Ex Parte van de Ven et al

Patent Trial and Appeal Board

May 11, 2018

13416613 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/416,613 03/09/2012
65106 7590
MYERS BIGEL, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
05/15/2018
FIRST NAMED INVENTOR
Antony P. van de Ven
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.
5308-1354 4802
EXAMINER
PHAM, THAIN
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
05/15/2018 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 ANTONY P. VAN DE VEN and
JOSEPH PAUL CHOBOT
Appeal2016-004223
Application 13/416,613
Technology Center 2800
Before JULIA HEANEY, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-3, 5-12, 16-17, 19-22, 24--32, 36, and 37. 1 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as Cree, Inc. Appeal Brief filed July
7, 2015 ("App. Br."), 1.
Appeal2016-004223
Application 13/416,613
CLAIMED SUBJECT MATTER
The claims are directed to methods and circuits for controlling
lighting characteristics of solid state lighting devices and lighting apparatus
incorporating such methods and/or circuits. Spec. i-f 2. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method of controlling a solid state lighting apparatus, the
method comprising:
receiving a solid state lighting characteristic selection
signal at a solid state lighting apparatus; and
selecting, responsive to the solid state lighting
characteristic selection signal, a solid state lighting model
defining a relationship between different lighting parameters
used to vary light output from the solid state lighting apparatus
responsive to a user input provided to the solid state lighting
apparatus.
App. Br. 9 (Claims Appendix) (emphases added).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims are:
Lyons I
Lyons II
US 2006/0237636 Al
US 2009/0218960 Al
2
Oct. 26, 2006
Sept. 3, 2009
Appeal2016-004223
Application 13/416,613
REJECTION2
Claims 1-3, 5-12, 16-17, 29-22, 24--32, 36, and 37 are rejected under
pre-AIA 35 U.S.C. 102(b) as being anticipated by Lyons I. Final Act. 2. 3
OPINION
The dispositive issue on appeal is whether the broadest reasonable
interpretation of the claim term "different lighting parameters" encompasses
"one or more parameters of the combined light generated by the lighting
system" as proposed by the Examiner. Compare Final Act. 10 ("Therefore,
the examiner interprets ' ... different lighting parameter' with a broadest
reasonable interpretation as one or more parameters of the combined light
generated by the lighting system.") with App. Br. 3.
From the outset, we note that the claim term "a solid state lighting
model defining a relationship between different lighting parameters used to
vary light output" may be subject to multiple interpretations. For example, it
is ambiguous as to whether it is the "different lighting parameters" that are
"used to vary light output" or whether it is the "solid state lighting model"
that is "used to vary light output." According to the Specification, "the
plurality of predefined solid state lighting models are configured to vary the
light output from the solid state lighting apparatus differently in response to
identical user input to the solid state lighting apparatus." Spec. i-f 21. We
therefore understand claim 1 to mean that it is the "solid state lighting
2 Additional rejections are not part of this appeal. See App. Br. 3.
3 We refer to the Final Action mailed December 26, 2014 ("Final Act.") and
the Examiner's Answer mailed November 25, 2015 ("Ans."). No Reply
Brief has been submitted.
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Appeal2016-004223
Application 13/416,613
model" that is "used to vary light output." The "solid state lighting model"
also "defin[ es] a relationship between different lighting parameters."
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). Claims should be given their broadest
reasonable interpretation during examination. "[D]uring patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed." In re Zietz, 893
F.2d 319, 321 (Fed. Cir. 1989).
In this case, the Examiner interprets the claim term "different lighting
parameters" to mean "one or more parameters of the combined light
generated by the lighting system." Final Act. 10; see also Ans. 4 ("the
examiner interprets ... different lighting parameter ... as one or more
parameters of the combined light generated by the lighting system 'e.g.,
color, intensity, temperature and pulse parameter such as frequency and duty
cycle."'). Limitations from the specification may not be read into the claims
but claims should not be construed so broadly as to vitiate an express claim
limitation. See Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988);
see also Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17,
29 (1997) (each element in a claim is material to defining the scope of the
invention). In interpreting the claim term "a relationship between different
lighting parameters" to mean "one or more parameters of the combined light
generated by the lighting system," the Examiner effectively removes the
plural term "parameters" from the claim. Moreover, one parameter - as
proposed by the Examiner here - cannot be "different" from itself, contrary
to what the claim recites. The record before us is also not clear whether or
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Appeal2016-004223
Application 13/416,613
how the Examiner interprets the recited "relationship" that is "between
different lighting parameters" as recited in claim 1. As a result, we cannot
sustain the anticipation rejection based on the Examiner's interpretation of
the claim term.
DECISION
The Examiner's rejection of claims 1-3, 5-12, 16-17, 19-22, 24--32,
36, and 37 is reversed.
REVERSED
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