Ex Parte Lettermann

Patent Trial and Appeal BoardMay 15, 2014

11130831 (P.T.A.B. May. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte GERT LETTERMANN ________________ Appeal 2012-000445 Application 11/130,831 Technology Center 2800 ________________ Before CHARLES F. WARREN, TERRY J. OWENS, and PETER F. KRATZ, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL Appeal 2012-000445 Application 11/130,831 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-6, 8-10, 13-17, 19, and 20. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a lighthouse, a laser transmitter comprising the lighthouse, and a laser beam projecting apparatus comprising the lighthouse. Claim 1 is illustrative: 1. A laser transmitter for projecting a beam of laser light and rotating said beam about an axis which is generally normal to said beam, comprising: a laser beam source, and a lighthouse for enclosing, at least in part, said laser beam source while permitting said beam of laser light to be projected there through [sic], said lighthouse including a plurality of transparent panels, each panel having a four sided shape with four panel edges, and a panel support of elastomeric material for engaging said plurality of transparent panels and supporting said panels, said panel support defining a plurality of openings, each transparent panel being mounted in one of said openings and held therein by retaining grooves in said support that extend along all of the edges of said opening, whereby each of said panels is received into said grooves and held in place in said panel support along the full extent of each of said four panel edges. The References Cadwallader US 2,449,875 Sep. 21, 1948 Rando US 4,776,672 Oct. 11, 1988 Sibalich US 7,109,880 Sep. 19, 2006 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1, 4, 8, 10, and 13-15 over Rando in view of Cadwallader and claims 2, 3, 5, 6, 9, 16, 17, 19, and 20 over Rando in view of Cadwallader and Sibalich. Appeal 2012-000445 Application 11/130,831 3 OPINION We reverse the rejections. We need to address only the independent claims (1, 8, and 15). Those claims require a lighthouse (20) including a plurality of transparent panels (26), each having a four-sided shape with four panel edges (34, 36, 38, 40), and a panel support (28) of elastomeric material, where the panel support defines a plurality of openings (42), and each transparent panel is mounted in one of the openings and held therein by retaining grooves (44, 46, 48, 50) in the panel support along the full extent of each of the four panel edges.1 The Examiner’s reliance upon Rando is based only upon the disclosed prior art laser beam projecting apparatus (Ans. 4-5). That apparatus (10) has a multiple pane lighthouse assembly (12) and provides a continuous, visible plane of light that creates a constant horizontal benchmark of elevation over an entire work area (col. 1, ll. 19-22; col. 3, ll. 53-57; Fig. 1). In order to achieve a continuous, visible plane of light when the lighthouse includes posts (36) (as illustrated in Figs. 1-4), both inner pane edges (44a and 44b) of adjacent panes (24) must be perfectly sharp and the surfaces of the side edge portions (24a and 24b) must be perfectly constructed and interfaced together in order to emit parallel beams (40A and 40B) from the sides of the corner junction (26) (col. 5, ll. 2-9 and 63-68; Figs. 3A-3C). If the edge portions of the pane are prevented from interfacing properly together, the 1 The Examiner does not rely upon Sibalich for any disclosure that remedies the deficiencies in the references applied to the independent claims (Ans. 7- 11). Appeal 2012-000445 Application 11/130,831 4 beams will diverge, increasing the width of the void area and interrupting the continuity of the plane of light (col. 5, l. 68 to col. 6, l. 10). Cadwallader discloses an automobile windshield (15) including a rubber sealing ring (18) with a groove (19) that receives the edge of the windshield (15) and surrounds the windshield (15) (col. 2, ll. 1-6; Figs. 1 and 2). This arrangement allows the windshield to be installed from the outside and reduces the costs and trouble of installing the windshield (col. 1, ll. 12-14). To establish a prima facie case of obviousness, an examiner must show that one of ordinary skill in the art would have had both an apparent reason or suggestion to modify the prior art as proposed by the examiner and predictability or a reasonable expectation of success in doing so. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991). The Examiner asserts that the window mounting of Cadwallader forms a weatherproof seal (Ans. 5). The Examiner argues that "[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to use the configuration of Cadwallader in the [prior art] apparatus [disclosed by] Rando et al. to provide a weatherproof seal that is more resilient, cheaper and easier to mount." (Ans. 5). The Examiner also argues that “the waterproofing method of Cadwallader does not require the precise grinding of glass that is necessary for the [prior art] apparatus [disclosed by] Rando et al.” (Ans. 13), "[t]he method of Cadwallader would also withstand a greater temperature change or climate change", id., and "these advantages would be highly desirable to one of ordinary skill in the art, and one may Appeal 2012-000445 Application 11/130,831 5 prefer the Cadwallader solution over the one in [the prior art disclosed by] Rando et al." (Ans. 12). Rando discloses that the prior art housing (14) provides a sealed, water-tight enclosure (col. 3, l. 66 to col. 4, l. 4). As noted by Appellants, the Examiner has not established that any weatherproofing of Cadwallader would be more desirable in the prior art laser beam projecting apparatus disclosed by Rando than the sealed, water-tight housing already present in that apparatus (App. Br. 12-13; Reply Br. 2). First, the Examiner has not established that any weatherproof seal of Cadwallader would be more resilient than the sealed, water-tight housing of the prior art apparatus disclosed by Rando. Cadwallader appears silent regarding resilience of the seal. Rando is silent regarding desirability of resilience. The Examiner has not provided support for the assertions that the weatherproof seal of Cadwallader would be more resilient and may be preferred in the prior art apparatus disclosed by Rando. Second, the Examiner has not established that any weatherproof seal of Cadwallader would be cheaper when applied to the prior art apparatus disclosed by Rando. As noted by Appellants, the proposed combination appears to introduce additional components into the design of that prior art apparatus, and the Examiner has not provided support for the assertion that the combination would, in fact, result in a cheaper design (Reply Br. 2). Third, the Examiner has not established that any weatherproof seal of Cadwallader would be easier to mount when applied to the prior art apparatus disclosed by Rando or that the seal would facilitate mounting the panes in that apparatus. Rando teaches that the panes (24) are mounted along their lower edge portions (24c) and upper edge portions (24d) by Appeal 2012-000445 Application 11/130,831 6 gaskets (28 and 32, respectively) (col. 4, ll. 48-54). As noted by Appellants, the Examiner has not explained how additionally mounting the panes of the prior art apparatus disclosed by Rando on each of the panes’ lateral sides, as proposed by the Examiner in view of Cadwallader, would result in a structure that is easier to mount (Reply Br. 3). Fourth, the Examiner has not established that the method of Cadwallader would withstand greater temperature or climate change than the housing of the prior art apparatus disclosed by Rando. Cadwallader appears silent regarding temperature or climate change resistance of the seal. Rando also appears silent regarding any measurable quantity of temperature or climate change resistance. Without any evidence regarding the relative resistance to temperature or climate change between Cadwallader and the prior art apparatus disclosed by Rando, the Examiner has not adequately supported the assertion that Cadwallader’s method would withstand greater temperature or climate change than the housing of the prior art apparatus disclosed by Rando. Thus, the Examiner has not shown that the reasons for modifying the prior art apparatus disclosed by Rando proposed by the Examiner would have been apparent to one of ordinary skill in the art in view of the teachings of Rando and Cadwallader. Further, the Examiner has not established a reasonable expectation that the prior art apparatus disclosed by Rando would perform its expected functions, including providing a continuous, visible plane of light (col. 5, ll. 2-9), if that apparatus were modified to include Cadwallader’s rubber sealing ring (18). As noted by Appellants, it appears that including Cadwallader’s rubber sealing ring (18), which overlaps the front or incident Appeal 2012-000445 Application 11/130,831 7 surface of the windshield (15), at the corner junctions of the panes of the prior art apparatus disclosed by Rando would prevent those panes of from interfacing properly together, and thus introduce beam discontinuity at precisely the location that continuity is sought when using that apparatus (App. Br. 12; Figs. 3A-3C). The Examiner has not established that one of ordinary skill in the art would have reasonably expected the prior art apparatus disclosed by Rando, despite the introduction of Cadwallader’s sealing ring (18) of at the mitered corner, to be able to maintain the desired beam continuity achieved by precise grinding (Rando, col. 5, l. 63 to col. 6, l. 10). Accordingly, we reverse the rejections. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1, 4, 8, 10, and 13-15 over Rando in view of Cadwallader and claims 2, 3, 5, 6, 9, 16, 17, 19, and 20 over Rando in view of Cadwallader and Sibalich are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED lp