Ex Parte Nall et al

Patent Trial and Appeal Board

Jan 29, 2018

14181087 (P.T.A.B. Jan. 29, 2018)

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.
14/181,087 02/14/2014 Jeffrey Marc Nall GLOZ 200365US02 7196
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
KIM, SHIN H
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
01/30/2018 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 JEFFREY MARC NALL, KEVIN CARPENTER,
KOUSHIK SAHA, CHENYANG LI,
RONALD K. BRENGARTNER JR., XIN WANG,
and TAMISLAV J. STIMAC
Appeal 2017-001084
Application 14/181,087
Technology Center 3600
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection2 of claims 26—55 and 58—74. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as Lumination, LLC. Appeal
Br. 1.
2 Appeal is taken from the Final Office Action dated April 2, 2015.
Appeal 2017-001084
Application 14/181,087
THE CLAIMED SUBJECT MATTER
Claims 26, 37, 40, 54, 59, 62, 64, and 69 are the independent claims
on appeal. Claim 26, reproduced below, is illustrative of the subject matter
on appeal.
26. A lighting system for illuminating a sign, the system
comprising:
a plurality of electrically interconnected modules each
module including a support comprised of an elongated printed
circuit board having a major surface, circuitry on the support, and
a plurality of light emitting diodes (“LEDs”) in a linear array on
the major surface electrically connected to the circuitry;
one or more electrical conductors electrically connecting
the plurality of modules; and
one or more flexible strips independent of the one or more
electrical conductors, said strips mechanically connecting
adjacent modules.
THE REJECTIONS
I. Claims 26—28, 30-34, 37—39, 69, and 71—74 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Swaris (US 2003/0218878
Al; published Nov. 27, 2003) and Panagotacos (US 6,566,824 B2; issued
May 20, 2003). Final Act. 2-5, 17-18.
II. Claims 29, 40-44, and 46—55 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Swaris, Panagotacos, and Bogner (DE 102 45
892 Al; published May 13, 2004).3 Final Act. 5—10.
III. Claims 35, 64—68, and 70 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Swaris, Panagotacos, and Priddy (US
6,505,956 Bl; issued Jan. 14,2003). Final Act. 10—12, 19.
3 We refer to the corresponding US application: US 2006/0232969 Al,
published October 19, 2006 (English language).
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IV. Claims 36 and 59-63 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Swaris, Panagotacos, and Schwartz (US 5,697,175;
issued Dec. 16, 1997). Final Act. 12—15.
V. Claims 45 and 58 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Swaris, Panagotacos, Bogner, and Schwartz. Final Act.
16-17.
ANALYSIS
Rejection I
Independent claim 26 and dependent claims 27, 28, 30, 32—34, and 37—39
Regarding independent claim 26, the Examiner finds, inter alia, that
Swaris discloses a lighting system with electrically interconnected modules
(i.e., LED module 100), each module including a support (i.e., main body
layer 56) with circuitry on the support (i.e., circuit board 50), light emitting
diodes (i.e., LEDs 32) electrically connected to the circuity, and electrical
conductors (i.e., wires 114, 116) connecting the modules, as claimed. Final
Act. 3^4 (citing Swaris, Fig. 19); see also Swaris 62, 87. The Examiner
relies on Panagotacos for disclosing flexible strips (i.e., flexible connectors
22) independent of the electrical conductors and also mechanically
connecting adjacent modules, as claimed. Final Act. 3 (citing Panagotacos
4:34—38). The Examiner further relies Panagotacos for disclosing modules
including “an elongated printed circuit board having a major surface wherein
LED[s] [are] mounted to the major surface.” Id. (citing Panagotacos 3:46—
57 (disclosing that “solid state optical emitters [(LEDs)] 14 shown in FIG. 1
are attached to respective bases 16 here shown to be rectangular planar
platforms”)). The Examiner reasons that “it would have been an obvious
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modification well known in the art... to modify Swaris as taught by
Panagotacos to include Panagotacos’ flexible strips and PCB with LED . ..
to enhance the connection between each module and electrical system.” Id.
Appellants argue that “[njeither Swaris nor Panagotacos disclose such
a configuration wherein the printed circuit board is elongated and the LEDs
are disposed linearly on a major surface thereof.” Appeal Br. 6. Appellants
submit that “Swaris mounts LEDs 32 on a front edge of module 32” and
“Panagotacos provides only a single LED 18 on each printed circuit board.”
