Ex Parte Gibson III et al

Patent Trial and Appeal Board

Jun 29, 2017

14007336 (P.T.A.B. Jun. 29, 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.
14/007,336 09/25/2013 Ray Gage Gibson III 2011P00373WOUS 6824
138325 7590 07/03/2017
PHILIPS LIGHTING HOLDING B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
HORIKOSHI, STEVEN Y
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
07/03/2017 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):
kim.larocca@philips.com
j o. c angelosi @ philips. com
Gigi.Miller@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAY GAGE GIBSON III, JAY PALMER, JOHN ALDERMAN,
and GREGORY ALLEN GOLDING1
Appeal 2016-006149
Application 14/007,336
Technology Center 2800
Before JEFFREY T. SMITH, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal the Examiner’s decision finally rejecting claims 1—
16, which constitute all the claims pending in this application. 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Koninklijke Philips Electronics N.V. as the real party
in interest. App. Br. 2.
2 In our Decision, we refer to the Specification filed September 25, 2013
(“Spec.”); the Final Office Action appealed from, dated July 16, 2015
(“Final Act.”); the Appeal Brief dated December 16, 2015 (“App. Br.”); the
Examiner’s Answer to the Appeal Brief dated March 30, 2016 (“Ans.”); and
the Reply Brief dated May 24, 2016 (“Reply Br.”).
Appeal 2016-006149
Application 14/007,336
The Claimed Invention
Appellants’ invention relates to a high-power ceramic discharge metal
halide (CDM) lamp with a shroud-type containment assembly. Abstract;
Spec. 1. Independent claim 1 is illustrative of the claimed subject matter on
appeal and is reproduced below from the Claims Appendix to the Appeal
Brief (App. Br. 13) (key disputed claim language italicized and bolded):
1. A ceramic discharge metal halide (CDM) lamp,
comprising:
a first shroud comprising a first wall forming a
cylinder defining a first cavity;
a second shroud situated within the first cavity
and comprising a second wall forming a cylinder
defining a second cavity situated within the first cavity
of the first shroud;
a second coil situated about the second shroud, the
second coil being positioned between the first shroud and
the second shroud, wherein the second coil is not in
contact with the first shroud; and
a ceramic arc tube situated in the second cavity
and having first and second openings, first and second
leads, and defining a lamp cavity for containing a fill.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Yamazaki et al., US 3,832,590 Aug. 27, 1974
(hereinafter “Yamazaki”)
Canale et al., US 5,023,506 June 11, 1991
(hereinafter “Canale”)
Pragt US 5,406,165 Apr. 11, 1995
Lambrechts et al., US 2007/0085482 Al Apr. 19, 2007
(hereinafter “Lambrechts”)
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Application 14/007,336
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—3, 5—7, 9-11, and 13—15 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Pragt in view of Yamazaki
(“Rejection 1”). Final Act. 3; Ans. 2.
2. Claims 4 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pragt in view of Yamazaki as applied to claims 3 and 11
above, and further in view of Canale (“Rejection 2”). Final Act. 6; Ans. 6.
3. Claims 8 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pragt in view of Yamazaki as applied to claim 7 above,
and further in view of Fambrechts (“Rejection 3”). Final Act. 7; Ans. 6.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments below for emphasis.
Rejection 1
In response to this rejection, Appellants argue independent claims 1
and 9 as a group and do not present separate argument for the patentability
of any dependent claims. We select claim 1 as representative and the
remaining claims subject to this rejection stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
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Application 14/007,336
The Examiner determines that the combination of Pragt and Yamazaki
suggests a metal halide lamp satisfying all of the limitations of claim 1 and
would have rendered claim 1 obvious. Ans. 2-4, 8—9.
The Examiner finds that Pragt teaches or suggests the majority of the
limitations of claim 1, but that the reference does not explicitly teach that the
arc tube is “ceramic,” as recited in the claim. Ans. 3—4, 8, 9 (citing Pragt,
Abstract, col. 2,1. 54, Fig. (elements 1, 2, 4, 7, 10)). The Examiner,
however, relies on Yamazaki for teaching this missing limitation. Id. at 4.
In particular, the Examiner finds that Yamazaki discloses a metal halide
lamp having a ceramic bulb material, i.e., alumina. Id. at 4 (citing
Yamazaki, col. 2,11. 24—35).
Based on the above findings, the Examiner concludes that it would
have been obvious to one having ordinary skill in the art at the time of the
invention to have used a ceramic alumina, such as described by Yamazaki,
as the bulb material in a metal halide lamp, such as described by Pragt,
because “the selection from among known materials for their known suitable
purposes is generally within the abilities of one having ordinary skill in the
art.” Ans. 4.
Appellants argue that the Examiner’s rejection should be reversed
because the combination of Pragt and Yamazaki fails to teach each and
every feature of claim 1. App. Br. 4, 8. In particular, Appellants argue that
Pragt fails to teach or suggest a “first shroud” and a “second shroud” and
that Yamazaki fails to cure the infirmities of Pragt. Id. at 8. Appellants
contend that the Examiner’s reliance on the case law of In re Harza,
247 F.2d 669 (CCPA 1960), for duplicating the shroud taught by Pragt to
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Application 14/007,336
arrive at the claimed invention is improper and amounts to the use of an
improper per se rule of obviousness. Id. at 6; Reply Br. 2.
Appellants further contend that the Examiner’s modifications to
Pragt’s lamp: (a) are significantly more than “mere duplication of parts”
(App. Br. 6); (b) would be “physically impossible” to do {id. at 7); and
(c) conflict with the “simple design” Pragf s lamp (id. at 10); and (d) that the
Examiner has used impermissible hindsight to reject the claims (id. at 10).
See also Reply Br. 3—7.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection. On the record before us, the preponderance of the
evidence and sound technical reasoning support the Examiner’s analysis and
determination (Ans. 2-4, 8—9) that the combination of Pragt and Yamazaki
suggests all of the limitations of claim 1, including a “first shroud” and a
“second shroud,” and would have rendered the claim obvious. Pragt,
Abstract, col. 2,1. 54, Fig. (elements 1, 2, 4, 7,10); Yamazaki, col. 2,11. 24—
35.
The Examiner provides a reasonable basis and identifies a
preponderance of the evidence in the record to evince why one of ordinary
skill would have combined the teachings of Pragt and Yamazaki to arrive at
Appellants’ claimed invention. Ans. 4; see also KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known
in the art can provide a reason for combining the elements in the manner
claimed).
Regarding the claimed first and second shrouds, as the Examiner finds
(Ans. 3), Pragt discloses a metal halide lamp comprising a shroud (i.e.,
“glass containment sleeve”) 10 with a wall and forming a cylinder defining a
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Application 14/007,336
cavity, which corresponds to the “second shroud” of claim 1. Pragt,
Fig. (element 10). As the Examiner further finds (Ans. 3), Pragt discloses a
coil situated about the shroud 10 and an arc tube 2 situated in the cavity and
having first and second openings 4, first and second leads connected to
conductors 7, and defining a lamp cavity for containing a fill, as claimed.
Pragt, Fig. (elements 2, 4, 7,10).
As the Examiner also finds (Ans. 3), Pragt discloses that the shroud 10
and the coil serve to contain the bulb fragments in the event of a bulb
explosion. Pragt, Abstract. In view of Pragt’s teachings, as the Examiner
determines (Ans. 4), it would have been obvious for one of ordinary skill in
the art at the time of the invention to have duplicated Pragt’s shroud 10 and
coil to form a “first shroud” as claimed in order to provide even further
containment of bulb fragments in the event of an explosion and because the
duplication of parts for the same function is within the abilities of one
having ordinary skill in the art. See Harza, 274 F.2d at 671 (“It is well
settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced.”).
As the Examiner explains (Ans. 8), because the main function of the
shroud is to protect the outer bulb from being damaged by an explosion of
the lamp vessel (Pragt, Abstract, Fig.), duplicating an additional shroud and
coil surrounding the existing shroud would serve to further protect the outer
bulb by providing an additional containment shroud. As the Examiner
points out (Ans. 9), under certain circumstances, for example, when the lamp
may contain fill of a higher pressure, one shroud may not be enough to
contain the fragments from an explosion and a second shroud would provide
additional protection.
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Application 14/007,336
Appellants’ arguments reveal no reversible error in the Examiner’s
analysis and factual findings in this regard.
We do not find Appellants’ argument that the Examiner’s reliance on
the Harza case is improper (App. Br. 6; Reply Br. 2) to be persuasive
because the Examiner’s analysis and factual findings are not based solely on
the Harza case or any per se obviousness rule. Rather, as previously
discussed above, a preponderance of the evidence supports the Examiner’s
finding that Pragt explicitly discloses a shroud and teaches that the shroud
provides containment and protects the bulb in the event of explosion. Pragt,
Abstract. The Examiner’s explanation for why one of ordinary skill in the
art would have had reason to modify Pragt’s lamp to include an additional
shroud is also supported by a preponderance of the evidence and articulated
reasoning with rational underpinning. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (requiring “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”).
Appellants’ arguments that the Examiner’s proposed modifications
are significantly more than the mere duplication of parts and conflict with
the simple design of Pragt’s lamp (App. Br. 6—7, 10) are not persuasive of
reversible error for the well-stated reasons provided by the Examiner at
pages 7—9 of the Answer. In particular, we agree with the Examiner’s
finding (Ans. 8) that attaching the additional shroud to Pragt’s lamp via the
exhaust tube seal would constitute a convenient and simple attachment point
for the shroud. See Pragt, Fig. Moreover, Appellants do not persuasively
argue or rebut the Examiner’s findings (Ans. 8—9) regarding the
conventional making of exhaust tubes, the function of the exhaust tube to
serve as the mechanical attachment creating a bridge between the second
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shroud, and that duplicating such a mechanical attachment or bridge, made
by fused glass between the first shroud and the second shroud, would
analogously create a bridge of support and attachment between the shrouds.
Appellants’ assertions that the Examiner’s modification would be
physically impossible and adding an additional shroud would create
unreasonable stress on the exhaust tube (App. Br. 7, 10) are equally
unpersuasive because they are conclusory and Appellants do not provide an
adequate technical explanation or direct us to sufficient evidence in the
record to support them. Attorney argument is not evidence. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
We do not find Appellants’ contention that the Examiner’s rejection is
based on impermissible hindsight (App. Br. 10) persuasive because it is
conclusory and, without more, insufficient to rebut or otherwise establish
reversible error in the Examiner’s findings and analysis. De Blauwe, 736
F.2d at 705.
Moreover, as previously discussed above, we find that the Examiner’s
findings and obviousness conclusion are well-supported by a preponderance
of the evidence and articulated reasoning with rational underpinning. In re
Kahn, 441 F.3d at 988.
Accordingly, we affirm the Examiner’s rejection of claims 1—3, 5—7,
9—11, and 13—15 under 35 U.S.C. § 103(a) as obvious over the combination
of Pragt and Yamazaki.
Rejections 2 and 3
Appellants do not present any additional substantive arguments in
response to the Examiner’s Rejections 2 and 3, stated above.
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Accordingly, because the Examiner’s Rejections 2 and 3 have not
been withdrawn and are not disputed by Appellants, we summarily affirm
each of these rejections. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (“If an appellant
fails to present arguments on a particular issue — or, more broadly, on a
particular rejection — the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.”) (cited with approval in
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
To the extent, Appellants intend to rely on the same arguments
presented above in response to the Examiner’s Rejection 1 regarding the
combination of Pragt and Yamazaki, we affirm the Examiner’s Rejections 2
and 3 based on the findings and technical reasoning provided by the
Examiner and for the same reasons discussed above for affirming
Rejection 1.
DECISION/ORDER
The Examiner’s rejections of claims 1—16 are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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