Ex Parte Wang

Board of Patent Appeals and Interferences

Apr 25, 2012

11500094 (B.P.A.I. Apr. 25, 2012)

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.
11/500,094 08/07/2006 Ta L. Wang ECV-11002/29 3915
25006 7590 04/25/2012
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
MACCHIAROLO, LEAH SIMONE
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
04/25/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TA L. WANG
____________________

Appeal 2009-014313
Application 11/500,094
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, GREGORY J. GONSALVES, and
JUSTIN T. ARBES, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014313
Application 11/500,094

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 and 5. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Claims 1 and 5 under appeal read as follows:
1. An ornamental object, comprising:
a hollow air-filled form having at least some transparent or
semi-transparent wall sections;
a lighting assembly disposed in the form, the assembly
including one or more lights that cycle through different colors to
create a decorative effect; and
a support upon which the form is placed.

5. An ornamental object, comprising:
a hollow, transparent or translucent sphere filled with air;
a lighting assembly disposed in the sphere, the assembly
including one or more lights that cycle through different colors to
create a decorative effect; and
a solar panel assembly to power the lighting assembly.

Rejections
1. The Examiner rejected claim 1 under 35 U.S.C. § 102(b) as
being anticipated by Kennedy (US 5,725,445). (Ans. 3).1

1 We vacate. The stated rejection is under § 102(b), but the Examiner’s
response discusses this rejection as though it were under § 103(a) stating
“even a conventional and notoriously old ball stand can be used as the
support to hold the ball.” (Ans. 5:3-4). It is unclear whether the intent is a
rejection under § 102 or § 103, therefore we vacate this rejection.
Appeal 2009-014313
Application 11/500,094

3
2. The Examiner rejected claims 1 and 5 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Liao (US 6,517,217 B1)
and Lin (US 6,616,292 B2).2 (Ans. 3-4). 3
Appellant’s Contentions
As to claim 5, Appellant contends that replacing the light source of
Liao with flashing colored lights of Lin would render the Liao apparatus
unfit for its intended purpose (functioning as a lamp). (App. Br. 5).

Issue on Appeal
Did the Examiner err in rejecting claim 5 as being obvious because
combining the references would render the Liao apparatus unfit for its
intended purpose?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred.
We disagree with Appellant’s conclusion. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in

2 Although the Advisory Action dated March 2, 2009 indicated that amended
claim 1 was rejected under 35 U.S.C. § 102(b) and amended claim 5 was
rejected under 35 U.S.C. § 103(a), the Examiner’s Answer restates the
§ 103(a) rejection of amended claim 1, and Appellant in the Reply Brief
responded to the Examiner’s arguments regarding the § 103(a) rejection of
both claims. (Final Rej. 3-4; Ans. 2-4; Reply Br. 1-2).
3 As to the rejection under § 103(a), separate patentability is not argued for
claim 1. Except for our ultimate decision, claim 1 is not discussed further
herein.
Appeal 2009-014313
Application 11/500,094

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the Examiner’s Answer in response to Appellant’s Appeal Brief. We
concur with the conclusion reached by the Examiner.
The Examiner correctly points out that “the device of Liao is an
‘ornamental lamp’ with no specific purpose disclosed.” (Ans. 5:8-10). The
Examiner also correctly points out that a “lamp” is not limited to only being
defined as a non-flashing, single colored light emitter. (Ans. 5:10). Lastly,
the Examiner correctly points out that modifying Liao to incorporate the
decorative, flashing, multi-colored lights of Lin still qualifies the device of
Liao as a lamp. (Ans. 5:11-12).

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1 and 5 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1 and 5 are not patentable.

DECISION
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1 and 5
is affirmed.

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

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