Id. Appellants’ argument, however, does not address the rejection as
articulated by the Examiner, which relies on the combination of Swaris and
Panagotacos to render obvious the disputed claim limitation. Specifically,
the Examiner relies on Swaris for disclosing an elongated printed circuit
board having a major surface, and also a linear array of LEDs (albeit on a
side surface of the circuit board), and on Panagotacos for disclosing an
elongated printed circuit board having a single LED attached to the major
surface of the circuit board. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citation omitted).
Appellants also argue, for the first time in the Reply Brief, that the
Examiner’s proposed modification “to include the LEDs on the elongated
major planar surface in view of Panagotacos” is “incorrect.” Reply Br. 2
(citing In re Gordon, 733 F.2d. 900 (Fed. Cir. 1984)). In support,
Appellants submit that Swaris discloses attaching LEDs 32 to a front edge of
circuit board 50, such that (i) “LED lens portion 38 is thus pointed
outwardly so as to direct light in a direction substantially coplanar with the
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circuit board” (id. at 2 (quoting Swaris 145)); and (ii) contacts 60, which
“operate as a heat sink,... are shaped to be a[s] large as possible while still
fitting upon the circuit board 50” (id. (quoting Swaris 146)). Appellants
also submit that “Swaris requires the LEDs to face away from the
translucent light diffusing lens portion of the channel letter and therefore
directs the light to the diffusely reflective walls and bottom surfaces,” to
avoid hot spots within case 162, and that “[s]uch an effect is not achieved by
mounting the LEDs to the major surface of the printed circuit board.” Id. at
3 (citing Swaris 178).
We decline to consider arguments raised for the first time by
Appellants in the Reply Brief. See 37 C.F.R. § 41.41(b)(2) (“Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner’s answer, . . . will not be
considered by the Board lor purposes of the present appeal , unl ess good
cause is shown.”). Appellants have not demonstrated good cause as to why
the new argument, directed to issues addressed in In re Gordon (i.e., the
motivation to combine references), as set forth in the Reply Brief, was not
raised earlier.
Accordingly, we sustain the Examiner’s rejection of independent
claim 26 under 35 U.S.C. § 103(a) as unpatentable over Swaris and
Panagotacos. Appellants chose not to present separate arguments for the
patentability of claims 27, 28, 30, 32—34, and 37—39, which depend from
independent claim 26, and therefore, we also sustain the Examiner’s
rejection of such claims for the reasons set forth supra. See Appeal Br. 6—
11.
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Dependent claim 31
Claim 31, which depends from independent claim 26, further recites,
“wherein each module comprises a plurality of LEDs arranged in a two
dimensional array.” Appeal Br. 12 (Claims App’x). The Examiner
determines that although neither Swaris nor Panagotacos discloses a two
dimensional array, “it would [have been an] obvious modification to
rearrange the LEDs in a two dimension array . . . [to] provide an alternative
configuration for arranging the plurality of LEDs.” Final Act. 4. More
particularly, the Examiner determines that “[i]t is well known in the art that
the spacing of light sources impact the light distribution and illumination
properties,” and thus, arranging individual light sources “to be aligned in an
array of any pattern, including two dimensional, is an arrangement of LEDs
that is obvious and well known in the art.” Ans. 4.
Appellants argue that the Examiner has failed to provide a sufficient
rationale for modifying Swaris’ linear (or one dimensional array) to be a two
dimensional array. Appeal Br. 6.4 We disagree. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). Priddy provides evidence that a
two-dimensional array of LEDs in a lighting application is well known to
provide the desired illumination in a channel light. See Priddy 3:49—51
(“Various geometric patterns of L.E.D.’s can be employed, deliberately
4 We decline to consider Appellants’ argument, presented for the first time
in the Reply Brief, that “[m]ounting the LEDs to the main planar surface of
the printed circuit board which is attached to the side walls would not
achieve the objectives of Swaris,” for the same reasons stated supra with
respect to independent claim 26. Reply Br. 3.
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varying the intensity of light provided along the chain.”); see also id. at Fig.
1 (depicting LEDs 15, 17, 19, and 21 in rows and columns (i.e., a two-
dimensional array)). Moreover, both Panagotacos and Swaris recognize the
need to arrange LEDs depending on the configuration of the channel light.
See Panagotacos 5:60-64 (“One reason the flexible lighting segment 10 is
advantageous for use in channel lighting 31 is that the lighting sections 12
can be arranged in any manner and situated in any location and therefore
enable illumination if desired to be uniformly distributed within the can.”);
Swaris 154 (“any number of LEDs can be included in one module”).
