Ex parte Poling

Board of Patent Appeals and Interferences

Aug 13, 1997

08042888 (B.P.A.I. Aug. 13, 1997)

Application for patent filed April 5, 1993.1
In the advisory action dated August 8, 1994 (Paper No.2
10) the examiner stated that the amendment after final
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THURMAN Q. POLING
_____________
Appeal No. 95-4589
Application 08/042,8881
______________
ON BRIEF
_______________
Before COHEN, MEISTER and McQUADE, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Thurman Q. Poling (the appellant) appeals from the final
rejection of claims 1-20, the only claims present in the
application. We affirm-in-part.2
Appeal No. 95-4589
Application 08/042,888
rejection filed July 18, 1994 (Paper No. 9) would be entered
for purposes of appeal. We observe, however, that no clerical
entry of this amendment (which amends claims 1, 4, 9, 11 and
18) has in fact been made.
2
The appellant’s invention pertains to a safety light.
Independent claim 1 is further illustrative of the appealed
subject matter and reads as follows:
1. A safety light comprising:
at least one primary lighting element for directing light
energy outward in a particular direction;
at least one group of secondary lighting elements
arranged substantially around said primary lighting element
for directing light energy outward in said particular
direction;
a translucent face lying substantially on a plane
perpendicular to said particular direction comprising a
central portion overlying said primary lighting element and at
least one group of colored elements, each color element of
said at least one group of colored elements overlying each
secondary lighting element of said at least one group
secondary lighting elements, such that when said secondary
lighting elements are illuminated, light emitting from said
secondary lighting element appears to a viewer in a color
corresponding to one of said colored elements;
circuit means for illuminating said primary lighting
element and said secondary lighting elements, said secondary
lighting elements being illuminated in a particular sequence;
and
housing means for housing said lighting elements, said
translucent face and said circuit means of said safety light.
Appeal No. 95-4589
Application 08/042,888
This rejection was set forth as a new ground of3
rejection in the answer.
This rejection was set forth as a new ground of4
rejection in the answer. In the final rejection claims 4 and
13 were rejected under 35 U.S.C. § 103 as being unpatentable
over McComb in view of Swanson, Forrest and McDermott. In
view of the lack of any mention of this rejection in the
answer, we presume that the examiner has withdrawn the final
rejection of claims 4 and 13 on this ground. See Ex parte
Emm, 118 USPQ 180 (Bd. App. 1957).
3
The references relied on by the examiner are:
McComb 926,956 July 6, 1909
Swanson 2,612,548 Sept. 30, 1952
Turner, Jr. (Turner) 3,706,968 Dec. 19, 1972
Barbour 3,868,501 Feb. 25, 1975
Forrest 4,809,584 Mar. 7, 1989
Claim 11 stands rejected under 35 U.S.C. 112, second
paragraph, for failing to particularly point out and
distinctly claim the subject matter which the appellant
regards as the invention.3
Claims 1-3, 5-8, 11, 12, 14-16 and 18-20 stand rejected
under 35 U.S.C. § 103 as being unpatentable over McComb in
view of Forrest and Swanson.
Claims 4 and 13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over McComb in view of Forrest, Swanson and
Barbour.4
Appeal No. 95-4589
Application 08/042,888
4
Claims 9, 10 and 17 stand rejected under 35 U.S.C. § 103
as being unpatentable over McComb in view of Forrest, Swanson
and Turner.
The examiner’s rejections are explained on pages 3-5 of
the answer. Rather than reiterate the arguments of the
appellant and examiner in support of their respective
positions, reference is made to pages 3-6 of the brief, pages
1-3 of the reply brief, pages 5-8 of the answer and pages 1-3
of the supplemental answer for the details thereof.
OPINION
As a preliminary matter we note that (a) on page 3 of the
brief the appellant has stated that the “groups of claims as
present in the rejections of the Examiner can be included
together in the groups as specified in [sic] the Examiner” and
(b) the examiner has stated on page 2 of the answer that
claims 1-3, 5-8, 11, 12, 14-16 and 18-20 stand or fall
together as a first group, claims 4 and 13 stand or fall
together as a second group and claims 9, 10 and 17 stand or
fall together as a third group. Accordingly, with respect to
the rejections under 35 U.S.C. § 103 (1) claims 1-3, 5-8, 11,
12, 14-16 and 18-20 will stand or fall with representative
Appeal No. 95-4589
Application 08/042,888
5
claim 1, (2) claims 4 and 13 will stand or fall with
representative claim 4 and (3) claims 9, 10 and 17 will stand
or fall with representative claim 9. See 37 CFR 1.192(c)(7).
