Ex Parte Venegas

Board of Patent Appeals and Interferences

May 22, 2009

09829033 (B.P.A.I. May. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK VENEGAS, JR.
__________

Appeal 2008-5559
Application 09/829,033
Technology Center 2800
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Decided:1 May 22, 2009
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-11. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5559
Application 09/829,033

We AFFIRM.
Appellant claims a lighting assembly for use with a stanchion
extending outwardly from a ground surface (claim 1).
Claim 1 is illustrative:
1. A lighting assembly for use with a stanchion extending outwardly
from a ground surface comprising:

an elongated tubular body having an open end and a closed end
defining an interior cavity, the open end and the interior cavity of the
elongated tubular body being dimensioned to receive the stanchion
substantially entirely therein such that the open end is proximate to or in
contact with the ground surface; and

a lighting assembly, having a light source interconnected to a power
source, the light assembly being secured relative to the tubular body so that
the light is visible exteriorly of the interior cavity.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Morse, Jr. 3,855,924 Dec. 24, 1974
Padilla 4,819,135 Apr. 4, 1989
Moore 5,121,307 Jun. 9, 1992

The appealed rejections are as follows:
1. Claims 1-6 are rejected under 35 U.S.C. § 103 as being unpatentable
over Moore.
2. Claims 7 and 8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Moore in view of Morse, Jr.
3. Claims 9-11 are rejected under 35 U.S.C. § 103 as being unpatentable
over Moore in view of Padilla.
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With regard to rejection (1), Appellant argues claims 1-6 as a group of
which we select claim 1 as representative in rendering our decision.
With regard to rejection (2), Appellant argues claims 7 and 8 as a
group of which we select claim 7 as representative in rendering our decision.
With regard to rejection (3), Appellant argues claims 9-11 as a group
of which we select claim 9 as representative in rendering our decision.

Rejection (1): § 103 over Moore
STATEMENT OF THE CASE
Appellant argues that Moore does not teach or suggest “an open end
[of the elongated tubular body of the lighting assembly] is proximate to or in
contact with the ground surface” as required by claim 1 (App. Br. 2-3).
Appellant contends that Moore’s cover could not extend down to a ground
surface due to the wires and other obstacles the telephone and utility poles
are designed to produce, and extending the cover down would defeat a
purpose for which the prior art is intended (App. Br. 3).
The Examiner contends that changing the length of Moore’s
cylindrical housing 11 to extend the length of the pole would have been a
mere change in the size of the housing and would have provided better
protection to the pole as supported by the admitted prior art in the
“Background of Invention” section of the Specification (Ans. 4-5).
ISSUE
Has Appellant shown that the Examiner reversibly erred in
determining that it would have been obvious to change the length of
Moore’s cylindrical housing such that “the open end is proximate to or in
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contact with the ground surface” as required by claim 1? We decide this
issue in the negative.
PRINCIPLES OF LAW
For a prima facie case of obviousness all the claim features must be
taught or suggested by the applied prior art. In re Royka, 490 F.2d 981, 985
(CCPA 1974).
The applicant bears the procedural burden of showing error in the
Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness”)
(citation and internal quote omitted).
FACTUAL FINDINGS (FF)
1. The Examiner finds that Moore discloses a covering for a pole.
Moore’s covering has an elongated tubular body for positioning over a
pole with a light on the tubular body (Ans. 4). Appellant does not
dispute this finding (App. Br. 2-3).
2. Appellant does not contest the Examiner’s determination that:
It would have been obvious . . . to modify the lighted assembly of
Moore . . . by extending the length of the elongated tubular body, and
accommodating entire stanchion with in itself, or making its open end
proximate the ground, since such a modification would have involved
a mere change in size of the component. In addition, encasing the
stanchion substantially entirely would shield its surface from damage
resulting from external moving elements, and improvement in
aesthetic appearance . . . The above-indicated motivation is also
supported by the prior art admitted by the applicant, and included in
the section entitled “Background of Invention” of the disclosure.
(Ans. 4-5; App. Br. 2-3).

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3. Moore discloses a solar powered strobe light serving as a warning
device for low flying aircraft (col. 1, ll. 7-9). The strobe light may
operate on or near tall structures and other locations where typical
means of powering warning devices is hindered or prohibited (col. 1,
ll. 15-20).
4. Moore discloses that the strobe light may be mounted on a tower, pole
or other structure and used as an emergency marker or permanent
safety fixture particularly for helicopters or other low flying aircraft
(col. 2, ll. 12-17; 40-45). Moore does not limit the size of the pole or
structure on which the strobe light is mounted.

