Santino, Nicholas A.

Patent Trials and Appeals Board

Nov 2, 2020

14924312 - (D) (P.T.A.B. Nov. 2, 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.
14/924,312 10/27/2015 Nicholas A. Santino JR. 1344 001 301 0202 2083
37211 7590 11/02/2020
BASCH & NICKERSON LLP
1751 Penfield Road
PENFIELD, NY 14526
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
11/02/2020 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):
usptomail@bnpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS A. SANTINO JR.
_____________

Appeal 2019-003545
Application 14/924,312
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, CARL L. SILVERMAN, and
MICHAEL T. CYGAN, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–14 and 16–21. Claim 15 is canceled. We have jurisdiction over
the pending claims 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(a) (2019). According to Appellant, the real party in interest
is the named inventor/applicant: “Nicholas A. Santino Jr.” Appeal Br. 4.
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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to “a signaling device
and system for an athletic competition.” Spec. ¶ 2.

Representative Independent Claim 1
1. An athletic competition signaling apparatus for the hearing
impaired, comprising:

[L] a translucent housing, said housing including an elongated
translucent tube forming an outer shell of the housing and an
adjustable attachment component, said attachment component
adjustably coupling the housing to a stationary structure, and a
plurality of light-emitting elements operatively enclosed within
said elongated translucent tube,

the light-emitting elements producing one of at least three
distinct visual outputs,

said translucent housing positioned, using said adjustable
attachment component, such that each of the distinct visual
outputs is viewable from a plurality of positions about the
translucent housing, whether prior to or upon initiating the
athletic competition, including at least a starting position and a
staging position different than the starting position.

Appeal Br. 32, Claims App. (disputed limitation L emphasized).

2 We herein refer to the Final Office Action, mailed May 22, 2018 (“Final
Act.”); Appeal Brief, filed October 29, 2018 (“Appeal Br.”); the Examiner’s
Answer, mailed February 1, 2019 (“Ans.”); and the Reply Brief, filed April
1, 2019 (“Reply Br.”).
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Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Malone US 4,780,085 Oct. 25, 1988
Tanaka US 5,349,569 Sept. 20, 1994
Schneider, Jr.
(“Schneider”)
US 6,181,236 B1 Jan. 30, 2001
Lys et al.
(“Lys”)
US 6,211,626 B1 Apr. 3, 2001
Morgan et al.
(“Morgan”)
US 2003/0076281 A1 Apr. 24, 2003
Alcov US 2010/0165655 A1 July 1, 2010
Ishiharada JP 2000039518 A July 24, 1998

Rejections
Rejection Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1–3, 5, 6

103

Lys, Malone
B 4, 7, 16 103

Lys, Malone, Tanaka
C 8–10,
12–14
103 Schneider, Morgan,
Ishiharada
D 11 103 Schneider, Morgan,
Ishiharada, Alcov
E 17–21 103 Schneider, Morgan,
Ishiharada, Tanaka

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ANALYSIS
Rejection A under 35 U.S.C. § 103
Independent Claim 1
Under 35 U.S.C. § 103, we focus our analysis on the following argued
limitation L regarding Rejection A of independent claim 1.

Issues: Did the Examiner err by finding that Lys and Malone
collectively, teach or suggest the disputed limitation L:
[L] a translucent housing, said housing including an elongated
translucent tube forming an outer shell of the housing and an
adjustable attachment component, said attachment component
adjustably coupling the housing to a stationary structure, and a
plurality of light-emitting elements operatively enclosed within
said elongated translucent tube,

the light-emitting elements producing one of at least three
distinct visual outputs,

said translucent housing positioned, using said adjustable
attachment component, such that each of the distinct visual
outputs is viewable from a plurality of positions about the
translucent housing, whether prior to or upon initiating the
athletic competition, including at least a starting position and a
staging position different than the starting position[,]
within the meaning of independent claim 1? (emphasis added).3