Accordingly, we sustain the Examiner’s rejection of claim 31 under
35 U.S.C. § 103(a) as unpatentable over Swaris and Panagotacos.
Dependent claim 73
Claim 73, which depends from independent claim 26, further recites,
“wherein said flexible strip is elongated and wherein a direction of
elongation of said flexible strip is perpendicular to a direction of elongation
of said printed circuit board.” Appeal Br. 19 (Claims App’x). The
Examiner determines that although neither Swaris nor Panagotacos discloses
the limitation of claim 73, “[ojrientation modification is common and well
known in the art,” and reasons that it would have been obvious “to orientate
the flexible strips on the printed circuit board to optimize the mounting
arrangement of the modules along the sign box.” Final Act. 5; see also Ans.
5. In other words, the Examiner determines that it is well within the
knowledge of a person with ordinary skill in the art to orient the direction of
elongation of Swaris’ circuit board 50 to be perpendicular to the direction of
elongation of a flexible interconnect, which is incorporated into Swaris’
lighting serial array of pre-packaged LEDs, as taught by Panagotacos.
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Appellants argue that the Examiner has failed to provide sufficient
rationale for modifying Swaris in view of Panagotacos to result in the
subject matter recited in claim 73. Appeal Br. 7. Specifically, Appellants
submit that
[t]he present invention is directed to a cabinet sign whereas
Panagotacos and Swaris are directed to lamps for a channel letter
which would not be modified in the manner presently claimed by
Appellants. More particularly, channel letters are long and
narrow. Providing an LED module that is elongated
perpendicular to the central axis of the channel letter would be
an undesirable distribution of light for that environment.
Id.', see also Reply Br. 4 (“Since Swaris and Panagotacos fail to teach a sign
box environment or suspending the light system between opposed side
walls/rails, . . . neither reference contemplates optimizing of the arrangement
in the manner claimed by Appellants.”).5
Appellants’ argument does not persuade us that modifying Swaris, as
proposed by the Examiner, is beyond the knowledge of one of ordinary skill
in the art. Panagotacos discloses that
each lighting section 12 is flexibly interconnected to at least one
adjacent section via one or more flexible printed circuit board
connectors or flexible interconnects 22. These flexible
interconnects 22 are pliable and readily deformable such that the
lighting sections 12 can be moved about in any direction, x, y, or
z. For example, the lighting sections 12 can be stretched apart
increasing the distance therebetween or the orientations of each
section can be altered with respect to the other. Accordingly, the
flexible lighting segment 10 can be stretched or expanded, bent
5 Notably, Appellants do not dispute the Examiner’s finding that the prior
art discloses a cabinet sign, as recited in claim 52. Appeal Br. 16 (Claims
App’x); Final Act. 8 (“Swaris in view of Panagotacos in view of Bogner
discloses the cabinet sign.”); Appeal Br. 6—11; Reply Br. 2—7.
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or shaped or otherwise contorted to appropriately satisfy the need
for the particular application.
Panagotacos 3:59-4:3 (emphasis added). Thus, Panagotacos suggests that
flexible lighting segment 10 is capable of being contorted such that the
orientation of sections 12 with respect to flexible interconnects 22 are as
claimed. Swaris also recognizes that “[a]s may be anticipated, larger
channel apparatus will likely require somewhat different arrangements of
LED modules,” and that “the orientation of each of the modules may be
varied in such a large channel illumination apparatus.” Swaris 1 82. Thus,
both Panagotacos and Swaris teach the desirability for modifying the
orientations of each module within a channel letter environment, such that
we are not persuaded by Appellants’ argument that the environment of the
lighting systems of Swaris and Panagotacos (i.e., channel letters) are so
distinct from the lighting environment of Appellants’ claimed invention
(cabinet sign) that the Examiner’s reasoning lacks factual underpinnings. In
other words, the prior art does not support Appellants’ argument that an
elongated LED module, which is perpendicular to the central axis of the
channel letter, would be undesirable for a channel letter.
Further, Swaris discloses that
[LED module 100] can be used in many applications such as, for
example, indoor and outdoor decorative lighting, commercial
lighting, spot lighting, and even room lighting. Such LED
modules can also be used in applications using a plurality of such
modules to appropriately light a lighting apparatus such as a
channel illumination device 160.
Swaris 173. Similarly, Panagotacos discloses that “[t]he flexible lighting
segments 10 . . . are particularly suitable for use in channel lighting 31, but
may also be employed to provide illumination for other structures and may
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be included in, for example, automotive accent lighting . . ., planes of light
for menu boards,. . . and the like.” Panagotacos 14:18—24. Moreover,
claim 26 is not limited to a cabinet sign, but rather (as set forth supra) is
directed to “[a] lighting system for illuminating a sign” (emphasis added),
and the Specification specifically states that “[o]ne particular application for
such a backlighting system is a cabinet sign,. . . [hjowever, it is to be
appreciated that the present exemplary embodiment is also amenable to
other like applications.” Spec. 11.
