Ex Parte Xu

Patent Trial and Appeal Board

Dec 5, 2017

13972192 (P.T.A.B. Dec. 5, 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.
13/972,192 08/21/2013 Jichang Xu 111754TR_Solarbasket 6752
93229 7590
Treasure IP Group
106 Oakland PI
Los Gatos, CA 95032
EXAMINER
HAN, JASON
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
12/07/2017 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):
cye@treasure-ip.com
cyq9322 @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JICHANG XU1
Appeal 2017-002691
Application 13/972,192
Technology Center 2800
Before BRADLEY R. GARRIS, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—3, 5—10, 12, 16, and 17. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
1 Appellant is the Applicant, Test Rite International Co., Ltd., which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal 2017-002691
Application 13/972,192
Appellant claims a solar lighting system comprising a solar panel 1, a
detachable LED lamp 3, a rechargeable battery 12, and a substantially basket
-shaped carrying vessel 4, wherein the solar panel is permanently attached to
a flat horizontal component of a handle of the carrying vessel and the
carrying vessel is configured to accommodate 2—\ charging seats with each
seat configured to receive one detachable lamp (sole independent claim 1,
Figs. 1, 3B). The solar lighting system of claim 1 further comprises a
controller “which automatically charges the detachable lamp without a
seating sensor” (dependent claim 3).
A copy of representative claims 1 and 3, taken from the claims
appendix of the Appeal Brief, appears below.
1. A solar lighting system, comprising
a solar panel, capable of converting solar energy to charge a
rechargeable battery;
a detachable lamp, comprising a LED, electrically connected to the
rechargeable battery;
the rechargeable battery, placed on the base of the detachable lamp;
and
a carrying vessel, substantially basket shaped, wherein
the solar panel is permanently attached to a flat horizontal component
of a handle of the carrying vessel, and the solar panel is a size equal to or
smaller than the size of the horizontal component of the handle;
the carrying vessel is substantially hollow, and configured to
accommodate two-four charging seats, each charging seat is configured to
receive one detachable lamp; and when the lamp is placed inside the
carrying vessel the lamp is substantially exposed to the environment where
the system resides.
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Appeal 2017-002691
Application 13/972,192
3. The solar lighting system of claim 1, wherein the lamp further
comprises a controller including a charging and over charge protection
circuit, and which automatically charges the detachable lamp without a
seating sensor.
The Examiner rejects claim 3 under the first paragraph of 35 U.S.C.
§ 112 as failing to comply with the written description requirement.
Under 35 U.S.C. § 103(a), the Examiner rejects independent claim 1
as unpatentable over Barbeau (US 2006/0262525 Al; published Nov. 23,
2006) in view of Kao (US 2007/0171634 Al; published July 26, 2007) and
Gray (US 6,870,089 Bl; issued Mar. 22, 2005) and remaining dependent
claims 2, 3, 5—10, 12, 16, and 17 as unpatentable over these references alone
or in combination with additional prior art.
We will sustain each of these rejections for the reasons given in the
Final Office Action and the Answer with the following comments added for
emphasis and completeness.
The Written Description Rejection
The Examiner determines that the claim 3 negative limitation
“automatically charges the detachable lamp without a seating sensor” lacks
written description support because Appellant’s original disclosure is silent
regarding the presence versus absence of a seating sensor (Final Action 4—
5).
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Appeal 2017-002691
Application 13/972,192
Appellant argues that “Figures 1-4 do[] not include a seating sensor
and additionally Figures 5—7 and corresponding description illustrate[] how
the solar lamp system in the present invention work[s] [thereby] clearly
indicating] the work principle does not include or use a seating sensor”
(App. Br. 16).
As correctly indicated by the Examiner, the mere absence of
disclosure regarding a seating sensor does not provide written description
support for the claim 3 negative limitation that excludes a seating sensor
(Final Action 5; Ans. 11). Rather, “[n]egative claim limitations are
adequately supported when the specification describes a reason to exclude
the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344,
1351 (Fed. Cir. 2012). Here, Appellant does not identify anything in the
subject Specification or Drawing that describes a reason to exclude a seating
sensor from Appellant’s solar lighting system.
In the Reply Brief, Appellant refers to Inphi Corp. v. Netlist, Inc.,