3 Throughout this opinion we give the contested claim limitations the
broadest reasonable interpretation (BRI) consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Regarding Rejection A of claim 1, limitation L1, the Examiner
disagrees with Appellant’s arguments in the Appeal Brief, and further
explains the basis for the rejection in the Answer.
The Examiner finds Lys teaches:
a signaling device that is provided by an array of light emitting
diodes (col. 9 lines 43-65, col. 31 lines 6-27). Lys teaches LEDs
15 represent a system of lights (col. 9 lines 43-46, col. 31 lines
5-10). Lys teaches the outer shell of the housing of light fixture
15 is elongated because the length of the lighting housing appears
longer than the width, see fig. 23, also see fig. 25, col. 32 lines
2-22). Lys teaches the lighting element has a transparent or
translucent section in order to allow the passage of light in the
ambient (col. 39 lines 31-34). Lys also teaches providing a light
source in the form of a bulb or tube (col. 31 lines 31-33) and a
tube represent an elongated shaped structure. Appellant further
argues on page 15 that LED 15 is not an elongated translucent
tube. It is the [E]xaminer’s position that each of the element 15
represent a light module of a plurality of LEDs (col. 31 lines 6-
10) and one of ordinary skill in the art recognizes that a light
source is generally enclosed by a transparent or translucent
housing in order to allow light to pass through as disclosed by
(col. 39 lines 31-34). The reference of Lys also teaches the
lighting modules can be of various shape (col. 31 lines 50-55)
and the [E]xaminer consider[s] an elongated housing as a
particular shape.
Ans. 3.

Regarding limitation L1 of claim 1, and based upon our review of the
record, we find persuasive Appellant’s contentions as summarized in the
Reply Brief, particularly Appellant’s argument that “[w]hile LED 15 might
arguably be described as elongated, it is not an elongated translucent tube
forming an outer shell of a housing.” Reply Br. 7.
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In support, Appellant contends:
Appellant’s claim [1] does not recite an elongated translucent
housing including a tube. Appellant claims a housing including
an elongated translucent tube forming an outer shell of the
housing, among other limitations. Not only does the rejection fail
to address the claimed limitation, but one of ordinary skill in the
art would not understand LED 15 (Fig. 23 of Lys) as meeting the
claim limitation as alleged. Lys only mentions the word “tube”
twice, and neither is relative to a tube forming an outer shell of
the housing. While LED 15 might arguably be described as
elongated, it is not an elongated translucent tube forming an outer
shell of a housing. And, even if the LED is considered as the
“housing”, how are “a plurality of light-emitting elements
operatively enclosed within said elongated translucent tube” as
required by Appellant’s claim?
Reply Br. 7. See also Appeal Br. 15.
Based upon our review of the evidence and the record, we find a
preponderance of the evidence supports Appellant’s arguments. In
particular, the Examiner is required to find that the cited combination of
prior art teaches both the claimed “a translucent housing” and that “said
housing includ[es] an elongated translucent tube forming an outer shell of
the housing.” Claim 1 (emphasis added).
We agree with Appellant that “one of ordinary skill in the art would
not understand LED 15 (Fig. 23 of Lys) as meeting the claim limitation as
alleged.” See Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d
1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires
that they connote different meanings . . . .”).
Moreover, “when a reference is complex or shows or describes
inventions other than that claimed by the applicant, the particular part relied
on must be designated as nearly as practicable. The pertinence of each
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reference, if not apparent, must be clearly explained and each rejected
claim specified.” 37 C.F.R. § 1.104(c)(2) (emphasis added). An agency is
bound by its own regulations. See Service v. Dulles, 354 U.S. 363, 388
(1957).
Nor does the Examiner rely upon or otherwise show that the
secondary Malone reference teaches the aforementioned disputed claim 1
structural limitation of “a translucent housing, said housing including an
elongated translucent tube forming an outer shell of the housing”
(emphasis added).
Because the Examiner has not fully developed the record to show that
the specific claimed structural arrangement is taught or suggested by the
cited combination of Lys and Malone, on this record, we find some degree
of speculation would be required to affirm the Examiner. We decline to
engage in speculation.
For essentially the same reasons argued by Appellant in the Briefs, we
are constrained on this record to reverse the Examiner’s Rejection A of
independent claim 1. Because we have reversed Rejection A of independent
claim 1, for the same reasons, we also reverse Rejection A of associated
dependent claims 2, 3, 5, and 6.

