Ex Parte Witt

Board of Patent Appeals and Interferences

Dec 19, 2011

10806858 (B.P.A.I. Dec. 19, 2011)

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.
10/806,858 03/23/2004 E. Jason Witt 1244 2475
33055 7590 12/19/2011
PATENT, COPYRIGHT & TRADEMARK LAW GROUP
4199 Kinross Lakes Parkway
Suite 275
RICHFIELD, OH 44286
EXAMINER
LEE, JONG SUK
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
12/19/2011 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 E. JASON WITT
____________

Appeal 2009-013337
Application 10/806,858
Technology Center 2800
_ ____________

Before THOMAS S. HAHN, ELENI MANTIS MERCADER, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013337
Application 10/806,858

2
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-12. Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We AFFIRM-IN-PART.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. An illumination device mounted to a headset, said illumination device
comprising:
an elongated body having a lens assembly at an end, a control assembly at an
opposing end, and a central case housing intermediately therebetween;
said lens assembly having a polished reflector and at least one light emitting
diode at a focal point thereof, said light emitting diode operatively coupled
to an electrical supply;
a color control knob having a knurled surface rotatably adjustable for
adjusting the color provided by said light emitting diode;
an intensity control knob having a knurled surface rotatably adjustable for
adjusting the intensity of the color provided by said light emitting diode;
a mounting clip affixed to said central case housing, said clip releasably
attached to a microphone boom of said headset; and
a power supply transmitting electricity to said light emitting diode.

Appeal 2009-013337
Application 10/806,858

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Rejections on Appeal
Claim 1 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over McDermott (533), (U.S. Patent Number 4,677,533; June 30, 1987) and
Hudak (U.S. Patent Number 5,353,205; October 4, 1994). Answer 3-5.
Claims 2-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McDermott (533), Hudak and McDermott (291), (U.S.
Patent Number 4,947,291; August 7, 1990). Answer 5-7.
Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McDermott (533), Hudak and McDermott (798), (U.S.
Patent Number 4,963,798; October 16, 1990). Answer 7.

ANALYSIS
Appellant argues the present mounting clip affixed to the present
central housing, as claimed in claim 1, provides an advantage to the
mounting means taught in McDermott. Appeal Brief 12-13. Appellant
argues that the clip provides a means for the present invention to releasably
attach itself to a device along their lengths. Id at 13. Appellant’s argument
in relation to the invention having a clip that is releasably attached to a
device along their lengths is not commensurate with the scope of the claim
and is therefore not persuasive.
Appellant further argues that the arm taught in McDermott (533)
requires a female reception unit comprised on the mounting device and more
space is consumptive (Appellant’s term) because the arm projects the
invention away for the device. Id. Appellant arguments in regard to the
requiring a female reception unit and the consumption of more space are
again not commensurate with the scope of the claim and are merely
Appeal 2009-013337
Application 10/806,858

4
attorney’s arguments and not persuasive. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney's arguments in a brief cannot take the place
of evidence”). We will sustain the Examiner’s rejection of claim 1. We will
also sustain the Examiner’s rejection of claims 9-12 which fall with claim 1
from which they ultimately depend. See In re Nielson, 816 F.2d 1567, 1569,
1572 (Fed. Cir. 1987) (dependent claims, not argued separately, fall with the
independent claim, even though the dependent claims were rejected based on
additional (or different) references).
Appellant argues with respect to claims 2 and 3 that the Examiner’s
assertion that McDermott (291) discloses when blue, green and red colors
are combined, they produce white light, does not address the Appellant’s
claim limitation that at least one of the LED’s comprises a tri-color diode.
Appeal Brief 13-14.
The Examiner relied upon Appellant’s admittance that he employed a
known tri-color LED to modify the invention of McDermott (533) and
Hudak. See Specification 9; Answer 6, 11. Appellant did not address
Examiner’s finding that Appellant’s Specification used a tri-color LED that
is manufactured by the Kingbright Corporation. Appeal Brief 12-18; Reply
Brief 1-5. Therefore, Appellant’s argument in regard to the tri-color LED is
not persuasive. We will sustain the Examiner’s rejection of claims 2 and 3.
Appellant argues with respect to claim 4 that neither McDermott (291)
nor McDermott (533) disclose a control knob coupled to an eight position
rotary DIP switch and the Examiner fails to designate a particular drawing
and/or a part of the specification that the Examiner relied upon to support the
Examiner’s findings. Appeal Brief 14. The Examiner finds that an “eight
position DIP switch” is considered a “potentiometer” and Appellant has
Appeal 2009-013337
Application 10/806,858

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admitted such in the Specification. Answer 12. Examiner further finds that
potentiometers, either an eight position rotary DIP or a rheostat provide
sufficient function of controlling the intensity of the LEDs and thus meets
the claimed limitation of an “eight-position rotary DIP switch.” Answer 13.
The Examiner concludes, “Appellant have [sic] not stated that “an eight
position rotary DIP switch,” also known as [sic] potentiometer, is for any
particular purpose and it appears that the invention would perform equally
well with [sic] potentiometer of McDermott et al.” Id.
The Examiner was incorrect when he concluded that a “eight position
DIP switch” is considered a “potentiometer” because the Specification as
well as the Appellant’s Figure 4 discloses that the eight position rotary DIP
switch 140 is connected to the output of the potentiometer 145 through a N
channel MOSFET 155. Specification 12. Therefore we find Appellant’s
argument to be persuasive. The Examiner did not show that a rheostat or a
potentiometer is the same as an electrical switch. We will not sustain the
Examiner’s rejection of claim 4 as well as claims 5-8 which depend upon
claim 4.
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-IN-PART

kis