805 F.3d 1350 (Fed. Cir. 2015) for the proposition that “the written
description requirement is met for negative claim limitations where the
specification simply describes alternatives” (Reply Br. 15). However, as
above, Appellant does not identify anything in the Specification or Drawing
that describes a seating sensor as an alternative.
For these reasons, Appellant fails to reveal harmful error in the written
description rejection of claim 3.
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Appeal 2017-002691
Application 13/972,192
The $ 103 Reiections-
In rejecting claim 1, the Examiner finds that Barbeau discloses a
lighting system comprising a basket-shaped carrying vessel having a handle
and containing detachable LED lamps with rechargeable batteries but does
not disclose the claim features relating to a solar panel (Final Action 6—7).
The Examiner concludes that it would have been obvious to provide
Barbeau’s system with a solar panel for charging the rechargeable batteries
in view of Kao (id. at 8) and to permanently attach the solar panel to a flat
horizontal component of Barbeau’s carrying vessel, wherein the panel size is
equal to or smaller than the component size, in view of Gray (id. at 9-10).
Further, the Examiner concludes that it would have been obvious to attach
the solar panel to a flat component of the handle specifically of Barbeau’s
carrying vessel because such an attachment location would be effective in
exposing the solar panel to sunlight (id. at 10-12).
Appellant challenges the rejection of claim 1 by arguing that “Gray
does not teach [a] solar panel on a horizontal component of a [hjandle of the
carrying vessel” (App. Br. 8 (emphasis removed)). More specifically,
Appellant argues that Gray does not disclose the claim 1 features concerning
a handle (id. at 8—11) and a carrying vessel (id. at 11—12).
2 Appellant does not present separate arguments specifically directed to the
§103 rejections of the dependent claims (App. Br. 8—15). Therefore, the
dependent claims will stand or fall with independent claim 1.
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Appeal 2017-002691
Application 13/972,192
Appellant’s argument lacks persuasive merit. The rejection relies on
Barbeau, not Gray, for disclosing the carrying vessel and handle features of
claim 1 (Final Action 6). Moreover, in addressing the claim 1 requirement
for a solar panel attached to a horizontal component of the handle, the
rejection relies on the combined teachings of Barbeau, Kao, and Gray as
well as reasoning based on the inferences and creative steps that an artisan
would employ in determining a horizontal component of the handle to be a
suitable location for solar panel attachment (id. at 7—12). See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he analysis [of obviousness]
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”).
Significantly, Appellant does not address with any meaningful
specificity the combined teachings or the reasoning expressed in the
rejection. As a result, Appellant’s argument fails to show reversible error in
the Examiner’s conclusion that the claim 1 requirement discussed above
would have been obvious.
Appellant also contends that “[t]he combination of the prior art[] does
not teach the [claim 1] relationship between the location and/or size of the
solar panel and number of LED lamps” (App. Br. 12 (emphasis removed)).
According to Appellant, “[the] Examiner failed to present. . . motivation to
modify Barbeau with either Kao [or] Gary [sic, Gray], so that it can only
charge a reduced and limited number of 2-4 LEDs” (id. at 14).
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Appeal 2017-002691
Application 13/972,192
The fundamental deficiency of Appellant’s contention is that claim 1
does not define any relationship between the solar panel and the number of
LED lamps whereby the solar panel “can only charge a reduced and limited
number of 2-4 LEDs” (id.). While the claim recites that “the carrying vessel
is . . . configured to accommodate two-four charging seats, [and] each
charging seat is configured to receive one detachable lamp,” there is no
claim recitation requiring the solar panel to be capable of charging only 2—\
lamps. With regard to the claim feature of 2—A lamps, we emphasize the
Examiner’s uncontested finding that Figure 1 of Barbeau specifically shows
four lamp modules (Final Action 6, Ans. 8).
For the reasons stated above and given by the Examiner, Appellant
does not reveal harmful error in the § 103 rejection of claim 1.
Conclusion
We sustain the § 112, first paragraph (written description), rejection of
claim 3 and the § 103 rejections of claims 1—3, 5—10, 12, 16, and 17.
The decision of the Examiner 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)(l)(iv).
AFFIRMED
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