Accordingly, we sustain the Examiner’s rejection of claim 73 under
35 U.S.C. § 103(a) as unpatentable over Swaris and Panagotacos.
Independent claim 69 and dependent claims 71 and 726
Regarding independent claim 69, the Examiner determines that
Panagotacos generally discloses the claimed method, except for “securing at
least two strips between opposed side walls of the sign,” as claimed. Final
Act. 17. The Examiner relies on Swaris for disclosing this feature and
determines that it would have been obvious to modify Panagotacos as taught
by Swaris “to include Swaris’ step of securing the modules to a sign.” Id. at
18 (citing Swaris, Fig. 22); see also Ans. 7 (“Swaris discloses the walls of
the sign [are] also a mounting surface for the light modules.”).
Appellants argue that because both Swaris and Panagotacos are
directed to a channel letter, “the desirable surface on which to mount the
LED array is the back wall facing the light emitting cover.” Appeal Br. 10.
Appellants submit that “[springing the LED array between opposed side
6 Although the Examiner identifies the rejection of claims 69, 71, 72, and 74
as a separate rejection from Rejection I, the claims are rejected in view of
the same references, albeit in a different order. Thus, we include the
rejection of claims 69, 71, 72, and 74 in Rejection I.
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walls is wholly impractical,” and “non-functional for any curved letter.” Id.
at 11; see also Reply Br. 6 (noting that “[njothing teaches or suggests
stringing the devices between opposed side walls”).
Although Swaris does not expressly disclose securing at least two
strips between opposed side walls of the sign, as claimed, Swaris does teach
attaching modules including LED arrays to the side walls of a letter channel.
See, e.g., Swaris, Fig. 15; see also id. 190 (“a worker will simply arrange
the channel letter adjacent the roll 182 of LED modules, pull on the first
available LED module 100 and secure the module, via its adhesive backing,
in place on the wall 164 of the channel letter”). Swaris also recognizes that
one skilled in the art may apply the LED modules as necessary, teaching, for
example, that “larger channel apparatus will likely require somewhat
different arrangements of LED modules, including employing more LED
modules ... [or positioning] LED modules on both walls.” Id. 1 82.
Panagotacos discloses that “more than a single section can be used to
illuminate[] the width of the can, [f]or example, one or more flexible
lighting segments 10 can be positioned alongside each other over the length
of at least a portion of the can 30.” Panagotacos 11:45—50. Panagotacos
further discloses that “[o]ne reason the flexible lighting segment 10 is
advantageous for use in channel lighting 31 is that the lighting sections 12
can be arranged in any manner and situated in any location and therefore
enable illumination if desired to be uniformly distributed within the can.”
Panagotacos 5:60-64 (emphasis added).
In view of these disclosures in Swaris and Panagotacos, we are not
persuaded by Appellants’ argument that securing LED modules, as claimed,
is “wholly impractical” or “non-fimctional” for channel letter signs.
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Accordingly, we sustain the Examiner’s rejection of independent
claim 69 under 35 U.S.C. § 103(a) as unpatentable over Panagotacos and
Swaris. Appellants chose not to present separate arguments for the
patentability of claims 71 and 72, which depend from independent claim 69,
and therefore, we also sustain the Examiner’s rejection of such claims for the
reasons set forth supra.
Dependent claim 74
Claim 74, which depends from independent claim 69, requires, in
relevant part, the LED modules to be “suspended away from the walls of the
sign box.” Appeal Br. 19 (Claims App’x). The Examiner reasons that
although neither Panagotacos nor Swaris discloses suspending the LED
modules, as claimed, “[ojrientation modification is common and well known
in the art,” and “[it] would [have been] obvious to orientate the flexible
strips on the LED modules to optimize the mounting arrangement of the
modules along the sign box.” Final Act. 18.
Appellants argue that the claimed suspension is “not taught in Swaris
or Panagotacos” (Appeal Br. 11), but rather, that “Panagotacos and Swaris
teach securing each module to either a side wall or a bottom wall” (Reply
Br. 6). Appellants submit that “the Examiner has provided no explanation
why either Panagotacos or Swaris would be modified to string the light
systems between opposed side walls as opposed to mounting each module
directly to the walls as expressly taught.” Reply Br. 6.
