Ex Parte Glass

Patent Trial and Appeal Board

Feb 18, 2016

12434933 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/434,933
48821 7590
Francis Law PLLC
FILING DATE
0510412009
02/18/2016
4404 Rolling Creek Circle
Lexington, KY 40515
FIRST NAMED INVENTOR
Ralph Glass
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.
GLS-001 2306
EXAMINER
TON, ANABEL
ART UNIT PAPER NUMBER
2875
MAILDATE DELIVERY MODE
02/18/2016 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 RALPH GLASS 1
Appeal2014-004872
Application 12/434,933
Technology Center 2800
Before ROMULO H. DELMENDO, MARK NAGUMO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a rejection of claims
1 and 3-15.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 According to the Appellant, the real party in interest is Ralph Glass, the
Appellant and inventor. Br. 3.
2 Pursuant to 37 C.F.R. § 41.33, the Appellant attached claim amendments to
the Appeal Brief, filed August 2, 2013, cancelling claims 12-14. Br. 4--5.
Thus, only claims 1, 3-11, and 15 are before us in this appeal. The listing of
claims in the "Status of Claims" section of the Appeal Brief appears to be
incorrect. See id. at 3. The Claim Amendments, id. at 4--5, and the Claims
Appendix, id. at 20-21, appear to list the claims on appeal correctly.
Appeal2014-004872
Application 12/434,933
BACKGROUND
The subject matter on appeal relates to a visual marker utilizing LED
bulbs to assist hunters and outdoorsmen in locating a marked location
without disturbing dichromatic nocturnal wildlife. Spec. i-f 2; Claim 1.
Claim 1 is reproduced below from page 20 (Claims Appendix) of the Appeal
Brief:
1. A visual marker comprising: (a) a housing; (b) an illumination
means highly visible to humans but inconspicuous to
dichromatic animals, said means comprising at least one LED
bulb protruding from said housing and emitting wavelengths of
light at or about 480 nm; and ( c) a power source, and a means to
control said LED bulb comprising at least an electronic display
and a microprocessor.
EVIDENCE RELIED ON BY THE EXAMINER
Turnbull et al.
Patrick et al.
us 5,803,579
US 6,203, 170B1
REJECTIONS ON APPEAL3
Sept. 8, 1998
Mar. 20, 2001
1. Claims 1 and 3-11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Patrick in view of Turnbull.
2. Claim 15 is rejected under 35 U.S.C. § 102(b) as being
anticipated by Patrick.
ANALYSIS
After review of the opposing positions of the Appellant and the
Examiner and the cited evidence in the appeal record, we determine that the
3 In the Examiner's Answer, the Examiner withdrew rejections under 35
U.S.C. § 112, i-fi-1 1 and 2. Ans. 6.
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Application 12/434,933
Appellant has not identified reversible error in the Examiner's rejections.
We affirm the rejection for reasons set forth by the Examiner in the Answer
and as set forth below.
Rejection 1
Claims 1 and 3-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patrick in view of Turnbull. The Appellant separately
argues claims 1, 4, 5, 8, 9, and 11, so we limit our discussion to those
claims.
The Examiner finds that Patrick teaches each element of claim 1
except for an electronic display and a microprocessor. Ans. 3. The
Examiner finds that Turnbull teaches an electronic display and a
microprocessor and additionally finds that microprocessors and electronic
displays "are both well known in the art to control light sources." Id. at 3--4.
The Examiner concludes that it would have been obvious to "modify the
device of Patrick with the microprocessor and electronic display of Turnbull
in order to provide a means for controlling the lighting device in a
predetermined manner." Id. at 5.
The Appellant first argues that "Patrick does not disclose the use of
LEDs in the range of 455 nm to 505 nm as required by claim 1." Br. 15.
Patrick, however, expressly discloses "blue diodes typically having a peak in
the range of from about 420 to about 470 nm." Patrick at 3:43--46.
Although claim 1 recites "at or about 480 nm," the Specification defines the
phrase "at or about" as "encompass[ing] a range of+/- 25 nm," Spec. i-f 17,
creating a peak wavelength range of 455 nm to 505 nm. The 470 nm blue
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Application 12/434,933
diodes taught by Patrick fall within that range. Thus, we are not persuaded
by the Appellant's argument.
The Appellant also argues that neither Patrick nor Turnbull expressly
discloses an electronic display. Br. 16. "[H]owever, the [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). That is because
"[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 421. The Examiner finds that "a microprocessor and
electronic display are both well known in the art to control light sources."
Ans. 4. The Appellant does not dispute that finding. As the Examiner
explains, id., a person of ordinary skill in the art would have been motivated
to add those features to the device of Patrick to control the "integrated
circuits which cause intermittent flashing of the diodes ... at a
predetermined frequency." Patrick at 5:38--41. The Appellant's focus on
whether either reference expressly teaches an electronic display does not
sufficiently address the Examiner's findings and conclusions and, therefore,
does not persuade us of reversible error. See In re Keller, 642 F.2d 413, 425
( CCP A 19 81) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art."); see also In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that, even if the examiner had failed to make a prima
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Application 12/434,933
facie case, the Board would not have erred in framing the issue as one of
reversible error because "it has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections" (citing Ex
parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential))).
Concerning claim 4, the Appellant argues that neither reference
teaches "a means to display the settings of said means to control said LED
bulb." Br. 16. As set forth above, however, the Appellant did not show
reversible error in the Examiner's finding that a person of ordinary skill in
the art would have been motivated to add a display to the device of Patrick.
That display constitutes "a means to display the settings .... " Accordingly,
we are not persuaded of reversible error in the Examiner's rejection.
Concerning claim 5, the Appellant argues that neither reference
expressly discloses a "means to control additional visual markers from one
said means to control said LED bulb." Br. 16-17. Relying on Patrick's
teachings of multiple LED devices, see Fig. 6, and a controller for
controlling both an LED device and a feed dispenser 92, see Fig. 7, the
Examiner concludes that it would have been obvious to use one controller to
control multiple LED devices. Ans. 8-9. Using one controller to control
multiple devices would increase the efficiency of controlling the devices.
See Patrick at 6:26-28 & Figs. 6-7. The Appellant's focus on whether either
reference includes an express teaching of the disputed limitation does not
address the Examiner's findings and conclusions concerning that limitation
and, therefore, does not persuade us of reversible error. See KSR, 550 U.S.
at 418-21; Jung, 637 F.3d at 1365.
Concerning claim 8, which recites in relevant part "wherein said
housing possesses a means to suspend said housing from a tree," the
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Examiner finds that the power cord taught by Patrick is "suitable for
suspending the device from a tree." Ans. 4, 9 (discussing Patrick at 7:3-7).
The Appellant argues that the power cord of Patrick may not be "capable of
supporting the device," and that using the power cord in that way "would
likely damage the device or render it unsuitable for its intended purpose"
rendering it "unsafe." Br. 1 7. We are not persuaded by those arguments
because these speculative assertions fail to establish that the apparatus of
Patrick relied upon by the Examiner is not capable of being used as set forth
by the Examiner, even if such use is not disclosed. To distinguish an
apparatus claim, the Appellant must identify a structural difference. In re
Gartner, 223 F.2d 502, 505 (CCPA 1955) ("It is also well settled that
apparatus claims must distinguish from the prior art by structural limitations
.... "). The arguments presented by the Appellant fail to do that
persuasively.
Concerning claim 9, which recites "wherein said housing possesses
means to mount said visual marker into the ground," the Appellant
mistakenly argues that "the Examiner does not address this claim." Br. 17.
The Examiner, however, does address claim 9 and finds that the device of
Patrick "is ... mountable to the ground." Ans. 5; see also Non-Final Act. 6
(same). Because the Appellant fails to address that finding, we are not
persuaded of reversible error. Jung, 637 F.3d at 1365. Moreover, the
Appellant has identified no structural difference between the device of
Patrick and the structures disclosed by the Specification that might support a
reversal of the Examiner's finding.
Concerning claim 11, which recites "wherein said device possesses a
means for wireless remote operation," The Examiner finds "such a
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modification is old and well known as stated by applicant in Para 0032 of
the specification," and that a person of ordinary skill would have been
motivated to make the modification "in order to facilitate controlling of the
devices from distances without the need for wires." Ans. 5. Paragraph 32 of
the Specification teaches that "[a] remote control or proximity signal could
easily be incorporated into the beacon controls and circuity and such
technology is well known to those skilled in the art." Paragraph 33 of the
Specification teaches that wireless controls are "well known to those skilled
in the art and widely available on a commercial basis."
The Appellant argues that a person of ordinary skill would not have
been capable of implementing the claimed feature in the device of Patrick
because of the difficulty at the time "with propagating wireless signals
through water." Br. 1 7. The Examiner, however, refutes that and identifies
several references that "disclose submerged or partially submerged lighting
devices that are remotely or wirelessly controlled." Ans. 10. Moreover,
given Patrick's teaching of a floating device, e.g., Abstract, 2:57---61, it does
not appear that a wireless signal necessarily would be propagated through
water. Accordingly, the Appellant's argument does not persuade us of
reversible error.
We affirm the Examiner's rejection of claims 1, 4, 5, 8, 9, and 11.
Claims 3, 6, 7, and 10 depend from claim 1, and the Appellant presents no
separate arguments for those claims. Therefore, we likewise must affirm the
rejection of those claims.
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Application 12/434,933
Rejection 2
Claim 15 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Patrick. Claim 15 is reproduced below from page 21 (Claims Appendix) of
the Appeal Brief:
15. The method of using LED bulbs that emit light at wavelengths at
or about the visual neutral-point of dichromatic animals as visual
beacons that will be inconspicuous to said dichromatic animals.
The Examiner finds that Patrick expressly or inherently discloses each
element of claim 15. Ans. 2-3, 6-7. The Appellant argues that "[n]othing
in Patrick suggests that the use of wavelength specific LEDs to create a
marker or beacon for humans that would be inconspicuous to dichromatic
animals," and that "the Patrick device utilizes additional LEDs which emit
light outside of the 480 nm range of the device of the instant application."
Br. 12-13.
We are not persuaded by those arguments. The method of claim 15
requires using an LED bulb that emits light at a certain wavelength as a
visual beacon. Patrick teaches that, and it does not require the use of
additional LEDs at wavelengths outside of the identified "visual neutral-
point." E.g., Abstract ("device for attracting and/or repelling fish," i.e.,
visual beacon), 3 :45--46 ("blue diodes typically having a peak in the range of
from about 420 to about 470 nm," i.e., light at wavelengths at or about the
visual neutral-point of dichromatic animals). The fact that Patrick does not
expressly recognize that LEDs of 470 nm would be inconspicuous to
dichromatic animals is irrelevant because those LEDs would inherently and
necessarily be inconspicuous to dichromatic animals when seen by
dichromatic animals. The claim does not require the LED bulbs to be used
in any particular context, such as while hunting. Nor does it positively
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Application 12/434,933
require that the specified LED emit light in the presence of dichromatic
animals. Rather, we construe the language "will be inconspicuous to said
dichromatic animals" as merely defining a characteristic of the light if seen
by dichromatic animals.
Based on the arguments presented, we are not persuaded that the
Examiner committed reversible error in rejecting claim 15. We therefore
affirm the rejection.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1 and 3-15.
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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