ANALYSIS
Appellant contends that the claim feature requiring that the bottom
end of the cover is proximate to, or in contact with, a ground surface
distinguishes over Moore. The Examiner admits that Moore does not
specifically teach that the open end of the lighting assembly is proximate to
the ground (Ans. 4). However, Appellant has not shown error in the
Examiner’s determination that it would have been obvious to lengthen
Moore’s tubular body to cover a pole such that the end of the covering is
proximate to or in contact with the ground surface because such is a mere
change in size which would better protect the stanchion (Ans. 4-5).
Rather, Appellant contends that lengthening Moore’s tubular body
would defeat a purpose of the telephone pole, on which the Moore’s light
assembly is mounted, by interfering with the wires or beams thereon (App.
Br. 3). However, Moore does not appear to limit the size of the pole or
structure on which the strobe light may be mounted. Instead, Moore seems
to indicate that the critical feature is that the strobe light provides an
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emergency marker or permanent safety fixture for low flying aircraft. In
other words, the strobe light may be attached to smaller poles or structures
as long as it provides relevant information to helicopters and low flying
aircraft. Accordingly, Appellant’s argument is not persuasive.
We further note that whether the claimed lighting assembly has an
open end proximate to or in contact with the ground surface depends upon
the size of the stanchion, which is not claimed. In other words, it would
have been obvious to place Moore’s light assembly on a stanchion sized
such that the light assembly’s tubular body has its open end proximate to or
in contact with a ground surface. As noted above, Moore does not limit the
size of the pole on which the lighting assembly can be mounted.
For the above reasons, we determine that Appellant has not shown
that the Examiner erred in determining that it would have been obvious to
modify Moore’s lighting assembly such that the open end of the assembly is
proximate to or in contact with a ground surface. Accordingly, we affirm
the Examiner’s § 103 rejection of claims 1-6 over Moore.

Rejections (2) and (3): § 103 Rejections over Moore in view of Morse, Jr.
and Moore in view of Padilla
STATEMENT OF THE CASE
With regard to each rejection, Appellant argues that there is no
motivation for combining the teachings of Morse, Jr. or Padilla with
Moore’s lighting assembly (App. Br. 4-5). Appellant further argues that
Morse, Jr. and Padilla are non-analogous art (App. Br. 4 and 6).

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ISSUES
1. Has Appellant shown that the Examiner erred in finding that
Morse, Jr. and Padilla are analogous art to the claimed
invention? We decide this issue in the negative.
2. Has Appellant shown that the Examiner erred in finding reasons
for the combining the teachings Morse, Jr. or Padilla with
Moore? We decide this issue in the negative.

PRINCIPLES OF LAW
Motivation may be found in the nature of the problem to be solved,
the teachings of the pertinent references or from the ordinary knowledge of
those skilled in the art. In re Rouffet, 149 F.3d 1350, 1355-56 (Fed. Cir.
1998).
When determining whether a claimed invention would have been
obvious over a combination of references, “a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
In order to rely on a reference as a basis for rejection of the applicant's
invention, the reference must either be in the field of the applicant's
endeavor or, if not, then be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992).
FINDINGS OF FACT (FF)
3. Appellant states that the problem the claimed invention is
concerned with is “lighted stanchions” (App. Br. 5).
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4. The Specification states that the present invention is related
generally to protective covers for stanchions (Spec. 1). The
Specification further states the invention is directed:
[M]ore particularly to a protective cover with an integrated
lighting assembly for the purpose of providing illumination
around the stanchion in darkness or other low visibility
conditions. (Spec. 1).

5. The Specification states that it is known to customize stanchion
covers to display a customer logo or advertisement (Spec. 2).
The Specification further states that “[t]he elongated tubular
body 22 can be customized to display a message, such as an
image or stenciled letters 40” (Spec. 7).
6. Morse, Jr.’s invention is directed to new and useful
improvements in stencils for making signs consisting of letters,
numerals or both (col. 1, ll. 8-12).
7. Morse, Jr. further discloses that the invention provides a stencil
which is “adapted to conform snuggly to a curved, or rounded,
surface which is to be painted in order to make a neat and
legible sign” (col. 1, ll. 27-31).
8. Morse, Jr. discloses that the stencil may be used to form signs
on round posts (col. 4, ll. 12-20).
9. Padilla’s invention is a bicycle light device and a new and
improved lighting device which provides enhanced durability
and visibility (col. 1, ll. 6-10).
10. Padilla discloses that the lighting device uses light emitting
diodes (LEDs), which are more durable and provide an
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inexpensive and efficient manufacture, in lieu of conventional
light bulbs (col. 1, ll. 20-25, col. 4, ll. 31-38).
11. Padilla discloses that the lighting device makes the user more
visible at night (col. 1, ll. 6-10).

