Ex Parte Wilcox et al

Patent Trials and Appeals Board

May 28, 2019

14583415 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/583,415 12/26/2014 Kurt S. Wilcox
24112 7590 05/28/2019
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
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.
104589-0111 2630
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
MAIL DATE DELIVERY MODE
05/28/2019 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 KURT S. WILCOX, NICHOLAS W. MEDENDORP, BRIAN
KINNUNE, GARY DAVID TROTT, MARIO A. CASTILLO, PETER
LOPEZ, S. SCOTT PRATT, MARK DIXON, and
WILLIAM L. DUNGAN 1
Appeal2018-007387
Application 14/583,415
Technology Center 2800
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
JAMES C. HOUSEL, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Cree, Inc. App. Br. 2.
Appeal2018-007387
Application 14/583,415
Appellants request our review under 35 U.S.C. § I34(a) of the
Examiner's decision rejecting claims 1-16, 18, 19, and 26-30. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A luminaire, comprising:
a plurality of optical waveguides disposed in side-by-side
relationship and together at least partially defining a closed
path;
wherein the optical waveguides distribute light at least
partially about the closed path;
at least one LED associated with each optical waveguide
and disposed at a first end of the associated optical waveguide;
wherein each optical waveguide comprises an inner
surface and an outer surface, wherein the inner surface is
oriented toward an interior of the closed path and the outer
surface is oriented away from the closed path;
wherein the outer surface is a primary light emitting
surface; and
a combination cover and heat transfer member that
encloses the at least one LED associated with each optical
waveguide.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Holman et al.
("Ho Iman")
US 2010/0315833 Al
2
Dec. 16, 2010
Appeal2018-007387
Application 14/583,415
Summerford et al. US 2011/0187273 Al
("Summerford")
Boyeret al.
("Boyer")
Speier et al.
("Speier")
US 2013/0107528 Al
US 2014/0334126 Al
THE REJECTIONS
Aug. 4, 2011
May 2, 2013
Nov. 13, 2014
1. Claims 1-8, 11-16, 18, and 19 are rejected under 35 U.S.C. § 103
as being unpatentable over Boyer in view of Holman.
2. Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Boyer in view of Holman as set forth above, and further in
view of Summerford.
3. Claims 26-30 are rejected under 35 U.S.C. § 103 as being
unpatentable over of Holman in view of Speier.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections."). After considering
the evidence presented in this Appeal (including the Examiner's Answer and
the Appeal Brief), we are persuaded that Appellants identify reversible error.
Thus, we reverse the Examiner's rejections for the reasons provided by
Appellants in the record, and add the following primarily for emphasis.
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Appeal2018-007387
Application 14/583,415
Rejections 1 and 2
Both Rejections 1 and 2 involve a combination of Boyer in view of
Holman (Rejection 2 additionally includes the third reference of
Summerford). We can focus on the combination of Boyer in view of
Holman in making our determinations herein.
We agree with Appellants that the proposed modification of Boyer in
view of Holman would change the principle of operation of Boyer for the
reasons provided by Appellants on pages 7-11 or the Appeal Brief, and thus
reverse Rejections 1 and 2 for the reasons provided therein. "If the proposed
modification or combination of the prior art would change the principle of
operation of the prior art invention being modified, then the teachings of the
references are not sufficient to render the claims prim a facie obvious." In re
Ratti, 270 F.2d 810,813 (CCPA 1959).
Rejection 3
Appellants argue that Holman in view of Speier do not suggest an
optical waveguide assembly disposed in a luminaire and a body of optically
transmissive material wherein the body of optically transmissive material
comprises an inner surface and an outer surface as required by claim 26.
Appeal Br. 14--15. Appellants also argue that the applied art also does not
suggest an optical waveguide assembly wherein an inner surface thereof is
oriented toward an interior of the luminaire, an outer surface thereof is
oriented away from the luminaire, and a sensor is disposed within the
interior of the luminaire for varying an illumination level of the luminaire in
response to ambient light levels, as recited in claim 26. Id. Appellants
submit that this arrangement of features is not disclosed because the
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Appeal2018-007387
Application 14/583,415
component of Speier that may contain a light sensor is disposed within
housing 810, but not within the light-emitting device 860. Appeal Br. 15.
We agree, and thus reverse Rejection 3.
DECISION
Each rejection is reversed.
REVERSED
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