Ex Parte Shuster

Patent Trial and Appeal Board

Jan 14, 2015

11743850 (P.T.A.B. Jan. 14, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/743,850 05/03/2007 Gary S. Shuster 70013.00089 7644
58688 7590 01/15/2015
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
(LA OFFICE)
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
LAU, HOI CHING
ART UNIT PAPER NUMBER
2682
MAIL DATE DELIVERY MODE
01/15/2015 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 GARY S. SHUSTER
____________________

Appeal 2012-006502
Application 11/743,850
Technology Center 2600
____________________

Before ALLEN R. MACDONALD, MICHAEL J. STRAUSS, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006502
Application 11/743,850

2
STATEMENT OF THE CASE
Appellant seeks review of the Examiner’s rejection of claims 1–22
under 35 U.S.C. § 134.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

SUMMARY OF THE INVENTION
The invention is directed to a portable light coupled to a motion
sensor and controller that dims the light depending on its direction of
motion. Spec. 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A portable light comprising:
a housing configured for holding a lighting element and a
portable power source; and
an electrical circuit coupled to the housing, the circuit
configured for sensing motion of the housing and causing the
lighting element to emit light continuously in response to a first
movement of the housing in a first direction and to switch off or
dim in response to a second movement of the housing in a
second direction opposite to the first direction, thereby causing
the portable light to emit a directional light signal that moves
only in the first direction when the housing is swung in a back-
and-forth motion.

PRIOR ART
Dong
Anderson
Hasness
US 5,081,568
US 5,092,669
US 5,519,593
Jan. 14, 1992
Mar. 3, 1992
May 21, 1996

1 Claim 5 remains pending and subject to the instant appeal. Appellant’s
amendment cancelling claim 5 was denied entry because it would result in
the improper dependency of claim 6. Ans. 3.
Appeal 2012-006502
Application 11/743,850

3
Lin
Eason
Avis
US 5,697,695
US 5,748,157
US 6,642,667 B2
Dec. 16, 1997
May 5, 1998
Nov. 4, 2003

REJECTIONS
Claims 1, 2, 5–7, 9, 10, 14–19, 21, and 22 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Lin, Eason and Dong. Ans. 5.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin, Eason, Dong, and Anderson. Ans. 11.
Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin, Eason, Dong, and Avis. Ans. 12.
Claims 11–13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lin, Eason, Dong and Hasness. Ans. 14.

ISSUES and ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner has erred. We are not persuaded by Appellant’s
arguments, and sustain the Examiner’s rejections for the following reasons.

I. Whether the combination of Lin, Eason and Dong discloses a
circuit for sensing the motion of a housing and causing a
continuous emission of light in response to a movement in a
first direction and switching off the light in response to a
movement in an opposite direction.

The Examiner finds Lin teaches a portable light having a lighting
element that can be automatically switched on and off, and that continuously
emits light when switched on. Ans. 5–6 (citing Lin 3:20–33). The
Examiner finds Eason teaches a portable light having an inertial switch that
Appeal 2012-006502
Application 11/743,850

4
detects the motion of a housing, and outputs a signal that turns on lights
inside the housing in response to detecting motion in a first direction and off
in response to detecting motion in an opposite direction. Ans. 6–7 (citing
Eason 7:20–8:28). The Examiner further finds the combination of Lin and
Eason would have involved the “simple substitution of one know [sic]
element for another to obtain predictable results.” Ans. 7.
Appellant argues the Examiner has failed to establish a prima facie
case of obviousness because the combination of Lin, Eason and Dong fails
to disclose all the elements recited in claim 1. App. Br. 6. In particular,
Appellant argues Lin fails to teach “sensing motion of the housing and
causing the lighting element to emit light continuously in response to a first
movement of the housing in a first direction . . . ,” Reply Br. 2 (emphasis
added), while Eason fails to teach a motion sensor that “caus[es] the lighting
element to emit light continuously in response to a first movement of the
housing in a first direction . . . .” Reply Br. 3. Therefore, Appellant argues,
because both “Eason and Lin clearly fail to disclose this element. . . . [T]heir
combination also necessarily fails to provide this element.” Reply Br. 4.
We are not persuaded by Appellant’s arguments.
“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). Thus, Lin and Eason must “be read, not in isolation,” as
Appellant has done, “but for what [each] fairly teaches in combination with
the prior art as a whole.” Id. Reading Lin and Eason together, the Examiner
finds the references teach or suggest detecting the motion of a housing, and
outputting a signal to turn the lights within the housing on or off depending
Appeal 2012-006502
Application 11/743,850

