Ex Parte Zimmer et al

Patent Trials and Appeals Board

May 24, 2019

14100915 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/100,915 12/09/2013 Kenneth J. Zimmer
85174 7590 05/24/2019
Tong, Rea, Bentley & Kim LLC
12 Christopher Way
Suite 105
Eatontown, NJ 07724
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.
DIAL/060CON1 2809
EXAMINER
GRAMLING, SEAN P
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
05/24/2019 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 KENNETH J. ZIMMER and JOHN P. PECK
Appeal2017-010314
Application 14/100,915
Technology Center 2800
Before RAEL YNN P. GUEST, JAMES C. HOUSEL, and
AVEL YN M. ROSS, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-19 solely under 35 U.S.C. § 103(a) as
unpatentable over Mo (US 2011/0044038 Al, published February 24, 2011;
naming Ci-Jin Mo as sole inventor) in view of Weiner (US 4,818,875,
published April 4, 1989; naming Seymour Weiner as the sole inventor) and
further in view of Duparre (US 2010/0002314 Al, published January 7,
2010; naming Jacques Duparre as the sole inventor). See Examiner's Final
1 Appellant is the Applicant and real party in interest in this case, Dialight
Corporation. Appellant's Appeal Brief ("App. Br.") 3, filed January 16,
2017.
Appeal2017-010314
Application 14/100,915
Office Action, dated August 16, 2016 ("Final Act."); Examiner's Answer,
dated May 22, 2017 ("Ans."). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant's invention is related to a lighting fixture in a hazardous
environment, such as high-bay, low-bay, parking areas, warehouses, etc., for
which it is desirable to have a majority of the light directed outward at high
angles, causing hotspots to form directly in front of the LED light fixture.
Appellant's Specification, filed December 9, 2013 ("Spec."), 2:25-3:25.
More specifically, Appellant's invention is directed towards the housing of
an LED light fixture and its particular arrangement so as to prevent flames or
explosions of the light fixture. Id. 15:26-3, 16:15-25.
Appellant's claim 1 is representative and recites (with disputed
language in italics):
1. A hazardous location lighting fixture comprising:
a light emitting diode (LED) light source;
a housing holding the LED light source, the housing
compnsmg:
a plurality of heatsink fins formed at an outer side;
a fiat float glass lens;
a ring to attach the fiat float glass lens to the housing;
a lens mating surface, wherein an outer perimeter edge
area of the lens mating
surface has a machined surface;
a gap as a flame path formed between the flat float glass
lens and the lens mating
surface in an inside of the housing; and
a band member provided around a periphery of the
plurality of heatsink fins.
App. Br. 16, Claim App'x.
Appellant only presents arguments directed to independent claim 1,
and states that the same arguments apply to the other independent claim 12.
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Application 14/100,915
App. Br. 14; Reply Br. 3. The remaining dependent claims 2-11 and 13-19
are not separately argued. App. Br. 14. Accordingly, all of the dependent
claims stand or fall together with claim 1.
II. DISCUSSION
After reviewing each of Appellant's arguments for patentability, we
determine that a preponderance of the evidence supports the Examiner's
finding that the claimed subject matter of representative claim 1 is obvious
within the meaning of§ 103 in view of the applied prior art. Accordingly,
we sustain all of the Examiner's rejections for essentially those reasons
expressed in the Final Action and Answer. We add the following primarily
for emphasis.
The dispute is whether the claim language "a gap as a flame path
formed between the flat float glass lens and the lens mating" as recited in
claim 1 (and corresponding language in claim 12), encompasses the gap as a
flame path as taught in Weiner. Final Act. 3; App. Br. 11; Reply Br. 2.
Appellant initially argues that the claimed gap is not formed in
Weiner by the parts recited in the claims, arguing that Weiner teaches a gap
between a window 66 and an end plate 62, which is a "different set of
components" than those recited for an LED housing. App. Br. 11. We are
not persuaded by Appellant's argument.
The Examiner finds that Mo teaches a housing and an LED light
having the features recited in the claims, including a lens mating surface,
except for the fact that the lens mating surface is machined and the presence
of a gap as a flame path formed between the lens and the lens mating
surface. Final Act. 3; Ans. 3. The Examiner finds that Weiner provides for
the missing structure in Mo, namely a machined lens mating surface and a
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Application 14/100,915
gap between a lens and the lens mating surface. The Examiner further
explains that the combination is motivated by industry safety standards, as
discussed by Weiner. Ans. 6. Appellant does not dispute the Examiner's
findings regarding Mo or the reasons stated by the Examiner for making the
combination. 2 See generally App. Br.; Reply Br.
The Examiner also responds to Appellant's arguments by clearly
interpreting a "lens," within the meaning of the claim, as encompassing the
window 66 of Weiner, as it transmits at least IR wavelength light, and by
further explaining that Mo is being relied upon for all the structural
