Ex Parte Lys

Patent Trial and Appeal Board

Jan 27, 2016

13000812 (P.T.A.B. Jan. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/000,812 12/22/2010 Ihor Lys
138325 7590 01/29/2016
PHILIPS LIGHTING BY
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2008P00660WOUS 6794
EXAMINER
BUGG, GEORGE A
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
01129/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
kim.larocca@philips.com
jo.cangelosi@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IHOR L YS
Appeal2014-003604
Application 13/000,812
Technology Center 2600
Before DAVID M. KOHUT, JOHNNY A. KUMAR, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003604
Application 13/000,812
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method comprising:
A) addressing each addressable LED-based lighting unit
of a plurality of addressable LED-based lighting units [ (202a,
202b, 202c, 202d)] arranged in a linear configuration on a
communication bus [(204)] comprising a data line [(206a, 206b,
206c)], a power line [(206a, 206b, 206c)], and a ground line
[(206a, 206b, 206c)]; and
B) counting, for each addressable LED-based lighting
unit [(202a, 202b, 202c, 202d)], a number of times a change in
an electrical property at least partially dependent on current
occurs on the data line or the power line or the ground line in
response to A).
Rejections on Appeal
1. Claims 1--4, 8-10, 12-14, and 16-19 under 35 U.S.C. § 103(a) as
being unpatentable over Lys (US 6,211,626 Bl, Apr. 3, 2001) and
Mogilner (US 2003/0222603 Al, Dec. 4, 2003). Ans. 4--16.
2. Claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable
over Lys, Mogilner, and Seguine (US 2010/0079083 Al, Apr. 1,
2010). Ans. 16-18.
3. Claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Lys,
Mogilner, and Yamashita (US 5,936,361, Aug. 10, 1999). Ans. 18-
19.
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Appeal2014-003604
Application 13/000,812
4. Claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Lys,
Mogilner, and Veskovic (US 2005/0179404 Al, Aug. 18, 2005).
Ans. 19--20.
5. Claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Lys,
Mogilner, and Sayers (US 7,863,829 B2, Jan. 4, 2011). Ans. 20-
21.
Issue
The dispositive issue on appeal is whether the Examiner has erred in
rejecting claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Lys
and Mogilner. In particular, the issue turns on whether Lys teaches or
suggests counting, for each addressable LED-based lighting unit, a number
of times a change in an electrical property at least partially dependent on
current occurs, as recited in independent claim 1 (hereinafter, "the disputed
limitation"). i\.pp. Br. 6-7; Reply Br. 3--4. 1
Analysis
The Examiner relies on Lys for disclosing or suggesting the disputed
limitation (Ans. 4--5). In particular, the Examiner relies on the following:
In one embodiment of the invention, the PWM interrupt routine
is implemented using a simple counter, incrementing from zero
to two hundred fifty-five in a cycle during each period of the
square wave output on pins 434, 454 and 474. When the
1 Independent claims 10 and 14 contain a similar limitation. Appellant
makes additional arguments with respect to claims 2, 5-8, 10, 11, 15, 18,
and 19. App. Br. 8-19. We do not reach these additional issues since this
issue is dispositive of the appeal.
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Appeal2014-003604
Application 13/000,812
counter rolls over to zero, all three signals are set high. Once
the counter equals the register value, signal output is changed to
low. When microcontroller IC2 400 receives new data, it
freezes the counter, copies the new data to the working
registers, compares the new register values with the current
count and updates the output pins accordingly, and then restarts
the counter exactly where it left off.
Lys, col. 15, 1. 65 - col. 16, 1. 10.
Appellant contends, and we agree, that L ys does not teach or suggest
the disputed limitation (App. Br. 6-7; Reply Br. 3--4). In particular,
Appellant contends the
counter in Lys counts continuously from 0 to 255 over and over
again based on a uniform frequency set by the microcontroller
IC2. It does not count a number of times that a change in an
electrical property at least partially dependent on current occurs
on the data line or the power line or the ground line in response
to the addressable LED-based lighting unit being addressed.
App. Br. 7.
In other words, we agree with Appellant that the Lys counter does not
teach the claimed counting of the number of times a change in an electrical
property at least partially dependent on current occurs in response to
addressing the LED.
In response to Appellant's contention, the Examiner cites additional
portions in Lys (col 2, 11. 45-57, col. 4, 11. 62---65, and col. 13, 11. 7-18)
without providing sufficient evidence or explanation as to how those
portions teach or suggest the disputed limitation. Ans. 26-27. We agree
with Appellant (Reply Br. 3--4) that the Examiner has not established how
these portions of the reference teach the disputed limitation.
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Application 13/000,812
We thus conclude that the rejection of claim 1 lacks the requisite
specificity needed for the establishment of a prima facie case of
unpatentability. The Examiner bears the initial burden of presenting a prima
facie case ofunpatentability (In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992)). A prima facie case is established when the party with the burden of
proof points to evidence that is sufficient, if uncontroverted, to entitle it to
prevail as a matter of law. See Saab Cars USA, Inc. v. United States, 434
F.3d 1359, 1369 (Fed. Cir. 2006). Here, that burden has not been met in a
manner enabling proper review. For us to sustain the Examiner's rejection,
we would need to resort to impermissible speculation or unfounded
assumptions or rationales to cure the deficiencies in the factual bases of the
rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we agree that the Examiner erred as the analysis in the
Examiner's rejection is not sufficient to show that claim 1 is unpatentable
without further explanation.
CONCLUSIONS
Appellant has established that the Examiner erred in rejecting claims
1-19 as being unpatentable under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejections of claims 1-19 as set forth
above.
REVERSED
msc
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