We are persuaded by Appellants’ argument, in that the Examiner’s
reasoning, i.e., optimization of a mounting arrangement, does not
specifically address suspending the modules (i.e., the subject matter
claimed).
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Accordingly, we do not sustain the Examiner’s rejection of claim 74
under 35 U.S.C. § 103(a) as unpatentable over Panagotacos and Swaris.
Rejection II
Dependent claim 29
Claim 29, which depends from independent claim 26, further requires
“an overmolding covering at least a portion of the front surface of the
support.” Appeal Br. 12 (Claims App’x). The Examiner relies on Bogner
for disclosing “a system comprising an over mold attached to a support
panel.” Final Act. 5 (citing Bogner, transparent potting composition 13); see
also Ans. 5 (citing Bogner 131). The Examiner proposes modifying Swaris’
circuit board having LEDs to include an overmold, as taught by Bogner, “to
protect the light sources.” Final Act. 5.
Appellants argue that “potting is not equivalent to the claimed
overmolding,” and specifically, that “a process of filling an electronic
assembly with a solid or gelatinous compound for resistance to shock and
vibration is dissimilar because potting fills the interior of an electronic
assembly whereas overmolding surrounds its exterior.” Appeal Br. 7—8.
Regarding Appellants’ argument about the process of overmolding the
covering for the claimed system, “[tjjhe patentability of a product does not
depend on its method of production.” SmithKline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006). “A product-by-process claim
is ‘one in which the product is defined at least in part in terms of the method
or process by which it is made.’” Id. at 1315 (quoting Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 158 n. (1989)). The claim is
directed to the ultimate product, not the underlying process. See id. at 1317
(“Regardless of how broadly or narrowly one construes a product-by-process
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claim, it is clear that such claims are always to a product, not a process.”).
Thus, “[i]f the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” In re Thorpe,
111 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).
Bogner discloses that “[a] transparent potting composition 13 provides
for a smooth surface of the light source and protection of the bonding wires
and [LEDs],” and depicts transparent potting composition 13 over at least a
portion of the front surface of support (i.e., submount 10). Bogner 131
(emphasis added), Fig. 4; see also id. 19 (“the illumination device . . .
provides for interspaces between the luminous spots to be filled with
plastic”). Notably, Panagotacos also discloses that solid state emitter (or
LED 14) “may be encased in substantially optically transparent material
such as polymeric material or plastic.” Panagotacos 3:39-41; see also
12:33—39; cf. Spec. 141 (“[OJver mold 122 is made from weather resilient
material and has a transparent top surface. Examples of materials which
may be used to make over mold 122 include ... a plastic extrusion.”). Thus,
the Examiner’s proposed modification, to include Bogner’s transparent
potting composition on at least of portion of Panagotacos’ support (i.e.,
bases 16) is based on rational underpinnings. Moreover, Appellants have
not shown how Panagotacos’ bases 16, as modified by Bogner, are
structurally distinguishable from the claimed overmolding covering at least a
portion of the front surface of the support.
Appellants’ argument that “Bogner provides no teaching of a printed
circuit board receiving the potting material 13 and therefore cannot teach an
overmolding covering at least a front portion of a printed circuit board,” as
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recited in claim 29, does not address the rejection as articulated by the
Examiner, which relies on Swaris for disclosing a circuit board, which is
modified by Bogner’s teaching of a transparent potting composition 13.
Reply Br. 4.
Accordingly, we sustain the Examiner’s rejection of claim 29 under
35 U.S.C. § 103(a) as unpatentable over Swaris, Panagotacos, and Bogner.
Independent claims 40 and 54 and dependent claims 41, 47, 49, and 55
Appellants present the same argument for the patentability of
independent claim 40, regarding potting being distinguishable from
overmolding, as presented for claim 29 supra, and we are not persuaded by
Appellants’ argument for the same reasons as set forth supra with respect to
claim 29. Appeal Br. 7—8. Appellants further argue that Bogner fails to
teach that the overmold “encompass[es] the insulated flexible electrical
conductors.” Id. at 8. However, as set forth supra, the Examiner relies on
Panagotacos for disclosing flexible interconnects 22, and proposes
modifying Swaris, in view of Panagotacos, in view of Bogner to arrive at the
claimed subject matter. (Notably, Bogner’s Figure 4 depicts transparent
potting composition 13 as encompassing bonding wires 11). Therefore,
Appellants’ argument does not address the rejection as articulated by the
Examiner.
