Ex Parte 7429827 et al

Patent Trial and Appeal Board

Jan 16, 2019

90013860 (P.T.A.B. Jan. 16, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/013,860 11/07/2016 7429827 20006145-000004 8219
100772 7590 01/16/2019
Shiells Law Firm P.C
1910 Pacific Avenue Suite 14000
Dallas, TX 75201
EXAMINER
LIE, ANGELA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/16/2019 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
____________________

Ex parte SIMON NICHOLAS RICHMOND
Appellant
____________________

Appeal 2019-000421
Reexamination Control 90/013,860
Patent No. US 7,429,827 B2
Technology Center 3900
____________________

Before MARC S. HOFF, ERIC B. CHEN, and WILLIAM V. SAINDON,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

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Patent No. 7,429,827 B2

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
13–23 and 31–34.1 We have jurisdiction under 35 U.S.C. §§ 134(b) and
306.
We reverse.
The ‘827 patent issued to Richmond on September 30, 2008. The
‘827 patent is a solar powered light assembly. The light assembly displays a
constantly changing lighting effect that cycles through the light spectrum by
ramping up and ramping down the intensity of light displayed by three light
emitting diodes (LEDs). ‘827 Patent, col. 7:15-18.
Claim 13 is exemplary of the claims on appeal:
13. A lighting device to produce light of varying colour, said device
comprising:
a lens generally enclosing a chamber;
a circuit including:
at least two lamps of different colours to produce a desired colour
including a varying colour, the lamps being mounted to direct light into said
chamber;
connections for at least one rechargeable battery to power the circuit;
a solar cell mounted on a surface so as to be exposed to light and
operatively associated with the connections to charge the battery;
a circuit having at least one lamp to produce a light, the lamp being
mounted to direct light into said chamber;
an activation sub-circuit to provide power to said lamps of different
colours only at low light levels, and
a light sub-circuit having an integrated circuit for controlling said
lamps to independently control delivery of power to each of said lamps so as
to vary intensity of light emitted over time to produce a continuous colour

1 Claims 1-12 are not subject to reexamination. Claims 24-30 have been
cancelled.
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changing cycle, and a selection switch, said selection switch being
connected to said integrated circuit and operable to select a desired fixed
colour; and
a volatile memory retained for a period of time and associated with
said integrated circuit, said memory causing operation of said circuit to
produce said desired fixed colour.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:

Chliwnyi US 5,924,784 Jul. 20, 1999
Lau US 6,431,719 B1 Aug. 13, 2002
Piepgras US 6,965,205 B2 Nov. 15, 2005
Dowling US 7,064,498 B2 Jun. 20, 2006
Laceky US 7,275,501 B1 Oct. 2, 2007

Hung WO 91/02192 Feb. 21, 1991
Pu 01258148.8 Nov. 22, 2002

Wu US 2003/0201874 A1 Oct. 30, 2003

Throughout this decision, we make reference to Appellant’s Brief
(“Appeal Br.,” filed June 8, 2018), the Reply Brief (“Reply Br.,” filed
September 6, 2018) and the Examiner’s Answer (“Ans.,” filed July 6, 2018)
for their respective details.

REJECTIONS
Claims 13–20 and 31–34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Piepgras and Hung.
Claims 21–23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Piepgras, Hung, and Laceky.
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Claims 13–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chliwnyj, Pu, Dowling, and Hung.
Claims 21–23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chliwnyj, Pu, Dowling, Hung, and Laceky.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chliwnyj and Wu.
Claims 32–34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chliwnyj, Wu, Lau, and Hung.

