Ex Parte LampeDownload PDFPatent Trial and Appeal BoardAug 26, 201412353759 (P.T.A.B. Aug. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JEFFREY L. LAMPE ____________________ Appeal 2012-006652 Application 12/353,759 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and JAMES J. MAYBERRY, Administrative Patent Judges. MAYBERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 2249. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to a camouflage object for day and night use. Claim 22, reproduced below, is illustrative of the claimed subject matter: 22. A camouflaged object having a surface, comprising: a first non-symmetrical portion of the surface having a first color with unexceptional reflectivity; Appeal 2012-006652 Application 12/353,759 2 a second non-symmetrical portion of the surface having a second color with unexceptional reflectivity, the second color being different from the first color; and a third non-symmetrical portion of the surface having a reflective ink of a third color, the third color being different from the first and second colors; wherein the first, second, and third portions collectively provide an obscuring effect in lighted environments; and wherein the third portion conspicuously reflects light in dark environments. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rowland Knickerbocker US 3,684,348 US 5,043,202 Aug. 15, 1972 Aug. 27, 1991 Grilliot US 2004/0143883 A1 July 29, 2004 REJECTION Claims 2249 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Knickerbocker in view of Grilliot (and evidenced by Rowland for the definition of “retroreflective”). Ans. 4. ANALYSIS Obviousness Rejection over Knickerbocker in view of Grilliot Independent Claims 22 and 42 Independent claims 22 and 42 each require a camouflage article that includes a “reflective ink.” Br. 17, 20, Claims App. Appellant initially argues that he acted as his own lexicographer to expressly define the term “reflective ink” to mean “retroreflective ink.” Br. 6–7. The Examiner responds that Appellant fails to clearly set forth in the Specification that the Appeal 2012-006652 Application 12/353,759 3 term “reflective ink” is redefined as “retroreflective ink.” Ans. 10. We agree with the Examiner. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002)). Appellant’s argument rests on one statement in the Specification. See Br. 7. The Specification states that “one or more of the lighter colors (all or a part thereof of the portion or element of that particular color in the camouflage pattern), may be of a reflective material, for example, reflective ink (also known as retro-reflective or retroreflective ink).” Spec., para. 20. We agree with the Examiner that this statement alone does not clearly set forth the definition of the term “reflective ink” to mean “retroreflective ink.” See Ans. 10–11. As the Examiner correctly finds, retroreflectivity is a narrower aspect of reflectivity, where most incident light reflects back to the source of that light. See Ans. 7–8; Rowland, col. 1, ll. 19-22 (defining “retroreflective materials” as “materials capable of reflecting the bulk of the light rays impinging thereon in a substantially parallel path back toward the source of the light”). In contrast, Appellant’s Specification states that “reflective ink is reflective to light (e.g., visible light, such as that from lamps, lights, vehicle headlights, flashlights, floodlights and search lights) that contacts it, at night or during other dark and partially dark or low light periods.” Spec., para. 20. We find that this statement suggests to one of ordinary skill in the art a broader understanding of the term “reflective ink” than ink having the narrower characteristic of retroreflectivity. Still further, during prosecution of claim 37, Appellant amended that claim to replace the term “reflective ink” with the term Appeal 2012-006652 Application 12/353,759 4 “retroreflective ink.” See Amendment at 4–5, 10 (filed Dec. 14, 2010). This amendment indicates that Appellant believed at that time that the two terms have different meanings. Indeed, in the same amendment, Appellant argued that the term “reflective ink” refers to ink that is “reflective to light.” Id. at 10. Accordingly, we adopt the Examiner’s construction for the term “reflective ink” – ink that returns light from a surface that contains the ink. See Ans. 10. Appellant next attempts to distinguish the subject matter of independent claims 22 and 42 from Grilliot by arguing: After all, unlike Grilliot [], claims 22 and 42 of the current application do not recite a reversible garment that has a shell for enhancing visibility on one side and a shell for decreasing visibility on the other, only one of which shells can be used at one time; rather, claims 22 and 42 respectively recite a camouflaged object and a method of making a camouflage article having a pattern that can both provide an obscuring effect in lighted environments, and enhance visibility by reflecting light in darker environments. Br. 11. We find this argument unpersuasive. “Nonobviousness cannot be established by attacking the references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097, (Fed. Cir. 1986) (citation omitted). In this case, the Examiner uses Grilliot for the narrow teaching that reflective material can include highly reflective material. See Ans. 7, 13–14. As the Examiner correctly contends, “[t]he fact that the Grilliot reference is reversible with the camouflage on one side an[d] the trim on the other has no effect whatsoever.” Id. at 14. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant Appeal 2012-006652 Application 12/353,759 5 for all they contain.” In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir. 1983) (citation omitted). In the present appeal, the Examiner “relie[s] upon [Grilliot] for the teaching of using retroreflective inks to affect the visibility of the garment in various lighting conditions.” Ans. 14. Next, Appellant argues that Grilliot teaches away from the subject matter of claims 22 and 42. Br. 11–12. We disagree. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, … would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). We find nothing in Grilliot that would discourage or otherwise divert one of ordinary skill in the art from using reflective material that conspicuously reflects light together with material with unexceptional reflectivity. Appellant further argues that one of ordinary skill in the art would have no reason to combine the teaching of Grilliot with that of Knickerbocker “because the purpose of Grilliot’s [] high visibility reflective shell is to enhance visibility whereas, the purpose of Knickerbocker’s [] patterns is to decrease visibility.” Br. 12. We find this argument unpersuasive. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)) (quoting in re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, we find that the Examiner has articulated a reason to combine Grilliot with Knickerbocker and this reasoning is supported by a rational underpinning. See, e.g., Final Act. 6 (mailed Mar. 1, 2011) (“[Knickerbocker and Grilliot] Appeal 2012-006652 Application 12/353,759 6 are clearly in the same field, patterned garments using various reflectance for various desired end use. Grilliot teaching it obvious to use various reflectance for day and night use as claimed.”). Furthermore, we note that the reason to modify a reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Appellants. See, e.g., In re Kahn, 441 F.3d at 987. Finally, Appellant argues that modifying Knickerbocker with Grilliot would render Knickerbocker inoperable and “would change [Knickerbocker’s] principle of operation.” Br. 14. Appellant states that “the goal of Knickerbocker [] is to divide patterns having a particular reflectivity with spaces having a different reflectivity such that at varying distances, these spaces and patterns become indistinguishable.” Id. Appellant then argues that: If reflective ink was incorporated in the spaces between the patterns of Knickerbocker [], it would defeat the whole purpose of Knickerbocker [] and render Knickerbocker [] inoperable, as it would then be even easier to distinguish these hyper reflective spaces from the patterns comprising regular ink, and the camouflaged item would be unacceptably conspicuous at least in low-light environments. Id. at 15. We find this argument unavailing. As the Examiner correctly finds, Knickerbocker discloses using reflective material with varying levels of light reflectivity and the spaces between the background patterns have greater reflectance than the reflectance of the background patterns. See Ans. 5; see also Knickerbocker, Abstract (“Spaces between the background patterns have a second reflectance level, greater than the first reflectance level.”). This express teaching of Knickerbocker conflicts with Appellant’s Appeal 2012-006652 Application 12/353,759 7 argument. Appellant offers no evidence, other than attorney argument, to support his contention. “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation omitted). Appellant further argues that combining the teaching of Grilliot with Knickerbocker “would also change the principle of operation of Knickerbocker [], which is directed entirely to decreasing conspicuousness.” Br. 15. We disagree. We find that Knickerbocker’s principle of operation is to employ colors of different reflectivity to develop camouflage patterns and the space between the patterns. See, e.g. Knickerbocker, Abstract. Combining the teaching of Grilliot with Knickerbocker is consistent with that principle. Again, Appellant offers no evidence to the contrary. Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection of independent claims 22 and 42 under 35 U.S.C. § 103(a) as unpatentable over Knickerbocker in view of Grilliot. Appellant does not separately argue the patentability of dependent claims 23–36 and 48, which depend from independent claim 22, and dependent claims 43–47, which depend from independent claim 42. Br. 4– 15. Accordingly, Appellant argues claims 22–36 and 42–48 as a group for purposes of the rejection of those claims under § 103(a) and claims 23–36 and 43–48 stand or fall with claims 22 and 42. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). For the same reasons we sustain the rejection of claims 22 and 42, we likewise sustain the rejection of claims 23–36 and 43– 48 under 35 U.S.C. § 103(a) as unpatentable over Knickerbocker in view of Grilliot. Appeal 2012-006652 Application 12/353,759 8 Obviousness Rejection over Knickerbocker in view of Grilliot Independent Claim 37 With respect to independent claim 37, Appellant argues that, in contrast to Grilliot, “the appellant’s invention does not use different shells or patterns for day and night use.” Br. 9. Appellant also argues that “[t]here is no discussion in Grilliot [] of combining a camouflage pattern with highly reflective material.” Id. These arguments ignore how the Examiner uses the specific teaching of Grilliot and, instead, improperly attack one reference in a combination individually. See In re Merck & Co., 800 F.2d at 1097 (“Nonobviousness cannot be established by attacking the references individually where the rejection is based upon the teachings of a combination of references.”) (citation omitted). As the Examiner makes clear, he relies on Grilliot for the narrow teaching of a garment with a portion of highly reflectivity and a portion with unexceptional reflectivity. See Ans. 7. The Examiner relies on Knickerbocker for teaching a camouflage pattern that employs inks with different degrees of reflectivity in the same pattern. Id. at 5. Appellant further argues that Grilliot teaches away from the subject matter of independent claim 37 “by keeping the camouflage pattern in one shell (side) of the garment, and making the garment reversible so that highly reflective material could be incorporated into the other shell–clearly adhering to the prior art practice of not incorporating highly reflective materials into camouflage patterns.” Br. 9. We find this argument unpersuasive. Grilliot does not “criticize, discredit, or otherwise discourage” combining highly reflective materials into camouflage patterns – Grilliot merely discloses that its preferred embodiment includes a reversible garment with highly reflective material on one side and a Appeal 2012-006652 Application 12/353,759 9 camouflage pattern on the other side. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed.”). Appellant also argues that “there is absolutely no reason to combine the high visibility reflective shell of Grilliot [] with the camouflage patterns of Knickerbocker [] because the purpose of Grilliot’s [] high visibility reflective shell is to enhance visibility whereas the purpose of Knickerbocker’s [] patterns is to decrease visibility.” Br. 10 (citation omitted). We find this argument unpersuasive. As discussed above in connection with the rejection of independent claims 22 and 42, we find that the Examiner has articulated a reason to combine Grilliot with Knickerbocker and this reasoning is supported by a rational underpinning. See, e.g., Final Act. 6 (Mar. 1, 2011) (“[Knickerbocker and Grilliot] are clearly in the same field, patterned garments using various reflectance for various desired end use. Grilliot teaching it obvious to use various reflectance for day and night use as claimed.”). Finally, with respect to claim 37, Appellant repeats the arguments that modifying Knickerbocker with Grilliot would render Knickerbocker inoperable and would change Knickerbocker’s principle of operation. Br. 12–14. As discussed above in connection with the analysis of independent claims 22 and 42, we find these arguments unavailing. Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection of independent claim 37 under 35 U.S.C. § 103(a) as unpatentable over Knickerbocker in view of Grilliot. Appellant does not separately argue the patentability of dependent claims 38–41 and 49, which depend from independent claim 37. Br. 4–15. Accordingly, Appellant argues claims 38–41 and 49 as a group for purposes Appeal 2012-006652 Application 12/353,759 10 of the rejection of those claims under § 103(a) and claims 38–41 and 49 stand or fall with claim 37. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). For the same reasons we sustain the rejection of claim 37, we likewise sustain the rejection of claims 38–41 and 49 under 35 U.S.C. § 103(a) as unpatentable over Knickerbocker in view of Grilliot. DECISION For the above reasons, the Examiner’s rejection of claims 2249 under 35 U.S.C. § 103(a) as being unpatentable over Knickerbocker in view of Grilliot (and evidenced by Rowland for the definition of “retroreflective”) 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) (2009). AFFIRMED llw Copy with citationCopy as parenthetical citation