Ex Parte Roberts

Patent Trial and Appeal Board

Sep 30, 2016

12056431 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/056,431 03/27/2008 John Roberts
65106 7590 10/04/2016
MYERS BIGEL & SIBLEY, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
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.
5308-816 9559
EXAMINER
FAN, HONGMIN
ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN ROBERTS
Appeal2015-005317
Application 12/056,431
Technology Center 2600
Before JOHNNY A. KUMAR, CARL L. SILVERMAN, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5 and 7-19, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The claimed invention relates to a solid-state lighting panel that both
conveys information and illuminates. Spec. i-fi-1 1-2; Abs. Claims 1, 7, and
13 are independent. Claim 1 is illustrative of the invention and the subject
1 Appellant identifies Cree Inc. as the real party in interest. App. Br. 1.
Appeal 2015-005317
Application 12/056,431
matter of this appeal, and reads as follows (with the disputed limitations
emphasized):
1. An apparatus comprising:
a solid-state lighting panel that is configured to illuminate
a personnel space, the solid-state lighting panel comprising a
plurality of solid-state light emitters and an input module that is
configured to receive an input signal from a lighting panel group
controller that is configured to collaboratively control a plurality
of solid-state lighting panels that are arranged above the
personnel space in a spaced apart manner to disperse
illumination throughout a substantial portion of the personnel
space,
wherein the solid state lighting panel is configured to
selectively operate, responsive to the input signal received by the
input module, in a first mode to illuminate the personnel space
and in a second mode to communicate information to occupants
of the personnel space, and
wherein the lighting panel group controller is further
configured to selectively operate the ones of the plurality of
solid-state lighting panels in a dynamic configuration in the
second mode via a sequence corresponding to the input signal.
App. Br. 12 (emphases added).
THE REJECTIONS ON APPEAL
Claims 1-5, 7-11, 13, 15-17, and 19 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Pederson et al. (US 2008/0136661
Al; pub. June 12, 2008) ("Pederson"), Rozenberg et al. (US 6,994,452 B2;
pub. Feb. 7, 2006) ("Rozenberg"), Fukuda (JP 2007/248687; pub. Sep. 27,
2007), and Au et al. (US 2008/0236007 Al; pub. Oct. 2, 2008). Final Act.
2-5.
Claims 12, 14, and 18 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Pederson, Rozenberg, Fukuda, Au, and
Lemelson et al. (US 2002/0008637 Al; pub. Jan. 24, 2002). Final Act. 5---6.
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Appeal 2015-005317
Application I2/056,43 I
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). On this record, we are not persuaded the Examiner erred.
We adopt as our own the findings and reasons set forth in the rejections from
which this appeal is taken and in the Examiner's Answer, and highlight the
following for emphasis.
Claim 1
Appellant argues the Examiner erred in finding the prior art teaches
the limitations of claim I (specifically, the limitations in italics above, supra
at 2), and erred in finding a rationale to combine the references. App. Br. 5-
9. Appellant's numerous arguments overlap significantly, in that each
argument reflects Appellant's position that "personnel space" as recited in
claim l is distinct from (and not taught by) areas corresponding to the
lighting systems in the prior art cited by the Examiner (e.g., outdoor lighting,
vehicle mounted lighting, portable lighting). We begin, therefore, by turning
to Appellant's invention and proffered interpretation of "personnel space."
An understanding of Appellant's claimed invention may be gleaned
from Appellant's drawings. Figures IC and ID are reproduced below.
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Appeal 2015-005317
Application I2/056,43 I
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FIGURE 1D
Figures IC and ID are "front views" illustrating "different modes of an
apparatus for providing general illumination and communication according
to some embodiments of the present invention." Spec. i-f 26. Both figures
show "solid-state lighting panel I 00," including multiple "solid-state
emitters" each of which are either energized (102A) or de-energized (102B).
Id. ,-r 46. The figures also illustrate "multi-node lighting panel controller
I IO" for controlling the solid-state emitters, and "input signal I I 2" that may
be received from an external system (such as "alarm" or "emergency"). Id.
i-f 53. Selected solid-state emitters may be energized to convey a message
(such as "SALE" as in Figure ID or an arrow showing a route as in Figure
IC), or all solid-state emitters may be energized so as to "provide general
illumination of the proximate area." Id. i-fi-147--48. The latter arrangement,
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Appeal 2015-005317
Application 12/056,431
in which all emitters are energized, is illustrated in Appellant's Figure IA,
reproduced below.