ANALYSIS
Issue 1: Analogous Art
We begin our analysis by addressing Appellant’s analogous art
arguments. Appellant too narrowly states that the problem to be solved by
the invention is “lighted stanchions.” While Appellant discloses providing a
light assembly to the stanchion cover to illuminate the stanchion, Appellant
further discloses that a stencil may be used to provide markings on the cover
presumably to further enhance the visibility of the device as well has
improve the aesthetics of the cover. Therefore, we determine that the
problem to be solved by Appellant is to enhance the visibility of the
stanchion or post as well as improving its aesthetics.
Applying our broader statement of the problem to be solved to the
facts of the appeal, Morse, Jr.’s use of a stencil to provide a legible and neat
sign on a post would have increased the visibility of a post, as well as
enhancing the aesthetics of the post. In other words, Morse Jr.’s invention is
directed to the same problem Appellant sought to solve (i.e., enhancing the
visibility and aesthetics of a post or stanchion). Accordingly, we find that
Morse, Jr.’s invention is directed to the same problem as Appellant’s
invention and is analogous art.
With regard to Padilla, Appellant’s argument focuses solely on the
problem to be solved by Padilla as establishing that Padilla is non-analogous
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art (App Br. 6). However, Padilla’s invention provides a lighting device to
increase visibility of an object (i.e., a bicycle). Similarly, Appellant’s
invention uses a light assembly to increase visibility of a stanchion or post.
Accordingly, we find that Padilla’s and Appellant’s problem to be solved is
the same problem.
We also note that Padilla is in the same field of endeavor as
Appellant’s claimed invention. Specifically, Appellant’s claimed invention
is directed to a lighting assembly. Similarly, Padilla’s device is directed to a
lighting assembly. That Appellant intends to use the lighting assembly for a
stanchion and Padilla intends to use the lighting assembly for a bicycle, does
not change that Padilla and Appellant’s invention are directed to lighting
assemblies. Appellant does not contest that Padilla is in the same field of
endeavor as Appellant’s claimed invention (App. Br. 6).
For the above reasons, we find that Morse, Jr. and Padilla are
analogous art. We now consider Appellant’s motivation arguments.

Issue 2: Motivation
Appellant contends that there is no reason to combine Morse Jr. with
Moore because the prior art does not each or suggest the combination (App.
Br. 4). However, Appellant fails to appreciate that motivation for a
combination of references may be found in the prior art itself, the nature of
Appellant’s problem to be solved or knowledge of one of ordinary skill in
the art. Rouffet, 149 F.3d at 1355-56.
The Examiner finds that motivation exists for combining Morse, Jr.’s
stencil with Moore’s post cover to display messages in a simple manner and
with cost savings (Ans. 6). Such a motivation appears to be drawn from the
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knowledge of one ordinary skill in the art and nature of the problem to be
solved. Specifically, adding a sign to a post increases the aesthetics and
visibility of the post such that the nature of the problem to be solved by the
Moore and Morse, Jr. would have rendered the combination obvious.
Also, adding signage to a post to increase the visibility and improve
aesthetics of the post would have been within the knowledge of one of
ordinary skill in the art. Indeed, Appellant admits that addition of stanchion
or post covers customized with logos or advertisements is known in the art
to increase aesthetics and thus, visibility (Spec. 2).
Accordingly, we determine that Appellant has failed to show error in
the Examiner’s finding that there is a reason for combining Morse, Jr.’s
stenciling to form an image with Moore’s post cover.
With regard to Padilla, the Examiner finds that it would have been
obvious to modify the tubular cover of the lighted assembly of Moore with
the tubular body and LEDs of Padilla’s lighting assembly for the “benefits
and advantages of high attention value displays, and for traffic safety
(Warning) in dark” (Ans. 7). The Examiner further finds that Padilla’s
LEDs would impart “benefits of high energy efficiency, compactness and
long operational life” (Ans. 7). We agree.
Padilla and Moore both use lighting assembly to attract attention of
bystanders for safety. Moore uses a strobe light and Padilla uses flashing
LEDs. Padilla further teaches that LEDs are durable and provide for
efficient and inexpensive manufacture when compared to conventional
bulbs. Accordingly, the references provide reasons for modifying Moore’s
tubular body with a strobe light to use Padilla’s LEDs: to provide an
attention getting display that is energy efficient and durable.
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Appellant contends that there would be no reason for modifying
Moore’s lighting assembly with Padilla’s lighting assembly because
Moore’s device is intended to be mounted on top of telephone poles such
that the desirability of an eye-catching display makes little sense (App. Br.
5). Contrary to Appellant’s argument, the Examiner’s reason for the
modification makes perfect sense. Moore’s invention uses a strobe light to
attract the attention of aircraft. Accordingly, using Padilla’s attention-
attracting, energy efficient light assembly in lieu of a strobe light would have
been obvious. Such a modification is nothing more than the predictable use
of a prior art element (i.e., LEDs) according to its established function (i.e.,
energy efficient light production). KSR, 550 U.S at 417.
For the above reasons, we determine that Appellant has not shown
that the Examiner erred in determining that there are reasons for modifying
Moore’s light assembly with the teachings of Morse, Jr. or Padilla.

DECISION
We affirm the Examiner’s § 103 rejection of claims 1-6 over Moore.
We affirm the Examiner’s § 103 rejection of claims 7 and 8 over
Moore in view of Morse, Jr.
We affirm the Examiner’s § 103 rejection of claims 9-11 over Moore
in view of Padilla.
The Examiner’s decision is affirmed.

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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)(v)(2008).

ORDER
AFFIRMED

cam

GIFFORD, KRASS, SPRINKLE,
ANDERSON & CITKOWSKI, P.C.
PO BOX 7021
TROY, MI 48007-7021

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