Ex Parte Roths

Patent Trial and Appeal Board

Jul 6, 2016

13016503 (P.T.A.B. Jul. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/016,503 01/28/2011
23893 7590 07/08/2016
Timothy E Siegel Patent Law, PLLC
Mari Yamamoto
777 108th A venue, Suite 2240
Bellevue, WA 98004-5178
FIRST NAMED INVENTOR
Andrew J. Roths
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.
ROS.001.US 4689
EXAMINER
BURGDORF, STEPHEN R
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
07/08/2016 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):
tim@intproplaw.com
Michele@intproplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ANDREW J. ROTHS 1
Appeal2014-008992
Application 13/016,503
Technology Center 2600
Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision2 on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-8, 15, 16, and 20-25, which are all the pending claims.
Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellant, the real party in interest is Andrew J. Roths. App.
Br. 1.
2 Our decision refers to the Final Office Action mailed December 16, 2013
("Final Act."); Appellant's Appeal Brief filed March 24, 2014 ("App. Br.");
the Examiner's Answer mailed June 18, 2014 ("Ans."); Appellant's Reply
Brief filed August 15, 2014 ("Reply Br."); and the Specification filed
January 28, 2011 ("Spec.").
Appeal2014-008992
Application 13/016,503
THE CLAHvIED INVENTION
According to the Specification, the application is directed to methods
and apparatus for "a safety warning light for a traveler over a period of
months of intermittent travel, that makes use of a battery operated lighting
apparatus that provides light when motion and darkness are detected and that
when still or in daylight uses, on average, last than 4 milliamps of power."
Spec., Abstract. Independent claim 1 is directed to a method and
independent claims 6, 15, and 20 are directed to apparatus. App. Br. 15-17
(Claims Appendix). Illustrative claim 1 recites:
A method of providing a safety warning light for a traveler
over a period of months of intermittent travel, comprising:
App. Br. 15.
(a) providing a battery operated lighting apparatus that
provides light when said apparatus has sensed its own
motion and has sensed darkness, within a time period
of predetermined duration, and that when still or in
daylight uses, on average, less than 4 milliamps of
power, and appending said apparatus to a personal
item; and
(b) over said period of months, using said lighting
apparatus when traveling with said personal item
without activating any switch prior to use or
deactivating any switch after use.
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Application 13/016,503
REJECTIONS ON APPEAL
Claims 15, 16, and 24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 3-5.3
Claims 1-3, 5-8, and 23 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over Ragner et al. (US 6, 175,196 B 1, issued Jan. 16,
2001) ("Ragner"). Final Act. 5-8.
Claim 4 stands rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Ragner and Chien (US 5,683,164, issued Nov. 4, 1997)
("Chien"). Final Act. 9.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Ragner and Bittner (US 2006/0195716 Al, published
Aug. 31, 2006) ("Bittner"). Final Act. 9-12.
Claims 20 and 21 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Ragner, Schreiden (US 4,305,021, issued Dec. 8, 1981)
("Schreiden"); and Kahn et al. (US 7,800,044 Bl, issued Sept. 21, 2010)
("Kahn"). Final Act. 13-16.
Claims 22 and 25 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Ragner and Wut et al. (US 6,104,140, issued Aug. 15,
2000) ("Wut"). Final Act. 17-18.
Claim 24 stands rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Ragner and Henry (US 2004/0227646 Al, published Nov.
18, 2004) ("Henry"). Final Act. 19-20.
3 The rejection of claims 20 and 21 under 35 U.S.C. § 112, first paragraph,
set forth in the Final Office Action was withdrawn in the Examiner's
Answer. Ans. 19.
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Appeal2014-008992
Application 13/016,503
ANALYSIS
Rejections under 35 U.S.C. § 112
Claims 15 and 16
Claims 15 and 16 are rejected for failure to comply with the written
description requirement of 35 U.S.C. § 112. Final Act. 3. With regard to
claims 15 and 16, Appellant fails to provide any argument relating to this
rejection. App. Br. 3-13; Reply Br. 1-6. Accordingly, we summarily affirm
the rejections of claims 15 and 16 for failure to comply with the written
description requirement of 35 U.S.C. § 112. See Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) ("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."); accord, MPEP § 1205.02i 9th Ed.
(Rev. 07, November, 2015) ('"i\n appellant may, of course, choose not to
present arguments or rely upon particular evidence as to certain claim
rejections; however, such arguments and evidence are waived for purposes
of the appeal and the Board may summarily sustain any grounds of
rejections not argued.'')
