Ex Parte VOGT

Patent Trial and Appeal Board

Apr 27, 2018

14186353 (P.T.A.B. Apr. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/186,353 02/21/2014 STEVEN D. VOGT
60817 7590 05/01/2018
Frederick W. Gibb, III, Esq.
GIBB & RILEY, LLC
844 West Street
Suite 300
Annapolis, MD 21401
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.
VOG.5000CON 7824
EXAMINER
KIM, EUGENE LEE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/01/2018 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):
support@gibbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN D. VOGT 1
Appeal2017-003052
Application 14/186,353
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is the inventor, Steven D.
Vogt. Br. 3.
Appeal2017-003052
Application 14/186,353
CLAIMED SUBJECT MATTER
The claims are directed to a light source for projecting lines defining
an activity area. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An apparatus comprising:
a housing;
a connector connected to said housing; and
at least one light source within said housing,
said connector connecting said housing to a basketball
backboard device,
said at least one light source projecting lines defining a
foul lane for a basketball court on a surface that is otherwise
without lines, and
said at least one light source projecting light onto a
basketball backboard of said basketball backboard device.
Br. 19 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hale
Aubusson
Mower
Sonnleitner
Epel
us 5,124,899
us 5,174,571
us 5,294,913
us 5,695,279
us 5,976,039
June 23, 1992
Dec. 29, 1992
Mar. 15, 1994
Dec. 9, 1997
Nov. 2, 1999
Light Blue Optics (http://web.archive.org/
web/20100114102840/http://lightblueoptics.com/products/light-touch/)
(published Jan. 14, 2010) (hereinafter "Lightblueoptics").
REJECTIONS
(I) Claims 1-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hale, Epel, Mower, and Lightblueoptics.
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Application 14/186,353
(II) Claims 1-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aubusson, Sonnleitner, and Mower.
OPINION
In addressing Rejections (I) and (II), Appellant makes arguments for
the patentability of claims 1-20 as a group. See Br. 7, 13-14, 17. We select
claim 1 as the representative claim, and claims 2-20 stand or fall with claim
I. See 37 C.F.R. § 4I.37(c)(l)(iv).
Rejection (I)
The Examiner relies on Hale to teach most of the elements required by
claim 1, but relies on Epel to disclose "a light source that can project a game
line for a sport game," Lightblueoptics to teach "the projection of curves and
images," and Mower to teach "mount[ ing] devices into an enclosure for a
sport game." Final Act. 2. The Examiner finds that combining these
teachings to arrive at the apparatus recited in claim 1 would have been
obvious to a person of ordinary skill in the art because it would have been
"[ c ]ombining prior art elements according to known methods to yield
predictable results and [ a ]pp lying a known technique to a known device
(method, or product) ready for improvement to yield predictable results."
Id. at 2-3 ( citing KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
Furthermore, the Examiner determines that the use of Lightblueoptics'
projection system with Hale would "permit the user to easily modify the
playing area to permit other games to be played on the playing area," and the
use of Mower's housing would "protect the devices from the elements and
permit easy relocation of the device." Id. at 3.
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Application 14/186,353
Appellant summarizes the independent claims and the references cited
in Rejection (I) and then states
the proposed combination of Hale, Epel, Mower, and
Lightblueoptics does not disclose or suggest the claimed
limitation "said at least one light source projecting lines defining
a foul lane for a basketball court on a surface that is otherwise
without lines, and said at least one light source projecting light
onto a basketball backboard of said basketball backboard device"
as similarly defined by independent claims 1, 8, and 15.
Br. 12 ( quoting claim 1 ). Thus, Appellant reproduces a large portion of
claim 1 and asserts that the "proposed combination" fails to disclose or
suggest the numerous requirements set forth in this language. Id.
Appellant's general discussion of the disclosures in each of Hale,
Epel, Mower, and Lightblueoptics is unavailing because it does not identify
any error in the Examiner's findings of fact or address the specific rationales
the Examiner articulated for combining the teachings of these references.
Indeed, there does not appear to be any disagreement between Appellant and
the Examiner as to the relevant disclosure of each of Hale, Epel, Mower, and
Lightblueoptics. Compare Br. 9-12, with Ans. 2-8. Notwithstanding
Appellant's statement that the proposed combination of the cited references
fails to disclose certain limitations of claims 1, 8, and 15, Appellant's
argument amounts to an attack on the references individually, whereas the
Examiner's rejection of these claims is based on a combination of the cited
references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures).
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Application 14/186,353
Appellant contends that, "[ w ]hile Hale teaches a basketball goal light,
none of the other applied references would modify Hale to arrive at the
claimed structure that projects lines defining a foul lane for a basketball
court while, at the same time, projecting light onto a basketball backboard."
Br. 12.
This contention implies that the cited references themselves must
provide a teaching, suggestion, or motivation to modify Hale to meet the
requirements of claim 1. We disagree. The Examiner's obviousness
rejection must be based on
"some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" .... [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for [an
examiner] can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.
KSR Int'!., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) ). The Examiner set forth reasoning for the proposed combination
of the teachings of Hale, Epel, Mower, and Lightblueoptics (see Final Act.
2-3), and we agree that combining these teachings, as put forward by the
Examiner, would have been the combination of familiar elements according
to known methods to yield predictable results (see KSR Int'!, 550 U.S. at
