Ex Parte Whitaker

Patent Trial and Appeal Board

May 10, 2017

14089872 (P.T.A.B. May. 10, 2017)

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.
11123.1099US 4175
EXAMINER
RICHARDSON, JANY
ART UNIT PAPER NUMBER
2844
MAIL DATE DELIVERY MODE
14/089,872 11/26/2013
52558 7590 05/10/2017
PANASONIC AUTOMOTIVE SYSTEM
COMPANY OF AMERICA
776 HWY 74 SOUTH
c/o Panasonic Legal
PEACHTREE CITY, GA 30269
Joseph C. Whitaker
05/10/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH C. WHITAKER
Appeal 2016-004030
Application 14/089,8721
Technology Center 2800
Before DONNA M. PRAISS, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Panasonic Automotive Systems Company of America,
Division of Panasonic Corporation of North America as the real party in
interest. App. Br. 3.
2 This Decision makes reference to the Specification filed Nov. 26, 2013
(“Spec.”), the Final Office Action dated Mar. 20, 2015 (“Final Act.”), the
Appeal Brief filed Aug. 19, 2015 (“App. Br.”), the Examiner’s Answer
dated Jan. 13, 2016 (“Ans.”), and the Reply Brief filed Mar. 8, 2016 (“Reply
Br.”).
Appeal 2016-004030
Application 14/089,872
The subject matter of this appeal relates to “circuits for detecting
burned out light emitting elements” and, particularly, “circuits for detecting
burned out light emitting elements within a motor vehicle.” Spec. 11.
Claim 1 is copied below from the Claims Appendix (App. Br. 16):
1. A motor vehicle, comprising:
a processor including an interrupt input;
a battery including a positive terminal;
a switch interconnecting the positive terminal of the battery and
the interrupt input of the processor;
a first resistor interconnecting the positive terminal of the
battery and the interrupt input of the processor;
a light emitting diode including an input and an output;
a second resistor interconnecting the input of the light emitting
diode and the interrupt input of the processor; and
a third resistor connected in parallel with a series combination
of the second resistor and the light emitting diode.
The Examiner maintains, and Appellant appeals, the rejection of
claims 1—20 under 35 U.S.C. § 103(a) as unpatentable over Appellant’s
Admitted Prior Art (“AAPA”)3 in view of Altamura.4 Ans. 2; Final Act. 4—
12; App. Br. 9.
ANALYSIS
The dispositive issues for this appeal are: (1) whether the Examiner
erred in finding that one of ordinary skill in the art at the time of the
invention would have modified AAPA with Altamura in order to limit
3 Appellant’s Admitted Prior Art, Spec. 3, 14, Fig. 1 (“AAPA”).
4 Altamura, US 2011/0062875 Al, pub. Mar. 17, 2011 (“Altamura”).
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Application 14/089,872
current through the light emitting diode (LED) and allow current to flow
through the bypass resistor when current flow is interrupted through the light
source (Final Act. 5); (2) whether the Examiner erred in finding that the
resistance of the first resistor and the third resistor in the combination of
AAPA and Altamura is a result-effective variable and within the general
skill of a worker in the art to select the optimum or workable ranges of
resistance on the basis of its suitability for the intended use {id. at 6—7; Ans.
4—5); and (3) whether the Examiner erred in finding that Appellant has not
shown that others of ordinary skill in the art were working on the problem
asserted to have been long standing in the art (Ans. 4).
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the stated rejection.
ft is the Examiner’s position that AAPA in view of Altamura suggests
the subject matter of claims 1—20 for the reasons stated on pages 4—12 of the
Final Action and pages 2—5 of the Answer.
In the Appeal Brief, Appellant argues that the rejection of claim 1
should be reversed because the Examiner erred in combining Altamura with
AAPA because, in the circuit of the invention, “current flow is not
interrupted through the LED, and there are no downstream lighting elements
that require current to be supplied to them by a bypass resistor.” App. Br.
11. Appellant further argues that the purpose of causing current to flow to
ground through the bypass resistor is different in the claimed circuit than in
Altamura because the claimed third resistor “is to divert enough current from
the LED so that the LED does not glow and attract unwanted attention from
the driver.” Id. According to Appellant,
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Application 14/089,872
the differences between the present invention and the cited prior
art are not obvious because there is no “suggestion of the prior
art” from which the invention of claim 1 naturally flows, and
there is no motivation to combine ... in order to solve the
problem with which the inventor of the present invention was
faced.
Id. Appellant further contends that “the problem of inexpensively
preventing the glowing of an LED has been a problem that has not been
solved in many years.” Id. at 12.
Regarding the remaining claims, Appellant argues that selecting the
resistance of the first and third resistors as required by dependent claim 7,
which depends from dependent claim 6, “such that they cooperate to provide
a workable circuit is not within the general skill of a worker in the art and
would require undue experimentation.” Id. at 13. As to independent claims
8 and 15, Appellant relies on the same arguments with respect to claim 1.
Id. at 13—14.
The Examiner responds that “claim 1 does not limit the invention to
only one light emitting diode. As such, one of ordinary skill in the art would
look to Altamura to ensure illumination if one of the light emitting diodes
failed.” Ans. 3. The Examiner further responds that Appellant has made
“no showing that others of ordinary skill in the art were working on the
problem [of preventing the glowing of an LED] and if so, for how long” and
that “they would still be unable to solve the problem” in view of the cited
references. Id. at 4. Regarding selecting the resistivity of the resistors, the
Examiner responds that resistance value is a result effective variable because
“Altamura teaches . . . that the value of current limiting resistors (24) will be
chosen based on the type of light source (26), the number of light sources
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Application 14/089,872
(26), the number of bypass resistors (24), and the number and value of
bypass resistors (28) (Paragraph 50).” Id. at 4—5.
In the Reply Brief, Appellant again asserts that the Examiner’s stated
reason to combine the cited art does not apply because “in the . . . present
invention, current flow is not interrupted through the LED, and there are no
downstream lighting elements that require current to be supplied to them by
a bypass resistor.” Reply Br. 4—5. Appellant also asserts that the differences
from the prior art are not obvious because the claimed vehicle does not
“naturally flow[]” from a “suggestion of the prior art.” Id. at 5. Appellant
further contends that “a person of ordinary skill in the art would not be
motivated to look at Altamura to solve the problem of reducing current flow
to a light that is in the OFF state.” Id. at 6. Regarding the Examiner’s
finding that the claim is not limited to one LED, Appellant contends that “all
of the drawings of the present application show that the output of the light
emitting diode is connected to ground directly through only a switch, and
there are no downstream electronic components of any kind.” Id. Appellant
also repeats the same arguments already presented in the Appeal Brief as to
long-felt but unmet need as well as to claims 7, 8, and 15. Id. at 7—9.
We are not persuaded that the Examiner reversibly erred in rejecting
claims 1—20 as unpatentable over AAPA and Altamura for the reasons stated
by the Examiner in the Final Action and Answer. Ans. 2—5; Final Act. 4—12.
We add the following primarily for emphasis.
Appellant’s arguments are not persuasive of error for a number of
reasons. First, Appellant does not dispute the Examiner’s finding that
Altamura discloses an advantage of a bypass resistor for an LED is to ensure
illumination if one of the LEDs fails (Final Act. 5; Ans. 3; Altamura | 51).
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Application 14/089,872
Instead, Appellant asserts that the purpose of its bypass resistor is different
from the purpose of Altamura (App. Br. 10-12) and that the drawings in
Appellant’s Specification show no downstream electronic components
(Reply Br. 6). The problem with Appellant’s arguments against the
combination is that the claim does not preclude more than one LED. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (Limitations not appearing in the
claims cannot be relied upon for patentability.). Another flaw with
Appellant’s arguments is that limitations from the Specification are not read
into the claim absent a clear disclaimer in the Specification. Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1346-A7 (Fed. Cir. 2015); In re
American Academy of Science Tech Center, 367 F.3d 1359, 1369 (Fed. Cir.
2004). A further problem with Appellant’s argument is that motivation to
combine the prior art references need not be for the same purpose as the
inventor. KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”);
In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“Although the motivation
to combine here differs from that of the applicant, the motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness.”).
Second, Appellant’s assertion that the claimed invention solves a
long-felt, unmet need (App. Br. 12; Reply Br. 7) is not persuasive because
Appellant does not direct us to any objective evidence to support this
argument. Establishing long-felt need requires objective evidence that an
art-recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
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Application 14/089,872
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 539 (CCPA 1967).
Third, the Examiner’s finding that the resistivity of a resistor is a
result effective variable is supported by the record. Appellant does not
dispute the Examiner’s finding that paragraph 50 of Altamura teaches that
the resistance value results from controlling the current flow and desired
lighting output. Ans. 4—5. Indeed, Appellant concedes that “this teaching of
Altamura is fairly obvious to one of minimal skill in the art.” Reply Br. 8.
Appellant merely provides conclusory attorney argument that “Altamura
does not disclose or suggest the specific combination of resistor values
recited in Appellant’s claim 7.” Id. Such conclusory arguments are not
persuasive of error. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board reasonably interpreted 37 C.F.R. § 41.37 (c)(l)(vii)
as requiring “more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art”). Therefore, the Examiner’s
finding that it would have been within the skill of an ordinary artisan to
select the resistivity required by claim 7 for the first and third resistors is
supported by the preponderance of the evidence. See In re Aller, 220 F.2d
454, 456 (CCPA 1955) (experimentation to find optimum conditions was
“no more than the application of the expected skill of the chemical
engineer.”).
Appellant relies upon the same arguments made with respect to claim
1 for independent claims 8 and 15. App. Br. 13—14; Reply Br. 8—9.
Appellant does not separately argue the patentability of dependent claims 2—
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7, 9—14, and 16—20. Therefore, these claims all fall together with claim 1 for
the reasons discussed above. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the foregoing reasons, we affirm the Examiner’s rejection of
claims 1—20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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