John Nagy

Patent Trials and Appeals Board

Oct 21, 2020

2020002379 (P.T.A.B. Oct. 21, 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. 14/213,468 03/14/2014 John Nagy 9032-90803-02 1004 24197 7590 10/21/2020 KLARQUIST SPARKMAN, LLP 121 SW SALMON STREET SUITE 1600 PORTLAND, OR 97204 EXAMINER SILBERMANN, JOANNE ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 10/21/2020 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): docketing@klarquist.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN NAGY ____________ Appeal 2020-002379 Application 14/213,468 Technology Center 3600 ____________ Before DANIEL S. SONG, STEFAN STAICOVICI, and CARL M. DeFRANCO, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Non-Final Office Action (dated Jan.14, 2019, hereinafter “Non-Final Act.”) rejecting claims 1, 3-5, 7, 9-12, and 14-23.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The inventor, Mr. John Nagy, is identified as the real party in interest in Appellant’s Appeal Brief (filed Aug. 15, 2019, hereinafter “Appeal Br.”). Appeal Br. 2. 2 Claims 2, 6, 8, and 13 are canceled. Appeal Br. 11-13 (Claims App’x.). Appeal 2020-002379 Application 14/213,468 2 SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention relates to a system and method for deploying “a collapsible lighting system for nighttime or low-light scene management.” Spec. 2, ll. 2-3, 10. Claims 1 and 12 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A portable, collapsible lighting system for nighttime or low-light scene management and illumination of a person performing traffic control at the nighttime or low-light scene management, the system comprising: a collapsible frame, the collapsible frame being moveable from a collapsed configuration to a non-collapsed configuration in a telescoping manner; at least one light support member coupled to the collapsible frame at a top portion of the collapsible frame, such that the at least one light support member is movable with the collapsible frame between the collapsed configuration and non- collapsed configuration, the at least one light support member being movable between a retracted configuration and a deployed configuration, the deployed configuration being a predetermined configuration; at least two lights coupled to the at least one light support member and spaced apart from one another and the collapsible frame, the lights being positioned horizontally and parallel to the ground so that the at least two lights directly face the ground when the collapsible frame is in the non-collapsed configuration and the at least one light support member is in the deployed configuration such that the person performing traffic control located adjacent the frame in its non-collapsed configuration would be illuminated; Appeal 2020-002379 Application 14/213,468 3 a securing member that secures the light support member in the deployed configuration, and at least one traffic control indicator coupled to the collapsible frame beneath the at least one light support member, wherein the lighting system is configured to be movable, in its non-collapsed configuration, so that it can be carried by the person performing traffic control without assistance, and wherein the at least two lights extend outward from the collapsible frame in the deployed configuration and the at least two lights are positioned closer to the collapsible frame in the retracted position. REJECTIONS I. The Examiner rejects claims 1, 3, 4, 7, 9-12, 14, and 16-23 under 35 U.S.C. § 103(a) as being unpatentable over Haugen,3 Jones,4 and Forrest.5 II. The Examiner rejects claims 5 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Haugen, Jones, Forrest, and Hernandez.6 ANALYSIS Rejection I Appellant has not presented arguments for the patentability of claims 3, 4, 7, 9-12, 14, and 16-23 apart from claim 1. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the representative 3 Haugen, US 2002/0104242 A1, published Aug. 8, 2002. 4 Jones et al., US 2013/0039049 A1, published Feb. 14, 2013. 5 Forrest, US 4,849,864, issued July 18, 1989. 6 Hernandez, US 6,637,904 B2, issued Oct. 28, 2003. Appeal 2020-002379 Application 14/213,468 4 claim to decide the appeal of the rejection of these claims, with claims 3, 4, 7, 9-12, 14, and 16-23 standing or falling with claim 1. The Examiner finds that Haugen discloses a portable, collapsible lighting system including, inter alia, telescoping frame 13, 14, traffic control indicator mounted to panel 30, and strobe light 50. Non-Final Act. 2-3 (citing Haugen, paras. 