Ex Parte Lampe

Patent Trial and Appeal Board

Aug 26, 2014

12353759 (P.T.A.B. Aug. 26, 2014)

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
2249. 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 2249 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 2249
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