Ex Parte Underwood

Patent Trial and Appeal Board

Dec 21, 2016

13542317 (P.T.A.B. Dec. 21, 2016)

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.
13/542,317 07/05/2012 Jeffrey L. Underwood UNJ0002-02-US 2886
832 7590 12/23/2016
FAFPtRF rakfr dantft n t t p
EXAMINER
110 WEST BERRY STREET KIM, SHIN H
SUITE 2400
FORT WAYNE, IN 46802 ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
inteas @faegrebd.com
mickie .potter @ faegrebd .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY L. UNDERWOOD
Appeal 2015-003241
Application 13/542,317
Technology Center 3600
Before JAMES P. CALVE, LYNNE H. BROWNE, and
GEORGE R. HOSKINS, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the final rejection of
claims 1—3, 5—10, 12—19, and 21—24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2015-003241
Application 13/542,317
CLAIMED SUBJECT MATTER
Claims 1, 10, and 13 are independent. Claim 1 is reproduced below.
1. A sign, comprising:
a cover plate adapted to be mounted to a wall near an
electrical source, said cover plate having a wall mounting
surface, an opposed outwardly facing plate surface, and a sign
aperture extending from said wall mounting surface to said
outwardly facing plate surface; and
a lens received in said sign aperture and protruding
outwardly therefrom such that an outwardly facing lens surface
is spaced outwardly from said outwardly facing plate surface,
said lens having a visual indicia disposed on said outwardly
facing lens surface,
said lens comprising a photoluminescent material capable
of absorbing photons and discharging the absorbed photons
over a period of at least 10 minutes in the absence of photon
absorption.
REJECTIONS
Claims 1, 5—9, 13, 14, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Masson (US 6,642,452 B2, iss. Nov. 4, 2003)
and Meir (US 8,215,815 B2, iss. July 10, 2012).
Claims 2, 3, 10, 12, 18, 19, and 21—24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Masson, Meir, and Gans (US 1,595,831, iss.
Aug. 10, 1926).
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Masson, Meir, and Van Hout (US 4,710,858, iss. Dec. 1, 1987).
ANALYSIS
Claims 1, 5—9, 13, 14, 16, and 17 as unpatentable over Masson and Meir
The Examiner found that Masson discloses the sign and method of
claims 1 and 13, including a lens with luminescent material, but does not
disclose the material to be a photoluminescent material. Final Act. 2, 5—6.
2
Appeal 2015-003241
Application 13/542,317
The Examiner found that Meir teaches an illuminated sign comprising
photoluminescent material 30 capable of absorbing and discharging photons.
Id. at 2—3, 6. The Examiner determined that it would have been obvious to
modify Masson to include Meir’s photoluminescent material to provide an
alternative material property for illuminating the sign of Mason. Id. at 3, 6;
Ans. 2—3. The Examiner also determined that it would have been obvious to
change the composition of the photoluminescent material of Meir to change
the period of photon discharge to illuminate for longer or shorter periods of
time, including 10 minutes as claimed, to control the illumination time of the
sign. Final Act. 3, 6.
Appellant argues that there is no rationale for combining Masson and
Meir. Appeal Br. 10, 22. In particular, Appellant argues that Masson does
not contemplate the use of photoluminescent materials having a period of
photoluminescent discharge with Masson’s backlit, electroluminescent
switch labels, and the photoluminescent materials would negate the purpose
of Masson’s lens to convey information about the operability of the switch.
Id. In this regard, Appellant argues that adding photoluminescent material
that glows after power stops being provided to a switch serves no purpose
because the switch is nonfunctional due to a loss of continuous power, but
the loss of power is not detectable. Id.', Reply Br. 3^4. We agree.
The Examiner’s reason for combining Masson and Meir to render
obvious claims 1 and 13 is not supported by a rational underpinning. The
Examiner has not established sufficiently that a photoluminescent material is
an alternative material to an electroluminescent material, as utilized in
Masson’s backlit switch. Final Act. 3, 6. Meir uses photoluminescent
materials to control lighting wavelength profiles. Meir, 14:16—38.
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Appeal 2015-003241
Application 13/542,317
Even if these materials were recognized as alternative materials in the
context of Masson’s backlit light switch, the Examiner has not provided a
sufficient reason for replacing Masson’s electroluminescent sheet 41 with
the photo luminescent material 30 of Meir. Masson uses electroluminescent
sheet 41 as a light source to illuminate lens 27 and its associated indicia 31
to convey information about the switch or outlet to persons using them. See