19, 26, Fig. 1). The Examiner further finds that “Haugen does not teach a light support member coupled to the frame at the top portion with at least two lights coupled thereto and spaced apart from one another and the frame.” Id. at 3. Nonetheless, the Examiner finds that Jones discloses a light support member coupled to the top of a collapsible frame (Figure 2) wherein at least two lights 4a and 4b are movable with the frame. The lights are adjustably mounted at 23a and 23b between retracted and deployed configurations and in the deployed configuration are positioned horizontally and parallel to the ground to directly illuminate an area of the ground and people (workforce or users) beneath the light. Id. (citing Jones, para. 24). Thus, the Examiner concludes that “[i]t would have been obvious to a person having ordinary skill in the art to provide [to Haugen’s lighting system] additional lighting and improved safety for any users, as taught by Jones.” Id. Appellant argues that “modifying the structure of Haugen in view of Jones would render the Haugen device inoperative for its intended purpose.” Appeal Br. 7, 9. According to Appellant, “[r]ather than illuminat[ing] a flagger, a bright light above the umbrella would cast the flagger in shadows” and “replacing the entire umbrella structure with . . . [Jones’] lighting system ignores the entire purpose of the Haugen structure,” which is Appeal 2020-002379 Application 14/213,468 5 “provid[ing] protection to the flagger from the elements.” Id. at 8 (emphasis added). We are not persuaded by Appellant’s arguments because such arguments are not commensurate with the Examiner’s rejection. Specifically, in the Examiner’s rejection, Jones’ “lights, when combined with Haugen, are applied to the frame/mast/pole underneath the umbrella to illuminate the workforce (person holding the umbrella) or desired area, as taught by Jones.” Examiner’s Answer (dated Nov. 21, 2019, hereinafter “Ans.”) 4 (emphasis added). Appellant further argues that “none of the references teaches illuminating a person.” Declaration filed under Rule 1.132 by John Nagy on Aug. 15, 2019 (hereinafter “Nagy Decl.”), para. 10. According to Appellant, the purpose of Haugen’s “flashing lights . . . [is] to make the sign more visible to oncoming traffic.” Appeal Br. 6 (citing Haugen, para. 7). In regards to Jones, Appellant notes that because “the lights are directed outward, not directly downward,” Jones’ “mobile light tower . . . illuminate[s] large areas-not specific areas directly below to illuminate a traffic controller.” Id. (citing Jones, para. 24, Fig. 1) (emphasis added). Similarly, with respect to Forrest, Appellant asserts that because “Forrest also does not teach the direct downward illumination of claim[] 1,” Foster’s structure “illuminate[s] equipment (i.e., the sign)-not areas adjacent to that equipment.” Id. at 8 (citing Foster, col. 4, ll. 32-39) (emphasis added). Firstly, we are not persuaded by Appellant’s arguments because claim 1 does not require lights positioned “directly downward” to provide “direct downward illumination.” As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the Appeal 2020-002379 Application 14/213,468 6 claim.” It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Rather, claim 1 requires, inter alia, “lights being positioned horizontally and parallel to the ground so that the at least two lights directly face the ground.” See Appeal Br. 11 (Claims App’x.). Appellant does not adequately explain why the Examiner’s finding that Jones’ “lights 4a, 4b are adjustably mounted at 23a and 23b . . . and in the deployed configuration are positioned horizontally and parallel to the ground to directly illuminate an area of the ground” is in error. Non-Final Act. 3 (citing Jones, para. 24) (emphasis added). Secondly, we are not persuaded by Appellant’s arguments because as the Examiner correctly asserts, “the use of the invention to illuminate a person does not address the structural limitations of the claim but merely refers to a possible intended use of the invention.” Ans. 5; see also Non- Final Act. 5 (“illumination of a person standing below the lights or the ground below the lights . . . relies on the person and the ground as being parts of the claimed invention, which [in this case] they are not.”). Thus, we construe the limitation in claim 1 of “the person performing traffic control located adjacent the frame in its non-collapsed configuration would be illuminated” as being functional in nature. See Appeal Br. 11 (Claims App’x.). We appreciate that Appellant is permitted to define a part of the invention in functional terms. However, in this case, Appellant does not provide evidence or persuasive reasoning that the lighting system of Haugen, as modified by Jones and Forrest, despite its structural similarity to the claimed apparatus, would not be capable of illuminating “the person Appeal 2020-002379 Application 14/213,468 7 performing traffic control located adjacent the frame in its non-collapsed configuration,” as called for by claim 1. See In re Schreiber, 128 F.3d at 1477-78 (Fed. Cir. 1997) (once the Examiner finds that the prior art structure would