Ex Parte Lowry et al

Patent Trial and Appeal Board

Apr 24, 2015

12433409 (P.T.A.B. Apr. 24, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/433,409 04/30/2009 Brian C. Lowry 744.011 9022
35195 7590 04/27/2015
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
BANNAN, JULIE A
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
04/27/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN C. LOWRY, DAVID SHEFFIELD
and CLARK SHOTWELL
____________________

Appeal 2013-002934
Application 12/433,409
Technology Center 2800
____________________

Before JEFFREY T. SMITH, KAREN M. HASTINGS
and MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
The claimed invention is directed to a light engine comprising a light
transmitting optics barrel and method of assembling it. Br. 5–8. Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. An apparatus comprising:

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Application 12/433,409

2
a light transmitting optics barrel configured to house at
least one non-light transmitting component of a light engine
such that the at least one non-light transmitting component does
not interfere with indirect transmission of light by the light
transmitting optics barrel.

The Examiner relied on the following references in rejecting the
appealed subject matter:

Moore US 6,015,239 Jan. 18, 2000
Mayshack US 6,513,962 B1 Feb. 4, 2003
Harrison US 2007/0036488 Al Feb. 15, 2007
Park US 7,217,004 B2 May 15, 2007
Ruffin US 7,217,022 B2 May 15, 2007
Pei US 2008/0013319 A1 Jan. 17, 2008
Bloemen US 7,431,486 B2 Oct. 7, 2008

Appellants (See Brief generally) request review of the following
rejections from the Examiner’s Final Office Action:
1

I. Claims 1–6, 12, and 16–20 rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the enablement requirement.
II. Claims 1–6, and 12 rejected under 35 U.S.C. § 112, second
paragraph as indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
III. Claims 1 and 5 rejected under 35 U.S.C. § 102(b) as anticipated
by Ruffin.
IV. Claims 2, 6, 7, and 9–20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ruffin.

1
The Examiner withdrew the rejection of claims 7–11 and 13–15 under 35
U.S.C. § 112, first paragraph, and of claims 7–11 under 35 U.S.C. §112,
second paragraph. Ans. 3. Accordingly, we limit our discussion of the
rejection under 35 U.S.C. § 112, first paragraph, to claims 1–6, 12, and 16–
20 and of the rejection under 35 U.S.C. § 112, second paragraph, to claims
1–6, and 12.
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Application 12/433,409

3
V. Claims 3 and 8 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ruffin and Harrison.
VI. Claims 1, 2, and 4 rejected under 35 U.S.C. § 103(a) as
unpatentable over Moore.
OPINION
Rejection under 35 U.S.C. § 112, first paragraph (enablement)
(Rejection I)

We REVERSE.
The Examiner asserts that the Specification does not enable one
skilled in the art to make or use the invention because it does not adequately
describe a non-light transmitting component. Final Act. 2.
Appellants argue the Examiner has not established that undue
experimentation is required to practice the claimed invention. Id. at 11.
We agree with Appellants (Br. 10–12) that the Examiner has not
adequately explained why or how the claims are not enabled by the
Specification. The Examiner has not provided a proper analysis to support
the contention that undue experimentation is required to practice the claimed
invention.
Accordingly, we reverse the rejection under 35 U.S.C. § 112, first
paragraph for the reasons presented by Appellants and given above.

Rejection under 35 U.S.C. § 112, second paragraph (indefiniteness)
(Rejection II)

We AFFIRM.
The Examiner found the claims indefinite because it is unclear what is
a non-light transmitting component. Final Act. 2.
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4
Appellants argue pages 10–11 of the Specification clarify that non-
light transmitting components are the ones that do not transmit light and
contribute to dead spots. Br. 11–12.
We are unpersuaded by this argument and agree with the Examiner’s
finding of indefiniteness. As noted by the Examiner, the metes and bounds
of the disputed language cannot be determined from the Appellants’
disclosure. Ans. 10–11. Moreover, the portion of the Specification relied
upon by Appellants, which refers to the state of the prior art, relates to how
dead spots are formed and does not adequately describe what is a non-light
transmitting component. Spec. 10–11. Appellants have not provided an
adequate explanation why this portion of the Specification is sufficient for
determining the metes and bounds of the claimed subject matter. Thus, we
agree with the Examiner that one of ordinary skill in the art would not
reasonably understand the metes and bounds of the subject matter of claims
1–6, and 12.
Accordingly, we affirm the rejection under 35 U.S.C. § 112, second
paragraph, for the reasons presented by the Examiner and given above.