Regarding the recitation in claim 40 regarding spaced relationships
between one or more arrays of LEDs on a single module and/or between one
or more arrays of modules comprising arrays of LEDs, or a combination
thereof, the Examiner determines that although Swaris, in view of
Panagotacos and Bogner, does not directly disclose the claimed
relationships, such relationships “depend[] on the length of the flexible strips
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and conductive wiring.” Final Act. 7. The Examiner further determines that
“dimensional modification is common and well known in the art.” Id.
Appellants argue that the Examiner’s reasoning lacks rationale
underpinning. Appeal Br. 8.
We are not persuaded by Appellants’ argument. As set forth supra,
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. Priddy provides evidence that the claimed spacing is
well known, in that Priddy discloses that
[e]ach of the circuit boards 13 has its light emitting diodes 15,
17, 19 and 21 dispersed in the same geometric pattern. The
length of the conductors 27 and 29 connecting sequential circuit
boards 13 is chosen to provide a consistent lighting distribution
along the chain. Preferably, the conductors are of equal length,
the length being selected so that the lengthwise spacing of all of
the diodes taken in a direction along the length of the chain will
be equal.
Priddy 3:33—39. Panagotacos also discloses altering the distance between
modules (i.e., lighting sections 12 each comprising an LED) to provide
uniform illumination and depending on the shape of channel light 30. See,
e.g., Panagotacos 6:38 42 (“The spacing and orientation of each lighting
section 12 with respect to the other may be appropriately selected to follow
the shape of the letter, such that, e.g., uniform illumination is provided
across the front face 36 of the letter or character.”). Thus, we are not
apprised of error in the Examiner’s determination that selecting the spaced
relationships, as claimed, is obvious, or put another way, an obvious
combination of known variables to reach a predictable result, namely, to
provide a desired illumination along the chain of modules.
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We determine that the Examiner’s rationale is sufficiently supported
as applied to any number of arrays in a lighting system comprised of arrays
modules including arrays of LEDs (i.e., first, second, third, and fourth
arrays), as set forth in claim 40.
Accordingly, we sustain the Examiner’s rejection of claim 40 under
35 U.S.C. § 103(a) as unpatentable over Swaris, Panagotacos, and Bogner.
Appellants chose not to present separate arguments for the patentability of
claims 41, 47, and 49, which depend from independent claim 40, and
independent claim 54 and dependent claim 55, which depends from
independent claim 54, and therefore, we also sustain the Examiner’s
rejection of such claims for the reasons set forth supra.
Dependent claims 42, 43, 46, 48, 50, and 51—53
Claim 42 depends from independent claim 40. Appellants present the
same argument for the patentability of claim 42, regarding potting being
distinguishable from overmolding, as presented for claim 29 supra, and we
are not persuaded by Appellants’ argument for the same reasons as set forth
supra with respect to claim 29. Appeal Br. 7—8. Appellants also present the
same argument for the patentability of claim 42, regarding the relative
spacing between LED and module arrays, as presented for claim 40 supra,
and we are not persuaded by Appellants’ argument for the same reasons as
set forth supra with respect to claim 40. Id. at 8.
Accordingly, we sustain the Examiner’s rejection of claim 42 under
35 U.S.C. § 103(a) as unpatentable over Swaris, Panagotacos, and Bogner.
Appellants chose not to present separate arguments for the patentability of
claims 43, 46, 48, and 50-53 which depend from claim 42, and therefore, we
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also sustain the Examiner’s rejection of such claims for the same reasons set
forth supra.
Dependent claim 44
Appellants present the same argument for the patentability of claim
44, regarding the relative spacing between LED and module arrays, as
presented for claim 40 supra, and we are not persuaded by Appellants’
argument for the same reasons as set forth supra with respect to claim 40.
Appeal Br. 8. Appellants further argue “the channel letter apparatus of
Panagotacos and Swaris are narrow letter shaped cavities,” and therefore,
“[tjhere is no reason to form a third or fourth array,” as recited in claim 44.
Id. at 9; see also Reply Br. 5 (distinguishing Swaris and Panagotacos’
channel letters from “a sign box environment” and Bogner’s “liquid crystal
display backlight”). However, as discussed supra, Panagotacos expressly
recognizes that more than one flexible lighting segment 10 may be required
to illuminate the width of the can (see Panagotacos 11:45—50), and also, as
discussed supra, neither Swaris nor Panagotacos limits the application of
their inventions to channel lighting (see Swaris 173; Panagotacos 14:18—
24).
Accordingly, we sustain the Examiner’s rejection of claim 44 under
35 U.S.C. § 103(a) as unpatentable over Swaris, Panagotacos, and Bogner.
Rejection III
Dependent claim 35
Claim 35, which depends from independent claim 26, further requires
“a clamping element receiving the one or more flexible strips for securing
the lighting system to the frame of a sign.” Appeal Br. 13 (Claims App’x).