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the brief and reply brief and by
the examiner in the answer and supplemental answer. As a
consequence of this review, we will sustain the rejections
under 35 U.S.C. § 103 of (1) claims 1-3, 5-8, 11, 12, 14-16
and 18-20 based on the combined disclosures of McComb, Forrest
and Swanson and (2) claims 4 and 13 based on the combined
disclosures of McComb, Forrest, Swanson and Barbour. We will
not, however, sustain the rejections of claim 11 under 35
U.S.C. § 112, second paragraph, or claims 9, 10 and 17 under
35 U.S.C. § 103 based on the combined teachings of McComb,
Forrest, Swanson and Turner.
Considering first the rejection of claim 11 under 35
U.S.C. § 112, second paragraph, the examiner is of the opinion
that “said secondary elements” lacks a clear antecedent basis.
We will not support the examiner’s position. The purpose of
Appeal No. 95-4589
Application 08/042,888
6
the second paragraph of § 112 is to basically insure, with a
reasonable degree of particularity, an adequate notification
of the metes and bounds of what is being claimed. See In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
When viewed in light of this authority, we cannot agree with
the examiner that the metes and bounds of claim 11 cannot be
determined. A degree of reasonableness is necessary. As the
court stated in In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971), the determination of whether the claims
of an application satisfy the requirements of the second
paragraph of Section 112 is
merely to determine whether the claims do, in fact,
set out and circumscribe a particular area with a
reasonable degree of precision and particularity.
It is here where the definiteness of language
employed must be analyzed -- not in a vacuum, but
always in light of the teachings of the prior art
and of the particular application disclosure as it
would be interpreted by one possessing the ordinary
level of skill in the pertinent art. [Emphasis ours;
footnote omitted.]
Here, we do not believe that it can seriously be contended
that the artisan, consistent with the appellant’s
specification, would not understand that “said secondary
elements” refers to -- said secondary lighting elements --.
Appeal No. 95-4589
Application 08/042,888
7
This being the case, we will not sustain the rejection of
claim 11 under 35 U.S.C. § 112, second paragraph.
Turning to the rejection of claims 1-3, 5-8, 11, 12, 14-
16 and 18-20 under 35 U.S.C. § 103 as being unpatentable over
McComb in view of Forrest and Swanson, the answer states that:
McComb discloses an electric illuminating
display device which is comprised of a housing, a
central primary lighting element (15, page 2, column
1, lines 44 to 45, figure 1, and the light source in
the center, figure 7) which may continuously
illuminate (also page 2, column 1, lines 42 to 45),
and a plurality of groups (2 to 14, figure 1 and 22
to 24, figure 7) of secondary lighting elements (17)
with one group of secondary lighting elements
surround[ing] another group of secondary lighting
elements. McComb further discloses that the housing
includes a translucent face (29, page 2, column 2,
lines 85 to 87) which lies over the primary and
groups of secondary lighting elements in a plane
perpendicular to a direction of light emitting from
the primary and groups of secondary lighting
elements. McComb also shows that central portion of
this translucent face overlies the central primary
lighting element, and a plurality of color[ed]
elements may overlie the groups of secondary
lighting elements (page 1, column 2, lines 65 to
66). These groups of secondary lighting elements
may also be comprised of different colors (page 1,
column 2, lines 63 to 64) to provide different color
of light intensities. McComb additionally discloses
circuit means (thermo flashers) to energize the
primary and groups of secondary lighting elements.
[Pages 3 and 4.]
Appeal No. 95-4589
Application 08/042,888
We observe, however, that there is no limitation in5
representative claim 1 which requires such a sequence.
8
Page 4 of the answer then states that it would have been
obvious to (1) arrange the circuit of McComb “to provide a
clockwise and counterclockwise illuminated rotating sequence”5
as shown by Forrest and (2) enclose the circuit means of
McComb within the housing in view of the teachings of Swanson.
The appellant does not identify any specific errors with
respect to the above-noted findings by the examiner as to the
content of McComb. Instead, the appellant merely broadly
asserts that
it is not even clear that there is a central
lighting element and the secondary lighting elements
do not appear to include the kinds of color
sequencing and safety features present in
applicant’s device. McComb merely shows an
illuminating device having areas of color overlays
and with the flashing of various lights to make an
attractive sign. This is quite different from
applicant’s safety light as present in the claims.
[Brief, pages 3 and 4.]
