Hubbell Incorporated

Patent Trials and Appeals Board

May 29, 2020

2019004423 (P.T.A.B. May. 29, 2020)

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.
14/984,827 12/30/2015 Jason E. Duckworth 208272-9205-US01 7060
128168 7590 05/29/2020
Michael Best & Friedrich LLP (Hubbell)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
GUHARAY, KARABI
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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):
kmbarner@michaelbest.com
mkeipdocket@michaelbest.com
webradley@michaelbest.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON E. DUCKWORTH, MARK V. ELMORE,
and DOUGLAS S. HODGES
____________

Appeal 2019-004423
Application 14/984,827
Technology Center 2800
____________

Before GEORGE C. BEST, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–16 and 21–24. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Hubbell Incorporated as the real party in
interest. Appeal Brief (filed Dec. 3, 2018, hereinafter “Appeal Br.”) 2.
Appeal 2019-004423
Application 14/984,827
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CLAIMED SUBJECT MATTER
The present application generally relates to a luminaire (light fixture).
Specification (filed Dec 30, 2015, hereinafter “Spec.”) ¶¶ 2–3. The
Specification teaches several embodiments including one described as
follows:
According to an exemplary embodiment, a luminaire
includes a base, a light support, a first set of fins, and a second
set of fins. The light support extends from the base and
includes a mounting section. The first set of fins is in thermal
communication with the mounting section. The second set of
fins intersects the first set of fins and is in thermal
communication with the mounting section.
Id. ¶ 4.
Figure 3, reproduced below, depicts an embodiment described in the
application.

Figure 3 is a top perspective view of an exemplary embodiment. Spec. ¶¶ 7,
10. Figure 3 shows that “a plurality of first fins 50 extends outwardly from
the base and a plurality of second fins 52 extend orthogonal to the first fins
Appeal 2019-004423
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50.” Id. ¶ 46. Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
1. A luminaire comprising:
a base;
a light support extending from the base having a mounting
section;
a first set of fins in thermal communication with the
mounting section; and
a second set of fins intersecting the first set of fins and
in thermal communication with the mounting section.
Appeal Br. 14 (Claims App.) (emphasis added).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Quercia et al. (Quercia) US 2013/0049591 A1 Feb. 28, 2013
Chow US 2013/0329405 A1 Dec. 12, 2013
Mizuta US 2014/0184050 Al July 3, 2014
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–11, 14, 16, 21, and 23, 24 are rejected under 35
U.S.C. § 102(a)(1) as anticipated by Chow. Final Action
(mailed Aug. 24, 2018, hereinafter “Final Act.”) 2–4.
2. Claims 12 and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over Chow. Id. at 5.
3. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable
over Chow in view of Quercia et al. Id. at 5–6.
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4. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable
over Chow in view of Mizuta. Id. at 6.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–11, 14, 16, 21, and 23–
24 as anticipated by Chow. Id. at 2–4. In support of the rejection, the
Examiner finds that Chow teaches, inter alia, “a first set of fins (125) in
thermal communication with the mounting section, and a second set of fins
(122) intersecting the first set of fins and in thermal communication with the
mounting section.” Final Act. 2–3.
Appellant argues that the rejection is in error on several bases.
Appeal Br. 8–12. First, Appellant argues that Chow does not teach “a
second set of fins intersecting the first set of fins” as required by claim 1. Id.
at 8. Figures 2 and 4 of Chow, reproduced below, are illustrative.

