Ex Parte McCanless

Patent Trial and Appeal BoardJan 28, 2019

14696042 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/696,042 04/24/2015 Forrest Starnes McCanless 20350 7590 01/30/2019 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 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. N0023-920210 8153 EXAMINER CARTER, WILLIAM JOSEPH ART UNIT PAPER NUMBER 2875 NOTIFICATION DATE DELIVERY MODE 01/30/2019 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FORREST STARNES McCANLESS Appeal 2018-004814 Application 14/696,042 1 Technology Center 2800 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. Opinion for the Board filed by HOUSEL, Administrative Patent Judge. Opinion Dissenting filed by HASTINGS, Administrative Patent Judge. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE Appellant filed an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-19. We have jurisdiction under 35 U.S.C. Â§ 6(b). 2 1 Appellant is the Applicant, ABL IP Holding LLC., which according to the Appeal Brief is the real party in interest. Appeal Brief ("Appeal Br." 1) filed October 11, 2017. 2 Our Decision additionally refers to the Specification ("Spec.") filed April 24, 2015, the Final Office Action ("Final Act.") dated December 15, 2016, Appeal 2018-004814 Application 14/696,042 We AFFIRM-IN-PART. The subject matter on appeal relates to tri-lobe optics; light rails comprising, among other things, a tri-lobe optic; retrofit kits for a fluorescent light fixture, the kits comprising, among other things, a tri-lobe optic; and a light fixture comprising, among other things, a tri-lobe optic (see, e.g., claims 1, 13, 14, and 17). The Inventors disclose that light emitting diodes (LEDs) are increasingly used as light emitters instead of fluorescent tubes because of their efficiency, reliability, and stability over time, but LEDs emit light in a small emitting area, which makes them uncomfortable to view directly. Spec. ,r,r 1-2, 20. In view of this, the Inventors disclose embodiments that spread light from LEDs over an area equivalent to the light emitting surface of a fluorescent tube, which minimizes or eliminates viewing discomfort. Id. ,r 20. Independent claim 1 is illustrative and is reproduced below from the Claims Appendix of the Appeal Brief. 3 Limitations at issue are italicized. 1. A tri-lobe optic for a linear light source, the linear light source defining a light emitting region along an axis, the tri- lobe optic comprising: an optical material forming: an inner surface and an outer surface; and a constant cross-sectional profile along a direction of the axis from a first axial end to a second axial end, the cross- sectional profile comprising: a first azimuthal side relative to the axis; concave and convex curves relative to the axis, the curves being: a first concave curve coupled with the first the Examiner's Answer ("Ans.") dated February 12, 2018, and Appellant's Reply Brief ("Reply Br.") filed April 6, 2018. 3 Appeal Br. 34--35. 2 Appeal 2018-004814 Application 14/696,042 azimuthal side, a first convex curve, a second concave curve, a second convex curve and a third concave curve, such that each of the concave curves defines a lobe of the optical material along the direction of the axis; and a second azimuthal side relative to the axis, coupled with the third concave curve; wherein each of the inner surface and the outer surface follow each of the concave and convex curves between the first azimuthal side and the second azimuthal side. REJECTIONS ON APPEAL I. Claim 19 is rejected under 35 U.S.C. Â§ 112(b) as being indefinite; II. Claims 1---6 and 9--18 under 35 U.S.C. Â§ 103 as being unpatentable over Yang4 in view ofNegishi5 and Ter- Hovhannisian; 6 and III. Claims 7 and 8 under 35 U.S.C. Â§ 103 as being unpatentable over Yang, Negishi, and Ter-Hovhannisian and further in view of Suehiro. 7 4 Yang et al., US 2011/0228528 Al, published September 22, 2011 ("Yang"). 5 Negishi, US 4,734,836, issued March 29, 1988 ("Negishi"). 6 Ter-Hovhannisian, US 7,121,675 B2, issued October 17, 2006 ("Ter- Hovhannisian"). 7 Suehiro et al., US 7,111,964 B2, issued September 26, 2006 ("Suehiro"). 3 Appeal 2018-004814 Application 14/696,042 B. DISCUSSION Rejection I Claim 19 is rejected under 35 U.S.C. Â§ 112(b) as being indefinite. Appellant does not appeal theÂ§ 112(b) rejection of claim 19. Appeal Br. 1, fn. 1. Therefore, we summarily affirm this rejection. Rejection II Claims 1-6 and 9-18 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Yang in view ofNegishi and Ter-Hovhannisian. Appellant argues claims 1-6, 9-13, and 18 as a first group and claims 14--17 as a second group. Appeal Br. 14--32. For reasons addressed below, we analyze claims 1---6 and 9-13 as a first group, claims 14--17 as a second group, and claim 18 as a third group. Claims 1---6 and 9-13 The Examiner finds Yang discloses a bi-lobe optic for a linear light source having an optical material with a constant cross-sectional profile along an axis from a first axial end to a second axial end, wherein the cross- sectional profile includes a first azimuthal side, concave and convex curves, and a second azimuthal side. Final Act. 3. The Examiner finds Yang does not disclose a tri-lobe optic having the curves recited in claim 1. Id. at 3--4. The Examiner finds Negishi discloses a linear light source having a tri-lobe optic having the curves of claim 1 and concludes it would have been obvious to modify Yang to use Negishi's tri- lobe optic because Negishi demonstrates bi-lobe and tri-lobe optics are alternatives that create a desired light output. Id. at 4. 