ISSUES
Appellant’s arguments present us with the following issues:
1. Has the Examiner established a reasonable expectation of success
in modifying Piepgras to include a solar cell for power, as taught by Hung?
2. Does Chliwnyj disclose the production of a “continuous color
changing cycle,” as the claims require?
ANALYSIS
REJECTION OF CLAIMS 13-20 AND 31-34 OVER PIEPGRAS AND HUNG
Independent claims 13, 31, and 32 each recite a lighting device to
produce light of varying color, including, inter alia, a solar cell to charge a
rechargeable battery that powers a circuit having at least two lamps.
Appellant argues that modifying Piepgras, which teaches the use of
AC power, to use the solar cell power source of Hung would not have a
reasonable expectation of success, because the circuit of Piepgras draws far
more power than the solar cell taught by Hung could provide. Appeal Br.
30; Reply Br. 23. For example, Appellant contends that the processor of
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Piepgras, alone, is disclosed to consume 0.7 watts, whereas the solar cell of
Hung is estimated to supply only 0.1 watts. Id. Appellant’s expert, Dr.
Ducharme, declared that “Microchip PIC processor 12C672” in Piepgras has
a power dissipation of 700 mw; by contrast, Requester’s expert, Dr. Shackle,
declared that 0.1 watts power generation is “generous” for solar lights.
Ducharme Decl. ¶ 57. Even the 1 watt described as “typical” by Dr. Shackle
would be insufficient to power the entire device. Id. The exemplary prior
art (Frost ‘816) discussed by Dr. Ducharme disclosed that solar lights using
a solar cell to recharge batteries “typically do not generate sufficient light to
clearly illuminate pathways or garden areas.” Id.
For her part, the Examiner has failed to rebut Appellant’s argument.
The Examiner states only that “while interchanging power source in a device
from the wired AC to solar battery is not a simple task, it well lies in the
capabilities of a specialized engineer.” Ans. 19. The Examiner has made no
response to Appellant’s specific allegation that solar cells would generate
insufficient power. Id. We are constrained on this record, then, to conclude
that the Examiner erred in combining Piepgras with Hung, because the
Examiner has not shown sufficiently that the asserted combination, replacing
“unlimited” AC power with a solar cell much more constrained in power
output, would have had a reasonable expectation of success in view of the
arguments and evidence Appellant placed before us.
We conclude that the Examiner erred in rejecting claims 13–20 and
31–34 under 35 U.S.C. § 103(a) as being unpatentable over Piepgras and
Hung. We do not sustain the Examiner’s rejection.
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REJECTION OF CLAIMS 21–23 OVER PIEPGRAS, HUNG, AND LACEKY
Claims 21–23 depend on claim 13, whose rejection over Piepgras and
Hung we do not sustain, supra. The Examiner does not find that Laceky
remedies the deficiencies of Piepgras and Hung. Accordingly, we do not
sustain the Examiner’s § 103(a) rejection of claims 21–23 over Piepgras,
Hung, and Laceky, for the same reasons expressed with respect to
independent claim 13, supra.
REJECTION OF CLAIMS 13-20 OVER CHLIWNYJ, PU, DOWLING, AND HUNG
Independent claim 13 recites “a light sub-circuit having an integrated
circuit for controlling said lamps to independently control delivery of power
to each of said lamps so as to vary intensity of light emitted over time to
produce a continuous colour changing cycle.” The Examiner relies on
Chliwnyj for disclosure of such a “continuous color changing cycle.” Ans.
18.
Appellant argues, and we agree, that the “continuous color changing
cycle” directly corresponds to, and is produced by, the claimed light sub-
circuit, a physical structure. Appeal Br. 18. Such a limitation is properly
construed as a limitation, and not merely a statement of purpose or intended
use for an invention, when it is “the essence or a fundamental characteristic
of the claimed invention.” Vizio, Inc. v. Int’l. Trade Comm’n, 605 F.3d
1330, 1340 (Fed. Cir. 2010).
Appellant further argues, and we agree, that the Examiner erred in
construing the term “cycle.” As the Examiner stated in the Final Rejection,
the term “cycle” is defined as a “repeated sequence of events, a sequence of
events that is repeated again and again.” Final Act. 3; Reply Br. 8. It is
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relevant to the disclosure of Chliwnyj to discuss the meaning of the term
“random” as well: “proceeding, made, or occurring without definite aim,
reason, or pattern,” or “of or characterizing a process of selection in which
each item of a set has an equal probability of being chosen.”
Dictionary.com, defs. 1 and 2; Reply Br. 8–9. We agree with Appellant that
a “cycle” has a predetermined and repeatable pattern or scheme and is thus
the antithesis of random. Reply Br. 9; see Ducharme Decl. ¶¶ 41, 74, 92.
We agree with Appellant that Chliwnyj’s purpose and mode of
operation is to create a visual effect that mimics a natural random process,
i.e., a simulated flame. Reply Br. 10. “A microprocessor-based simulated