We are unpersuaded by the appellant’s arguments. As the
examiner has noted with respect to McComb, the central
lighting element 15 is continuously illuminated and may be
considered to be “at least one primary lighting element” and
Appeal No. 95-4589
Application 08/042,888
9
the light groups 2-14 of Fig. 1 may be considered to form “at
least one group of secondary lighting elements. As the
examiner has also noted, McComb additionally teaches that a
translucent face 29 may be provided and discloses that a
plurality of color elements may overlie the groups of
secondary lighting elements (page 1, lines 65 and 66). Figs.
1, 4-6 and 8 clearly depict a housing means for the lighting
elements and the translucent face. McComb additionally
discloses a circuit means which may include thermo flashers
(Fig. 3) or a clock mechanism (page 1, lines 69-77); however,
the schematic illustration of the circuitry in Fig. 3 does not
depict the circuitry to be contained within the housing.
Accordingly, we find response in McComb for all the
structure set forth in representative claim 1 with the
exception of the limitation that the circuit is housed in the
housing.
However, even with respect to this limitation, we observe that
artisans must be presumed to know something about the art
apart from what the references disclose (see In re Jacoby, 309
F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962)) and the
Appeal No. 95-4589
Application 08/042,888
10
conclusion of obviousness may be made from "common knowledge
and common sense" of the person of ordinary skill in the art
(see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969)). Moreover, skill is presumed on the part of those
practicing in the art. See In re Sovish, 769 F.2d 738, 743,
226 USPQ 771, 774 (Fed. Cir. 1985). Therefore, although
McComb in Fig. 3 schematically shows the circuitry to be
outside the housing for the apparent purpose of ease
illustration, we perceive that the artisan would have been
well aware of the commonplace expedient of enclosing the
circuitry for controlling the operation of a light within the
housing of the light for the purpose of protecting the
circuitry from damage (e.g., exposure to the elements or from
being hit by a foreign object) and would have found it obvious
as a matter of common sense to house the circuitry of McComb
within the housing.
Moreover, as the examiner has observed, Swanson in Fig. 2
depicts a light wherein the circuit which controls the light
is enclosed within the same housing as the light for the self-
evident purposes of providing protection for the circuit and
Appeal No. 95-4589
Application 08/042,888
11
to provide for a more compact device, thus fairly suggesting
to the artisan to enclose the circuit of McComb within the
housing in order to achieve these self-evident advantages.
As to the recitation of “safety” in the preamble of
representative claim 1, it is well settled that a preamble
generally does not limit the scope of a claim if it merely
states the invention's purpose or intended use. In re
Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir.
1994)). While no litmus test can be given with respect to
when the introductory words of a claim constitute a statement
of purpose for a device or are, in themselves, additional
structural limitations of a claim (Corning Glass Works v.
Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d
1962, 1966 (Fed. Cir. 1989)), in a case such as this where the
light of McComb has the capability of functioning as a
“safety” light (indeed, it appears to us that most lights in
general have the capability of broadly functioning as a
“safety” light), we are of the opinion that the recitation of
a safety light in the preamble of representative claim 1 is
merely a statement of intended purpose or use which may not be
Appeal No. 95-4589
Application 08/042,888
12
relied on to distinguish structure from the prior art. See In
re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA
1974), In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706
(CCPA 1973), In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238
(CCPA 1967) and Loctite Corp. v. Ultraseal, Ltd., 781 F.2d
861, 868, 228 USPQ 90, 94 (Fed. Cir. 1985). Note also
LaBounty Manufacturing v. International Trade Commission, 958
F.2d 1066, 1075, 22 USPQ2d 1025, 1032 (Fed. Cir. 1992). In
this regard, we observe that the light of McComb, by its very
nature, can be considered to provide a safety function
inasmuch as it would provide at least some illumination for a
surrounding area or, at the very least, provide a location
“marker” for whatever object it rested on (or was attached
to), thus providing a warning of the presence of that object.
The appellant has also made the broad allegation that the
examiner has combined references (e.g., Swanson) from non-
analogous arts. In our view, the appellant has an overly
narrow view of what constitutes analogous art. It is well
settled that the prior art relevant to an obviousness
determination encompasses not only the field of the inventor's
Appeal No. 95-4589
Application 08/042,888
13
endeavor, but also any analogous arts. Heidelberger
Druckmaschinen AG v. Hantscho Commercial Products Inc., 21
F.3d 1068, 1072, 30 USPQ2d 1377, 1379 (Fed. Cir. 1994). The
test of whether a reference is from a non-analogous art is
first, whether it is within the field of the inventor's
endeavor, and second, if it is not, whether it is reasonably
pertinent to the particular problem with which the inventor
was involved. In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171,
174 (CCPA 1979). A reference is reasonably pertinent if, even
though it may be in a different field of endeavor, it is one
which because of the matter with which it deals, logically
would have commended itself to an inventor's attention in
considering his problem. In re Clay, 966 F.2d 656, 659, 23
USPQ2d 1058, 1061 (Fed. Cir. 1992). Here, the problems of
providing a control circuit for a light and enclosing that
control circuitry within a housing for the light are not
unique to just “safety” lights. By the very nature of such
problems one of ordinary skill in this art would have
consulted lights in general for such features and,
Appeal No. 95-4589
Application 08/042,888
14
accordingly, the second prong of Wood is satisfied and Swanson
is analogous art.
