SIGNIFY HOLDING B.V.

Patent Trials and Appeals Board

Aug 2, 2021

2021000314 (P.T.A.B. Aug. 2, 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.
16/225,003 12/19/2018 Joseph R. Casper 2015P80029US02 2035
138325 7590 08/02/2021
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
TRA, ANH QUAN
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
08/02/2021 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):
Gigi.Miller@signify.com
jo.cangelosi@signify.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH R. CASPER, CHRISTOPHER D. NOLAN, and
JOSEPH J. WITKOWSKI
____________

Appeal 2021-000314
Application 16/225,003
Technology Center 2800
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection under 35 U.S.C. § 103 of claims 1–21. We have jurisdiction
over the Appeal under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Ephesus Lighting, Inc. as the real
party in interest (Appeal Br. 3).
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Application 16/225,003

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CLAIMED SUBJECT MATTER
Claim 1 reproduced below is representative:
1. A light emitting diode (LED) luminaire device,
comprising:
an LED housing comprising one or more LED modules,
wherein each LED module comprises one or more LED arrays
and a control circuit;
an antenna that is electrically connected to a contact
surface;
a plurality of contacts electrically connected to one of
either the control circuit or the contact surface; and
a plurality of landing pads electrically connected to the
other of either the control circuit or the contact surface;
wherein one or more of the plurality of contacts and one
or more of the plurality of landing pads are positioned to align
to each other and provide one or more conductive paths
for communication signals between the antenna and the control
circuit when the LED housing is proximate to the contact
surface
(Appeal Br. 33, Claims Appendix).
Independent claim 12 is also directed to an LED device similar to that
of claim 1 (Appeal Br. 35, Claims Appendix).