Rejection B under 35 U.S.C. § 103 of Dependent Claims 4, 7, and 16
In light of our reversal of Rejection A of independent claim 1, we also
reverse obviousness Rejection B of dependent claims 4, 7, and 16. On this
record, the Examiner has not shown how the additionally cited secondary
Tanaka reference overcomes the aforementioned deficiencies with the base
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combination of Lys and Malone, as discussed above regarding Rejection A
of independent claim 1.

Rejection C under 35 U.S.C. § 103
Independent Claim 8
Under 35 U.S.C. § 103, we focus our analysis on the following argued
limitation regarding Rejection C of independent claim 8:

Issue: Did the Examiner err by finding that Schneider, Morgan,
Ishiharada collectively, teach or suggest the disputed limitation L:
8. An athletic competition signaling apparatus, comprising:

an elongated tubular translucent housing, said housing [L]
including an attachment component coupling the housing to an
adjustable support structure, and a plurality of signaling
elements spirally wrapped about a core and operatively inserted
within said elongated tubular housing, wherein the signaling
elements each produce a distinguishable visual output viewable
from a plurality of positions including at least a starting
position and a staging position, different from the starting
position; and

control circuitry, associated with the signaling elements, said
circuitry controlling the color and on/off state for the signaling
elements[,]
within the meaning of independent claim 8? (emphasis added regarding
disputed limitation).
Regarding Rejection C of independent claim 8, the Examiner finds
that Schneider is “silent on teaching a translucent housing, said housing
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including an attachment component and at least three independent signaling
elements operatively associated with said housing.” Final Act. 7.
The Examiner finds “Morgan et al. teaches a signaling device
comprising a an elongated tubular translucent housing (fig. 102, fig. 103,
paragraph 0210, 0376), said housing including an attachment component and
at least three independent signaling elements operatively associated with
said housing.” Final Act. 7. The Examiner additionally finds: “Ishiharada
teaches a plurality of lighting signaling elements spirally wrapped about a
core (abstract).” Final Act. 8.
Appellant urges “it is not clear what disclosure of Morgan, alone or in
combination with Schneider and Ishiharada, [is] relied upon for teaching an
elongated tubular translucent housing, said housing including an
attachment component coupling the housing to an adjustable support
structure.” Appeal Br. 24.
Regarding Rejection C of independent claim 8 and Rejection C of
independent claim 13 (which recites a similar adjustment feature using
commensurate language), the Examiner disagrees with Appellant’s
arguments in the Appeal Brief regarding the disputed limitation L of claim 8,
and further explains the basis for the rejection in the Answer. The Examiner
finds that Morgan teaches the disputed adjustment feature, as follows:
Morgan teaches an attachment component by attaching the
signaling device to a tilt or pan platform in order to obtain an
adjustable pan/tilt beam effect (paragraph 0210). The coupling
of the housing to an adjustable support is further indicated by
having the signaling device (lighting fixture) installed on a track
(paragraph 0174, 0178, 0182).
Ans. 5.
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However, Appellant disagrees, and contends:
[A]lthough Morgan is alleged to teach an attachment component
(para. 0260) and an adjustable support structure (para. 024), there
is no disclosure or suggestion in the cited paragraphs, let alone
the balance of Morgan, Schneider, Jr. or Ishiharada, taken alone
or in combination, that a housing includes an attachment
component coupling the housing to an adjustable support
structure.
Reply Br. 24 (emphasis omitted). See also Appeal Br. 24.
Although Morgan (¶ 210) teaches “[i]n another embodiment of the
present invention, an arrayed LED is mounted on a pan or tilt platform, in a
