Ex Parte Manners

Patent Trial and Appeal Board

Jun 24, 2013

11759082 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte ROBERT MANNERS
_____________

Appeal 2010-011591
Application 11/759,082
Technology Center 2800
______________

Before, ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011591
Application 11/759,082

2
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 and 3-19.
1
We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method of using and a system for stage
lighting that allows a part of the processing element to be replaced.
Abstract. Claims 1 and 4 are representative of the invention and are
reproduced below:
1. A stage lighting system, comprising:
stage lighting components including a housing, a bulb of [of]
at least 200 W, and at least 1 motor that enables moving the
housing, and at least 1 processing element, capable of carrying
out a processing function, and also capable of receiving remote
commands which indicate operation to be carried out by said
stage lighting components;
wherein said at least 1 processing element includes a
replaceable part which is located in said housing in a location
that is balanced within said housing, wherein said replaceable
part includes a programmable device that can be replaced with a
different programmable device.

4. A system as in claim 1, wherein said replaceable part
includes first and second parts, located in different locations
which balance against 1 another.

REFERENCES
Bornhorst US 4,701,833 Oct. 20, 1987

Hunt US 2004/0125602 A1 July 1, 2004

1
Claim 2 was previously cancelled.
Appeal 2010-011591
Application 11/759,082

3
Fukuda US 2006/0019705 A1 Jan. 26, 2006

Richmond US 2006/0291237 A1 Dec. 28, 2006

Chu US 2007/0130434 A1 June 7, 2007
(filed Dec. 5, 2005)

REJECTION AT ISSUE
Claims 1, 3-14, and 17-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hunt, Richmond, and Bornhorst.
Ans. 3-10.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Hunt, Richmond, Bornhorst, and Fukuda.
2
Ans. 10.
Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Hunt, Richmond, Bornhorst, and Chu.
3
Ans. 10-11.

ISSUES
Did the Examiner err in finding that the combination of Hunt,
Richmond, and Bornhorst is obvious?
Did the Examiner err in finding that the combination of Hunt,
Richmond, and Bornhorst teaches and suggests first and second parts that
are located in different locations so that they can balance each other out?

2
The Examiner inadvertently left out Bornhorst from the statement of the
rejection. We find this to be harmless error and have added it in the
statement of the rejection here.
3
See footnote 2.
Appeal 2010-011591
Application 11/759,082

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ANALYSIS
Claims 1, 3, and 19
We select claim 1 as representative of claims 1, 3, and 19 as Appellant
has not argued any of the other claims with particularity. 37 C.F.R.
§ 41.37(c)(1)(vii). Claim 1 recites:
stage lighting components including a housing . . . and at least 1
motor that enables moving the housing, and at least 1
processing element . . . wherein said at least 1 processing
element includes a replaceable part which is located in said
housing in a location that is balanced within said housing,
wherein said replaceable part includes a programmable device
that can be replaced with a different programmable device.

The Examiner finds that the combination of Hunt, Richmond, and
Bornhorst teaches the disputed limitations. Ans. 3-4. Appellant argues that
it would not be obvious to combine Hunt, Richmond, and Bornhorst since
Bornhorst and Hunt have fixed circuit boards (App. Br. 8) that are
removable not replaceable (App. Br. 9); the part is also not balanced within
the housing (App. Br. 10); Richmond does not teach a movable housing
(App. Br. 10-11); and there is no rationale to combine the references. App.
Br. 11-15. We disagree with Appellant.
First, the Examiner does not use Hunt and Bornhorst for teaching a
removable circuit board. Instead, the Examiner cites to Richmond for this
teaching, wherein the memory module is removable. Ans. 11. We agree
with the Examiner (Ans. 11) that this teaches a removable and replaceable
element.
Next, Appellant argues that none of the references teach that the part
is balanced within the housing. App. Br. 10. This argument is not
Appeal 2010-011591
Application 11/759,082