(~! 0. ')4· /mm.;.,
Claim 24 recites, ''[t]he method of claim 1, wherein said apparatus is
appended to a portion of a personal item that is not caused to rotate by
translational on-ground motion of said personal item.'' App. Br, 17.
Appellant points to Figure 2 and the first full paragraph of page 9 of the
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Application 13/016,503
Specification as providing support for this limitation. App. Br. 6----K Figure
2 of the Specification is reproduced be1ow.
FIG.2
Figure 2 depicts "a perspective view of a light unit according to the present
invention.'' Spec. 4. i\ppdlant argues, "FIG. 2 of the originally fikd
specification shows a bicyc1e light 10 together with a clamp that a skilled
person would infer is designed to fit about the seat post of a bicycle in order
to retain the light.'' App. Br. 7 (emphasis added). However~ the description
of Figure 2 in the Specification does not contain any disclosure relating to
the clamp or its function, or placement of the light or the clamp on the seat
post of a bicycle. See Spec. 5, 9.
'fhe :first full paragraph on page 9 of the Specification states:
'fhe photo sensors PS are positioned orthogonally to one
another, on the sides of case 312 (FJG. 2) of unit 10, so that
readings are generally taken of the sky and two sides of the
cyclist's bicycle. In an alternative preferred embodiment; only
the t\VO side-looking photo sensors PS are present In either
embodiment each photo sensor PS has a largely independent
view of the ambient light In one prefon-ed embodiment, one or
more photo sensors PS are recessed into the case. In an
alternative preferred embodiment a photo sensor PS is oriented
to face rearward, to serve as a car headlight detector. Jn this
embodiment vvhen headlights are detected the flash rate is , ~
increased.
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Application 13/016,503
Appellant argues this paragraph '"implicit{v teaches a fixed orientation of the
safety light on a bicycle~' and '"serves as an implicit teaching of a fixed
orientation of [a] safety light to a bicycle frame and rider.'' App. Br. 7
(emphasis added), Hm:vever, this passage fails to disclose a fixed
orientation.
\Ve agree with the Examiner that the negative 1imitation "said
apparatus [being] appended to a portion of a persona1 item that is not caused
to rotate by translational on-ground motion of said personal item,~' recited in
claim 24 is not supported by the Specification as the cited support does not
identify a description of "a reason to exclude the relevant limitation."
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)
("Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material."). See also MPEP § 2173.05(i) ("Any negative limitation or
exclusionary proviso must have basis in the original disclosure .... The
mere absence of a positive recitation is not basis for an exclusion.").
Accordingly, we sustain the Examiner's 35 U.S.C. § 112, first paragraph,
rejection of claim 24 for failing to comply with the written description
requirement.
Rejections under 35 U.S.C. § 103
Claims 1 and 6
Appellant's entire argument with regard to claims 1 and 6 in the
Appeal Brief is: "[t]he device ofRagner senses its own acceleration, which
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Application 13/016,503
is distinct from sensing motion. The device of Ragner can never be said to
have sensed its own motion, as it does not have a motion sensor, but rather
an acceleration sensor." App. Br. 10; see also Reply Br. 5 ("The device of
Ragner would only detect significant and continuous acceleration, so it could
not serve as a motion detector.") In the Examiner's Answer, the Examiner
responds, "[t]his argument is not persuasive because Ragner specifically
discloses that motion is detected [Col. 3, 22-25]." Ans. 25. The cited
passage states, "provide a safety light which allows brighter operation for a
given battery size and operational life by reducing actual 'ON' time to only
times when motion is detected and low ambient light is detected." Ragner 3:
22-25 (emphasis added). We also note the Abstract of Ragner which is
cited in the Final Office Action (Final Act. 5, 7) against claims 1 and 6 refers
to the sensor as an "acceleration/motion sensor" multiple times. Ragner,
Abstract ("The acceleration/motion sensor (22) is designed to conduct
current when a specific acceleration or motion is detected."). The
Examiner's rejection of claims 1 and 6 is well-supported by Ragner and we
sustain the rejection of claims 1 and 6 as obvious.
Claims 15 and 16
With regard to claims 15 and 16, Appellant argues, "[t]hese claims are
distinguished from Ragner and Bittner because they recite a 'safety lighting
apparatus' which senses its own motion - something that none of these
references do."4 App. Br. 10; see also Reply Br. 5. As discussed
4 We also note that, contrary to this argument, Appellant acknowledges
Kahn teaches a device that senses its own motion. App. Br. 21 ("Claim 20
recites a device that senses its own motion, as does the device of Kahn ... ").
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Application 13/016,503
immediately above with regard to claims 1 and 6, Ragner explicitly and
repeatedly teaches a safety lighting apparatus that senses its own motion.
We sustain the rejection of claims 15 and 16 as obvious.
Claims 20 and 21
Independent claim 20 recites:
A battery operated safety lighting apparatus that checks
for darkness only when it has detected its own motion and that
is activated when said apparatus has sensed its own motion and
has detected darkness, within a time period of predetermined
duration, and wherein when motion at a rate great than once per
every fifteen seconds is detected, the rate of checking for
darkness is maintained a nonzero rate of less than once per
fifteen seconds, in order to preserve battery power.
App. Br. 16-17. Claim 21 depends from claim 20 and recites, "wherein
after motion has been detected for greater than a predetermined period of
time; the apparatus continues to check for darkness; but at a reduced rate;
thereby reducing power consumption." App. Br. 17. Claims 20 and 21 are
rejected based on a combination of the teachings of Ragner, Schreiden, and
Kahn. Final Act. 13-16, 25.
With regard to claim 20, Appellant argues, "claim 20 recites a device
that operates in a particular manner, without any distinction between
operations in ambient light and in ambient darkness. In ambient light,
however, the Schreiden device tests for darkness constantly, without regard
to whether or not motion is detected." App. Br. 12. This argument is
misdirected. The Examiner relies on Kahn, not Schreiden, as teaching an
"apparatus that checks for darkness only when it has detected its own
motion," as recited in claim 20. Final Act. 13-14, 25 ("Kahn specifically
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Application 13/016,503
teaches that ambient light level is only checked after motion is detected in
order to conserve energy required for the ambient light sensor.") The
Examiner's findings with regard to the disputed limitation in claim 20 are
well-supported by the cited portions of Kahn. See Final Act. 13-14 (citing
Kahn Figure 4, 6:21-67). We sustain the rejection of claim 20 as obvious.
With regard to claim 21, Appellant argues, "the design of Schreiden
does not suggest the design of claim 21, which clarifies that when motion is
constantly detected, light is still sensed and thresholded to determine if there
is darkness." App. Br. 13. The Final Office Action states,
The circuit disclosed by Schreiden (and as described
above) allows checking of ambient light level only during
periods when the light source is not illuminated (in the off
state), and therefore the longer motion is detected (or a series of
intermittent detections, separated by less than an adjustable
period "X") the longer the delay until the next ambient light
measurement is made.
Final Act 16. The Examiner provides detailed findings based on Schreiden
showing the disputed limitation of claim 21 is taught. Id. at 14--15. We
agree with the Examiner that Schreiden teaches or suggests the disputed
limitation and sustain the obviousness rejection of claim 21.
Claims 22 and 25
With regard to claims 22 and 25, Appellant argues, "[t]he Wut
reference never states that its sensor 'continuously changes state when
subjected to motion."' App. Br. 9; Reply Br. 5. This is not correct. Wut
states, "[t]he switch includes a motion activated switch connected between
an opposite terminal of the power supply and the input of the transistor and
which alternately opens and closes a connection between the power supply
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Application 13/016,503
and the input of the transistor during movement of the light module." Wut,
3:53-57. The Examiner's rejection of claims 22 and 25 is well-supported by
Wut and we sustain the rejection of claims 22 and 25 as obvious.
Claim 24
Appellant argues Ragner fails to teach or suggest, "wherein said
apparatus is appended to a portion of a personal item that is not caused to
rotate by translational on-ground motion of said personal item." App. Br. 9.
This argument is misdirected. Henry is relied on by the Examiner as
teaching the disputed limitation. Final Act. 19; Ans. 22-23. As found by
the Examiner (id.), Henry teaches a light mounted on the helmet of a
motorcycle rider (see e.g., Fig. 1 ). The findings of the Examiner with regard
to Henry are well-supported and we sustain the obviousness rejection of
claim 24.
Claims 2-5, 7, 8, and 23
Appellant fails to present any argument in either the Appeal Brief or
the Reply Brief in support of the patentability of claims 2-5, 7, 8, and 23.
See App. Br. 3-13; Reply Br. 1---6. Accordingly, we summarily affirm the
rejections of claims 2-5, 7, 8, and 23 as obvious. See Frye, 94 USPQ2d at
1075; MPEP § 1205.02.
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Application 13/016,503
DECISION
The rejection of claims 15, 16, and 24 under 35 U.S.C. § 112 are
affirmed.
The rejections of claims 1-8, 15, 16, and 20-25 under 35 U.S.C.
§ 103(a) are 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)(l )(iv).
AFFIRMED
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