5
on the direction of motion (Eason), and automatically turning the lights
within a housing on or off such that they continuously emit light when
turned on (Lin). Ans. 5–7, 19–20. As a result, as the Examiner found:
Although the light as suggested by Eason is not emitted
continuously during the device is swing in first direction [sic],
however such continuous light emitting function would have
been obviously shown when the motion sensor and the
associated light source controller of Eason is combined with the
continuous light emitting as suggested by Lin.
Ans. 20.
We agree with and adopt the Examiner’s findings as our own, and are
not persuaded by Appellant’s argument that the combination of Lin, Eason
and Dong fails to teach or suggest an electrical circuit having the
functionality recited in claim 1.
Next, Appellant makes the related argument that, because the
combination of Lin, Eason and Dong fails to teach or suggest the motion
detecting electrical circuit discussed supra, it fails to teach or suggest a
portable light that “emit[s] a directional light signal that moves only in the
first direction when the housing is swung in a back-and-forth motion” as
recited in claim 1. App. Br. 9. We are not persuaded by Appellant’s
argument.
As explained above, we agree with the Examiner’s finding that the
combination of Lin, Eason and Dong teaches or suggests an electrical circuit
having the functionality recited in claim 1. Such a circuit would “thereby
caus[e] the portable light to emit a directional light signal that moves only in
the first direction when the housing is swung in a back-and-forth motion” as
also recited in claim 1.
Appeal 2012-006502
Application 11/743,850

6

II. Whether the combination of Lin, Eason and Dong would work
for its intended purpose.

Appellant next argues the combination of Lin, Eason and Dong would
not have been obvious to a person of skill in the art because modifying
Eason “to include continuous illumination of the LED array in response to
the first movement . . . would prevent Eason’s wand from being used for its
intended purpose of displaying characters or animation.” App. Br. 8. We
are not persuaded by Appellant’s argument.
Although we agree with Appellant that modifying Eason to emit a
continuous light signal would frustrate Eason’s intended purpose, the
Examiner has not proposed such a modification. Rather, the Examiner has
proposed modifying Lin’s mechanism of automatically switching a
continuous light source on or off using Eason’s pendulum-based switching
mechanism so that Lin’s light source is automatically switched on when
swinging in a first direction and off when swinging in a second direction.
For example, the Examiner finds:
Therefore, it would have been obvious to one of ordinary skill
in the art at the time of invention to modify the invention as
suggested by Lin to include the motion sensor and the
associated ON/OFF light controlling in respect to the back-
and-forth motion as suggested by Eason, such that the motion
sensor [inertial switch] would cause the lighting element to emit
light continuously [combining the continuously lighting as
suggested by Lin] in response to a first movement of the
housing in a first direction and to switch off or dim in response
to a second movement of the housing in a second direction
opposite to the first direction, causing the portable light to emit
a directional light signal . . . .
Appeal 2012-006502
Application 11/743,850

7
Ans. 21 (emphasis added).
Appellant has not argued modifying Lin in view of Eason in the
manner proposed by the Examiner would cause Lin to cease working for its
intended purpose. And, regardless of the advisability of modifying Eason in
view of Lin in the manner proposed by Appellant, such advisability is not
persuasive of error in the Examiner’s proposed modification of Lin in view
of Eason. We are therefore not persuaded by Appellant’s argument.

III. Whether the Examiner has provided appropriate reasoning to
combine Lin, Eason and Dong to support a conclusion of
obviousness.

Lastly, Appellant argues the Examiner has failed to establish a prima
facie case of obviousness because the Examiner has “fail[ed] to provide a
coherent reason consistent with an exemplary rationale for supporting a
conclusion of obviousness, as set forth in KSR v. Teleflex and the M.P.E.P. at
§ 2143.” App. Br. 10. In particular, Appellant argues the Examiner has
“fail[ed] to show that Lin could have been combined with Eason and Dong
‘according to known methods to yield predictable results,’ by ‘simple
substitution of one known element for another,’ or by ‘use of a known
technique to improve similar devices.’” Id. Appellant further argues the
Examiner could make no such showing “because all of the references fail to
disclose at least the elements of claim 1 as described above.” Id. We are not
persuaded by Appellant’s argument.
First, as explained supra, we are not persuaded by Appellant’s
argument that the combination of Lin, Eason and Dong fails to disclose all
the elements of claim 1, including the motion detecting electrical circuit that
Appeal 2012-006502
Application 11/743,850

8
causes the lamp to continuously emit light only when it is swung in a first
direction. Second, Appellant has provided insufficient evidence to persuade
us the Examiner erred in finding the proposed combination of Lin, Eason
and Dong was no more than the “simple substitution of one know [sic]
element for another to obtain predictable results.” Ans. 7. See KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
For the reasons explained above, Appellant’s contentions are
unpersuasive of Examiner error and we sustain the Examiner’s rejection of
claim 1. Appellant argues for the patentability of independent claims 14 and
18 for the same reasons as claim 1. App. Br. 11–13. Likewise, Appellant
argues for the patentability of dependent claims 2–4, 6–13, 15–17, and 19–
22 for the same reasons as claim 1. App. Br. 13–14. We therefore sustain
the Examiner’s rejection of claims 2–4 and 6–22 for the same reasons as
claim 1.
Finally, Appellant sought to cancel claim 5 in an amendment filed
March 7, 2011, and therefore has not argued for its patentability. App. Br. 3.
The Examiner refused to enter the amendment, because claim 6 is pending
and depends upon claim 5. Ans. 3. As a result, claim 5 remains pending
and rejected under 35 U.S.C. § 103(a) as unpatentable in view of Lin, Eason,
and Dong. Ans. 5. Because Appellant has not argued for its patentability,
we summarily sustain the Examiner’s rejection of claim 5. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008).

Appeal 2012-006502
Application 11/743,850

9
DECISION
For the reasons indicated above, the Examiner’s rejections of claims
1–22 are sustained.
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) .

AFFIRMED

tj