While the examiner (as we have noted above) has
additionally relied on the teachings Forrest for a limitation
not found in representative claim 1, we are of the opinion
that the subject matter defined by representative claim 1 is
unpatentable over the combined teachings of McComb and Swanson
taken alone. This being the case, we will sustain the
examiner’s rejection of claims 1-3, 5-8, 11, 12, 14-16 and 18-
20 under 35 U.S.C. § 103 based on the combined teachings of
McComb, Swanson and Forrest.
Considering next the rejection of claims 4 and 13 under
35 U.S.C. § 103 as being unpatentable over McComb in view of
Forrest, Swanson and Barbour, we are of the opinion that the
artisan as a matter of “common sense” (see Bozek, 416 F.2d at
1390, 163 USPQ at 549) would have found it obvious to make the
centrally located light 15 of McComb (which burns
continuously) of greater intensity than the surrounding
flashing or blinking lights if, for no other reason, than to
make the center of the illuminating display the focal point
Appeal No. 95-4589
Application 08/042,888
15
when viewed by the eye of an observer. In any event, the
appellant does not dispute the examiner’s finding with respect
to Barbour that “each of the secondary lighting elements (44)
has less intensity and is smaller in size than the central
primary lighting element (41)” (see answer, page 5). Instead,
the appellant argues that Barbour is directed to a light box
whose functions are “essentially aesthetic or decorative”
rather than safety (reply brief, page 2). It is true that the
light box of Barbour (much like the light box of the primary
reference to McComb) is primarily concerned with producing
decorative effects. We must point out, however, that “[a]s
long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the
reasons contemplated by the inventor” (In re Beattie, 974 F.2d
1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)) and all the
utilities or benefits of the claimed invention need not be
explicitly disclosed by the prior art references to render the
claim unpatentable under section 103 (see In re Dillon, 919
F.2d 688, 692, 696, 16 USPQ2d 1897, 1901, 1904 (Fed. Cir.
Appeal No. 95-4589
Application 08/042,888
16
1990) (in banc), cert. denied, 500 U.S. 904 (1991)). Here, we
share the examiner’s view that Barbour’s teaching of a
centrally located large white bulb 41 surrounded by smaller
blinker lights 44 would have fairly suggested to the artisan
to make centrally located light 15 of McComb of greater
intensity than the surrounding flashing or blinking lights.
Accordingly, we will sustain the rejection of claims 4 and 13
under 35 U.S.C. § 103 based on the combined disclosures of
McComb, Forrest, Swanson and Barbour.
Considering last the rejection of claims 9, 10 and 17 as
being unpatentable over McComb in view of Forrest, Swanson and
Turner, the examiner has relied upon the teachings of Turner
for a suggestion to rotate the secondary lighting elements of
McComb about the primary light element. We will not support
the examiner’s position. Turner is directed to an entirely
different type of device from that of McComb, namely, a beacon
for aircraft. To that end, Turner rotates a cylindrically-
shaped filter having colored filter segments about two
centrally located lights in such a manner so as to create
colored flashes of light. Absent the appellant’s own
Appeal No. 95-4589
Application 08/042,888
17
disclosure we can think of no cogent reason why one of
ordinary skill in this art would have been motivated to single
out the disparate teachings of Turner and combine them with
McComb in the manner proposed by the examiner. Accordingly,
we will not sustain the rejection of claims 9, 10 and 17 based
on the combined teachings of McComb, Forrest, Swanson and
Turner.
In summary:
The rejection of claim 11 under 35 U.S.C. § 112, second
paragraph, is reversed.
The rejections of 1-8, 11-16 and 18-20 under 35 U.S.C. §
103 are affirmed.
The rejection of claims 9, 10 and 17 under 35 U.S.C. §
103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 95-4589
Application 08/042,888
18
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS
) AND
)
INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
)
Appeal No. 95-4589
Application 08/042,888
19
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