Ex Parte O et al

Board of Patent Appeals and Interferences

Aug 27, 2008

10501867 (B.P.A.I. Aug. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte EDWIN W. O’BRIEN, ANDY YIASOUMI,
DAVID C. RICHARDSON, and NATHALIE PLOUZENNEC
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Appeal 2008-1385
Application 10/501,867
Technology Center 2800
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Decided: August 27, 2008
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-7 and 9. We have jurisdiction
pursuant to 35 U.S.C. § 6.1

1 Oral arguments were presented on August 14, 2008.
Appeal 2008-1385
Application 10/501,867

Appellants’ claimed invention is directed to a light cover including a
reflective element angled with respect to the cover. Claims 1 and 9 are
illustrative and reproduced below:
1. A light cover arranged to be placed over a light source
emitting infrared radiation, wherein said light cover comprises an
aircraft exterior light cover, wherein the light cover includes a
reflective element angled with respect to said light cover for reflecting
a portion of said emitted infrared radiation away from said light cover
and substantially away from said light source.

9. A light assembly comprising:
a light source mounted within a housing, the light source emitting
infrared radiation;
a light cover placed over said light source; and
a reflective element located between said light source and said light
cover and angled with respect to said light cover, said reflective
element for reflecting a portion of the emitted infrared radiation away
from the light cover and substantially away from said light source.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Gagnon 3,650,808 Mar. 21, 1972
Gray 3,984,673 Oct. 5, 1976
Carlson 4,495,549 Jan. 22, 1985
Bamber 5,017,327 May 21, 1991

Claim 9 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Gray. Claims 1-3 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gray in view of Carlson. Claims 4 and 5 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Gray in view of
Carlson and Bamber. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gray in view of Carlson and Gagnon.

2
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Application 10/501,867

We affirm the anticipation rejection. We reverse all of the
obviousness rejections. Our reasoning follows.
Rejection under § 102(b)
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); accord Glaxo, Inc. v.
Novopharm, Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995). However,
anticipation by a prior art reference does not require that the reference
recognize the inventive concept of the claimed subject matter. See
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633 (Fed. Cir.), cert.
denied, 484 U.S. 827 (1987).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)(citing In re
Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).
Arguments not made in the Briefs are considered to be waived. See
37 C.F.R. § 41.37(c)(vii) (2006).
The Examiner has found that Gray anticipates subject matter
embraced by claim 9; hence, the so stated rejection (Ans. 3-4).
Appellants do not contest the Examiner’s determination that Gray
discloses a light source (16, Fig. 1) and an infrared ray (IR) reflective
element (18, Fig. 1), each as parts of a light assembly. Rather, Appellants
contend that Gray does not disclose the recited “light cover” feature, which,
according to Appellants, must be transparent to visible light (App. Br. 11-12;
Reply Br. 5-7). This argued transparency property is alleged to be missing
from any light covering in Gray, such as element (10, Fig. 1) of Gray. Id. In
subordinate contentions, Appellants urge Gray does not disclose the claim 9
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requirement for specified interrelationships between the light source and
light cover and between the reflector and light cover because Gray lacks the
argued prerequisite transparent “light cover.” Id.
The principal issue developed by these contentions, as presented in
Appellants’ Briefs, is: Have Appellants identified reversible error in the
Examiner’s anticipation determination based on their assertion that the “light
cover” called for as part of the assembly of claim 9 is transparent to light, a
property that the light cover structure of Gray allegedly does not possess?
We answer this question in the negative and we affirm the Examiner’s
anticipation rejection.
As correctly determined by the Examiner, the light assembly of claim
9 does not require the light cover to be transparent to visible light (Ans. 9).
In this regard, Appellants assert the subject Specification allegedly
provides a definition for the term “light cover” and further uses this
terminology in a way that makes clear that nothing other than a transparent
light cover is encompassed by the phrase “light cover” (App. Br. 11; Reply
Br. 5-7). However, we find no clear definition for this claim term at the
referred to portions of the Specification that require this argued narrow
construction of “light cover”; that is, a construction necessarily requiring a
visible light transparency property for the cover without explicitly specifying
such a property in the claim itself, as a limitation. The argued Specification
passage provides a description of an embodiment of the invention that is said
to be “by way of example only” (Spec. 3: 4-5). The argued passage states:
Figure 1 shows a perspective view of a light cover
according to an embodiment of the present invention. The
cover comprises a transparent element 2 that is substantially the
size and shape of the required light cover.
4
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Application 10/501,867

Spec. 3: 10-12 (App. Br. 11; Reply Br. 6)
A definition of the contested claim language that requires importation
of a limitation from the Specification into the claims is not provided by the
exemplary embodiment of Appellants’ claimed invention furnished in the
Specification. The Specification itself disavows such an importation by
expressly discounting the described embodiment as a “by way of example
only” embodiment. While the use of transparent light covers may be
relatively common in the transportation industry, such as in the aircraft
industry for exterior lighting provided by landing lights and navigation lights
(Spec. 1), appealed claim 9 is not limited to an aircraft light assembly by the
express language thereof. Appellants acknowledge as much (App. Br. 11).
In interpreting claim terms, it is inappropriate to read in limitations from the
Specification. In re Paulsen, 30 F.3d 1477, 1480 (Fed. Cir. 1994).
After all, during prosecution of a patent application, the claims therein
are given the broadest reasonable interpretation consistent with the
Specification as they would be understood by one of ordinary skill in the art
to embrace. Gechter v. Davidson, 116 F.3d 1454, 1457, 1460 n.3 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). As pointed out by
the court in In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997):
Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to
their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that
support its interpretation.

