Ex Parte Sibalich et al

Patent Trial and Appeal Board

Dec 20, 2012

11345831 (P.T.A.B. Dec. 20, 2012)

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.
11/345,831 02/02/2006 Gregory L. Sibalich 8684-90998-US 1882
22242 7590 12/20/2012
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
LEE, JONG SUK
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
12/20/2012 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 GREGORY L. SIBALICH and CHIK KIN WING RICKY
____________________

Appeal 2010-006691
Application 11/345,831
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006691
Application 11/345,831

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STATEMENT OF THE CASE1
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Exemplary claim 1 under appeal, with emphasis added, reads as
follows:

1. A motion sensing lighting fixture comprising:

a support post including a top surface;

a light mounted on the top surface of the support post, the support post
providing foundational support to uphold the light; and

a passive infrared motion sensor fixedly contained in said support post
and configured to sense infrared radiation over a greater than 180-degree
field of view.

Rejections2
The Examiner rejected claims 1-7, 10, 11, 15-17, 19-23, and 29 under
35 U.S.C. § 102(b) as being anticipated by Sandell (U.S. Patent No.
6,348,691 B1).
Remaining claims 8, 9, 12-14, 18, and 24-28 are all rejected under
35 U.S.C. § 103(a) over Sandell in further combination with Haslam (U.S.

1 Throughout our Decision, we make reference to the Appeal Brief filed
November 4, 2009 (“App. Br.”), the Examiner’s Answer mailed February 4,
2010 (“Ans.”), and the Reply Brief filed April 5, 2010 (“Reply Br.”).
2 Separate patentability is not argued for claims 2-7, 10, 11, 15-17, 19-23,
and 29. Except for our ultimate decision, these claims are not discussed
further herein.
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Patent No. 5,590,953). Because this rejection turns on our decision as to the
underlying § 102 rejection, we do not further address the obviousness
rejection herein.
Appellants’ Contentions
Appellants contend (App. Br. 9-16; Reply Br. 1-5) that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Sandell for numerous reasons, including:
(1) Sandell’s reference numerals 14 and 52 shown in Figures 2 and 6
are not “posts,” and Sandell fails to disclose the “post” recited in claim 1;
(2) the Declaration of Bradford Jensen is evidence that one of
ordinary skill in the art of lighting fixtures would not consider “post” to
include what is shown by reference numerals 14 and 52 in Sandell’s Figures
2 and 6, and that the ordinary and customary meaning of “post” is “a
longitudinal member that protrudes from the ground” (App. Br. 11); and
(3) the distinction between “support post” (e.g., as recited in claim 1)
and “post” (e.g., as argued in the briefs and discussed in the Declaration of
Bradford Jensen) is meritless (Reply Br. 2).3
Issue on Appeal
Did the Examiner err in rejecting claims 1-7, 10, 11, 15-17, 19, 20-23,
and 29 because Sandell fails to teach a “support post” having a “top surface”
for mounting a light, as recited in representative claim 1, and as similarly
recited in remaining independent claims 16, 20, 25, and 29?