be capable of performing all of the functions claimed, the burden shifts to the applicant to show this is not the case)). As Jones discloses “provid[ing] illumination of an area so that a workforce can operate at night” (Jones, para. 24), a person of ordinary skill in the art would readily understand that mounting Jones’ lights 4a, 4b to Haugen’s collapsible (telescopic) frame 13, 14 underneath its umbrella would result in illuminating a person working at night that is located underneath the umbrella, i.e., “the person performing traffic control located adjacent the frame in its non-collapsed configuration.” Appellant does not adequately explain why the lighting system of Haugen, as modified by Jones and Forrest, would not illuminate such a person located underneath the umbrella. Appellant also argues that the Examiner’s combination is based on impermissible hindsight reconstruction because it “relies on information gleaned solely from Appellant’s specification (i.e., benefits of illuminating a traffic control operator).” Appeal Br. 9. According to Appellant, the Examiner’s “modifications to Haugen would be made to beneficially illuminate a traffic controller,” which is a “benefit [that] is absent from the cited art and is only present in Appellant’s [S]pecification.” Id. We are not persuaded by Appellant’s arguments because the Examiner’s reasoning is not based only on “illuminat[ing] a traffic controller,” as Appellant contends (see Appeal Br. 9; Nagy Decl. paras. 5, 7, 8), but also on Jones’ disclosure of illuminating a “desired area.” Ans. 4 Appeal 2020-002379 Application 14/213,468 8 (Jones’ “lights, when combined with Haugen, are applied to the frame/mast/pole underneath the umbrella to illuminate the workforce (person holding the umbrella) or desired area, as taught by Jones.”); see also Jones, para. 24 (“provide illumination of an area so that a workforce can operate at night.”) (emphasis added). As such, the Examiner has provided an adequate reason with rational underpinning to mount Jones’ lights 4a, 4b to Haugen’s collapsible frame 13, 14, namely, “to provide additional lighting and improved safety for any users, as taught by Jones.” See Non-Final Act. 3; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Accordingly, we are not persuaded by Appellant’s arguments that the Examiner’s determination of obviousness is based on impermissible hindsight. Moreover, providing (mounting) Jones’ lights 4a, 4b to another support structure, such as collapsible frame 13, 14 of Haugen, is simply rearranging elements without changing their function. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Appellant does not adequately explain why it would not have been obvious to a skilled artisan to provide (mount) Jones’ lights 4a, 4b to another support structure, such as collapsible frame 13, 14 of Haugen in order to light a Appeal 2020-002379 Application 14/213,468 9 “desired area.” See Non-Final Act. 3, 5 (“It would have been obvious to mount such lights on another support structure.”). Lastly, we are not persuaded by Appellant’s argument that “Jones and Forrest cannot be combined with Haugen” because (1) Jones’ structure cannot be carried by a person and it includes an automated system with a controller to actuate a mast motor and to monitor wind speed, and (2) Forrest’s light is designed to illuminate a fixed display sign. Appeal Br. 6, 8. Appellant cannot show nonobviousness by attacking Jones and Forrest individually when the rejection as articulated by the Examiner is based on a combination of Haugen, Jones, and Forrest. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Nonobviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [Each reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”). The Examiner employs Jones to disclose at least one light support member and at least two lights coupled to the at least one light support member, and Forrest to disclose a securing member, as called for by claim 1. See Non-Final Act. 3. In conclusion, for the foregoing reasons, we sustain the rejection claim 1 under 35 U.S.C. § 103(a) as unpatentable over Haugen, Jones, and Forrest. Claims 3, 4, 7, 9-12, 14, and 16-23 fall with claim 1. Rejection II Appellant relies on the same arguments discussed supra in Rejection I. See Appeal Br. 10. Therefore, for the same reasons discussed above, we are not persuaded by such arguments. Accordingly, we likewise sustain the Appeal 2020-002379 Application 14/213,468 10 rejection of claims 5 and 15 under 35 U.S.C. § 103(a) as unpatentable over Haugen, Jones, Forrest, and Hernandez. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 3, 4, 7, 9-12, 14, 16-23 103(a) Haugen, Jones, Forrest 1, 3, 4, 7, 9-12, 14, 16-23 5, 15 103(a) Haugen, Jones, Forrest, Hernandez 5, 15 Overall Outcome 1, 3-5, 7, 9-12, 14-23 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