Ex Parte Randolph et al

Patent Trial and Appeal Board

Nov 2, 2017

13649531 (P.T.A.B. Nov. 2, 2017)

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.
13/649,531 10/11/2012 David N. Randolph 1194-106 9885
27820 7590 11/06/2017
WITHROW & TERRANOVA, P.L.L.C.
106 Pinedale Springs Way
Cary, NC27511
EXAMINER
BANNAN, JULIE A
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
11/06/2017 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):
patents @ wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID N. RANDOLPH
and JOHN R. ROWLETTE JR.
Appeal 2017-001013
Application 13/649,531
Technology Center 2800
Before BEVERLY A. FRANKLIN, WESLEY B. DERRICK, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—3, 8, 11, 16—18, and 20—23 of
Application 13/649,531. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 This Decision refers to the Specification filed Oct. 11, 2012 (“Spec.”),
Final Office Action dated Oct. 8, 2015 (“Final Act.”), Appeal Brief filed
June 24, 2016 (“App. Br.”), Examiner’s Answer dated Sept. 8, 2016
(“Ans.”), and Reply Brief filed Oct. 24, 2016 (“Reply Br.”).
2 Appellants identify the real party in interest as Cree, Inc. App. Br. 1.
Appeal 2017-001013
Application 13/649,531
BACKGROUND
The subject matter on appeal relates to a lighting fixture. Spec. 12.
The Specification describes a lighting fixture that has a lens assembly
including a skirt and a primary lens portion. Spec. 4. The skirt extends
inside a mounting structure of the lighting fixture, and the primary lens
portion is coupled to the skirt. Id.
Claim 1, reproduced below with disputed terms italicized, is
illustrative of the subject matter on appeal:
1. A lighting fixture comprising:
• a mounting structure having a rim at an end of at least one
sidewall;
• a light source coupled inside the mounting structure and
configured to emit light in a forward direction through an opening
formed by the rim; and
• a lens assembly comprising:
• a skirt that extends inside the mounting structure;
• at least one tab that extends from a side of the skirt in a
rearward direction that is opposite the forward direction and is
coupled to the mounting structure; and
- a primary lens portion that is unitary with the skirt such that
the at least one tab extends from the primary lens via the skirt,
where the primary lens projects in the forward direction
substantially past the rim, and covers the opening provided by
the rim.
App. Br. 10 (Claims Appx.).
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Appeal 2017-001013
Application 13/649,531
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1—3, 8, 11, 17, 18, and 20-23 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Verdes.3
2. Claims 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Verdes and Lane.4
DISCUSSION
Anticipation Rejection: Claims 1-3, 8, 11, 17, 18, and 20-23
Appellants argue independent claim 1 and do not present separate
argument for the dependent claims. App. Br. 5—8. Accordingly, we focus
our discussion on claim 1; dependent claims stand or fall with the claim
from which they depend. See 37 C.F.R. § 41.37(c)(l)(iv). Having
considered Appellants’ arguments in light of this appeal record, we are not
persuaded that Appellants identify reversible error. Accordingly, we affirm
the rejections for the reasons set forth in the Final Action and Examiner’s
Answer, which we adopt as our own. We add the following primarily for
emphasis.
The Examiner finds that Verdes teaches a lighting fixture comprising
a mounting structure 25, a light source 51, and a lens 21 that correspond to
the three main elements recited in claim 1. Final Act. 2—3. The Examiner
further finds that lens 21 as shown in Verdes’ Figure 5 (reproduced below)
extends inside a mounting structure and comprises a tab that is coupled to
the mounting structure, a skirt that extends inside the mounting structure,
3Verdes et al., US 6,948,829 B2 (iss. Sept. 27, 2005) (“Verdes”).
4Lane et al., US 1,099,061 (iss. Jun. 2, 1914) (“Lane”).
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Appeal 2017-001013
Application 13/649,531
and a primary lens portion that is unitary with the skirt such that the tab
extends from the primary lens via the skirt, as recited in claim 1. Id.
Figure 5 depicts a cut away view of an LED light bulb 50 including a
lens 21. Verdes 2:66—67, 3:42-45. The Examiner provides an annotated
version of Figure 5 including labels of the parts that correspond to the lens,
skirt, and tab in the Final Rejection. Final Act. 3.
Appellants argue that Verdes does not anticipate claim 1 because the
portion of Verdes’ lens 21 that the Examiner relies upon as corresponding to
a skirt “is not actually a skirt” because “the skirt is a separate portion of the
lens assembly and not part of the lens.” App. Br. 7. Appellants rely upon
Figure 20 of the Specification as showing that the skirt is a separate portion
of the lens assembly and not part of the lens, i.e. “skirt 76 is not the primary
lens portion 74 itself. Instead, as may be clearly seen with reference to
Figure 20, the skirt 76 is clearly separate from the primary lens portion 74.”
App. Br. 7—8, citing Spec. 1 86.
Appellants’ arguments are not persuasive of reversible error.
Appellants’ argument is based on a contention that the broadest reasonable
interpretation of “a primary lens portion that is unitary with the skirt such
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Appeal 2017-001013
Application 13/649,531
that at least one tab extends from the primary lens via the skirt” as recited in
claim 1 does not encompass the portions of lens 21 disclosed in Verdes’
Figure 5 and relied upon by the Examiner. Appellants do not direct us to
any evidence in the Specification, however, to support their contention, nor
do we find a definition for “a primary lens portion” or “a skirt” in the
Specification. We note Appellants’ reliance on Specification | 86; that
passage, however, does not define or limit the claim terms. Absent a special
definition, the terms are given their ordinary meaning as would be
understood by a person of skill in the art. In re Translogic Tech., 504 F.3d
at 1257. For these reasons, using the broadest reasonable interpretation of
the disputed claim term italicized above, we determine that a preponderance
of the evidence supports the Examiner’s finding of anticipation.
Rejection 2
Appellants address the obviousness rejection of claim 16 separately,
but rely solely on their argument against the rejection of claim 1 and do not
dispute the Examiner’s reasons for combining the references. Appellants’
argument is merely that Verdes does not disclose or suggest the features of
claim 1 and that Lane does not remedy the deficiency. App. Br. 8.
Accordingly, Appellants’ argument does not rise to the level of a separate
argument for patentability. Cf. In reLovin, 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”). Therefore, we affirm Rejection 2 for the
same reasons as Rejection 1, explained above.
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Appeal 2017-001013
Application 13/649,531
SUMMARY
We affirm the rejections of claims 1—3, 8, 11, 16—18, and 20-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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