REJECTIONS
Claims 1–21 are rejected under 35 U.S.C. § 103 as being unpatentable
over Yamamoto (US 2013/0077307 A1; published Mar. 28, 2013) and
Thomas (US 2008/0310162 A1; published Dec. 18, 2008) (Final Act. 3).
Claims 1–21 are rejected on the basis of nonstatutory obviousness
type double patenting over the claims 1–25 of Casper (US 10,161,577 B2;
issued Dec. 25, 2018) (Final Act. 3).
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At the outset, since Appellant did not respond to the Examiner’s
double patenting rejection, we summarily affirm this double-patenting
rejection.
OPINION
Appellant’s arguments are directed to the meaning of certain language
in claim 1, which is also in independent claim 12, which recites a device
similar to the device of claim 1 (generally Appeal Br.). Accordingly, we
decide each ground of rejection under 35 U.S.C. § 103 on the basis of the
arguments made in support of patentability of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2013).
Upon consideration of the evidence in this Appeal and each of
Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply
Brief, we determine that Appellant has not demonstrated reversible error in
the Examiner’s § 103 rejections (Ans. 3–10). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellants to identify the alleged error in the Examiner’s
rejection). We sustain the Examiner’s § 103 rejection for the reasons
expressed by the Examiner in the Final Office Action and the Answer.
We add the following for emphasis.
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
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claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
The Examiner finds that a skilled artisan knew how to construct an
LED illumination device including a control circuit, an antenna connected to
a contact surface, and a plurality of contacts and landing pads positioned to
align to each other in order to provide one or more conductive paths for
communication between the control circuit and the antenna, as claimed
(Ans. 3–10, Final Act. 3–6, Appeal Br. 33, 35–36, Claims Appendix).
Appellant, however, disputes the Examiner’s determination that it
would have been obvious to incorporate into Yamamoto an antenna to be
electrically connected to a control circuit, as exemplified in Thomas (Appeal
Br. 11–12). Appellant also argues that neither Yamamoto nor Thomas
teaches an antenna connected to a contact surface (Appeal Br. 10–11).
Appellant further argues that neither Yamamoto nor Thomas teaches an
antenna and control circuit being connected by aligning a plurality of
contacts and landing pads to each other (Appeal Br. 14–15, Reply Br. 5–6).
However, these arguments are not persuasive of error in the
Examiner’s rejection because they fail to adequately consider the prior art as
a whole, and the inferences that one of ordinary skill would have drawn
therefrom, and thus do not adequately address the Examiner’s obviousness
position (see generally Ans.).
The Examiner points to respective portions of Thomas that provide a
teaching of an antenna connected to a control circuit via control interface
(Ans. 4–5). The Examiner explains that a skilled artisan would have been
motivated to reconstruct Yamamoto by including the antenna of Thomas and
connecting it to the control circuit of Yamamoto in a similar arrangement as
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to how Thomas connects an external antenna to its own control circuit via a
connector and interface (Ans. 3–5, see, e.g., Thomas ¶¶ 30–35). The
Examiner further explains that a skilled artisan would have been motivated
to include the antenna in order to provide or improve wireless reception for
the purposes of wireless control (Ans. 4–6 (explaining turning off LEDs,
turning on LEDs, or changing a configuration, i.e., brightness, etc. (see, e.g.,
Thomas ¶¶ 30–35))).
Specifically, the Examiner points to an external antenna 150 of
Thomas’s Figure 9 as being coupled to the housing 20 for better wireless
reception (Ans. 3–4, Thomas ¶¶ 32–33). Appellant contends that a skilled
artisan would not have been motivated to incorporate the antenna of
Thomas, because Yamamoto already includes the ability to wirelessly
control its LED housing, thus obviating the need for an antenna (Appeal Br.
11–13). However, the Examiner provides compelling evidence that an
antenna can still be used to improve wireless reception even if wireless
capability already exists (Ans. 3–5, 7–8). The Examiner relies on Thomas
because it clearly discloses a transceiver similar to that of Yamamoto, yet
Thomas chooses to also include an antenna for the purpose of improving
wireless reception of its transceiver (see, e.g., Thomas ¶¶ 30–35). This
teaching undermines Appellant’s contention that the inclusion of an antenna
in Yamamoto would have been unnecessary merely because a transceiver for
sending/receiving wireless signals is already present in Yamamoto. Further,
Yamamoto does not discourage or otherwise teach away from the use of an
antenna to improve wireless reception of the control unit in Yamamoto.
Therefore, Appellant’s argument that one of ordinary skill would not have
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been motivated to combine Thomas with Yamamoto absent impermissible
hindsight (Appeal Br. 16–18) is not sufficient to show reversible error.
Appellant further contends that neither Yamamoto nor Thomas
explicitly recites the terms “contact surface”, “contacts”, or “landing pads”,
as recited in claim 1 (Appeal Br. 11–12). However, it is well established
that “the PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id. As the Examiner aptly points out, in order for
control unit 135 of Thomas to connect to the external antenna 150 (see, e.g.,
Thomas ¶ 33), the external antenna 150 interfaces with a connector at
control interface 145 (Ans. 4–7, see, e.g., Thomas ¶¶ 32–34). It is widely
understood in the art that a connector, such as the one disclosed in Thomas
(see, e.g., Thomas ¶ 33), inevitably must include some form of mating or
pairing between a set of contacts and landing pads along with some sort of
