Ex Parte Germain

Patent Trial and Appeal BoardApr 28, 2016

13074322 (P.T.A.B. Apr. 28, 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. 13/074,322 03/29/2011 Steve Germain 245853 (GLOZ 200591US01) 9574 74495 7590 04/29/2016 FAY SHARPE LLP/GE LIGHTING SOLUTIONS, LLC 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115-1843 EXAMINER TSIDULKO, MARK ART UNIT PAPER NUMBER 2875 MAIL DATE DELIVERY MODE 04/29/2016 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 ____________ Ex parte STEVE GERMAIN1 ____________ Appeal 2014-006702 Application 13/074,322 Technology Center 2800 ____________ Before GEORGE C. BEST, WESLEY B. DERRICK, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 and 2 under 35 U.S.C. § 102(b) and claims 3–23 under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART. 1 Appellant identifies GE LIGHTING SOLUTIONS, LLC as the Real Party in Interest. Appeal Brief (filed November 19, 2013, “App. Br.”), 1. Appeal 2014-006702 Application 13/074,322 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a waterproof LED lamp having one or more LEDs disposed in a housing and forming a watertight seal in an LED lamp. Spec. Abstract. Independent claim 1 is directed to a waterproof LED lamp. Independent claim 12 is directed to a method of forming a first and second watertight seal between a housing base and an optical cover in an LED signal lamp. Independent claim 16 is directed to a housing base and an optical cover configured to form at least one water-tight seal for an LED lamp. Claims 1, 12, and 16 are reproduced below from the Appeal Brief Claims Appendix: 1. A waterproof LED lamp comprising: a housing having one or more LEDs disposed therein, said housing comprising: a housing base including a body with a first opening, said first opening having an edge surrounded by a first sealing portion; and an optical cover comprising a shell having a second opening, said second opening having a border surrounded by a second sealing portion, said second sealing portion being configured to be removably inserted into said first sealing portion, forming a water-tight seal between said housing base and said optical cover. 12. A method for forming a watertight seal in an LED signal lamp having a housing, the housing including a housing base with a first sealing portion and an optical cover with a second sealing portion, said method comprising: providing said first sealing portion with a rim, said rim including a first lip extending from the innermost portion of the rim, a second lip extending from the outermost portion of the Appeal 2014-006702 Application 13/074,322 3 rim, and two central lips extending between said inner and outer lips; providing said second sealing portion with a flange, said flange including an outer lip located on an outer edge of said flange and an inner lip extending from an inner edge of said flange; removably inserting said inner lip between said central lips, forming a first seal between said first and second sealing portions; and extending said outer lip around said second lip, forming a second seal between said first and second sealing portions. 16. A watertight sealing arrangement for an LED lamp comprising: a first sealing portion positioned on a housing base, said sealing portion comprising a rim extending outwardly from said housing base and including an innermost portion having a first lip extending therefrom, an outermost portion having a second lip extending therefrom, and at least two central lips extending therebetween; and a second sealing portion located on an optical cover, said second sealing portion comprising a flange extending outwardly from said optical cover, said flange having an inner lip and an outer lip, wherein said second sealing portion is configured to form at least one water-tight seal with said first sealing portion. App. Br. 21, 23, 24 (Claim Appendix) (emphasis added). As highlighted by emphasis above, independent claims 12 and 16 require the housing to include a first lip, second lip, and—between them—a pair of central lips. Claims 13‒15 and 17‒22 similarly require the recited structure by dependency. Claim 3—depending from claim 1—recites “an innermost portion with a first lip, an outermost portion with a second lip, and a pair of central lips disposed therebetween.” Claims 4‒9 depending directly or indirectly from claim 3 similarly require the recited structure. Claims 2, 10, 11, and Appeal 2014-006702 Application 13/074,322 4 23—each depending directly from claim 1—do not require the housing to include the characteristic first lip, second lip, and pair of central lips. THE REJECTIONS I. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated by Martineau.2 II. Claims 7‒10, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable for obviousness over Martineau. III. Claims 3‒6, 12‒17, and 20‒233 stand rejected under 35 U.S.C. § 103(a) as unpatentable for obviousness over Martineau in view of Battaglia.4 IV. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable for obviousness over Martineau in view of Battaglia and Specht.5 V. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable for obviousness over Martineau in view of Wedell.6 Appellant proffers arguments for claims subject to Rejection I‒IV and rely on argument as to Rejection I—rejecting claims 1 and 2—as to Rejection V—rejecting claim 11. App. Br. 7‒19. We decide this case on the basis of claims 1, 3‒5, 12, 16, and 18. 37 C.F.R. § 41.37(c)(1)(iv). 2 Martineau et al. (US 7,237,924 B2, issued July 3, 2007). 3 Claims 20‒23 are not listed in rejection headings. Final Act., generally. The basis for rejection of claims 22 and 23 is discussed within the body of Rejection III. Final Act. 6. Claims 20 and 21 are discussed within the statement of Rejection II (Final Act. 4), however, as these claims depend from independent claim 16, we treat them as properly subject to the same ground of rejection as applied to claim 16—Rejection III. 4 Battaglia, Jr. (US 7,988,451 B1, issued August 2, 2011). 5 Specht et al. (US 8,201,606 B2, issued June 19, 2012). 6 Wedell (US 7,553,044 B2, issued June 30, 2009). Appeal 2014-006702 Application 13/074,322 5 DISCUSSION We have thoroughly reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred.7 We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Any arguments that Appellant did not make in other than a conclusory fashion in the Briefs are waived. We first address the Examiner’s interpretation of the independent claims 1, 12, and 16 as being open to inclusion of an o-ring to provide the recited sealing function. Final Act. 9‒10; Ans. 2. While Appellant contends claims 1, 12, and 16 recite forming, or being configured to form, a water-tight seal without use of an o-ring or gasket (App. Br. 7‒8, 11‒12, and 14‒15), the Examiner did not err in concluding that the claims did not require the seal be formed without use of an o-ring or gasket. Dependent claims 23, 13, and 23—further limiting claims 1, 12, and 16, respectively—are dispositive of the issue as the further limitation is that the watertight seal is formed “without the use of either an o-ring or gasket” (claim 13) or “without the use of an o-ring or gasket” (claims 22 and 23). Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, (Fed. Cir. 2012) (citing 35 U.S.C. § 112, ¶ 4, “[A] claim in dependent form shall . . . specify a further limitation of the subject matter claimed.”); Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1335 (Fed. Cir. 2007) (“An independent claim impliedly embraces more subject matter than its narrower dependent claim.”); AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1242 7 We refer to the Final Office Action (issued June 19, 2013, “Final Act.”), the Appeal Brief (filed November 19, 2013), the Examiner’s Answer (issued March 14, 2014, “Ans.”), and the Reply Brief (filed May 16, 2014, “Reply Br.”). Appeal 2014-006702 Application 13/074,322 6 (Fed. Cir. 2003) (“Under the doctrine of claim differentiation, dependent claims are presumed to be of narrower scope than the independent claims from which they depend.”). As to Appellant’s argument—citing the background of the present application—that the instant invention differs from prior signal lamps that required o-rings and gaskets (App. Br. 7), we find it without sufficient support where the portions of the Specification cited—¶¶ 18‒25, 27, and 28—refer to preferred or exemplary embodiments and are only cited in the Summary of Claimed Subject Matter (App. Br. 3‒6). “During . . . examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). “Construing claims broadly during prosecution is not unfair . . . because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (appeal from reexamination proceeding). Rejections I & V The Examiner finds claims 1 and 2 are anticipated by Martineau’s disclosed waterproof LED lamp. Final Act. 2‒3 (citing Martineau Figs. 1, 2, 5; col. 3, ll. 25‒26, 28‒30, 35‒36). As to claim 11, the Examiner concludes it would have been obvious to one of ordinary skill in the art at the time of the invention to provide Martineau’s device with a plurality of clips as taught by Wedell to enhance engagement between upper and lower portions of the device. Final Act. 8‒9 (citing Wedell Fig. 2). Appeal 2014-006702 Application 13/074,322 7 Appellant argues the Examiner erred in finding claim 1 is anticipated and relies on this argued deficiency as to the obviousness rejection of claim 11. App. Br. 7‒8. Appellant’s argument is grounded on the claims requiring the recited water-tight seal being formed without use of an o-ring or gasket (App. Br. 7‒8) and is, therefore, unpersuasive because claims 1, 2, and 11 are not so limited as to exclude