Ex Parte Finkelstein et al

Patent Trial and Appeal BoardOct 4, 2017

12759744 (P.T.A.B. Oct. 4, 2017)

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. 12/759,744 04/14/2010 Burl M. Finkelstein 2170415-000124 7632 49840 7590 10/06/2017 Atlanta Raker Dnnelsinn EXAMINER Intellectual Property Department Monarch Plaza, Suite 1600 FAROKHROOZ, FATIMA N 3414 Peachtree Rd. ATLANTA, GA 30326 ART UNIT PAPER NUMBER 2875 NOTIFICATION DATE DELIVERY MODE 10/06/2017 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): atlip@bakerdonelson.com tdavis@bdbc.com ipdocketing @bakerdonelson. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BURL M. FINKELSTEIN, RAYMOND J. HILLER, and BRETT A. MITCHELL Appeal 2017-000937 Application 12/759,744 Technology Center 2800 Before GEORGE C. BEST, N. WHITNEY WILSON, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeals under 35 U.S.C. § 134 from the Examiner’s Final Rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A combination light and light fixture comprising, Appeal 2017-000937 Application 12/759,744 a light fixture having a main housing and a transparent cover coupled to said main housing, said transparent cover having elongated side walls defining an interior space and having an exterior surface with at least one circumferential prismatic ridge, said prismatic ridge internally reflecting light emanating from said interior space in a direction away from said main housing, and a light having a mounting housing having a plurality of LED lights coupled thereto, said mounting housing being positioned within said interior space of said transparent cover with at least a portion of said plurality of LED lights being positioned generally beneath said prismatic ridge of said light fixture cover, whereby a portion of the light emitted from the light is internally reflected away from the light fixture main housing to more evenly distribute light within the space in which the combination light and light fixture is mounted. Appellants1 (App. Br. 4) request review of the following rejections from the Examiner’s Final Office Action: I. Claims 1—3, 5—9, 11—13, 15, and 17 rejected under 35 U.S.C. § 103(a) as unpatentable over Kit (US 7,507,001 B2, issued March 24, 2009) and Rivas (US 2007/0070621 Al, published March 29, 2007). II. Claims 16 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable over Kit, Rivas, and Yu (US 5,921,660, issued July 13, 1999). III. Claims 4, 10, and 14 rejected under 35 U.S.C. § 103(a) as unpatentable over Kit, Rivas, and Lodhie (US 2009/0109674 Al, published April 30, 2009). For Rejection I, Appellants presents arguments addressing independent claim 1 and rely on the same line of argument to address the rejection of independent claim 11. See generally Appeal Brief. Appellants 1 The real party in interest is identified as the Applicants-Appellants. App. Br. 2. 2 Appeal 2017-000937 Application 12/759,744 do not present separate arguments addressing dependent claims 2, 3, 5—9, 12, 13, 15, and 17 or separately rejected dependent claims 4, 10, 14, 16, and 18 (Rejections II—III). Id. Accordingly, we select claim 1 as representative of the subject matter before us on appeal. Claims 2—18 stand or fall with claim 1. OPINION Prior Art Rejections Claim 1 After review of the respective positions provided by Appellants and the Examiner, we AFFIRM for the reasons presented by the Examiner. We add the following for emphasis. Claim 1 is directed to a combination light and light fixture where the light comprises a mounting housing having a plurality of FED lights coupled thereto, said mounting housing being positioned within an interior space of a transparent light fixture cover with at least a portion of said plurality of FED lights being positioned generally beneath a prismatic ridge of said light fixture cover. The Examiner finds Kit teaches a combination light and light fixture that differs from the claimed invention in that Kit does not disclose a transparent cover having an exterior surface with at least one circumferential prismatic ridge that internally reflects a portion of the light emitted from the light away from a light fixture main housing as claimed. Final Act. 2—3; Kit Fig. 2. The Examiner finds that Rivas discloses a lamp cover with an exterior surface comprising prismatic ridges to reflect light as known. Final Act. 3; Rivas Figs. 14A, 14B, 191. The Examiner determines it would have 3 Appeal 2017-000937 Application 12/759,744 been obvious to one of ordinary skill in the art to add the prismatic ridges on the external surface of the LED cover of Kit for the reasons taught by Rivas. Final Act. 3. Appellants contend Rivas discloses prismatic ridges positioned distally and laterally from the LED lights, as the LED lights (30) are positioned at the ends of the elongated tube and the ridges are positioned in an inboard central region of the tube. App. Br. 4. Thus, Appellants argue the LED lights in Rivas are not positioned beneath the prismatic ridge as claimed and disclosed. App. Br. 4; Spec. 6. According to Appellants, the Specification makes clear that the definition of beneath should be taken to mean directly under and in alignment with the prism, and not generally defined as lower than or into a lower position than as suggested by the Examiner. App. Br. 5. Appellants additionally argue that Rivas does not include lights mounted beneath the ridges, but are instead mounted distally and laterally from the ridges and, thus, the majority of the light is not projected forwardly as recited in the claim. Id. at 5—6. We have considered Appellants’ arguments but are unpersuaded of reversible error for the reasons presented by the Examiner. Ans. 9—10. As noted by the Examiner, Appellants’ arguments do not address the Examiner’s reasons for combining the teachings of the cited art. Id. Instead of addressing the combined teachings of the cited art, Appellants argue Rivas individually. App. Br. 4—5. It is well established that nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425—26 (CCPA 1981) (“The test [for obviousness]... is what the 4 Appeal 2017-000937 Application 12/759,744 combined teachings of the references would have suggested to those of ordinary skill in the art.”). As noted by the Examiner, it is the external surface of Kit’s LED cover that is being modified by incorporating the prismatic ridges taught by Rivas. Final Act 3; Ans. 10. That is, it is the light and light fixture structure of the combined teachings that the Examiner is relying upon to arrive to the claimed invention and not the structure of Rivas. Ans. 10. Appellants do not adequately explain why one skilled in the art would not have been capable of modifying the LED light cover of Kit to include prismatic ridges, given that Rivas discloses prismatic ridges as known elements for reflecting and refracting light from LED lights to amplify the appearance of light. Rivas 3, 65, 91; see In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Appellants have not adequately explained why one skilled in the art would not have expected the light and light fixture from the combined teachings of the prior art to result in at least a portion of the LED lights being positioned generally beneath the prismatic ridge of the light fixture cover such that a portion of the light emitted from the light is internally reflected away from the light fixture main housing as claimed. Thus, Appellants’ arguments do not point to reversible error in the Examiner’s determination of obviousness. Accordingly we affirm the Examiner’s prior art rejections of claims 1—18 under 35 U.S.C. § 103 (a) for the reasons presented by the Examiner and given above. 5 Appeal 2017-000937 Application 12/759,744 DECISION The Examiner’s prior art rejections of claims 1—18 under 35 U.S.C. § 103(a) are affirmed. TIME PERIOD 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). AFFIRMED 6