Ex Parte Moseler et al

Patent Trial and Appeal Board

Sep 16, 2016

12888706 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/888,706 09/23/2010 Doris MOSELER
23643 7590 09/20/2016
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
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.
47923-221753 4938
EXAMINER
LAZORCIK, JASON L
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
09/20/2016 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DORIS MOSELER, POLINA EBELING, STEFFEN KOERNER,
RALF BONITZ, FRANK PETERS, and HELMUT LARM
Appeal2014-008667
Application 12/888,706
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
In accordance with 37 C.F.R. § 41.52, Appellants timely filed a
Request for Rehearing 1 of our Decision, mailed April 8, 2016 ("Decision"),
affirming the Examiner's rejection of claims 1--4 and 6-11 as unpatentable
under 35 U.S.C. § 103(a). We reconsider our Decision in light of
Appellants' Request, and deny the relief sought.
Appellants contend that "[t]he Decision improperly places the burden
on Appellant to demonstrate with technical reasoning or factual evidence
how the combined Bonitz and Gage device would work." Request 2. We
disagree. As we set forth in the Decision, the evidence of record supports
1 Request for Rehearing, filed June 6, 2016 ("Request").
Appeal2014-008667
Application 12/888,706
the Examiner's findings that Bonitz discloses a headlamp having a
roughened forward surface to favorably affect the light to dark transition of
emitted light, and that Gage teaches the provision of a diffractive structure
on a rearward surface of a headlamp to reduce glare. Decision 4. The
Examiner persuasively reasoned that it would have been obvious to one of
ordinary skill in the art to provide a diffractive structure on a rearward
surface of Bonitz' s headlamp to reduce glare, as taught by Gage. Id. See
also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
Appellants argued in their Appeal Brief that modifying Bonitz's lens
in the manner reasoned by the Examiner would "change the operation" of
Bonitz's headlamp and "destroy the advantageous effect of the Bonitz lens."
App. Br. 5, 6. We considered these arguments and found them unpersuasive
because Appellants failed to present factual evidence or technical reasoning
to support the otherwise conclusory statement. Decision 4. In the absence
of a more detailed explanation, we are not convinced of error on the part of
the Examiner in concluding the claimed invention would have been obvious
within the meaning of 35 U.S.C. § 103(a). See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections." (citing
Ex Parte Frye, 94 USPQ2d 1072 (BP AI 2010) (precedential) ("The panel
then reviews the obviousness rejection for error based on the issues
identified by appellant, and in light of the arguments and evidence produced
thereon."))).
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Appeal2014-008667
Application 12/888,706
Appellants additionally contend that we did "not provide any
explanation" in our Decision concerning the effect that a diffractive structure
would have on Bonitz's lens. Request 7. However, we explained that,
absent evidence to the contrary, one of ordinary skill reasonably would have
expected the disclosed prior art elements to perform according to their
established functions-the diffracting element to diffract light entering the
lens and the roughened surface to scatter light emitted from the lens.
Decision 5. Appellants' disagreement with that determination neither points
us to contrary evidence or technical reasoning, nor identifies any point raised
in the Appeal Brief that we misapprehended or overlooked.
DECISION
For the foregoing reasons, Appellants' request for rehearing is denied.
DENIED
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