an o-ring or gasket as explained above. For these reasons, we are unpersuaded of reversible error in the Examiner’s rejection of claims 1 and 2 as anticipated and claim 11 as unpatentable for obviousness over the cited prior art. Rejection II The Examiner relies on Martineau for its disclosure in Figure 5 of a housing and cover corresponding to structural features of claims 7‒10 and 12.8 Final Act. 3‒4. Claims 7‒9, depending directly or indirectly from claim 5, which depends from claim 3, incorporate the limitations of each base claim and thus, require the housing base to include a “rim having an innermost portion with a first lip, an outermost portion with a second lip, and a pair of central lips disposed therebetween.” Claims 1, 3, 5, 7‒9. In claim 12, the housing base used has a “rim including a first lip extending from the innermost portion of the rim, a second lip extending from 8 The rejection heading lists claims 7‒10 and 12 as subject to the rejection, but refers to claim 13 rather than claim 12 in the body of the rejection. Final Act. 4. The stated rationale for the rejection of the claim—that the claimed method is obviously disclosed by the disclosed structure of Martineau—does not provide a basis to distinguish between independent claim 12 or claim 13 dependent thereon. We treat the rejection, accordingly, as applied to independent claim 12. Appeal 2014-006702 Application 13/074,322 8 the outermost portion of the rim, and two central lips extending between said inner and outer lips.” As highlighted by Appellant’s arguments, the structure of Martineau cited by the Examiner lacks structure that includes two central lips extending between the inner and outer lips and the Examiner has not provided sufficient rationale to support an obviousness rejection.9 App. Br. 15‒17. In contrast, claim 10 depending directly from claim 1 does not require such structure, but rather requires that “at least one of said housing base and said optical cover is deformable.” Claim 10. The Examiner reasons that the sealing portion of the optical cover of Martineau must be deformable in order for it to engage in the sealing portion 42 of the housing. Final Act. 4 (citing Martineau Figs. 1, 5). We find the Examiner’s findings and rationale as to claim 10 reasonable on this record. Appellant does not separately address the Examiner’s rationale or basis for rejecting claim 10. App. Br. 7‒10. For these reasons, we are of the opinion that the Examiner erred reversibly in rejecting 7‒9 and 12 for obviousness over Martineau, but are unpersuaded of reversible error in the Examiner’s rejection of claim 10. Rejection III The Examiner relies on Martineau for its disclosure in Figure 5 of a housing and cover with corresponding to structural features of a first sealing 9 The Examiner also concedes elsewhere that required structure is lacking as Rejection III applied to, inter alia, claim 3 includes the statement that “Martineau et al. disclose the instant claimed invention except for pair of central lips.” Final Act. 5 (emphasis added). Appeal 2014-006702 Application 13/074,322 9 portion including a rim having a first lip (innermost) and a second lip (outermost) on the rim. Final Act. 5 (citing Martineau Fig. 5). The Examiner relies on Battaglia for its disclosure of a rim with an outermost lip 18 and a pair of center lips 24 configured to mate with an engaging lip of portion 48 (Final Act. 5‒7, citing Battaglia Figs. 3B, 4) or with an inner lip 36 (Ans. 3‒4, citing Battaglia Fig. 3B). The Examiner also relies on Battaglia for its disclosure of threads 16 and 23 for engagement between housing 12 and top portion 25 without use of an o-ring. Final Act. 6 (citing Battaglia Fig. 3B). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide the rim of the first sealing portion of Martineau with the pair of lips of Battalagia between the inner and outermost lips for the benefit of engagement with the optical cover thereby providing the subject matter of claims 3, 12, and 16. Final Act. 5‒7. As to claim 3, we find the Examiner’s position sufficiently well- founded. The Examiner’s position as to claims 12 and 16 is not. It is unquestioned that “the examiner bears the initial burden, on review of the prior art or on any other ground of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). As to independent claim 12, the Examiner has failed—being silent as to forming a second seal—to set forth the requisite articulated reasoning to sustain the rejection because the claim requires formation of a second seal between the first sealing surface (from the housing base) and the second Appeal 2014-006702 Application 13/074,322 10 sealing surface (from the optical cover). Claim 12; see generally Final Act.; Ans. As to independent claim 16, the Examiner has failed to set forth a sufficient basis for us to sustain the