Ex Parte ShusterDownload PDFPatent Trial and Appeal BoardJan 14, 201511743850 (P.T.A.B. Jan. 14, 2015) Copy Citation 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 Copy with citationCopy as parenthetical citation