The Examiner finds, inter alia, that “Priddy discloses a system comprising a
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clamping element receiving the one or more flexible strips for securing the
lighting system to the frame of a sign” (Final Act. 10 (citing Priddy 3:17—
24)), determining that the flexible interconnect mechanically connecting the
adjacent modules of Swaris, as modified by Panagotacos, is “part of the
electronic assembly area” (Ans. 7). Appellants argue that Priddy’s clamping
element “receives the LED circuit boards, not a flexible connector,” as
claimed. Appeal Br. 9; see also Reply Br. 5 (“[Priddy] provides no
attachment of the flexible strips to the frame for securing the lighting system
to the frame.”).
Priddy discloses that “[e]ach of the circuit boards 13 is mounted on a
channel clip,” wherein “[e]ach of the clips has a segment of double backed
adhesive tape 45,” such that Priddy teaches attaching the circuit boards (or
modules) to a frame of a sign by the adhesive tape, rather than a clamping
element that receives the flexible interconnect (or strip), which is
mechanically connecting adjacent modules, for securing the lighting system
of the frame of a sign, as claimed. Priddy 3:17—24 (emphasis added). Thus,
the Examiner’s finding with respect to Priddy is in error, nor does the
Examiner suggest modifying Swaris’ LED module 100, which includes
Panagotacos’ flexible interconnects 22, to include Priddy’s clamping
element on flexible interconnects 22, rather than on Swaris’ circuit boards
50 as taught by Priddy, for example, to provide a means for also attaching
flexible interconnects 22 to the side wall of the sign, in the event there is a
large distance between modules (as taught by Panagotacos, as discussed
supra), thereby providing a more secure attachment of the entirety of
Swaris’ LED module 100 to the sign’s wall.
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Accordingly, we cannot sustain the rejection of claim 35 under
35 U.S.C. § 103(a) as unpatentable over Swaris, Panagotacos, and Priddy.
Independent claim 64 and dependent claims 66—68
Appellants present the same argument for the patentability of
independent claim 64, regarding a clamping element, as presented for claim
35 supra. However, independent claim 64 does not recite a clamping
element, and therefore, Appellants’ argument does not apprise us of error in
the Examiner’s findings or reasoning.
Accordingly, we sustain the rejection of claim 64 under 35 U.S.C.
§ 103(a) as unpatentable over Swaris, Panagotacos, and Priddy. Appellants
chose not to present separate arguments for the patentability of claims 66—68
which depend from independent claim 64, and therefore, we also sustain the
Examiner’s rejection of such claims for the same reasons set forth supra.
Dependent claim 65
Claim 65, which depends from independent claim 64, further requires
“a clamping element for securing the flexible mechanical connecting7 to the
side wall of the sign.” Appeal Br. 18 (Claims App’x). The Examiner relies
on Priddy, as stated supra with respect to claim 35, and Appellants present
the same argument for the patentability of claim 65, regarding the clamping
element, as presented for claim 35. However, the scope of claim 65 is
different from the scope of claim 35, and Appellants’ argument does not
apprise us of error in the Examiner’s reasoning that modifying Swaris’ LED
module 100, which includes Panagotacos’ flexible interconnect 22, to
7 Claim 65 appears to include a typographical error by referring to “flexible
mechanical connecting” rather than to “flexible mechanical connectors,” as
recited in claim 64. See Appeal Br. 18 (Claims App’x).
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include Priddy’s clamping element on Swaris’ circuit boards 50 would fail to
result in “securing” flexible interconnects 22 (as Swaris is modified in view
of Panagotacos) at least indirectly to the side wall of the sign, as claimed.
Accordingly, we sustain the rejection of claim 65 under 35 U.S.C.
§ 103(a) as unpatentable over Swaris, Panagotacos, and Priddy.
Dependent claim 70&
Claim 70, which depends from independent claim 69,8 9 further recites
“securing the lighting system to the frame of a sign via a clamping element.”
Appeal Br. 19 (Claims App’x). Appellants argue that “[cjlaim 70 requires a
clamping element receive the flexible mechanical strip,” which “is not
taught or suggested by Priddy.” Appeal Br. 11; see also Reply Br. 6
(“Priddy provides no suggestion of clamping the flexible strips to the sign
box side walls . . . .”). However, the scope of claim 70 is not so limited;
rather, claim 70 merely requires securing the system of claim 69 to the frame
via a clamping element. Arguments must be commensurate in scope with
the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Accordingly, we sustain the rejection of claim 70 under 35 U.S.C.