manner similar to conventional theater lights,” we do not find this general
description of a “pan or tilt platform” is sufficient to render obvious the
claimed specific structural arrangement of “an elongated tubular translucent
housing, said housing [L] including an attachment component coupling the
housing to an adjustable support structure,” as recited in independent claim
8, and also recited in similar form in independent claim 13 (emphasis
added).
Nor has the Examiner shown how Morgan’s general description of a
track embodiment that “provides individual control of a large number of
lighting fixtures installed on a track and allows robust bi-directional
communication over that track” (¶ 182), or the descriptions in cited
paragraphs 174 and 178, provide any details regarding how the lights may be
physically adjusted on the track with an attachment component that couples
a housing to an adjustable support structure, as claimed, or the particular
means of such adjustment.
For example, paragraph 178 of Morgan focuses on the “electrical
properties of a track of materials, which typically consist of an extruded
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aluminum track housing extruded plastic insulators to support and house
copper conductors.” In reviewing Morgan’s various figures (drawings), we
find no depiction of an attachment component that couples a housing to an
adjustable support structure, as claimed, or the particular means of such
adjustment.
Nor does the Examiner explain how any track adjustment feature
found in Morgan could be coupled with Ishiharada’s general description of a
light transmission tube that releases light spirally from the tube. See Final
Act. 8 (citing Ishiharada, Abstract). We note the cited Ishiharada reference
only provides a limited English translation of the Japanese abstract for our
review.
On this record, we find a preponderance of the evidence supports
Appellant’s arguments. See Appeal Br. 24; Reply Br. 24. Similar to our
discussion above regarding Rejection A of claim 1, the Appellant is claiming
a specific structural arrangement which the Examiner has not shown in the
cited combinations of references. See independent claims 8 and 13. See 37
C.F.R. §1.104(c)(2).
For at least the same reasons argued by Appellant in the Briefs, we are
constrained on this record to reverse the Examiner’s Rejection C of
independent claim 8. As noted above, independent claim 13 (also rejected
under Rejection C) recites a similar adjustment feature and structure using
commensurate language.
Because we have reversed Rejection C of independent claim 8, for the
same reasons, we reverse Rejection C of independent claim 13, and likewise
reverse Rejection C of dependent claims 9, 10, 12, and 14.

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Rejection D of Dependent Claim 11,
Rejection E of Dependent Claims 17-21

Claim 11 depends directly from independent claim 8. Claims 17–21
depend directly and indirectly from independent claim 13. In light of our
reversal of Rejection C of independent claims 8 and 13, we also reverse
Rejection D of dependent claim 11, and reverse Rejection E of dependent
claims 17–21. On this record, the Examiner has not shown how the
additionally cited secondary references overcome the aforementioned
deficiencies with the base combination of Schneider, Morgan, and
Ishiharada, as discussed above regarding Rejection C of independent claims
8 and 13.

CONCLUSION
The Examiner erred in rejecting claims 1–14 and 16–21 as being
obvious under 35 U.S.C. § 103, over the cited combinations of references.4

4 We note we have not considered any issue of possible indefiniteness
involving the “using” and “viewable” limitations recited in apparatus claim
1, and we direct the Examiner to MPEP § 2173.05(p)(II). Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See MPEP § 1213.02.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 6

103

Lys, Malone 1–3, 5, 6

4, 7, 16 103

Lys, Malone, Tanaka 4, 7, 16
8–10,
12–14
103 Schneider, Morgan,
Ishiharada
8–10,
12–14
11 103 Schneider, Morgan,
Ishiharada, Alcov
11
17–21 103 Schneider, Morgan,
Ishiharada, Tanaka
17–21
Overall
Outcome
1–14,
16–21

REVERSED