···: ... --------.. /1-n .. -:
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••umuu \ ' 1:".:~::~•mJ:::::::=::::::J~1 ~("12 mm-. leeetiiee••••••••••••• ••••••i i••························1 ! .•••••••••••••••••••••••••• !••························ i••······················••: !••····················••••! l••·····················•••i i••····.····················i1 '1··························· ••••••••••••••• • •••••••• ••••••••••••••• • •••••••• 109@@eeoe@@09fl0 OG@@eeeo@i l••·······················•i L ........ -. --------·----···---------~---------·-------- , F1GURE1A
Figure IA shows solid state lighting panel 100, multi-node lighting panel
controller 110, and input signal 112, but with all solid-state emitters 102
energized.
Appellant's claim 1 recites a solid-state lighting panel "configured to
illuminate a personnel space." App. Br. 12 (emphasis added). The
Examiner construes "personnel space" to be "either indoor or outdoor" and
to include (for example) the space in and surrounding an emergency, police,
or service vehicle, in a department store, and similar spaces. Ans. 3, 7.
According to the Examiner, Appellant did not define the term or constrain it
to a particular location, either in the claim itself or in the Specification. Id.
Appellant disputes the Examiner's construction throughout the Briefs, but
Appellant never explicitly offers a definition. App. Br. 5-7; Reply Br. 2
(arguing that "using the interpretation suggested by the Examiner, every
space everywhere would be a personnel space.").
Giving the phrase "personnel space" its broadest reasonable
interpretation consistent with the Specification, as we must, see In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), we are not
persuaded the Examiner erred. The claim language does not specify what
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Appeal 2015-005317
Application 12/056,431
"personnel space" is, or whether it is indoor or outdoor, beyond the recited
limitations related to illumination of such space. Appellant's Specification
cites various "example[ s ]" of personnel spaces, including "office, laboratory,
manufacturing area, retail," but does not suggest these "example[s]" are
limiting. Spec. i-f 88. In fact, the Specification modifies the foregoing
examples with the clause "and/ or other type of space designed to be
occupied by personnel," further suggesting the examples are not intended to
exclusively define the term. Id. (emphasis added). Appellant does not
specify that the space can or cannot be indoor, outdoor, in a vehicle, etc., nor
does Appellant specify any particular "personnel. "2 Appellant cites no
dictionary definition, and does not provide any persuasive evidence that the
Examiner's interpretation is overbroad or otherwise unreasonable.
Accordingly, we are not persuaded by Appellant's argument that "personnel
space" must be indoors, App. Br. 5---6. We conclude personnel space would
include the spaces cited by the Examiner, and also any other space where
people are engaged in employment, service or other organized undertaking.
See supra n.2; Spec. i-f 88.
Turning to Appellant's specific arguments, Appellant first contends
the Examiner erred in finding Pederson teaches lighting panels "arranged
above the personnel space in a space apart manner to disperse illumination
throughout a substantial portion of the personnel space," because Pederson is
directed to an outdoor or vehicle mounted light system. App. Br. 6. We are
2 "Personnel" means "people employed in an organization, or engaged in a
service or undertaking." Oxford English Dictionary Online,
http://www.oed.com/view/Entry/141512?redirectedFrom=personnel#eid,
(last visited 09/29/2016).