Prior Art Rejections based on Ruffin (Rejections III–V)
Anticipatory Rejection of Claim 1 (Rejection III)
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE.
Independent claim 1 is directed to an apparatus comprising a light
transmitting optics barrel configured to house at least one non-light
transmitting component.
2
According to the Specification, the at least one

2
We limit our discussion to independent claim 1.
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5
non-light transmitting component of the light engine is housed within a light
transmitting optics barrel such that the at least one non-light emitting
component does not interfere with indirect emission of light by the light
transmitting optics barrel. Spec. 6, 11, 14, 15, Figures 2, 5.
The Examiner found Ruffin teaches an apparatus comprising a light
transmitting optics barrel from elements 44, 56 and 88 that anticipates the
subject matter of independent claim 1. Final Act. 4; Ruffin Figure 2.
Appellants argue none of the components 44, 56 or 88 of Ruffin can
be construed as a light transmitting optics barrel. Br. 20. Specifically,
Appellants argue Ruffin's socket 56 is not configured to house at least one
non-light transmitting component but rather houses a light transmitting
component (optic fiber 16). Br. 19–20; Ruffin col. 3, ll. 28–39.
A preponderance of the evidence supports Appellants’ position. As
noted by Appellants, Ruffin describes element 44 as a retaining plate having
a collar 88 and a socket 56. Br.19; Ruffin col. 3, ll. 23–43; col. 4, ll. 19–24.
Appellants also point out that retaining plate 44 does not house a non-light
transmitting component. Br. 19–20; Ruffin col. 3, ll. 28–39. Given this
disclosure, the Examiner has not adequately explained how elements 44, 56,
88 constitutes a light transmitting optics barrel, much less how elements 44,
56, and 88 are capable of housing a non-light transmitting component. Br.
21.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing anticipation under 35 U.S.C.
§ 102(b). Accordingly, we reverse the Examiner’s prior art rejection of
claims 1 and 5 under 35 U.S.C. § 102(b) for the reasons presented by
Appellants and given above.
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6
Obviousness Rejections of Claims 2, 3, and 6–20 (Rejections IV and V)
The Examiner separately rejected claims 2, 6, 7, and 9–20 under 35
U.S.C. § 103(a) as unpatentable over Ruffin alone (Rejection IV) and claims
3 and 8 under 35 U.S.C. § 103(a) as unpatentable over Ruffin and Harrison
(Rejection V). Final Act. 5–9. The Examiner’s prior art rejections under 35
U.S.C. § 103(a) are premised on Ruffin describing a light transmitting optic
barrel capable of housing a non-light transmitting component. See Final
Action, generally. As discussed above, such is not the case. The Examiner
did not cite additional references to overcome the previously noted
deficiency of Ruffin.
3

Therefore, the Examiner’s prior art rejections under 35 U.S.C.
§ 103(a) of claims 2, 3, and 6–20 under 35 U.S.C. § 103(a) (Rejections IV
and V) are also reversed for the reasons presented by Appellants and given
above.

Prior Art Rejections based on Moore (Rejection VI)
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM.
4

We refer to the Examiner’s Final Action for a complete statement of
the rejection. Final Act. 8-10.

3
The Examiner cites to Pei, Park, and Bloemen for reference regarding
printed circuit boards coupled to heat sinks. Final Act. 7. Further discussion
of these prior arts is unnecessary for disposition of this appeal as they were
not cited to address the above-noted deficiency of Ruffin.
4
Appellants did not present separate arguments for dependent claims 2 and
4. Br. 28–29. Accordingly, we limit our discussion to independent claim 1.
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The Examiner found Moore teaches a light transmitting optics barrel
(light guide 14 in Figure 4) that houses a non-light transmitting component
(ferrule 46). Final Act. 10; Moore Figure 4.
Appellants argue Moore does not teach a light transmitting optics
barrel because Moore does not disclose what material to select for the light
guide 14. Br. 29; Moore col. 4, l. 65–col. 5, l. 4.
We are unpersuaded by this argument. As noted by the Examiner,
Moore discloses the material for the light transmitting optics barrel (light
guide 14) can be the same optically transparent material used for a
transparent encapsulant. Ans. 16; Moore col. 4, ll. 15–22, 65–67. Thus,
Appellants have not adequately explained why one skilled in the art would
not have understood the light guide of Moore to be a light transmitting optics
barrel.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
2, and 4 for the reasons presented by the Examiner and given above.

ORDER

The Examiner’s rejection of claims 1–6, 12, and 16–20 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is reversed.
The Examiner’s rejection of claims 1–6 and 12 under 35 U.S.C. § 112,
second paragraph, as indefinite is affirmed.
The Examiner’s prior art rejection of claims 1 and 5 under 35 U.S.C.
§102(b) as anticipated by Ruffin is reversed.
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Application 12/433,409

8
The Examiner’s prior art rejections of claims 2, 3, and 6–20 under 35
U.S.C. § 103 based on Ruffin are reversed.
The Examiner’s prior art rejection of claims 1, 2, and 4 under 35
U.S.C. § 103(a) as unpatentable over Moore is affirmed.

TIME PERIOD
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).

AFFIRMED-IN-PART
sl