Masson, 1:24-43, 3:1—15, 4:43—45. Phosphor particles are embedded in a
dielectric material 48 that is sandwiched between electrically conductive
sheets 45, 46 that are supplied with electric power via electric lines 50, 51
that cause phosphor dielectric layer 47 to provide a light source when a
voltage potential is provided between sheeting layers 45, 46. Id. at 3:25—4:3,
Fig. 4. It is not clear how substitution of Meir’s photoluminescent material
for Masson’s electroluminescent material would improve or even function in
Masson, because Masson uses the electroluminescent material in sheet 41 as
a light source to backlight a lens 27 with indicia 31,32, whereas Meier uses
photoluminescent material and a light to control the light wavelength profile
of light 12. Masson, 1:14-44, 3:53—4:3, Fig. 5; Meir, 14:5—43, Fig. 2a.
Substituting the photoluminescent material for the electroluminescent
light 41 of Masson, as the Examiner proposes, omits a light that is needed to
charge Meir’s photoluminescent material 30. Including Meir’s light 12 with
the photoluminescent material 30 would make a retrofit unable to fit within
switch plate 20 as Masson intends. See Masson, Figs. 4, 5. Embedding a
photoluminescent material 30 in Masson’s lens 27 or using it to illuminate
indicia on a switch or outlet when power ceases to be supplied to the switch
or outlet is contrary to Masson’s purpose of using backlight indicia to show
the location of an operable switch or outlet. See Masson, 1:14-44, 3:7—15.
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Appeal 2015-003241
Application 13/542,317
In light of the foregoing, the Examiner’s determination that it would
have been obvious to use photoluminescent material to discharge photons
over a period of at least 10 minutes after the material ceases to be charged by
an electrical source, as claimed, is not supported by rationale underpinning.1
The Examiner has not explained why a skilled artisan would have used such
a material in the device of Masson, which uses backlighting to indicate an
operable switch or outlet, as discussed above. Appellant argues persuasively
that the modification would undermine the purpose of Masson by indicating
that an outlet or switch is operable (i.e., receiving electrical power) when
power is not supplied to the switch or outlet. Appeal Br. 10; Reply Br. 3.
The Examiner’s finding that Figure 11 of Masson is an electrical outlet that
does not rely on continuous electrical service to work is not supported by a
preponderance of evidence. See Ans. 3. The Examiner has not identified
any disclosure in Masson that this embodiment operates any differently than
the other embodiments in which lenses with printed indicia are backlit by an
electroluminescent light source. Id.', Meir, 4:18—63; see Reply Br. 3^4.
We do not sustain the rejection of claims 1, 5—9, 13, 14, 16, and 17.
Claims 2, 3, 10, 12, 18, 19, and 21—24 as unpatentable over Masson, Meir,
and Cans
Independent claim 10 recites a sign located in a building including an
emergency notification lens comprising a photoluminescent material capable
of absorbing and discharging photons over a period of 10 minutes.
1 Appellant discloses that lens 30 is made of photoluminescent material so
that sign assembly 10 will remain “glowing” for a period of time after power
to light sources 13 that activate the photoluminescent material is interrupted.
Spec. 136. Appellant discloses exemplary thickness of at least 0.10 inches
but the thickness may range from 0.05 inches to 0.25 inches or more and can
provide discharge times of up to 24—32 hours. Id. 37—39.
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Appeal 2015-003241
Application 13/542,317
The Examiner relied on the findings and reasoning discussed above
for claims 1 and 13 in determining that claim 10 is obvious over teachings of
Masson and Meir. See Final Act. 2—3, 5—6, 8—10. The Examiner relied on
Gans to teach a light source disposed within an interior cavity of a lens, as
recited in claim 10, and not to overcome any deficiency of Masson and Meir
discussed above. Id. at 10; Appeal Br. 16 (arguing that Gans does not cure
the deficiencies of Masson and Meir). Thus, we do not sustain the rejection
of claim 10 or its dependent claims 12 and 21—24. We also do not sustain
the rejection of claims 2, 3, 18, and 19, which depend from claims 1 and 13,
respectively.
Claim 15 as unpatentable over Masson, Meir, and Van Hout
The Examiner relied on Van Hout to teach features of claim 15 and
not to overcome deficiencies of Masson or Meir as to independent claim 13,
from which claim 15 depends. See Final Act. 13—14; Appeal Br. 23. Thus,
we do not sustain the rejection of claim 15.
DECISION
We reverse the rejections of claims 1—3, 5—10, 12—19, and 21—24.
REVERSED
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