Ex Parte Lipson

Patent Trial and Appeal Board

Apr 16, 2013

11432184 (P.T.A.B. Apr. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RONALD LIPSON
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Appeal 2011-001577
Application 11/432,184
Technology Center 2800
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Before JEAN R. HOMERE, THU A. DANG, and ANDREW J. DILLON,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on April 9, 2013.
We affirm.

A. INVENTION
Appellant’s invention relates generally to ultraviolet-light curing and ,
in particular, to separating the source of ultraviolet radiation and the
controller, allowing an operator to stand at a relatively great distance away
from the ultraviolet radiation when applied (Spec. 1, ll. 6-9).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. An ultraviolet curing system, comprising:

a mobile base unit on wheels enabling the system to be
moved from one location to another;

a source of intense ultraviolet (UV) radiation suitable for
curing paint, an overcoat or other poIymeric material, the
source of UV radiation being coupled to the base unit by way of
a pivoting al-m; and

a controller disposed remotely from the base unit
allowing an operator to activate the source of UV radiation at a
distance of at least several feet away from the source.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gaven US 6,207,118 B1 Mar. 27, 2001
Dowling US 2002/0074559 A1 June 20, 2002
Hartman US 6,447,537 B1 Sept. 10, 2002
Polichar US 6,907,109 B2 June 14, 2005
Smith US 2007/0247800 A1 Oct. 25, 2007

Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gaven and Hartman.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gaven, Hartman, and Polichar.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gaven, Hartman, and Smith.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gaven, Hartman, and Dowling.

II. ISSUE
The main issue before us is whether the Examiner has erred in
determining that the combination of Gaven and Hartman teaches or would
have suggested “a controller disposed remotely from the base unit” (claim
1). In particular, the issue is whether the claimed invention would have been
obvious over Gaven’s teaching of a mobile base unit, in view of Hartman’s
teaching of remotely controlling a unit.

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant’s Invention
1. Appellant’s Figure 2 is reproduced below:

Figure 2 shows a base unit 204 and a remote controller 240 connected
to the base unit through a cable 250 (Spec. 2, l. 25 to 3, l. 10).
Gaven
2. Gaven discloses a carriage unit 110 that includes wheels 114
and handle 112 and further includes a power source and controls which may
be used to operate the mobile ultraviolet radiation curing device 110 (col. 4,
ll. 1-19; Fig. 2).

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Hartman

3. Hartman discloses an ultraviolet phototherapy apparatus.
Wherein Hartman’s Figure 9 is reproduced below:

Figure 9 depicts a cross-sectional view of a targeted UV photo-
therapy apparatus according to another embodiment of the invention (col. 5,
ll.24-26).

