appears as an
article of nature. (Spec. 1:3-7).
Claims 1, 3, and 6 are pending in the application. Independent claim
1 is the sole independent claim:
1. An apparatus comprising:

a translucent housing having the appearance of an article that is
an element of nature;

a base to which the housing is sealed and in which there is an
access panel;

a light source located within the housing powered by at least
one replaceable battery which acts as a power source and

a motion detector adapted to be coupled to the power source
and to the light source for switching power to the light source
when it detects motion.

The prior art relied upon by the Examiner in rejecting the claims on
appeal:
Samen US 4,978,948 Dec. 18, 1990
O’Connell US 6,409,359 B1 Jun. 25, 2002
Fung US 6,461,219 B1 Oct. 8, 2002
Fan US 6,554,443 B2 Apr. 29, 2003
(filed Aug. 10, 2001)
The Examiner rejected claims 1, 3, and 6 under 35 U.S.C. § 103(a) as
unpatentable over Fung, O’Connell, Fan, and Samen.
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Appellant argues that there is no suggestion in any of the references
which would motivate one skilled in the art to combine the references, that
the combination is based on impermissible hindsight reconstruction, that
aspects of the references teach away from their combination and that any
combination would fail to provide the benefits of Appellant’s lighting
apparatus. (App. Br. 4-6; Reply Br. 1-2). The Examiner finds that sufficient
and proper motivation has been provided to support the combination of the
cited references and that all of the elements of the claims are disclosed by
the cited references. (Ans. 4-6).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Brief have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Has Appellant shown that the Examiner erred in finding that Fung,
O’Connell, Fan, and Samen teach or suggest all of the disputed elements
recited in claims 1, 3, and 6?

FINDINGS OF FACT
1. Fung discloses an animated display, which includes a semi-
transparent covering that covers a base that includes a sensor. The sensor is
used to detect the approach of a person, can be based on motion, sound or
vibration, and provides an activation signal to the electric motors and
internal lights. (Col. 1, l. 60 – col. 2, l. 26; Fig. 1, elements 3, 5, 6, 7, and 9).
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2. O’Connell discloses a lighted rock that has an internal light source
within its rock shell. The structure has a base that allows for the shell to be
sealed thereto. (Col. 2, ll. 53-65; Fig. 2, elements 12, 16, and 20).
3. Fan discloses a pumpkin lighting fixture having a housing covering
a lighting mechanism, where the lighting mechanism is accommodated into
a rounded depression in a base having an access panel. (Figs. 2 and 3,
elements 10, 20, 21).
4. Samen discloses a combined earthquake sensor and night light
which can use rechargeable batteries as a main or standby power source.
(Col. 2, ll. 64-68).

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that
burden is met, then the burden shifts to the Appellant to overcome the prima
facie case with argument and/or evidence. In re Mayne, 104 F.3d 1339,
1342 (Fed. Cir. 1997).
“[A] patent for a combination which only unites old elements with no
change in their respective functions ... obviously withdraws what is already
known into the field of its monopoly and diminishes the resources available
to skillful men.” Great Atlantic & Pac. Tea Co. v. Supermarket Equipment
Corp., 340 U.S. 147, 152 (1950). “The question is not whether the
combination was obvious to the patentee but whether the combination was
obvious to a person with ordinary skill in the art. Under the correct analysis,
any need or problem known in the field of endeavor at the time of invention
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and addressed by the patent can provide a reason for combining the elements
in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1742 (2007).
“[I]nterpreting what is meant by a word in a claim ‘is not to be
confused with adding an extraneous limitation appearing in the specification,
which is improper.’” In re Cruciferous Sprout Litigation, 301 F.3d 1343,
1348 (Fed. Cir. 2002), (emphasis in original) (citing Intervet Am., Inc. v.
Kee-Vet Labs., Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989)). "Though
understanding the claim language may be aided by explanations contained in
the written description, it is important not to import into a claim limitations
that are not part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment." SuperGuide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).

ANALYSIS
Appellant makes many arguments regarding the benefits of the
claimed invention, (i.e., enhancing the appearance of the lighting article, to
provide discrete lighting, to provide gentle guiding light as needed along
paths, to provide a flexible system, etc.), (App. Br. 5-6; Reply Br. 1-3), but
none of the stated benefits is recited in the claims. While the Specification
may extol the virtues of Appellant’s invention, we must evaluate the claim
language alone to determine the propriety of the rejection. Given that
Appellant tacitly acknowledges that the cited references disclose all of the
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elements of claims 1, 3, and 6, (App. Br. 6; Reply Br. 2-3), (FF. 1-4),
Appellant must convince us that the combination is improper.
Appellant argues that the combination of the references in the
rejection is based on impermissible hindsight reconstruction, as there is no
suggestion in any of the references that would motivate the combination.
(App. Br. 4-5). However, a reason to combine the teachings of the cited
references need not come from the references themselves; in the instant case
the elements of the separate references are united without any change in
their respective functions. The Examiner has supplied rationales why one of
ordinary skill in the art would combine elements of the cited references,
(Ans. 3-4), and we find no error in the Examiner’s findings. While
Appellant suggests that unrelated elements have been picked out “to cobble
together the elements of appellant’s claim 1,” (App. Br. 5), we find that it
would have been obvious to one of ordinary skill in the art to have combined
the cited elements of the references to achieve the benefits recited in the
rejection of claims 1, 3, and 6.
Additionally, Appellant suggests that Fung teaches away from the
device recited in claim 1 because the animated displays are tethered
together. (App. Br. 4). However, alternate teachings do not constitute
“teaching away,” because they do not suggest to one of ordinary skill in the
art that the combination would not be desirable. Similarly, Appellant argues
that the opaque housing of O’Connell would negate the purpose of the
invention, and thus teach away from the combination, (Reply Br. 2), but
other cited references, namely Fung and Fan, (FF. 1 and 3), disclose
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translucent housings. As such, we find no deficit in the Examiner’s rejection
of claims 1, 3, and 6.

CONCLUSION OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 3, and 6, and we affirm the Examiner’s rejection of those
claims under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner 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)(1)(iv).

AFFIRMED

KIS

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