416). Furthermore, Appellant does not dispute that the use of the teachings
of Lightblueoptics in combination with the apparatus of Hale, as proposed
by the Examiner, would "permit the user to easily modify the playing area to
permit other games to be played on the playing area." Final Act. 2-3. Nor
does Appellant dispute that using the housing of Mower with the apparatus
of Hale would "protect the devices from the elements and permit easy
relocation." Id. at 3.
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Application 14/186,353
Appellant contends, "the new structure defined by the claims has at
least one light source that projects lines defining a foul lane while projecting
light onto a basketball backboard, which is something that the structure
disclosed in Hale could not perform," and, therefore, "the claims define a
different structure than that disclosed in Hale, and not just a different
intended use of the same structure." Br. 12.
Appellant's argument as to a deficiency of Hale does not address the
Examiner's rejection of claim 1, which is based on the combination of
teachings of Hale, Epel, Mower, and Lightblueoptics. The Examiner
acknowledges this deficiency in Hale and then remedies it by finding
appropriate teachings in other references and by articulating reasoning,
supported by rational underpinnings, for incorporating these teachings. See
Final Act. 2-3
Appellant contends that Epel requires lines and complex lighting
structures be permanently installed to allow lines for gameplay to be
adjusted. See Br. 13. This contention is unavailing because (i) claim 1 does
not require a lack of permanence for the apparatus, (ii) the apparatus
proposed by the Examiner need not be permanently installed, and (iii) the
proposed apparatus would be able to project lines defining a foul lane for a
basketball court regardless of whether other lines were installed on the
surface on which the lines were projected.
Appellant argues that Lightblueoptics is "in a different art field related
to computer input devices and cannot provide any suggestions regarding
lighting a foul lane of a basketball court." Br. 13. To the extent this
argument implies that Lightblueoptics is non-analogous art, we disagree
because Lightblueoptics is reasonably pertinent to the problem faced by
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Application 14/186,353
Appellant, namely, projecting boundary lines for activities. See Spec. ,r 4,
Lightblueoptics, 1-2. In this regard, the keyboard projected by
Lightblueoptics is an area where an activity occurs, and each projected key
is a further sub-division of that area. As for whether Lightblueoptics
provides "any suggestions regarding lighting a foul lane of a basketball
court" (Br. 13), we addressed the issue of the Examiner's articulated
rationale above and do not repeat our analysis here.
Appellant argues that the claimed apparatus is simple and easy to use,
and the features providing these benefits are not suggested by the cited
references. See id. Even assuming, arguendo, that the apparatus recited in
claim 1 is simple and easy to use, Appellant identifies no structural
distinction between it and the Examiner's proposed apparatus based on
modifying Hale. We have considered all of Appellant's arguments
regarding the patentability of claim 1 with respect to Rejection (I), but the
Examiner has the better position. Accordingly, we sustain the Examiner's
rejection of claims 1-20 as unpatentable over Hale, Epel, Mower, and
Lightblueoptics.
Rejection (11)
The Examiner finds "Aubusson discloses the elements of claim 1 [,]
however[,] it does not disclose a secondary light source projecting light onto
a backboard and an enclosure." Final Act. 4; Ans. 9. The Examiner finds
that Sonnleitner discloses a light source that can project light and that
Mower discloses a housing for mounting devices for a sports game. Ans.
10. In proposing to modify the device of Aubusson to meet all the
requirements of claim 1, the Examiner uses the same rationale discussed
above with respect to Rejection (I). See Final Act. 2--4, Ans. 11. The
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Application 14/186,353
Examiner also determines that the use of the lighting taught by Sonnleitner
with the apparatus of Aubusson would allow users to play sports after dark,
and that the use of the housing of Mower with the apparatus of Aubusson
would protect devices inside from the elements and permit easy relocation.
See Final Act. 4; Ans. 11.
Appellant again attacks the references individually without disputing
any of the Examiner's findings of fact or any of the rationales articulated by
the Examiner in making the proposed combination of Aubusson,
Sonnleitner, and Mower. See Br. 14--17. Also, similar to one of the
arguments made against Rejection (I) (see id. at 13), Appellant asserts that
"none of the other applied references would modify Aubusson to arrive at
the claimed structure." Id. at 16. Appellant makes the same type of
argument referencing Sonnleitner, stating, "[t]he same is true for the low-
voltage light in Sonnleitner because, while Sonnleitner teaches a low-voltage
light, none of the other applied references would modify Sonnleitner to
arrive at the claimed structure that projects lines defining a foul lane for a
basketball court while, at the same time projecting light onto a basketball
backboard." Id. These arguments do not apprise us of Examiner error. As
discussed above, it is not necessary that the modification be suggested by
one of the references cited in the rejection. See KSR Int'!, 550 U.S. at 418.
The Examiner articulated specific rationales for combining the teachings of
Aubusson, Sonnleitner, and Mower (see Final Act. 2--4, Ans. 11 ), and
Appellant does not identify any error in these rationales.
We have considered all of Appellant's arguments regarding the
patentability of claim 1 with respect to Rejection (II), but we find them to be
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Application 14/186,353
without merit. Accordingly, we sustain the Examiner's rejection of claims
1-20 as unpatentable over Aubusson, Sonnleitner, and Mower.
DECISION
(I) We affirm the rejection of claims 1-20 as unpatentable over
Hale, Epel, Mower, and Lightblueoptics.
(II) We affirm the rejection of claims 1-20 as unpatentable over
Aubusson, Sonnleitner, and Mower.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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