Figure 2 is a sectional view and Figure 4 is a perspective view of Chow’s
light fixture. Chow ¶¶ 17, 19.
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The Examiner finds that “fins 122 and fins 125 extend in
perpendicular direction and intersect since they are connected via heat sink
12.” Final Act. 6. Appellant argues that the Examiner’s finding “is not
consistent with the ordinary meaning of the term ‘intersecting’ as it is used
in the claim, the specification, and as would be understood by one of
ordinary skill in the art.” Appeal Br. 8. Appellant further argues that “[t]he
term intersecting requires the first and second fins to cross one another.” Id.
The Specification uses the term “intersects” a single time. It provides
that “[t]he second set of fins intersects the first set of fins and is in thermal
communication with the mounting section.” Id. ¶ 4. This use, considered in
conjunction with claim 1 and the figures, suggests that the term
“intersecting” has its common and ordinary meaning. See In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (claim terms generally are
given their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art in the context of the entire disclosure). The
Examiner supplies the following dictionary definition of “intersect”:
1: to meet and cross at a point lines intersecting at right angles.
2: to share a common area: overlap where morality and self-
interest intersect.
Examiner’s Answer (mailed March 19, 2019, hereinafter “Answer”) 3
(citing Merriam-Webster). The Examiner argues that “fins 122 and fins 125
share common vertical extensions (126), which is a permissible
interpretation.” Answer 3. We disagree. Chow defines structure 126 as “a
wedge portion” that is a component of “second coupling portion 121.”
Chow ¶ 25. The Examiner does not offer, nor do we discern, any reason to
regard structure 126 of Chow as an “extension” of the fins. Accordingly, we
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determine that the Examiner has not shown that Chow teaches “a second set
of fins intersecting the first set of fins” as claimed.
Appellant additionally argues that the Examiner rejects independent
claim 10 in error. Appeal Br. 9–10. Claim 10 requires as follows:
A luminaire comprising:
a housing;
a control assembly positioned in the housing;
a cover connected to the housing having a mounting section
and a chamber including a heat fin in thermal communication
with the mounting section; and
a light assembly connected to the mounting section and
operatively connected to the control assembly.
Appeal Br. 15 (Claims App.) (emphasis added).
In support of the rejection of claim 10, the Examiner finds that Chow
teaches a housing 12, “a cover (111 & wall 2 of Figs 1–2) . . . having a
mounting section (126) and a chamber (121) including a heat fin (122, 125)
in thermal communication with the mounting section.” Final Act. 4. For
convenience, Chow’s Figure 1 is reproduced below.

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Application 14/984,827
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Figure 1 “is an exploded perspective view of the invention” of Chow. Chow
¶ 16.
Appellant argues that the structure that the Examiner identifies as the
cover, the light projection portion 111 of Chow, lacks “any of the other
elements of the cover stated in the claim.” Appeal Br. 9. More specifically,
Appellant asserts that the structures identified by the Examiner as
components of the claimed cover, the “wedge portion 126 (alleged mounting
section), coupling portion 121 (alleged chamber), and cooling portions 122,
125[,] are all part of the heat sink holder 12, not the light projection portion
111.” Id. Appellant additionally argues that “element 111 does not include
a chamber including a heat fin in thermal communication with the mounting
section as recited.” Id. at 10.
We find Appellant’s arguments to be persuasive. It is, for example,
difficult to view the fins 122, 125 of Chow as components of its light
projection portion 111 (identified as the claimed “cover”) or as located
within chamber 121. Accordingly, we determine that Appellant has shown
error in the rejection of claim 10.

Rejections 2–4. The Examiner rejects claims 12 and 15 as obvious
over Chow. Final Act. 5. The Examiner further rejects claim 13 as obvious
over Chow in view of Quercia. Id. at 5–6. The Examiner additionally
rejects claim 22 as obvious over Chow in view of Mizuta. Id. at 6.
Claims 12, 13, and 15 depend from claim 10. Appeal Br. 15 (Claims
App.). The Examiner relies upon the same reasoning discussed above in
rejecting claims 12, 13, and 15. As we have found that Appellant has shown
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error in regard to the rejection of claim 10, we similarly find that the
rejection of claims 12, 13, and 15 is erroneous.
Claim 22 depends from claim 1. Appeal Br. 15 (Claims App.). The
Examiner relies upon the same reasoning discussed above in rejecting claim
1. Final Act. 6. As we have found that Appellant has shown error in regard
to the rejection of claim 1, we similarly find that the rejection of claim 22 is
erroneous.
CONCLUSION
The Examiner’s rejections are reversed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11, 14,
16, 21, 23,
24
102(a)(1) Chow 1–11, 14,
16, 21, 23,
24
12, 15 103 Chow 12, 15
13 103 Chow, Quercia 13
22 103 Chow, Mizuta 22
Overall
Outcome
1–16, 21–24

REVERSED