contact surface in order to interface one end of a connector to the end of its
opposing counterpart (Ans. 4–5). Therefore, the Examiner’s reasonable
interpretation of the breadth and scope of the claimed contact surface,
contacts, and landing pads encompasses the connector of Thomas, because
Thomas discloses a connector which connects an external antenna to a
control unit. A skilled artisan would have reasonably inferred that such a
connector must have some sort of contact surface, including either a set of
contacts or landing pads within the connector, while the other of either
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contacts or landing pads is at an opposing end to which the connector mates.
In the case of Thomas, it is the Examiner’s position that the other of the
claimed contacts or landing pads is at the control interface of the control unit
in Thomas (Ans. 4–7, Thomas ¶¶ 30–35) in order to provide a
communication path between its antenna and its LED housing.
Notably, we do not find—and Appellant has not directed our attention
to—any limiting definitions in the Specification, nor does Appellant provide
any persuasive reasoning or credible evidence to establish that the
Examiner’s interpretation of the language of claim 1 is unreasonable.
Therefore, Appellant’s argument that Thomas does not teach the
claimed contact surface, landing pad, and contacts is not persuasive of
reversible error.
Appellant argues that the Examiner does not address that the claimed
contacts and landing pads are positioned to align to each other and provide
one or more conductive paths for communication signals between the
antenna and the control circuit when the LED housing is proximate to the
contact surface (Appeal Br. 14–16). However, as the Examiner points out,
Thomas teaches an antenna unit connected to a control unit 135 by way of a
connector and interface. One of ordinary skill would have readily inferred or
appreciated that the connector and interface align to one another via contacts
and landing pads in order to provide a conductive path for communication
between the antenna unit and the control unit, wherein the contact surface
and contacts exist within the connector at the antenna unit (Ans. 5–7, see,
e.g., Thomas ¶¶ 30–35). Thus, Appellant’s contention that the
Yamamoto/Thomas combination does not teach the claimed contacts and
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landing pads positioned to align to each other is not persuasive of reversible
error.
Appellant argues that the insulation sheet 11 of Yamamoto’s Figure 2
would have prevented a conductive path from being formed between an
antenna and the control circuit, in light of Yamamoto’s Figure 2 being
reconstructed to incorporate the antenna of Thomas (Appeal Br. 11–13).
However, reconstructing the insulation sheet 11 of Yamamoto’s Figure 2 in
such a way that the incorporated contact surface of Thomas’s antenna and
connector could form a conductive communication path to the control circuit
of Yamamoto would have been obvious to one of ordinary skill in the art,
requiring no more than ordinary creativity (Ans. 5–8). KSR, 550 U.S. at
418; see also id. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); Ball Aerosol & Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(explaining that under the flexible inquiry set forth by the Supreme Court,
the PTO must take account of the “inferences and creative steps,” as well as
routine steps, that an ordinary artisan would employ). Therefore,
Appellant’s argument that Yamamoto’s insulation sheet prevents a
reconstruction of Yamamoto’s Figure 2 in view of Thomas to arrive at the
claimed invention is not persuasive of reversible error.
With regard to dependent claim 3, Appellant argues that the
Examiner’s determination that the modified Yamamoto reconstruction
includes a contact housing is in error because Yamamoto does not disclose a
housing with contacts in it (Appeal Br. 7–8). However, as the Examiner
aptly explains, the reconstructed Figure 2 of Yamamoto includes the
connector (i.e., housing) disclosed in Thomas which, as explained by the
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Examiner, includes a set of contacts for interfacing with the control unit of
the LED housing (Ans. 7–8). Therefore, Appellant’s argument that
Yamamoto in view of Thomas does not teach a contact housing is not
sufficient to show reversible error.
With regard to claim 4, Appellant argues that selecting the shape of
the contact housing to be cylindrical versus any other reasonable shape for a
contact housing would not have been obvious as a design choice based on
routine optimization (Appeal Br. 7–8). However, as the Examiner explains,
the interferences and creative steps of one of ordinary skill would have led to
a contact housing being any one of several reasonable shapes for a connector
housing, including one which is circular in shape. Therefore, Appellant’s
argument is not sufficient to show reversible error.
With respect to the remainder of the dependent claims argued, a
preponderance of the evidence supports the Examiner’s obviousness
determinations. Appellant has not shown reversible error in the Examiner’s
position that the disputed claimed subject matter encompass known and/or
obvious design preferences based on the routine optimization techniques
within the scope of the inferences and creative steps made by one of
ordinary skill in the art, for essentially the reasons set forth by the Examiner
(Appeal Br. 24–31, Ans. 7–10).
Therefore, in light of the breadth of the claim language and the
teachings of the applied prior art as a whole, we find Appellant’s arguments
are not persuasive of reversible error.
Accordingly, we sustain the § 103 rejection of all of the claims on
appeal.

Appeal 2021-000314
Application 16/225,003

10

DECISION
The decision of the Examiner is affirmed.

In summary:
Claim(s)
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1–21 103 Yamamoto, Thomas 1–21

1–21
Nonstatutory
Double
Patenting US
10,161,577 B2
1–21

Overall
Outcome 1–21

No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED