Ex Parte Germain

Patent Trials and Appeals Board

Apr 28, 2016

13074322 - (D) (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