Ex Parte 6543911 et al

Patent Trial and Appeal BoardJun 1, 2016

95001410 (P.T.A.B. Jun. 1, 2016)

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. 95/001,410 07/27/2010 6543911 7248 64828 7590 06/01/2016 Harold McGurk The Law Office of Clay McGurk P.O. BOX 1488 Orange, CA 92856 EXAMINER HUGHES, DEANDRA M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/01/2016 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 ____________ VOLKSWAGEN GROUP OF AMERICA, INC., Requester, v. LIGHT TRANSFORMATION TECHNOLOGIES LLC, Patent Owner. ____________ Appeal 2016-001446 Reexamination Control 95/001,410 Patent 6,543,911 B1 Technology Center 3900 ____________ Before STEPHEN C. SIU, JONI Y. CHANG, and JOSIAH C. COCKS, Administrative Patent Judges. COCKS, Administrative Patent Judge. NEW DECISION 37 C.F.R. § 41.77(f) Appeal 2016-001466 Reexamination Control 95/001,410 Patent 6,543,911 B1 2 I. BACKGROUND In an earlier Decision, 2012-002458, mailed January 10, 2012 (“Decision”), we reversed the Examiner’s decision not to adopt a certain ground of rejection proposed by Third Party Requester, Volkswagen Group of America, Inc. (“VGA”). In particular, we reversed the Examiner’s decision not to reject claim 6 of U.S. Patent No. 6,543,911 B1 (the “’911 patent”) under 35 U.S.C. § 102(b) as anticipated by Brown.1 By operation of 37 C.F.R. § 41.77(b), that reversal constituted a new ground of rejection applied to claim 6. Patent Owner, Light Transformation Technologies LLC (“LTT”), was given the option to either request the reopening of prosecution or request rehearing. LTT elected to reopen prosecution.2 On March 12, 2012, pursuant to 37 C.F.R. § 41.77(c), VGA filed comments in reply to the Response.3 In an Order dated November 7, 2012, the proceeding was remanded to the Examiner. In due course, the Examiner mailed a Determination as required by 37 C.F.R. § 41.77(d).4 In that Determination, the Examiner determined that the rejection of claim 6 as anticipated by 1 “Brown” is UK Patent Application GB 2 282 700 A published April 12, 1995. 2 See “Patent Owner’s Response and Request to Reopen Prosecution Pursuant to 37 C.F.R. § 41.77(b) After a Decision by the Board of Appeals and Interferences” filed October 2, 2012 (“Response” or “PO Resp.”). 3 See “Comments of Requester, Volkswagen Group of America, Inc., Pursuant to 37 C.F.R. § 41.77(c)” (“Comments”). 4 See “Determination Under 37 CR 41.77(d)” mailed December 26, 2012 (“Determination”). Appeal 2016-001466 Reexamination Control 95/001,410 Patent 6,543,911 B1 3 Brown is maintained. Neither party filed any comments under 37 C.F.R. § 41.77(e) in response to the Examiner’s Determination. Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to the Board so that we may reconsider the matter and issue a new decision.5, 6 II. DISCUSSION In exercising our authority under 37 C.F.R. § 41.77(f) here, we must inquire if the record now before us conveys that the Examiner was incorrect in her recommendation that the rejection of claim 6 of the ’911 patent as anticipated by Brown should be maintained. In making that inquiry, we discern that a central issue concerns the meaning of “redistributes” when used in connection with the distribution of light from a source. Indeed, it is the meaning of that term that has been at the heart of the reexamination and appeal proceedings involving the ’911 patent. In our earlier Decision, we determined that “the term ‘redistributes’ in the context of light means that light emanating from a source must 5 37 C.F.R. § 41.77(f) reads: (f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the proceeding will be returned to the Board which shall reconsider the matter and issue a new decision. The new decision is deemed to incorporate the earlier decision, except for those portions specifically withdrawn. 6 We observe that on July 8, 2015, subsequent to this proceeding again reappearing before the Board, counsel who had represented LTT filed a paper titled “Notice of Expiration of Patent” indicating that the ’911 patent “has expired due to the non-payment of the required maintenance fees on April 8, 2015.” Appeal 2016-001466 Reexamination Control 95/001,410 Patent 6,543,911 B1 4 undergo a change in its angular intensity distribution upon reflection by a reflective surface.” Decision 9. In making that determination, we observed the following: That definition of the term “redistributes”: (1) was the definition advanced by LTT in prosecution before the Examiner in this reexamination proceeding (see, e.g., “Patent Owner's Response and Amendment in Inter Partes Reexamination” filed November 23, 2010); (2) is supported by the specification of the ’911 Patent and the declaration testimony of Dr. Pepper;[7] (3) was accepted by the Examiner