In addition, even if we could agree that Appellants had furnished a
persuasive and substantiated argument establishing that claim 9 requires a
transparent “light cover,” Appellants have not fully explained in their Briefs
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how our acceptance of such a claim construction would necessarily obviate
Gray as an anticipatory reference. For example, Gray discloses that the
assembled apparatus includes a view port (13), which “cover” element
would provide for light transmission, with a reflective element (18) located
between light source (16) and the view port light covering element (13).
Appellants have not addressed this aspect of Gray’s assembly in asserting
their claim construction argument in the Briefs.
For the reasons stated above, Appellants’ contention and principal
argument asserting the unclaimed requirement for a transparent
characteristic for the light cover of claim 9, which unclaimed feature is
alleged to provide a patentable distinction over the structure of Gray, is
unpersuasive. Thus, Appellants have not established reversible error in the
Examiner’s anticipation rejection. It follows that we affirm the Examiner’s
anticipation rejection of claim 9, on this record.
Rejections under § 103(a)
Independent claim 1 and dependent claims 2-7 require an aircraft
exterior light cover including an angled IR reflective element.
Concerning the first stated obviousness rejection of claims 1-3 and 7,
the Examiner acknowledges that Gray, which is directed to an external
lighting system for hypobaric or hyperbaric chambers, does not teach or
suggest an aircraft exterior light cover (Ans. 4; Gray, col. 2, ll. 16-20).
The Examiner turns to Carlson for a teaching with respect to aircraft
exterior lights and an infrared radiation filter lens cover, which cover avoids
detection by conventional weapons systems via the removal of IR using a
fluid filter medium. (Ans. 4; Carlson, col. 1, ll. 20-30, col. 4, ll. 23-29, and
col. 6, ll. 4-10).
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Based on the combined teachings of Gray and Carlson, the Examiner
contends that “it would have been obvious to one of ordinary skill in the art
at the time the invention was made to have the light cover of Gray
comprising an aircraft exterior light cover so as to divert the infrared
radiation away from the light source so as to avoid detection by conventional
weapon systems as taught by Carlson” (Ans. 4-5).
Appellants contend that Gray “teaches a lighting system for a
hyperbaric chamber,” not an aircraft exterior light system with covers
therefore (App. Br. 6). While Appellants acknowledge that Carlson is
directed to aircraft exterior lights, Appellants assert that Gray is not so
directed and the Examiner’s proposed combination of these disparate
references has no support (App. Br. 6: Reply Br. 1-5).
The question in this obviousness rejection is: Have Appellants
identified reversible error in the Examiner’s assertion that one of ordinary
skill in the art would have modified Gray’s lighting system based on the
teachings of Carlson to arrive at the claimed subject matter? We answer this
question in the affirmative and we reverse the Examiner’s obviousness
rejection.
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, as correctly pointed
out by Appellants (Br, 6-9), the Examiner has not fairly articulated why one
of ordinary skill in the art would have turned to the aircraft lighting and
protective system of Carlson for a suggestion as to how to modify the
hyperbaric chamber lighting system of Gray in a fashion that would have led
an ordinarily skilled artisan to Appellants’ claimed subject matter. Nor has
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the Examiner reasonably explained why one of ordinary skill in the art
would have turned to the disparate lighting arrangement of Gray to modify
Carlson’s aircraft light and radiation filter arrangement, which latter
arrangement was designed to suppress IR emission from landing lights using
a fluid filtration medium as a weapons defense from heat seeking missiles,
as the Examiner notes (Ans. 7).
In making the assertions set forth in the Answer, the Examiner has
seemingly taken at least some of the applied references’ disclosures out of
context without providing persuasive reasoning to support the contention
that the combination thereof would have led one of ordinary skill in the art
to the here-claimed subject matter.
Rejections based on § 103(a) must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of the invention
from the prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). In other words, the Examiner’s basis for
the rejection falls short of identifying a rationale that would have led an
ordinarily skilled artisan to combine selected features from each reference in
a way that would have resulted in a product corresponding to the claimed
light cover arrangement. See KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1741 (2007).
On this record, we are constrained to reverse the stated obviousness
rejection.
The Examiner’s separate obviousness rejections, as they pertain to
dependent claims 4-6, incorporate the above-discussed combination of Gray
and Carlson. Because the additionally presented Bamber or Gagnon
references are not cited to address this carryover deficiency from the
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aforementioned rejection, we reverse the rejections as presented for
dependent claims 4-6 for essentially the same reasons.
ORDER
The decision of the Examiner to reject claims 9 under 35 U.S.C. §
102(b) as being anticipated by Gray is affirmed. The decision of the
Examiner to reject claims 1-3 and 7 under 35 U.S.C. § 103(a) as being
unpatentable over Gray in view of Carlson; to reject claims 4 and 5 under 35
U.S.C. § 103(a) as being unpatentable over Gray in view of Carlson and
Bamber; and to reject claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Gray in view of Carlson and Gagnon 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) (2006).

AFFIRMED-IN-PART

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