§ 103(a) as unpatentable over Swaris, Panagotacos, and Priddy.
Rejection IV
Dependent claim 36
Claim 36, which depends from independent claim 26, further recites
“wherein the support comprises a double sided printed circuit board
8 Although the Examiner identifies the rejection of claim 70 as a separate
rejection from Rejection III, claim 70 is rejected in view of the same
references, albeit in a different order. Thus, we include the rejection of
claim 70 in Rejection III.
9 Claim 69 is sustained pursuant to Rejection I.
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(‘PCB’)”. Appeal Br. 13 (Claims App’x). The Examiner finds that
Schwartz discloses “a system comprising a support having a double sided
printed circuit board.” Final Act. 12 (citing Schwartz 6:3—8). The Examiner
reasons that it would have been obvious to modify Swaris, in view of
Panagotacos, to include a double sided printed circuit board, to provide “a
means to electrically connect the components for the illuminated display
system.” Id. at 12—13. The Examiner determines that Schwartz discloses
“the mounting of each module along an array where each module is
connect[ed] by flexible strips” and also “various arrangements of modules to
illuminate different sized and shaped sign assemblies.” Ans. 7.
Appellants argue that the Examiner’s proposed modification “is
without merit because each of [the] references requires the securement of a
backside of the light emitting module to the surface of the channel letter”
and that “there is no motivation to illuminate a metal wall.” Appeal Br. 10;
see also Reply Br. 5—6.
We are not persuaded by Appellants’ argument. As discussed supra,
both Swaris and Panagotacos recognize the need for variability in the
configuring the modules, LED arrays, and connections between the modules
to provide the desired illumination for a sign (i.e., a letter channel). Swaris
discloses that “the orientation of each of the modules may be varied in such
a large channel illumination apparatus,” for example, “some of the LED
modules may desirably be angled so as to direct light at various angles
relative to the diffusely reflective surfaces.” Swaris 1 82. Thus, LEDs on
both sides of Swaris’ circuit board, as proposed by the Examiner, has merit,
especially where the module is at an angle with respect to a side wall.
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Accordingly, we sustain the rejection of claim 36 under 35 U.S.C.
§ 103(a) as unpatentable over Swaris, Panagotacos, and Schwartz.
Independent claims 59 and 62 and dependent claims 60, 61, and 63
Appellants present the same argument for the patentability of
independent claims 59 and 62, regarding the location of LEDs on both sides
of the printed circuit board, as presented for claim 36 supra, and we are not
persuaded by Appellants’ argument for the same reasons as set forth supra
with respect to claim 36. Appeal Br. 9-10.
Accordingly, we sustain the rejection of claims 59—63 under
35 U.S.C. § 103(a) as unpatentable over Swaris, Panagotacos, and Schwartz.
Rejection V
Appellants chose not to present additional arguments regarding the
patentability of claim 45, which depends from claim 42, which depends from
independent claim 40; and regarding the patentability of claim 58, which
depends from independent claim 54, apart from the arguments presented for
the independent and intervening claims. Accordingly, for the reasons stated
supra with respect to claims 40, 42, and 54, we sustain the Examiner’s
rejection of claims 45 and 58 under 35 U.S.C. § 103(a) as unpatentable over
Swaris, Panagotacos, Bogner, and Schwartz.
DECISION
The Examiner’s rejection of claims 26—28, 30-34, 37—39, 69, and 71—
73 under 35 U.S.C. § 103(a) as unpatentable over Swaris and Panagotacos is
AFFIRMED.
The Examiner’s rejection of claim 74 under 35 U.S.C. § 103(a) as
unpatentable over Swaris and Panagotacos is REVERSED.
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The Examiner’s rejection of claims 29, 40-44, and 46—55 under
35 U.S.C. § 103(a) as unpatentable over Swaris, Panagotacos, and Bogner is
AFFIRMED.
The Examiner’s rejection of claims 64—68 and 70 under 35 U.S.C.
§ 103(a) as unpatentable over Swaris, Panagotacos, and Priddy is
AFFIRMED.
The Examiner’s rejection of claim 35 under 35 U.S.C. § 103(a) as
unpatentable over Swaris, Panagotacos, and Priddy is REVERSED.
The Examiner’s rejection of claims 36 and 59—63 under 35 U.S.C.
§ 103(a) as unpatentable over Swaris, Panagotacos, and Schwartz is
AFFIRMED.
The Examiner’s rejection of claims 45 and 58 under 35 U.S.C.
§ 103(a) as unpatentable over Swaris, Panagotacos, Bogner, and Schwartz is
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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