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commensurate in scope with the claim. Claim 1 requires that the part be
placed in a location that is balanced within the housing, not that the part is
balanced within said housing. Even so, the Examiner finds, and we agree,
that it would have been obvious to place the processing element in the
device so that it is balanced. Ans. 11.
Third, the Examiner does not cite to Richmond to teach a movable
housing. Instead, the Examiner cites to Hunt to teach a movable housing.
Ans. 3. We agree with the Examiner’s finding.
Lastly, we agree with the Examiner that the combination of the
references would have been obvious to one of ordinary skill in the art. Ans.
4. We disagree with Appellant that there is no rationale for combining the
references. The Examiner finds that Hunt teaches a light source, with a
motor that allows for the housing to move, and at least one processing
element. Ans. 3. Additionally, the Examiner finds that Bornhorst teaches a
200W lamp for use in stage lighting. Ans. 4. Also, the Examiner finds that
Richmond teaches a removable processing element in a balanced location.
Ans. 4. All of the references deal with lighting systems. Therefore, we
consider using Richmond’s removable processing element and Bornhorst’s
200W lamp with Hunt’s processor and light housing as nothing more than
using known devices to perform their known functions. As such, we find
that the combination of Hunt with Bornhorst and Richmond yields the
predictable result of being able to provide new programming for a movable
stage light.
Further, the Examiner has provided a specific motivation to combine
the references. Ans. 4. The Examiner stated that the combination would
“give the device more utility and more possible functions than a permanent
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Application 11/759,082

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memory means.” Ans. 4. Appellant’s arguments do not address these
specific findings by the Examiner. Thus, we agree with the Examiner’s
findings as Appellant’s arguments have not identified an error in the findings
supporting the rejection.
Therefore, for the reasons stated supra, we sustain the Examiner’s
rejection of claims 1, 3, and 19.
Claims 4, 5, 10, 12, and 13
Claim 4 requires the replaceable part to include two parts that are
located in different locations and balance each other out. Claim 10 recites a
similar limitation to claim 4. Claim 12 requires the replaceable part to
include two parts that are located in symmetrical locations. Claims 5 and 13
are dependent upon claims 4 and 12, respectively. Appellant argues that
there is nothing in the prior art that teaches the replaceable part being two
pieces that are balanced or placed in symmetrical locations. App. Br. 15-17
and 18. The Examiner finds that it would have been obvious to separate the
part into two pieces and to balance them or locate them in symmetric
locations to distribute the weight of each. Ans. 12-13. However, we agree
with Appellant. The Examiner has not shown, nor do we find, anywhere in
the references where it teaches or suggests that one part can be replaced with
two and balanced or placed in a symmetrical location. We also do not agree
that it would have been obvious to one of ordinary skill in the art to do so.
As such, we cannot sustain the Examiner’s rejection of claims 4, 5, 10, 12,
and 13.
Appeal 2010-011591
Application 11/759,082

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Claims 7, 8, 9, 11, 14, 17, and 18
Appellant argues that none of the references teach or suggest
claims 7, 8, 14, 17, and 18 because the references do not teach that which is
claimed.
4
App. Br. 17-19. As such, Appellant is merely restating what the
claim requires and arguing that the reference fails to teach or suggest these
requirements. App. Br. 17-19. See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”)
Additionally, Appellant fails to address the Examiner’s specific
findings as presented in the Answer on pages 5-7, 9, and 10. Thus, we agree
with the Examiner and sustain the Examiner’s rejection of claims 7, 8, 9, 11,
14, 17, and 18.

CONCLUSION
The Examiner did not err in finding that the combination of Hunt,
Richmond, and Bornhorst is obvious.
The Examiner erred in finding that the combination of Hunt,
Richmond, and Bornhorst teaches and suggests first and second parts that
are located in different locations so that they can balance each other out.

4
We select claim 8 as representative of claims 8, 9, and 11, as Appellant has
not argued any of the other claims with particularity. 37 C.F.R. §
41.37(c)(1)(vii).
Appeal 2010-011591
Application 11/759,082

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DECISION
The Examiner’s decision to reject claims 1, 3, 6-9, 11, and 14-19 is
affirmed and claims 4, 5, 10, 12, and 13 is reversed.
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-IN-PART

ELD