Ex Parte Bailey et al

Patent Trials and Appeals BoardApr 6, 2016

12900159 - (D) (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/900, 159 10/07/2010 128168 7590 04/08/2016 Michael Best & Friedrich LLP (Hubbell) 100 East Wisconsin A venue Suite 3300 Milwaukee, WI 53202 FIRST NAMED INVENTOR Christopher L. Bailey 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 55849 7227 EXAMINER TUMEBO, TSION M ART UNIT PAPER NUMBER 2875 NOTIFICATION DATE DELIVERY MODE 04/08/2016 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): mkeipdocket@michaelbest.com kmbarner@michaelbest.com webradley@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER L. BAILEY, ADAM J. CLARK, and PERRY ROMAN0 1 Appeal2014-005767 Application 12/900, 159 Technology Center 2800 Before BRADLEY R. GARRIS, CHUNG K. PAK, and BEVERLY A. FRANKLIN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellants appeal from the Examiner's rejection under 35 U.S.C. Â§ 103(a) of claims 1, 4--6, 8, 10, 11, 13-17, 19-22, 24, 25, 27, 29-32, 35, 36, and 39--44 as unpatentable over Kuo et al. (US 2010/0220476 Al, published Sept. 2, 2010) ("Kuo") in view of Liu et al. (US 2010/0171404 Al, published July 8, 2010) ("Liu") and Klus (US 1 Hubbell Inc. is identified as the real party in interest. App. Br. 3. Appeal2014-005767 Application 12/900, 159 D625,463 S, issued Oct. 12, 2010). We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appellants claim a luminaire housing 10 comprising a core having vertically spaced, substantially parallel cooling fins 18 projecting laterally outwardly in a downward slope (sole independent claim 1, Fig. 5). According to Appellants' Specification, "[t]he cooling fins slope laterally downwardly at a shallow angle, preferably about 5 degrees, primarily to facilitate shedding of moisture and entrained dust or debris" (Spec. i-f 61 ). Further details regarding this claim subject matter are set forth in representative claim 1, a copy of which taken from the Claims Appendix of the Appeal Brief appears below. 1. A luminaire housing made of thermally conductive material and compnsmg: a longitudinally extending core having a substantially flat top wall, a substantially flat bottom wall and two opposite side walls connecting the top wall to the bottom wall, the core having a mean external width and a medial longitudinal vertical plane, and at least five external, vertically spaced, substantially parallel cooling fins carried by each side wall, said cooling fins extending longitudinally and projecting laterally outwardly in a downward slope, each cooling fin terminating laterally in a distal edge and having a lateral cantilevered length and a reach defined by the lateral distance of its distal edge from said medial longitudinal vertical plane, wherein the reaches of a group of at least four consecutive cooling fins of each side wall increase progressively from the top cooling fin of the group to the bottom cooling fin of the group and the lateral cantilevered length of the majority of the cooling fins of each side wall is at least about 35% of the mean external width of the core. In rejecting claim 1, the Examiner finds that Kuo discloses a luminaire housing having cooling fins 101 projecting laterally outwardly in a 2 Appeal2014-005767 Application 12/900, 159 downward slope as claimed (Final Action 2-3 (citing Figs. 1-3 i-fi-1 21, 23, 27)) but not the claim 1 features wherein the top wall of the housing core is substantially flat and the lateral cantilevered length of the majority of the cooling fins is at least about 35% of the mean external width of the core (id. at 3). The Examiner concludes that it would have been obvious to provide Kuo's luminaire housing with these features in view of Liu and Klus (id. at 4). Appellants challenge the Examiner's finding that the cooling fins of Kuo project laterally outwardly in a downward slope as required by claim 1 (App. Br. 11 ). According to Appellants, "it does not appear that the fins 101 have a downward slope" (id.). In response, the Examiner states that Kuo' s Figure 2 shows "the fins have a downwards slope" (Ans. 12) and that Figure 3 of Klus also discloses fins having "a downwards slope" (id.). 2 Appellants reply by arguing that neither Kuo nor Klus teaches the claim limitation under review (Reply Br. 6). We find convincing merit in Appellants' argument. The cooling fins shown in Figure 2 of Kuo and Figure 3 of Klus appear to project laterally outwardly in a horizontal direction rather than in a downward slope as claimed. The Examiner does not provide any explanatory support for considering these Figures to show the downward slope required by claim 1. For these reasons and because the Examiner does not even attempt to establish that it would have been obvious to modify Kuo' s fins to have a 2 The Examiner does not embellish the statement regarding Klus with any explanation why the asserted disclosure of Figure 3 would have suggested providing Kuo' s fins with a downward slope. 3 Appeal2014-005767 Application 12/900, 159 downward slope, the Â§ 103 rejection of sole independent claim 1 and the claims which depend therefrom will not be sustained. The decision of the Examiner is reversed. REVERSED 4