components of the claim and that the Examiner only relies on Weiner for its
teaching of a gap as a flame path between a lens and a machined "lens
contacting surface." Final Act. 11; Ans. 3--4. Appellant has shown no error
with the Examiner's analysis. Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Appellant further contends that Mo and Weiner would not obviously
be combined because the prior art references are not analogous. App. Br.
12. We are not persuaded by Appellant's argument.
"To qualify as prior art for an obviousness analysis, a reference must
qualify as 'analogous art,' i.e., it must satisfy one of the following
conditions: ( 1) the reference must be from the same field of endeavor; or (2)
the reference must be reasonably pertinent to the particular problem with
2 The Examiner's reliance on Duparre to teach "float glass" and the
Examiner's rationale to combine is not disputed by Appellant. See generally
App. Br.; Reply Br.
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Application 14/100,915
which the inventor is involved." K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d
1364, 1375 (Fed. Cir. 2012). Appellant's non-analogous art argument is not
persuasive because Mo's LED housing and Weiner's ambient air analyzer
are in the same field of endeavor, both being directed to lenses and housings,
as those terms are interpreted by the Examiner. Ans. 5-6.
Moreover, even if the field of endeavor of Mo is limited to LED
lamps, as presumptively argued by Appellant, Weiner is reasonably pertinent
to the problem with which the inventor was concerned.
A reference is reasonably pertinent if ... it is one which, because
of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his
problem. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness
rejection.
Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)); see also In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
Appellant's Specification describes the need for a flame path, with a
smooth flat surface, in case of explosion as a safety measure for the lens and
housing. Spec. 15:28-31, 16: 15-25. Weiner teaches a gap having the same
structure for the same purpose. Weiner, col. 4, 11. 36-43 ("[T]he adjoining
parallel surfaces of these two elements are specially formed to be flat and
smooth. The structural dimensions are so set that any potential flame path
from an internal explosion to the outside atmosphere which includes this
radial route between the end plate 62 and the window 66 will have a length
and gap spacing meeting requirements of FM for a device of the internal
volume of the source 30.").
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Further, Appellant argues that the differences between Mo and Wiener
negate a finding of obviousness. App. Br. 12-13. Specifically, Appellant
argues that Weiner teaches a more complex device (App. Br. 11) and that
"the configuration and dimensions used to create the flame path in Weiner
may not be combinable with the disclosure of Mo." App. Br. 12; Reply Br.
3. Specifically, Appellant argues that Weiner's ambient air analyzer is
designed for a larger amount of heat, has smaller dimensions, and includes
an additional flame path, not taught by Mo. Id. For this reason, Appellant
asserts that the skilled artisan would not have reasonably used the flame path
taught in Weiner to modify Mo without impermissible hindsight. Id.
We recognize that "[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). "A person of
ordinary skill is also a person of ordinary creativity, not an automaton."
KSR Int'! v. Teleflex Inc., 550 U.S. 398, 421 (2007). We are persuaded that
the skilled artisan would have been capable of predictably combining the
flame path taught in Weiner with the LED structure as taught by Mo for the
reason the Examiner stated in the Examiner's Answer. Ans. 6. We are not
persuaded that the recited differences between Mo and Weiner - different
dimensions, different amounts of heat, different complexities ( e.g. extra
flame path in Weiner)-would not be understood and reasonably overcome
by ordinary creativity of the skilled artisan. Further, Appellant has not
rebutted persuasively the Examiner's stated reason for combining the
references, namely industry safety standards to prevent explosions. Ans. 6.
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Appellant argues further, for the first time in the Reply Brief, that
"[t]he MPEP requires the Examiner to consider the prior art in its entirety,
including portions that would lead away from the claimed invention" (Reply
Br. 3). The Appellant has not shown good cause why these arguments could
not have been presented in the Appeal Brief. Therefore, we need not
consider the arguments newly raised in the Reply Brief. 37 C.F.R.
§ 41.41 (b )(2). Even so, Appellant has provided no evidence of a teaching
away of the combined references. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) ("The prior art's ... disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.").
Thus, a preponderance of the evidence supports sustaining the
Examiner's rejection of all the claims under 35 U.S.C. § 103(a) as
unpatentable in view of Mo, Weiner, and Duparre.
IV. CONCLUSION
We affirm the Examiner's decision to reject claims 1-19.
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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