as correct (see ACP 4);[8] and (4) is not disputed by VGA. Id. at 9–10. We also were unpersuaded by LTT’s belated assertion that, in addition to the meaning of “changing the angular intensity distribution,” the term “redistributes” also requires that there be a change in “the relative order or sequence” of reflected light rays. Id. at 10. In particular, we were not satisfied that the record supported adequately LTT’s assertion. In its Response, LTT once again represents that the term “redistributes” with respect to reflected light requires “changing the order of emerging light rays.” PO Resp. 5. According to LTT, Brown’s reflecting structure, shown for instance in Figure 12, does not redistribute light because it “does not show light paths that are reordered.” Id. at 7. In conjunction with its Response, LTT introduced into the record a second “Declaration of 7 The noted Declaration testimony of Dr. Pepper refers to the “Declaration of Dr. David Pepper Under 37 C.F.R. § 1.132” was filed on November 23, 2010 (“1st Pepper Decl.”). 8 “ACP” refers to the Action Closing Prosecution that was mailed January 13, 2011. Appeal 2016-001466 Reexamination Control 95/001,410 Patent 6,543,911 B1 5 Dr. David Pepper Under 37 C.F.R. § 1.132”. Notably, we observe that as a part of that Declaration, Dr. Pepper does not offer any testimony as to the meaning of “redistributes.” Indeed, we note also that Dr. Pepper does not elaborate on or revise his earlier testimony that Brown’s reflective surfaces allegedly do not redistribute light “because there is no change in the angular intensity distribution of the incoming source light.” See 1st Pepper Decl. ¶ 12. We have considered the record before us, including LTT’s Response, VGA’s Comments, and the Examiner’s Determination. The record conveys that the term “redistributes” with respect to light in the context of the ’911 patent is understood as requiring a change in the angular intensity distribution of reflected light, and does not require reordering of reflected light rays.9 We do not deviate from our determination in our earlier Decision that Brown discloses reflective surfaces, e.g., as shown in Figure 12 of that reference, that change the angular intensity distribution of reflected light, and, thus, show light rays that have been redistributed. Furthermore, we discern that even if we were to conclude that “redistributes” does require reordering of reflected light rays, it is not apparent why such is not shown in Brown. As a part of its Comments, VGA introduces a Declaration from Dr. Roland Winston (“Winston Decl.”). Dr. Winston includes two annotated versions of Brown’s Figure 12, which are offered to show the ordering of light before and after reflection from 9 We conclude that such interpretation reflects the ordinary and customary meaning of the term “redistributes,” and is correct under both the claim construction standard of “broadest reasonable interpretation” and that advanced in Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005). Appeal 2016-001466 Reexamination Control 95/001,410 Patent 6,543,911 B1 6 surfaces 34 and 40. A portion of paragraph 10 of Dr. Winston’s Declaration showing those annotated versions of Figure 12 is reproduced below: Figure 12 of Brown has been annotated below, in which six light rays denoted A, B, C, D, E, and F have been applied to the light emitting diode 8 and traced in the absence of the part 50 (below left figure) and then traced again in the presence of the part 50 (below right figures). Winston Decl. ¶ 10. Thus, Dr. Winston testifies that light rays are generated from diode 8 in the order A, B, C, D, E, and F, and upon reflection by part 50 are reconfigured in the order of A’, B’, F’, E’, D’, and C’. Dr. Winston’s testimony as to the apparent reodering of reflected light in Brown appears accurate. It is not apparent to us why Brown is not understood reasonably as conveying that reflected light rays are reordered as compared with their ordering before reflection. Appeal 2016-001466 Reexamination Control 95/001,410 Patent 6,543,911 B1 7 Having considered the record before us, we do not discern error in the Examiner’s determination that the rejection of claim 6 as anticipated by Brown is maintained. III. CONCLUSION We affirm the Examiner’s determination that claim 6 of the ’911 patent remains unpatentable over Brown. We do not modify our earlier decision (2012-002458), which forms part of this present decision. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED rvb Appeal 2016-001466 Reexamination Control 95/001,410 Patent 6,543,911 B1 8 PATENT OWNER: HAROLD MCGURK THE LAW OFFICE OF CLAY MCGURK P.O. BOX 1488 ORANGE, CA 92856 THIRD-PARTY REQUESTER: KENYON & KENYON LLP ONE BRAODWAY NEW YORK, NY 10004