electronic flame uses multiple LEDs that are controlled to give the
appearance of flame motion . . . . It is the plurality of lights that allows
simulated flame motion.” Chliwnyj col. 2:26–30. “By using a
microprocessor the flame simulation may appear to be a natural random
process.” Id. at col. 2:47–49. “The microprocessor control may provide,
among other effects, low-frequency intervals of flame-pattern randomness to
keep the simulation constantly changing.” Id. at col. 3:26–29.
The Examiner finds that Chliwnyj discloses a “continuous color changing
cycle” as claimed. Ans. 9-10. The Examiner’s finding relies on the
rationale that the term “cycle” may be interpreted to mean “some pattern or
scheme; same [sic] that happens and can happen again,” and the idea that
such a “pattern or scheme” that only occurs once can nevertheless be
construed as a “cycle.” Ans. 9. “While Chilwnyj’s invention is
programmed to display non-subsequently repetitive patterns (i.e., not
subsequently repeating cycles) to produce realistic looking flame . . . he does
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produce a plurality of continuously color changing cycles.” Ans. 23. “The
Examiner would like to note, that as currently claimed there could be only
one a single cycle which includes continuously changing colors and there is
no requirement for it to repeat subsequently.” Ans. 23.
We do not agree with this finding. Applying the definition of “cycle”
stated supra, as a “repeated sequence of events, a sequence of events that is
repeated again and again,” Chliwnyj’s random or pseudorandom flame
simulation does not constitute a sequence of events that is repeated. The
random color changes disclosed by Chliwnyj necessarily indicate that a
sequence of colors is not repeated.
Because we find that Chliwnyj does not disclose the claimed
“continuous color changing cycle,” we find that the Examiner erred in
asserting the prima facie obviousness of claims 13–20 over Chliwnyj, Pu,
Dowling, and Hung, and we do not sustain this rejection.
REJECTION OF CLAIMS 21–23 OVER CHLIWNYJ, PU, DOWLING, HUNG, AND
LACEKY
Claims 21–23 depend, ultimately, from independent claim 13. As
explained supra, we find that the Examiner erred in finding that Chliwnyj
discloses a “continuous color changing cycle” as recited in independent 13.
The Examiner does not find that the further reference, Laceky, remedies this
deficiency. Therefore, we do not sustain the Examiner’s § 103(a) rejection
of claims 21–23 over Chliwnyj, Pu, Dowling, Hung, and Laceky, for the
same reasons given supra with respect to independent claim 13.
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REJECTION OF CLAIM 31 OVER CHLIWNYJ AND WU
Independent claim 31 recites a light sub-circuit that “varies said power
to each of said lamps so as to vary both intensity of light emitted and
frequency of changes to said intensity to produce a continuous color
changing cycle.”
The Examiner relies on Chliwnyj for disclosure of such a “continuous
color changing cycle.” Ans. 18. As explained supra, we find that the
Examiner erred in finding that Chliwnyj discloses a “continuous color
changing cycle” as recited in independent 13. The Examiner does not find
that Wu remedies this deficiency. Therefore, we do not sustain the
Examiner’s § 103(a) rejection of claim 31 over Chliwnyj and Wu, for the
same reasons expressed with respect to claim 13.
REJECTION OF CLAIMS 32–34 OVER CHLIWNYJ, WU, LAU, AND HUNG
Independent claim 32 recites a light sub-circuit that varies “intensity
of light emitted over time to produce a continuous color changing cycle.”
The Examiner relies on Chliwnyj for disclosure of such a “continuous
color changing cycle.” Ans. 18. As explained supra, we find that the
Examiner erred in finding that Chliwnyj discloses a “continuous color
changing cycle” as recited in independent 13. The Examiner does not find
that Wu, Lau, or Hung remedy this deficiency. Therefore, we do not sustain
the Examiner’s § 103(a) rejection of claims 32-34 over Chliwnyj, Wu, Lau,
and Hung, for the same reasons expressed supra with respect to claim 13.
SECONDARY CONSIDERATIONS
As explained supra, we are persuaded by Appellant’s arguments that
the Examiner erred in rejecting the claims over Piepgras and Hung. We are
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also persuaded that the Examiner erred in rejecting the claims over
Chliwnyj, Pu, Dowling, and Hung, and over Chliwnyj and Wu. As a result,
we need not reach the question of whether secondary considerations of
nonobviousness outweigh any prima facie showing by the Examiner of the
obviousness of the claimed invention.
CONCLUSIONS
1. The Examiner has not established a reasonable expectation of
success in modifying Piepgras to include a solar cell for power, as taught by
Hung.
2. Chliwnyj does not disclose the production of a “continuous color
changing cycle,” as the claims require.

ORDER
The Examiner’s decision to reject claims 13-23 and 31-34 is reversed.

REVERSED

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PATENT OWNER:

Shiells Law Firm, P.C.
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THIRD PARTY REQUESTER:

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