CREE, INC.

Patent Trials and Appeals Board

Nov 8, 2021

2020003131 (P.T.A.B. Nov. 8, 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.
13/777,804 02/26/2013 Dante P. Nava 2294-610 9623
166620 7590 11/08/2021
IDEAL and Withrow + Terranova
106 Pinedale Springs Way
Cary, NC 27511
EXAMINER
COOPER, JONATHAN G
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
11/08/2021 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANTE P. NAVA, JOSHUA J. MARKLE, ROBERT E. HIGLEY,
and EDWARD STEINKE
____________________

Appeal 2020-003131
Application 13/777,804
Technology Center 2600
____________________

BEFORE ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and
JOHN D. HAMANN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3, 9−11, and 31. Claims 12, 16−18,

1 We herein refer to the Final Office Action, mailed April 15, 2019 (“Final
Act.”); the Advisory Action, mailed July 29, 2019 (“Advisory Act.”); the
Appeal Brief, filed Oct. 29, 2019 (“Appeal Br.”); the Examiner’s Answer,
mailed Feb. 4, 2020 (“Ans.”); and the Reply Brief filed Mar. 23, 2020
(“Reply Br.”).

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as IDEAL
INDUSTRIES LIGHTING LLC. Appeal Br. 2.
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21, 24−27, and 29 have been allowed. Final Act. 7. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis added):
1. A system comprising:
at least one lighting device; and
a control circuit configured to
receive an indication of glare from a reflected light sensor that
receives reflected light from an area illuminated by the at least one
lighting device, and
vary a color temperature of light generated by the at least one
lighting device based on the indication of glare, so as to reduce glare
generated by the at least one lighting device.

REJECTIONS
1. Claims 1, 3, 9, and 11 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ku et al. (US 2010/0164384 A1, July 1,
2010) in view of Wang et al. (US 2007/0295891 A1, Dec. 27, 2007) and
Bechtel et al. (US 2005/0002103 A1, Jan. 6, 2005).
2. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ku, Wang, and Bechtel as applied to claim 1, above, and
further in view of Dassanayake et al (US 2011/0169410 A1, July 14, 2011).
3. Claim 31 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable by Ku in view of Roberts et al. (US 2012/0299476 A1, Nov. 9,
2012).
ANALYSIS
Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
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3
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In reaching this Decision, we
have considered all evidence presented and all arguments actually made by
the Appellant.
We select claim 1 as the representative claim for this rejection.3 The
contentions discussed herein as to claim 1 are dispositive as to this rejection.
Claim 1 recites “vary a color temperature of light generated by
the at least one lighting device based on the indication of glare, so as to
reduce glare generated by the at least one lighting device” (hereinafter
“disputed reducing the glare limitations”).
Issue: Under 35 U.S.C. § 103(a), did the Examiner err by finding the
cited combination of Ku, Wang, and Bechtel would have taught or suggested
the disputed reducing the glare limitations, within the meaning of
representative claim 1?
In rejecting claim 1, the Examiner finds that the disputed reducing the
glare limitations should not be given patentable weight because:
Applicant is first reminded that a recitation of the intended use of the
claimed invention must result in a structural difference between the
claimed invention and the prior art in order to patentably distinguish the
claimed invention from the prior art. If the prior art structure is capable
of performing the intended use, then it meets the claim. Ku is capable
of reducing glare generated by the at least one lighting device as glare
corresponds to light reflected from an object. By turning the light
source off a glare originating from the light source will be reduced (See
“turning ... on temporarily ... while at other times ... lamp remains off”,
[0055]-[0056]). The purpose/reason, e.g. intended use, is not read into
the the limitations. Applicant is alternatively reminded that a variance
of glare by Ku “necessarily flows” from the reference, as a reduction of
a glare will necessarily flow from maintaining the lamp off freon an on

3 Independent claim 31 recites similar subject matter.
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state, as the control circuit will reduce a glare originating from the at
least one lighting device (See MPEP 2112 IV).
Advisory Act. 2, lines 7 through 17 (emphasis ours).
Appellant contends that the reducing glare disputed limitation “is a
functional limitation on the recited control circuit’s act of varying the color
temperature of the light.” Appeal Br. 4. We agree with Appellant’s
contentions on pages 4 to 10 of the Appeal Brief explaining why the
reducing the glare limitations should be given patentable weight.
As an issue of claim construction, we find claim 1 positively recites:
“vary a color temperature of light generated by the at least one lighting
device based on the indication of glare, so as to reduce glare generated by
the at least one lighting device,” for essentially the same reasons argued by
Appellant (Appeal Br. 4−10), and therefore we do not consider the disputed
reducing the glare limitations to be merely statements of intended use that
should not be given patentable weight, as concluded by the Examiner. See
Ans. 3. We also agree with Appellant’s arguments that the cited portion of
Ku does not teach the disputed removing the glare limitations. (Id.).
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis.” In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
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analysis fails to meet this standard because, on this record, the rejection does
not adequately explain the Examiner’s findings of fact.
We conclude, consistent with Appellant’s argument, that there is
currently insufficient articulated reasoning to support the Examiner’s finding
that the combination of Ku, Wang, and Bechtel teaches, suggests, or
otherwise renders obvious the disputed reducing the glare limitations as
required by claim 1. Because we reverse the rejection of each independent
claim on appeal, we also reverse the rejections of each associated dependent
claim.
CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 1, 3, 9−11, and 31 as being unpatentable under 35 U.S.C. § 103(a).
The Examiner’s rejections of claims 1, 3, 9−11, 31 as being
unpatentable under 35 U.S.C. § 103(a) are reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 9, 11

103(a) Ku, Wang, Bechtel 1, 3, 9, 11
10 103(a) Ku, Wang, Bechtel,
Dassanayake
10
31 103(a) Ku, Roberts 31
Overall
Outcome

1, 3, 9−11,
31

REVERSED