Figure 9 discloses a handpiece 200 connected via an electrical cable
202 to a base unit 204 containing the electronics and power conditioning for
the system (col. 11, ll. 47-54), wherein a control unit 224 for the system is
provided in the base unit 204 (col. 12, ll. 13-14).
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IV. ANALYSIS
As for claim 1, Appellant contends that “Hartman’s radiation source
210 would be incapable of ‘performing and controlling various curing
processes’,” that “[s]ince the cable of Hartman permits the use of a hand-
held light source, Hartman teaches away from ‘remote operation’,” and that
since the stated goal of Gaven is “to provide as much mobility as possible,”
providing a cable as taught by Hartman “would interfere with that goal”
(App. Br. 3-4).
By arguing that “Hartman’s radiation source 210 would be incapable
of ‘performing and controlling various curing processes’,” (App. Br. 3),
Appellant appears to be arguing that Hartman alone fails to anticipate the
claimed invention. However, as the Examiner points out, “the rejection was
made under §103 as being obvious over Gaven as modified by Hartman”
wherein “it is not Hartman’s, but Gaven’s source that should be used for
performing and controlling the curing processes” (Ans. 8). The test for
obviousness is not what the references show individually but what the
combined teachings would have suggested to one of ordinary skill in the art.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner finds that Hartman teaches a “remotely disposed UV
light source 210 activated by base unit 204 through electrical cable 202”
and concludes that it would have been obvious “to modify Gaven’s mobile
ultraviolet light source by Hartman’s radiation source 210 remotely activated
by cable 202” (Ans. 4). We find no error in the Examiner’s finding and
conclusion.
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We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not provide any definition for “remotely” other than
the controller is disposed remotely from the base unit. Thus, we give
“remotely” its broadest reasonable interpretation as being provided at a
different location, and thus, give “a controller disposed remotely from the
base unit” its broadest reasonable definition as a controller that is disposed at
a different location from the base unit.
We note that although Appellant contends that Hartman teaches away
from ‘remote operation’,” (App. Br. 3), claim 1 does not require any “remote
operation.” Instead, claim 1 merely requires a controller disposed remotely
from the base unit, with the intended purpose of “allowing an operator to
activate the source of UV radiation at a distance” (claim 1). The intended
purpose of the controller being disposed remotely does not limit the scope of
the claim because it merely defines a context in which the invention
operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345 (Fed. Cir. 2003).
Gaven discloses a carriage unit that includes wheels, a power source
and controls used to operate a curing device (FF 2). That is, Gaven discloses
a mobile base unit, a source of intense UV radiation suitable for curing paint,
and a controller allowing an operator to activate the source of UV radiation.
Thus, we find that the only feature of Appellant’s invention (FF 1) missing
from Gaven is a teaching that the controller is disposed remotely from the
base unit.
However, Hartman discloses a device connected via an electrical
cable to a control unit (FF 3). That is, Hartman discloses a controller that is
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located at a different location from the device that it controls. In view of our
claim interpretation, we find Hartman discloses a controller disposed
remotely. Accordingly, we find no error in the Examiner’s conclusion that it
would have been obvious “to modify Gaven’s mobile ultraviolet light source
by Hartman’s radiation source 210 remotely activated by cable 202” (Ans.
4).
Although Appellant contends that since the stated goal of Gaven is “to
provide as much mobility as possible,” providing a cable as taught by
Hartman “would interfere with that goal” (App. Br. 4), Appellant appears to
have viewed the references from a different perspective than the Examiner.
The issue here is not whether the entire system of Hartman would have been
combined with the entire system of Gaven, but rather whether a person of
ordinary skill, upon reading Hartman’s use of a controller disposed
remotely, would be discouraged from disposing Gaven’s controller remotely
from the device that it is controlling.
The Supreme Court has determined that the conclusion of obviousness
can be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The skilled
artisan would “be able to fit the teachings of multiple patents together like
pieces of a puzzle” since the skilled artisan is “a person of ordinary
creativity, not an automaton.” Id. at 420-21. As stated by the Supreme
Court, an obviousness “analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
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the art would employ.” Id. at 418. See also DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir.
2006).
Given the breadth of Appellant’s claims, we are not persuaded and
Appellant has presented no evidence that disposing a controller as taught by
Gaven at a remote location as taught by Hartman was “uniquely challenging
or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR at 418).
Therefore, we find the Examiner’s proffered combination of familiar prior
art elements according to their established functions would have conveyed a
reasonable expectation of success to a person of ordinary skill having
common sense at the time of the invention.
Accordingly, we find that Appellant has not shown that the Examiner
erred in rejecting claim 1 over Gaven and Hartman.
As to claim 2, Appellant merely contends that “[e]ven if the cable
were a mile long the light source [of Gaven/Hartman] would be in the
operator’s hand” (App. Br. 5). However, such argument is not
commensurate with the language of claim 2, which does not preclude any
light source being in the operator’s hand. Claim 2 merely requires that the
controller is connected to the base unit “through a cable having a length of
10 to 100 feet” (claim 2).
Hartman discloses a controller connected to device through a cable
(FF 3). As discussed above with respect to claim 1, we conclude that the
combined teachings of Gaven and Hartman would have at least suggested a
controller remotely connected to a base unit that it is controlling. Further,
we find no error in the Examiner’s finding that “Polichar’s control unit 16 ]
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and the remotely disposed radiation source 12 communicate via an electrical
cable (18 or 20) that is about 10 ft to 100 ft in length” (Ans. 5). Thus, we
find no error in the Examiner’s conclusion that Gaven and Hartman further
in view of Polichar would at least have suggested a controller that is
connected to the base unit “through a cable having a length of 10 to 100
feet” as required by claim 2. Appellant has presented no evidence that using
a cable having a length of 10 to 100 feet was “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc., 485 F.3d
at 1162 (citing KSR at 418). Accordingly, Appellant also has not shown that
the Examiner erred in rejecting claim 2 over Gaven and Hartman further in
view of Polichar.
As to claim 3, although Appellant concedes that Smith discloses that
“wireless connections may be used” (App. Br. 6), Appellant merely contends
the Examiner’s argument for combining Smith to Gaven and Hartman “does
not make sense to Appellant” (id.). However, Appellant prevents no
evidence that using a wireless remote controller was “uniquely challenging
or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc., 485
F.3d at 1162(citing KSR at 418). We conclude that a skilled artisan, upon
reading Smith’s use of a wireless remote controller, would have found it
obvious to use a wireless remote controller for the controller of the
combined teachings of Gaven and Hartman, since the skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR at 421. Accordingly,
we find no error in the Examiner’s rejection of claim 3 over Gaven and
Hartman further in view of Smith.
As to claim 4, although Appellant concedes that Dowling discloses
that “UV LEDs may be combined with other emitters such as IR and visible”
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(App. Br. 6), Appellant argues that “neither Gaven nor Hartman have any
stated need for IR light” (id.). However, such argument is not
commensurate with the recited language of claim 4 because claim 4 also
does not require any “need” for an IR light. That is, claim 4 merely recites
an infrared lamp “disposed along side” of the UV source. We conclude that
a skilled artisan, upon reading Dowling’s use of an infrared lamp with UV
LEDs, would have found it obvious to provide an infrared red lamp along
side a UV source.
Although Appellant also contend that “the IR LEDs [of Dowling] are
fixedly mounted” and thus are not “detachable” as recited in claim 4 (App.
Br. 7), we give “detachable” its broadest reasonable interpretation as able to
be detached. Thus, although the IR LEDs may be fixedly mounted, they are
still able to be detached.
Accordingly, we find no error in the Examiner’s rejection of claim 4
over Gaven and Hartman further in view of Dowling.

V. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1-4 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)(1)(iv).

AFFIRMED

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