Ex Parte Scannell

Patent Trial and Appeal Board

Mar 27, 2013

11801016 (P.T.A.B. Mar. 27, 2013)

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.
11/801,016 05/08/2007 Robert F. Scannell JR. RFS-110AD 1748
7590 03/28/2013
Robert F. Scannell. Jr.
19 Chalfonte Drive
Lebanon, NJ 08833
EXAMINER
TSIDULKO, MARK
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
03/28/2013 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 ROBERT F. SCANNELL, JR.
____________

Appeal 2010-009952
Application 11/801,016
Technology Center 2800
____________

Before DENISE M. POTHIER, DAVID C. McKONE,
and GREGG I. ANDERSON, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 190-221, which constitute all the claims pending in this application.
See Br. 2.
1
Claims 1-189 are cancelled. See id. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1
Throughout this opinion, we refer to the Substitute Appeal Brief filed
January 14, 2010 (“Br.”) and the Examiner’s Answer mailed April 2, 2010
(“Ans.”).
Appeal 2010-009952
Application 11/801,016

2
THE INVENTION
Appellant’s invention relates to lamps that incorporate power
receptacles, for example to charge wireless phones and wireless
communication devices. Claim 190, which is illustrative of the invention,
reads as follows:
190. A multifunction-adaptable, multicomponent
modular lamp, which comprises:
(a) a base;
(b) a lower lamp component, being a housing, that is
removably attached to said base, said lower lamp
component having an interior with a hollow portion;
(c) an upper lamp component, being a support component
having a tope [sic] end and a bottom end, and being
adapted for connection to at least one of said base and
said lower lamp component, and having wiring to
provide power to at least two power=consuming [sic]
components, at least one of which is a light fixture and at
least one of which is a power source; and
(d) at least one receptacle located on at least one of said
elements (a), (b) and (c) above, said receptacle being
connected to a power source having power for providing
appropriate voltage and current to power at least one
electronic device selected from the group consisting of an
AC powered device, a wireless phone, a wireless data
communications device, a sensor device and a low
voltage rechargeable electronic device.

THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Sand US 2,452,327 Oct. 26, 1948
Swanson ’350 US 6,264,350 B1 July 24, 2001
McKenzie US 6,634,768 B2 Oct. 21, 2003
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Application 11/801,016

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Swanson ’108 US 6,916,108 B2 July 12, 2005
(filed May 30, 2003)
Claims 190, 191, 193-203, 206, 208, and 214-217 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Swanson ’350 and McKenzie.
See Ans. 3-7.
Claims 192, 204, 205, 207, and 209-213 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Swanson ’350, McKenzie, and
Swanson ’108. See Ans. 7-8.
Claims 218-221 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Swanson ’350, McKenzie, and Sand. See Ans. 8-9.

ANALYSIS
REJECTION OF CLAIMS 190, 191, 193-203, 206, 208,
AND 214-217 UNDER 35 U.S.C. § 103(a)
The Examiner finds that Swanson ’350 teaches a lamp that meets each
limitation of claim 190 except for:
(d) at least one receptacle located on at least one of said
elements (a), (b) and (c) above, said receptacle being connected
to a power source having power for providing appropriate
voltage and current to power at least one electronic device
selected from the group consisting of an AC powered device, a
wireless phone, a wireless data communications device, a
sensor device and a low voltage rechargeable electronic device.
See Ans. 3-4. The Examiner finds that McKenzie teaches a receptacle
located on a lower lamp component that supplies power to an AC powered
device, and concludes that a person of ordinary skill in the art would have
modified the lamp of Swanson ’350 by providing a receptacle, per
McKenzie, in order to enhance the functionality of Swanson ’350’s lamp.
See Ans. 4.
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Application 11/801,016

4
Appellant assigns several instances of error to the Examiner, none of
which are persuasive. For example, Appellant argues that Swanson ’350’s
lamp lacks a second power-consuming component, see Br. 7-8, and thus, if
modified, it would be different from the claimed invention, see Br. 9.
Similarly, Appellant argues that Swanson ’350 does not teach a lamp with a
receptacle. See Br. 9. However, the Examiner does not cite Swanson ’350
for either a second power-consuming component or a receptacle. Instead,
the Examiner cites McKenzie for that feature. See Ans. 4. Appellant’s
arguments amount to an attack on Swanson ’350 individually without
consideration of the Examiner’s combination of Swanson ’350 with
McKenzie, an approach we consider unpersuasive. See In re Keller, 642
F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.”).
Appellant also argues that claim 190 requires a lamp that is
“modular,” and that neither Swanson ’350 nor McKenzie teaches a modular
lamp. See Br. 8-9. Similarly, Appellant argues that Swanson ’350 makes no
provision for making similar parts connectable. See Br. 9. The Examiner
responds that modularity is only recited in the preamble of claim 190 and
that the preamble should not be given weight in this case. See Ans. 9-11.
“A claim’s preamble may limit the claim when the claim drafter uses the
preamble to define the subject matter of the claim” or “when it is necessary
to give life, meaning and vitality to the claim based on the facts of the case
at hand and in view of the claim as a whole.” August Tech. Corp. v. Camtek,
Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011) (internal citations and quotation
marks omitted). On the other hand, “[a] preamble is not limiting where a
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patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the invention.”
Vizio, Inc. v. Int'l Trade Comm’n, 605 F.3d 1330, 1340 (Fed. Cir. 2010)
(internal quotation marks omitted). The Examiner concluded that the body
of claim 190 defines a structurally complete invention. See Ans. 9.
Appellant has not adequately explained why this conclusion is incorrect, nor
do we see error in that conclusion.
As to the combination of Swanson ’350 and McKenzie, Appellant
contends that a person of ordinary skill would not have combined them,
arguing that they are non-analogous art, with Swanson’350 teaching a
simple desk lamp and McKenzie teaching a complicated emergency
notification system. See Br. 10. In response, the Examiner finds that they
are analogous, pointing out that both Swanson ’350 and McKenzie teach
desk lamps. See Ans. 11 (citing McKenzie, col. 2, ll. 51-52). We agree with
the Examiner. Modifying Swanson ’350’s desk lamp with a receptacle, per
McKenzie’s teaching of adding a receptacle to a desk lamp, in order to
enhance the functionality of Swanson ’350’s lamp, would have been no
more than an obvious improvement contemplating the predictable use of
known components for their intended purposes. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
Appellant also argues that it would not have been feasible to modify
Swanson ’350’s lamp to include McKenzie’s receptacle because
McKenzie’s lamp is described as being wider in dimension in order to house
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a battery and an AC connection. See id. However, “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Keller, 642 F.2d at 425.
Thus, we are not persuaded that the Examiner erred in his conclusion of
obviousness.
Accordingly, we sustain the rejection of claim 190 and claims 191,
193-203, 206, 208, and 214-217, not argued separately with particularity.

REJECTION OF CLAIMS 192, 204, 205, 207,
AND 209-213 UNDER 35 U.S.C. § 103(a)
The Examiner finds that Swanson ’350 and McKenzie teach each
limitation of claims 192, 204, 205, 207, and 209-213 except for an upper
lamp component that extends through the hollow interior of the lower
component and removably attaches to the base. See Ans. 7. The Examiner
finds this feature disclosed in Swanson ’108 and concludes that it would
have been an obvious alternative structure that would have contributed to
obtaining a stable position of a lamp. See Ans. 7-8.
Appellant contends that the lamp of Swanson ’350 already has
structure that would provide a stable position to its lamp, and thus a person
of ordinary skill in the art would not have modified it with the alternative
securing means taught in Swanson ’108. See Br. 11-12. We are not
persuaded. “[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
KSR, 550 U.S. at 416 (citing United States v. Adams, 383 U.S. 39, 50-51
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(1966)). Here, the result of substituting Swanson ’108’s support structure
for Swanson ’350’s would have been predictable.
Accordingly, we sustain the rejection of claims 192, 204, 205, 207,
and 209-213.

REJECTION OF CLAIMS 218-221 UNDER 35 U.S.C. § 103(a)
The Examiner finds that Swanson ’350 and McKenzie teach each
limitation of claims 218-221 except for the “hanging means adapted to
connect to a wall or a ceiling, and removably connected to at least one
component being selected from the group consisting of said base, said lower
lamp component and said upper lamp component.” See Ans. 8. The
Examiner finds that this limitation is taught in Sand and concludes that
modifying a lamp (per Swanson ’350 and McKenzie) with hanging means
(per Sand) would have been an obvious improvement to permit the lamp to
connect to a ceiling to serve a different purpose. See Ans. 8-9.
Appellant contends that Sand teaches away from Swanson ’350. See
Br. 12. According to Appellant, Swanson ’350’s desk lamp has reflectors
that direct light upward so that a standing person will not be looking into the
light. See Br. 13. In contrast, Appellant argues, Sand’s hanging lamps have
exposed light bulbs with guards around them, rather than features that reflect
light away from a standing person. See id. “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Like the
Examiner, we are not persuaded that Sand would have discouraged the
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modification of a table lamp. Indeed, as the Examiner notes, see Ans. 11-12,
Sand itself teaches that its lamp can be adjusted for use as a table lamp by
removal of a lamp guard cage and addition of a “lamp shade . . . of a well
known type.” Sand, col. 3, ll. 11-17. Appellant’s arguments once again
argue that one reference (here, Sand) cannot be bodily incorporated into
another (Swanson ’350) without taking into account the combination
proposed by the Examiner. Moreover, Appellant’s arguments focus on
features (reflectors and guards) that are not recited in the claims. Appellant
has not shown that the Examiner erred in his conclusion of obviousness.
Accordingly, we sustain the rejection of claims 218-221.

ORDER
The decision of the Examiner to reject claims 190-221 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

kis