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Appeal 2015-005317
Application 12/056,431
not persuaded of error. As discussed above, Appellant's claimed "personnel
space" is not constrained to buildings. Pederson, as the Examiner finds,
illustrates and teaches various lighting configurations on, around, and near
emergency vehicles such as a police car, fire truck, or ambulance. Ans. 2-3
(citing Pederson Figs. 2, 13, 14, and 33); Pederson i-f 2. Because we find one
of ordinary skill in the art would understand the operators of such vehicles
(such as police officers) as "personnel," we agree with the Examiner's
finding that Pederson teaches lighting panels arranged to illuminate
personnel space. Ans. 2-3. Appellant's arguments that Pederson fails to
teach the lighting panels "above" the personnel space and "spaced apart" are
contradicted by the record, see, e.g., Pederson Figs. 2, 13, 14, and 33, and
thus unpersuasive of error. 3
Similarly, Appellant argues the Examiner erred in finding the prior art
teaches a panel configured to "in a first mode ... illuminate the personnel
space and in a second mode to communicate information to occupants of the
personnel space." App. Br. 7 (emphasis added). As the Examiner finds,
however, Fukuda expressly teaches a light array controller with
3 In the event of further prosecution, the Examiner may consider whether
claim 1 complies with the definiteness requirement of 35 U.S.C. § 112. The
claim's nested "configured to" clauses include various recitations of "a"
solid-state lighting panel, "the" solid-state lighting panel, and "a plurality"
of solid-state lighting panels. App. Br. 12 (emphasis added); see Ex parte
Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential). vVe also
note that the limitations of an apparatus claim (such as claim 1) "depend on
the claimed structure, not on the use or purpose of that structure." Catalina
Marketing Int'!., Inc. v. Coo/savings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). Because we agree with the Examiner's interpretation of "personnel
space'' and findings regarding Pederson, Fukuda and Au; we do not further
address the foregoing issues5 which were not argued in the briefs.
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Appeal 2015-005317
Application 12/056,431
"illumination mode and display mode." Ans. 6 (citing Fukuda il I 1)
(emphasis added). Accordingly, we agree with the Examiner's finding that
the combined teachings of Fukuda and Pederson (and the teachings of Au,
discussed below) teach the disputed limitation. Ans. 6. Appellant's
argument that Fukuda's modes do not pertain to "personnel space" is
unpersuasive for the reasons discussed above.
Appellant next argues the Examiner erred in finding the prior art
teaches the controller is configured to selectively operate the lighting panels
"in a dynamic configuration." App. Br. 8-9. The Examiner finds the
teaching of "dynamic" control and configuration in Au, which describes
emergency message lighting control "used for conveying static or dynamic
messaging to potential viewers." Au i-f 48 (emphasis added); Ans. 7. We
agree with the Examiner's finding. Appellant contends that the dynamic
messaging in Au does not teach the disputed limitation because it relates to
"displaying messages on top of a vehicle," App. Br. 8, rather than
"personnel space" as claimed by Appellant, but we reject this argument for
the reasons discussed above. See also supra n.3.
Finally, Appellant argues the Examiner erred in relying upon the cited
combination of references, because the references constitute non-analogous
art. App. Br. 8-9. Specifically, Appellant argues one of ordinary skill
would not "look to ... vehicle based references (Pederson and Au) for
teachings related to personnel space lighting." Id. As discussed above,
however, we find "personnel space" includes the space in and around a
vehicle, particularly the police and emergency vehicles taught in the cited
references. Moreover, even if Appellant's claim were limited in the manner
Appellant argues, the prior art's teachings regarding illumination and
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Application 12/056,431
messaging still would be "reasonably pertinent to the problem" with which
the inventor was concerned, and would have "commended [themselves] to
[the] inventor's attention in considering his or her invention as a whole." In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379--80 (Fed. Cir. 2007).
Thus, we are not persuaded the Examiner erred.
For the foregoing reasons, we sustain the rejection of claim 1 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Pederson, Rozenberg,
Fukuda, and Au.
Remaining Claims
Appellant argues remaining independent claims 7 and 13, which recite
limitations commensurate in scope with claim 1, and dependent claims 2-5,
8-12, and 14--19, all are patentable for the same reasons as claim 1. App.
Br. 9-10. Because, as discussed above, we are unpersuaded the Examiner
erred in rejecting claim 1, Appellant's arguments do not persuade us of error
regarding the remaining claims. Accordingly, we sustain the rejection of
claims 2-5, 7-11, 13, 15-17, and 19 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Pederson, Rozenberg, Fukuda, and Au. We also sustain
the rejection of claims 12, 14, and 18 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Pederson, Rozenberg, Fukuda, Au, and Lemelson.
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Appeal 2015-005317
Application 12/056,431
DECISION
We affirm the Examiner's decision to reject claims 1-5 and 7-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
10