3 Although Appellants do point out specifically where the Examiner has
relied upon the distinction between the terms “post” and “support post,” (see
Reply Br. 2), we note that the Examiner’s explanation of such distinction
can be found at pages 11-15 of the Answer.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
ultimate conclusions. Rather, we concur with the conclusion reached by the
Examiner.
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. Ans. 3-15. We highlight and amplify certain
teachings and suggestions of Sandell, and findings regarding the Declaration
of Bradford Jensen and the ordinary meaning of “support post,” as follows.
Appellants’ arguments in the Appeal Brief (App. Br. 10-17) and the
Reply Brief (Reply Br. 1-5) center around the meaning of the term “post,” as
opposed to what is actually recited in claims 1, 16, 20, 25, and 29 on appeal
(reciting “support post”). The Declaration of Bradford Jensen (see
Declaration, ¶¶ 3-5) similarly is drawn to the term “post” and not the
“support post” as actually recited in the claims on appeal. Appellants have
missed the point. The dispositive issue in this appeal revolves around the
interpretation of the term “support post” used in all of the independent
claims on appeal, as appears in the claims, and as defined by the
Specification.
The Examiner rejects “support post” with Figure 6, elements 14 and
52 (Ans. 3; see Examiner’s Markup of Fig. 4 at Ans. 6). The Examiner
relies upon a definition of a “post” as it relates to jewelry to permit broader
interpretation (Ans. 13). Appellants respond that the definition of “post” to
jewelry is irrelevant as applied to light fixtures (Reply Br. 2). This
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definition is only as relevant as Appellants’ asserted definition in the
Declaration. It still is not directed to the actual claim language, which
applies the term “support post.”
Declaration of Bradford Jensen under 37 C.F.R. § 1.132
The term “nexus” designates a factually and legally sufficient
connection between the objective evidence of nonobviousness and the
claimed invention so that the evidence is of probative value in the
determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488
U.S. 956 (1988). The ultimate determination of patentability must be based
on consideration of the entire record, by a preponderance of evidence, with
due consideration to the persuasiveness of any arguments and any secondary
evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
The submission of objective evidence of patentability does not mandate a
conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643,
2 USPQ2d 1437 (Fed. Cir. 1987).
The affidavit submitted by Appellants after final under 37 C.F.R.
§ 1.132 does not overcome this finding inasmuch as the affidavit (i) does not
refer to specific claims, (ii) pertains to the term “post” and not the specific
claim term “support post” that actually occurs in claims 1, 16, 20, 25, and 29
on appeal (i.e., there is no nexus between the objective evidence or
Declaration and the claimed invention), and (iii) asserts that a person of
ordinary skill in the art of lighting fixtures would understand the customary
and ordinary meaning of “post” to be a longitudinal member that protrudes
from the ground.
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Appellants’ evidence of non-obviousness and/or Declaration of
Bradford Jensen under 37 C.F.R. § 1.132 has been considered and is deemed
insufficient to (i) provide a customary or plain meaning for the term
“support post” as recited in claims 1, 16, 20, and 25, or (ii) overcome the
rejections of record.
Plain and Ordinary Meaning of “Post” and/or “Support Post”
“[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) (en banc). It is the use of the words in the context of the written
description and customarily by those skilled in the relevant art that
accurately reflects both the “ordinary” and the “customary” meaning of the
terms in the claims. Ferguson Beauregard/Logic Controls, Div. of Dover
Resources, Inc. v. Mega Systems, LLC, 350 F.3d 1327, 1338 (Fed. Cir.
2003).
Appellants’ assertion of the customary and ordinary meaning of
“post” as being a longitudinal member protruding from the ground is
contrary to (a) the plain and ordinary meaning of “post” which we determine
broadly encompasses objects that are longer than their cross-section, and (b)
Figures 4 and 6 of Appellants’ Specification, showing pedestal 18 which
supports the lighting fixture and does not protrude from the ground.
Accordingly, Appellants’ arguments are not commensurate in scope with the
claims inasmuch as the arguments only address the term “post” and not
“support post” as actually used in the claims.
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At paragraphs [0012] and [0023] of the Specification, and in the
Abstract of the disclosure, Appellants use the term “support post,” but do not
explicitly define the term. The support post is shown as element 4 in Figures
2a and 2b as described in paragraphs [0020] and [0025]. Appellants also
describe a pedestal 18 shown in Figure 4, and describe a “post or pedestal”
in paragraph [0025], as well as a “support post or pedestal” in the Abstract
(Abs., l. 3).
Indeed, the closest definition for “support post” in the record appears
in the prior art patent to Krieger (U.S. Patent No. 7,758,202 B2), which
discloses a stool 10 having mounted thereon a light 34 mounted on a top
surface of a support post 66 (Figs. 1 and 2; col. 4, ll. 17-31). The Examiner
relied upon Krieger to demonstrate that the term “support post” is used in
other lighting fixture disclosures in a manner that is consistent with the
manner in which the Examiner construed the term “support post” and
inconsistent with Declarant Bradford Jensen’s definition (Ans. 13-14).
Appellants’ argument that Krieger is not within the art of lighting fixtures
because, although having a mounted light source, it is a rolling step stool and
is classified elsewhere (Reply Br. 3-4), is not persuasive. Krieger is plainly
in the field of lighting fixtures, since Krieger discloses a light 34 mounted on
a fixture/stool 10.
In view of the absence of a definition for “support post” in
Appellants’ Specification and the Declaration of Bradford Jensen discussed
supra, the Examiner’s interpretation (Ans. 11-15) of “support post” as
meaning a post (whether extending out from a side or from the ground) that
supports a light fixture or other device on a top surface is reasonable.
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We agree with the Examiner’s finding of anticipation because we
conclude support post 4 is merely a post having a top surface that supports a
light (claims 1 and 29), a sensor-containing support device (claim 16), a
light fixture (claim 20), or a lamp (claim 25), as defined by the originally
filed Specification, drawings, and claims. We agree with the Examiner that
Appellants’ claim 1 does not recite merely a “post,” but a “support post” as
described and shown in the Specification. We also agree with the Examiner
that Appellants’ disclosure (Spec., ¶¶ [0020] and [0025]) supports that the
term “support post” has a much broader meaning than the Declarant’s
definition (Ans. 14-15). We are not persuaded by Appellants’ argument that
the Examiner’s definition of the term “post” is too broad (Reply Br. 4-5).
Summary
In view of all of the foregoing, we will sustain the Examiner’s
rejection of claims 1-7, 10, 11, 15-17, 19-23, and 29 under 102(b) by Sandell
because Sandell’s Figure 6 shows a “support post.” For similar reasons, we
will also sustain the Examiner’s rejection claims 8, 9, 12-14, 18, and 24-28
under 103(a) over Sandell and Haslam.

Appeal 2010-006691
Application 11/345,831

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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-7, 10, 11, 15-17,
19-23, and 29 as being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 8, 9, 12-14, 18, and
24-28 as being obvious under 35 U.S.C. § 103(a).
(3) Claims 1-29 are not patentable.

DECISION
The Examiner’s rejections of claims 1-29 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)(1)(iv).

AFFIRMED

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