4 Appeal 2018-004814 Application 14/696,042 The Examiner finds Ter-Hovhannisian discloses a light source having inner and outer surfaces that follow concave and convex curves, as recited in claim 1, and has a constant thickness, as recited in claim 18. Id. at 4--5. The Examiner concludes it would have been obvious to use the shape of Ter- Hovhannisian's surface in Yang's optic, as modified in view ofNegishi, to provide a thinner optic that uses less material. Id. at 5. Appellant asserts the Examiner's mischaracterizes Negishi because Negishi does not disclose bi-lobe and tri-lobe optics as obvious alternatives. Appeal Br. 15-1 7; Reply Br. 2-5. Appellant contends the Examiner's proposed modification of Yang in view ofNegishi would not have been obvious because Yang is devoted to achieving a batwing light distribution while embodiments 2c and 2d in Negishi's Figure 4 produce parallel and converging light distributions and thus different results. Appeal Br. 17-20; Reply Br. 5, 8-10. As an initial matter, we analyze the limitation "wherein each of the inner surface and the outer surface follow each of the concave and convex curves between the first azimuthal side and the second azimuthal side" to determine its meaning and scope. When applying the mode of claim construction applicable during examination, we "give claims their broadest reasonable construction consistent with the specification." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." Id. In the "Summary of Claimed Subject Matter" section of the Appeal Brief, Appellant cites Figures 3 and 5-8 of their disclosure when explaining 5 Appeal 2018-004814 Application 14/696,042 how inner and outer surfaces of a tri-lobe optic follow concave and convex curves but also cites those drawings when explaining how such an optic has a constant thickness across its width. Appeal Br. 3. Figures 3 and 5-8 depict optics 110, 210, 310 having a constant thickness between first and second azimuthal sides 112(1 ), 112(2) ( see Figure 5) but do not clearly define how the optics "follow" the concave and convex curves in those drawings. Also, Appellant does not cite a passage of their Specification that defines the "follow" limitation of claim 1. Nor does the limitation explicitly appear in the Specification. Therefore, Appellant's disclosure does not provide a definition for the "follow" limitation of claim 1. "[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en bane) (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,910 (Fed. Cir. 2004)). Here, claim 18 depends from claim 1 and further recites "wherein the optical material forms a constant thickness between the inner surface and the outer surface, along the concave and convex curves." Thus, under the doctrine of claim differentiation (i.e., that each claim has a different scope), claim 1 does not require that the optical material has a constant thickness, as recited in claim 18. As noted above, we construe a claim by applying the broadest reasonable interpretation in light of the Specification. In view of the little guidance provided by Appellant's disclosure and the fact that claim 1 does not require the constant thickness limitation of claim 18, we construe the limitation "wherein each of the inner surface and the outer surface follow each of the concave and convex curves between the first azimuthal side and 6 Appeal 2018-004814 Application 14/696,042 the second azimuthal side" to mean the inner and outer surfaces of the optical material include and extend along the concave and convex curves between the first azimuthal side and the second azimuthal side. We now analyze the Examiner's rejection of claim 1. Yang discloses retrofit-style LED lamps for use with fixtures located within enclosed storage structures, such as refrigeration cases. Yang ,r,r 2, 5, 7. The lamp includes a linear batwing lens that produces a batwing type of beam pattern. Id. ,r 21. Yang describes the batwing distribution as "substantially uniform within a defined space" and that "[t]he substantial uniformity of the distribution is such that the light, as beam shaped by the one-dimensional linear batwing lens, fills up a defined space." Id. ,r 28. Negishi discloses a fluorescent light emitting tube having a lens. As described by Appellant (Appeal Br. 10-11), Negishi discloses changing the shape of the lens to provide different light flux characteristics. Figure 4 of Negishi is reproduced below. 2a 2 ~... : . , 2c .x-