obviousness rejection without turning to impermissible hindsight or unfounded assumptions or rationales to cure the deficiencies in the rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In particular, for the second sealing portion located on the optical cover, the Examiner relies on “a flange extending outwardly from said optical cover [of Martineau] said flange having an inner lip [32] and an outer lip [40]” (Final Act. 6‒7, citing Martineau Fig. 5) while, in Figure 5, there is no element 32 and, while there is a label 40, the label 40 is not associated with any feature depicted (Martineau Fig. 5). Further, in Figure 1, where element 32 and element 40 are depicted, only element 40 appears consistent with a lip and the Examiner fails to explain how or why these features are an inner lip and an outer lip. Final Act. 6‒7. Nor does the Examiner direct us to any portion of Martineau describing what is represented by elements 32 and 40. See generally Final Act.; Ans. Further, having relied on Martineau disclosing both an inner and an outer lip, the Examiner has failed to articulate sufficient reason to otherwise provide the “flange having an inner lip and an outer lip” required of the optical cover. Final Act. 6‒7. It follows that we will not sustain the rejection of independent claims 12 and 16 and claims 13‒15 and 17‒2210 depending therefrom respectively. 10 Claims 18 and 19—subject to Rejection IV—are further discussed below. Appeal 2014-006702 Application 13/074,322 11 Turning to the remaining claims, Appellant proffers two general arguments as to the combination of Martineau and Battaglia as applied to claim 3. First, Appellant contends Battaglia is non-analogous art as it is “not directed to water-tight housings let alone lighting assemblies or housings” and argues the Patent Office may only rely on analogous art to support an obviousness rejection. App. Br. 8‒9. In the Reply Brief, Appellant extends on this argument (Reply Br. 3) citing the Examiner’s statement in the Answer that “Battaglia is analogous art, because it is directed to a water- tight housing (col. 4, lines 8‒14)” (Ans. 3), however, we deem the further argument waived as Appellant does not explain why the full argument could not have been raised in the Appeal Brief (Reply Br. 3), particularly where the Examiner in effect cites to text from column 4, lines 23‒28 of Battaglia—“Having the lid 18 . . . It creates a tight seal . . .’” (Final Act. 9). See 37 C.F.R. § 41.41(b)(2). On this record, we are not persuaded that Battaglia is not analogous art because the weight of the evidence supports the position that even if it is not from the same field of endeavor the reference is reasonably pertinent to the particular problem being addressed. See, e.g., In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (describing the two separate tests used to define the scope of analogous prior art). Second, Appellant argues that the combination is improper because it would render Martineau’s invention unsatisfactory for its intended purpose. App. Br. 9‒10. In particular, Appellant maintains Martineau’s housing base and front cover are a snap fit, Battaglia’s lid and container are secured by Appeal 2014-006702 Application 13/074,322 12 threads, and that use of threads to provide engagement between a cover and housing base would frustrate Martineau’s purpose. App. Br. 10. We do not find Appellant’s arguments persuasive the relied on combination impermissibly changes the principle of operation of Martineau’s cover and housing. Use of a snap or friction fit or of a threads to hold the cover and housing together such that a seal is formed does not change a priori the principle of operation. See, e.g., In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (affirming finding that “difference in the circuitry—electrical versus optical—does not affect the overall principle of operation of a programmable arithmetic processor”). Further, while the combination relied on as to claim 23 (as well as 13 and 22)—requiring the “water-tight seal [be] formed without the use of an o- ring or gasket”—does include the threads of Battaglia (Final Act. 6), the combination relied on as to the other claims does not where Battaglia was relied on for its teaching of the two central lips (Final Act., generally). Accordingly, the argument is without persuasive merit as to claim 3. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of a primary reference . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”). It follows that we will sustain the rejection of claims 3 and 23. As to claims 4‒6, it is our opinion that the Examiner has failed to set forth a sufficient basis for us to sustain the rejections without turning to impermissible hindsight or unfounded assumptions or rationales. Appeal 2014-006702 Application 13/074,322 13 Claim 4 requires the “first lip [of the first sealing portion of the housing base] extends to a height greater than the height of said second lip [of the first sealing portion of the housing base].” Claims 1, 3, and 4. For this limitation, the Examiner simply concludes “it would have been obvious . . . to provide the first lip extending to a height greater than the height of the second lip, as necessitated by the specific requirements of a given application, because it does not change the functionality of the device.” Final Act. 5; see also Ans. 3. The Examiner fails, however, to provide any explanation or basis for what specific requirements would necessitate a greater lip height or for the position that the greater height would not change its function. Final Act. 5; Ans. 3. Claim 5—like claim 16 discussed above—requires the second sealing portion located on the optical cover include a flange with an inner lip and an outer lip. Claims 1, 3, and 5. For the same reasons as set forth for claim 16, we are unable to sustain the Examiner’s rejection of claim 5 without turning to impermissible hindsight or unfounded assumptions or rationales. In re Warner, 379 F.2d at 1017. Claim 6 requires the “central lips [be] configured to removeably mate with said inner lip to form a first seal.” Claim 6. In the Final Office Action, the Examiner relies on Battaglia for lips 24 being “configured to mate with engaging lip (inner lip) of portion [48]” of Figure 4. Final Act. 5. In the Examiner’s Answer, the Examiner relies on “the central lips [24] of Battaglia (see Fig. 3B) removably mat[ing] with inner lip [36]” (Ans. 3). On this record, the Examiner has failed to provide a sufficient basis for either ground. Cf. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009) (“[T]o invoke ‘common sense’ or any other Appeal 2014-006702 Application 13/074,322 14 basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.”). The necessary explanation or reasoning to support that the engaged portion 48 or lip 36 is an inner lip is lacking. Further, the factual basis for this limitation set forth in the Examiner’s Answer—set forth in response to arguments the basis in the Final Office was inadequate—is not well-founded where central lips 24 of Battaglia do not removably mate with inner lip 36 because these are separated by element 48 (Battaglia Fig. 4). For these reasons, we are of the opinion that the Examiner erred reversibly in rejecting claims 4‒6, 12‒17, and 20‒22 for obviousness over Martineau in view of Battaglia, but are unpersuaded of reversible error in the Examiner’s rejection of claims 3 and 23. Rejection IV The Examiner relies on Martineau and Battaglia as applied to claim 16. Final Act. 8. The Examiner relies on Specht as disclosing tapered sealing surfaces. Final Act. 8 (citing Specht col. 5, l. 34). The Examiner reasons that it would have been obvious to provide the device of Martineau in view of Battaglia with lips having tapered surfaces, as taught by Specht in order to increase the sealing effect. Final Act. 8. Appellant argues the Examiner has failed to provide sufficient rationale to support the obviousness rejection over Martineau in view of Battaglia and Specht (App. Br. 18), which we find well-founded for claims 18 and 19 for the reasons identified above as to claim 16. Appellant also argues the Examiner erred because the relied on teaching of Specht does not relate to water-tight housings and the Examiner Appeal 2014-006702 Application 13/074,322 15 provides no rationale for modifying the applied prior art including Specht. App. Br. 18. On this record, the Examiner’s findings and reasoning as to Specht do not support a prima facie case because the relied on tapered sealing surfaces of Specht—main sealing surfaces 20 and 22—do not form a seal by interfacing with another surface, but rather are surfaces of opposing jaws that squeeze and heat a thermoplastic tubing workpiece to form a transverse seal in the tubing by fusing opposite sides of the tubing together (Specht Abstract, col. 5, ll. 23‒38) and there is no cogent explanation or reasoning as to how Specht’s teaching would lead one of ordinary skill to modify the combination of Martineau and Battaglia to arrive at the claimed invention (Final Act. 8). For these reasons, we are of the opinion that the Examiner erred reversibly in rejecting claims 18 and 19 for obviousness over Martineau in view of Battaglia and Specht. DECISION We REVERSE the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 4‒9 and 12‒23. We AFFIRM the Examiner’s rejection under 35 U.S.C. § 102(b) of claims 1 and 2. We AFFIRM the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 3, 10, 11, and 23. Accordingly, the Primary Examiner’s decision is affirmed-in-part. Appeal 2014-006702 Application 13/074,322 16 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-IN-PART