Jeffrey Cook

Patent Trials and Appeals Board

Oct 4, 2021

2020002790 (P.T.A.B. Oct. 4, 2021)

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.
15/860,277 01/02/2018 Jeffrey B. Cook COOKJ-57811 7225
26252 7590 10/04/2021
KELLY & KELLEY, LLP
6320 CANOGA AVENUE
SUITE 1650
WOODLAND HILLS, CA 91367
EXAMINER
MAHASE, PAMESHANAND
ART UNIT PAPER NUMBER
2689
MAIL DATE DELIVERY MODE
10/04/2021 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 JEFFREY B. COOK
Appeal 2020-002790
Application 15/860,277
Technology Center 2600
Before ERIC S. FRAHM, BETH Z. SHAW, and
CARL L. SILVERMAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5–18. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Jeffrey B. Cook.
Appeal Br. 2.
Appeal 2020-002790
Application 15/860,277
2
CLAIMED SUBJECT MATTER
The claims are directed to rechargeable illuminated applique for
motorcycle helmets and other articles. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A helmet lighting system, comprising:
a wireless transmitter operably coupled to a brake or
direction signal lights of a motorcycle for transmitting a
wireless signal when the brake or direction signal is actuated;
and
a display attachable to a helmet, comprising:
a base housing attachable to an outer surface of the
helmet, the base housing being flexible so as to conform to the
outer surface of the helmet;
an illumination module at least partially disposed within
the base housing, the illumination module comprising a power
source, illuminating LEDs, a wireless signal receiver and
electronic components for illuminating the LEDs in response to
a transmitted wireless signal; and
a flexible applique overlying the illumination module, the
applique being at least partially transparent or translucent so as
to pass light from the LEDs therethrough, the applique being
removably attachable to the base housing and/or the
illumination module;
wherein the illumination module emits a first light color
during normal operation and emits another light color in
response to receipt of the wireless signal.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Whiting US 6,406,168 B1 June 18, 2002
Guest US 2004/0004827 A1 Jan. 8, 2004
HuiHui US 2013/0077290 A1 Mar. 28, 2013
Smith US 2015/0173666 A1 June 25, 2015
Palacios US 2010/0134272 A1 June 3, 2010

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REJECTIONS
Claims 1 and 5–11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Whiting, Guest, HuiHui, and Smith.
Claims 2, 3, and 12–18 are rejected 35 U.S.C. § 103 as being
unpatentable over Whiting, Guest, HuiHui, Smith, and Palacios.

OPINION
To the extent consistent with our analysis below, we adopt the
Examiner’s findings and conclusions in (i) the action from which this appeal
is taken and (ii) the Answer. On this record, we see no error in the
Examiner’s reliance on the cited references for collectively teaching or
suggesting the elements recited in pending claims 1–3 and 5–11.2

Claim 1
We are not persuaded by Appellant’s attorney argument that Guest
and Smith are non-analogous art. See Appeal Br. 8–9; Reply Br. 2–3. “Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir.
2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)); see also
Scientific Plastics Products v. Biotage, 766 F.3d 1355, 1359 (Fed. Cir. 2014)
(quoting In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)).

2 As discussed further herein, we reverse the rejection of claims 12–18 based
on the Examiner’s statements in the Answer.
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Moreover, “to qualify as analogous art under the second criterion, . . .
we do not believe that a prior art reference need be reasonably pertinent to
each and every problem with which an inventor is involved; reasonable
pertinence to a single such problem suffices.” Ex parte Gaechter,
65 USPQ2d 1690, 1692 (BPAI 2002).
As the Examiner finds, and we agree, Smith teaches a device that can
be worn on a head of a user, where the device also has illumination elements
to bring attention to a condition by a person observing the lights. Ans. 5.
Guest teaches a device using light emitting diodes for illuminating a
translucent and thin cover to convey a message to a reader of the device. Id.
at 4 (citing Guest ¶ 66).
Appellant does not persuade us that either reference is not reasonably
pertinent to the problem of bringing attention to the head of a motorcyclist
from a vehicle operator following said motorcyclist to convey a message to
the operator regarding the motorcycle operation. See id. at 5.
Upon reviewing the record before us, we find that the Examiner’s
suggestion for the proposed combination of the prior art suffices as an
articulated reason with some rational underpinning to establish a prima facie
case of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). In summary, we find that an ordinarily skilled artisan at the time of
the claimed invention would have combined Whiting’s teachings of a helmet
lighting system (see Whiting, Figures 2A, 3A, 4A) with Guest’s translucent
cover (see Guest ¶ 66), with HuiHui’s flexible base housing (see HuiHui
¶ 23), and Smith’s LEDs that vary in color (see Smith ¶ 33).
Appellant does not rebut the individual teachings of any of these
references in the Briefs with respect to claim 1, but rather, generally argues
that the combination is improperly based on hindsight. See Appeal Br. 12. In
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an obviousness analysis, prior art references must be “considered together
with the knowledge of one of ordinary skill in the pertinent art,” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994), and we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 550 U.S. at 418. On this record, we find the Examiner has
articulated ample “reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id.
Accordingly, we sustain the rejection of claim 1. We also sustain the
rejection of dependent claims 5–11, which are not argued separately with
particularity.

Dependent Claims 2 and 3
Appellant argues that Palacios does not teach the limitations of
dependent claims 2 and 3. Appeal Br. 14; Reply Br. 10. In particular,
Appellant argues that Palacios’ brake lights and bi-directional indicator
lights are mounted on the substrate, rather than being encapsulated within a
flexible material of the illumination modules such that the illumination
module is flexible. See Appeal Br. 15. Appellant also argues that Palacios
does not teach that the illumination module is at least partially disposed
within the base housing, such as a periphery thereof. Id.
Appellant’s arguments do not persuade us why the cited references do
not teach the disputed limitations of claims 2 and 3. We agree with the
Examiner’s findings that Palacios teaches lights being placed on a flexible
substrate (¶ 20), and Palacios also teaches another embodiment where the
substrate can be removable (¶ 40). Ans. 7. Thus, Palacios teaches that “the
illumination module is flexible,” as recited in dependent claim 2. Moreover,
Palacios teaches that the “applique is removably adhered to an exposed
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portion of the illumination module,” as recited in claim 3. Additionally, in
the Non-Final Office Action, the Examiner relies on Whiting and Guest, not
Palacios alone, to teach the disputed limitations of claim 3. Non-Final Act.
10 (citing Whiting, 5:21–39). Appellant does not dispute these findings
regarding Whiting and Guest in respect to dependent claim 3.
Accordingly, for these reasons and for the reasons stated in the Non-
Final Action and Answer, which we agree with and adopt, we sustain the
rejection of dependent claims 2 and 3.

Claims 12–18
In the Answer, the Examiner “concedes” to Appellant’s arguments for
claim 12. See Ans. 8. Accordingly, on this record, we reverse the rejection of
independent claim 12, and for the same reasons, claims 13–18, which
depend from claim 12.
CONCLUSIONS
We affirm the rejection of claims 1 and 5–11 under 35 U.S.C. § 103.
We affirm the rejection of claims 2 and 3 under 35 U.S.C. § 103.
We reverse the rejection of claims 12–18 under 35 U.S.C. § 103.

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Application 15/860,277
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–11 103 Whiting, Guest,
HuiHui, Smith
1, 5–11
2, 3, 12–18 103 Whiting, Guest,
HuiHui, Smith,
Palacios
2, 3 12–18
Overall
Outcome
1–3, 5–11 12–18

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART