Ex Parte Van Herpen et al

Patent Trial and Appeal Board

Nov 29, 2016

13126072 (P.T.A.B. Nov. 29, 2016)

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.
13/126,072 04/26/2011 Maarten Marinus Johannes Wilhelmus Van Herpen 2008P01867WOUS 1320
138325 7590 12/01/2016
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EXAMINER
465 Columbus Avenue ISLAM, SYED A
Suite 330
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
kim.larocca@philips.com
j o. c angelosi @ philips. com
Gigi.Miller@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAARTEN MARINUS JOHANNES WILHELMUS
VAN HERPEN, MARKUS CORNELIUS VERMEULEN,
JOSEPH L. STUYFZAND, ANJALIKA BOSE, THOMAS
SCHAPER, and TIM DEKKER
Appeal 2014-009097
Application 13/126,072
Technology Center 3600
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection of claims
2—8 and 10-31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Koninklijke Philips
Electronics, N.V., at Groenewoudseweg 1, Eindoven, The Netherlands, 5621
BA. Appeal Br. 1.
Appeal 2014-009097
Application 13/126,072
CLAIMED SUBJECT MATTER
The claims are directed to a lighting arrangement comprising a carpet
with back lighting for providing dynamic light effects with the carpet.
Appeal Br. IX Claims App. i—iv. Claim 19, reproduced below, illustrates the
claimed subject matter:
19. A lighting arrangement comprising a carpet structure and
a control unit, said carpet structure comprising:
a carpet back lighting system comprising:
a carpet back lighting unit having a lighting unit front face;
a plurality of light sources for controllably generating
light;
a carpet unit including a carpet unit front face and a carpet
unit back side;
said carpet back lighting unit front face and said carpet
unit back side being adjacent and said carpet unit comprising
tufts arranged between the respective front face and back side to
allow at least part of said generated light to pass from the carpet
unit back side to the carpet unit front face while said individual
light sources are made invisible to an observer looking at said
front face;
said control unit being adapted to receive an input signal
and to generate, in response to the input signal, an output signal
to control the light generated by the light sources.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Harrison US 4,737,764 Apr. 12, 1988
Blum US 6,982,649 B2 Jan. 3, 2006
Russell US 2008/0276393 A1 Nov. 13, 2008
Hawkins US 7,670,026 B1 Mar. 2,2010
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Application 13/126,072
REJECTIONS
The Examiner made the following rejections:
1. Claims 2, 10, 16—23, and 29-31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Harrison and Russell.
2. Claims 3—8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harrison, Russell, and Hawkins.
3. Claims 3—8, 11—15, and 24—28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Harrison, Russell, and Blum.
OPINION
Appellants argue all the claims together and provide additional
arguments for dependent claims 18 and 20. Appeal Br. 4—10. Claims 19
and 29 are independent. We address Appellants’ arguments as they are
raised in their Appeal Brief.
In connection with claim 19, Appellants argue first that there is no
reason for one of ordinary skill in the art to modify the structure taught by
Harrison with the lighting technique taught by Russell. Appeal Br. 4—5.
Specifically, Appellants argue that Harrison teaches away from light sources
that are made invisible to an observer looking at the carpet’s front face
because Harrison teaches light transmissive housings that fit in openings
through the carpet. Appeal Br. 5. Appellants reason that “[gjiven
[Harrison’s] unequivocal statements about the visibility of Harrison’s lights,
it would not have occurred to one of ordinary skill in the art, based on these
references alone, to substitute Russell’s arrangement of tufts 236 and light
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Application 13/126,072
sources 250 Harrison’s arrangement of transmissive housing 47 and tufts
58.” Id.
We do not agree with Appellants that Harrison teaches away from the
proposed combination with Russell. Harrison teaches light transmissive
housings 47 (Harrison 4:24—25 and passim), but Harrison does not say that
the housings 47 are transparent. Given Appellants’ conventional, broad
definition of “transmissive” (Spec. 12:15—18), light transmissive includes
translucent, so that individual light sources are invisible to an outside
observer, as required by claim 19. Thus, Harrison does not teach away from
the combination proposed by the Examiner.
Further, the Examiner responds that combining Russell with Harrison
would not alter the primary purpose of Harrison. The Examiner finds that
using Russell’s light sources underneath carpet tufts to illuminate them
would reduce the manufacturing processes and cost of Harrison because the
openings and cutouts in the carpet for placement of the light transmissive
housings would be eliminated. Ans. 3. Appellants do not apprise us of error
in the Examiner’s findings.
Appellants also argue that it would not have occurred to one of
ordinary skill in the art “to substitute Russell's arrangement of tufts 236 and
light sources 250 for Harrison's arrangement of transmissive housing 47 and
tufts 58.” Appeal Br. 5; Reply 2. This argument does not address the
Examiner’s position. The Examiner clearly stated that “[t]he combination
was only used to teach that the tufts can be illuminated.” Final Act. 2. By
not addressing the rejection as articulated by the Examiner, Appellants have
not demonstrated effectively how the Examiner was in error.
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Application 13/126,072
Appellants next challenge the rejection of claim 19 based on Harrison
and Russell, charging that Russell is not analogous art and so one of
ordinary skill in the art to which the invention relates would not look to
Russell for guidance or ideas. Appeal Br. 5—6. Appellants’ Appeal Brief
describes the problem they were trying to solve as “a lighting arrangement
comprising a carpet with back lighting for providing dynamic lighting
effects with the carpet.” Appeal Br. 7. They argue that the problem Russell
was trying to solve is so different that Russell’s solution is “not at all
pertinent.” Id.
The Examiner answers that Russell and Harrison are both classified in
the same class and, in addition, “both [ ] references disclose the similar
concept of placing light sources underneath tufts and illuminating them.”
Ans. 3. Appellants’ Reply does not respond to the Examiner’s finding on
the similarity of Russell’s concept to Harrison’s, namely, the backlighting of
tufts.
Prior art is analogous and can be applied in an obviousness
combination if it either (1) “is from the same field of endeavor,
regardless of the problem addressed” or (2) “is reasonably
pertinent to the particular problem with which the inventor is
involved.” In re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992).
To determine if art is analogous, we look to “the purposes of
both the invention and the prior art.” Id. at 659. If a reference
disclosure and the claimed invention have a same purpose, the
reference relates to the same problem, which supports an
obviousness rejection. Id.
Unwired Planet, LLC v, Google, Inc., 2016 WL 6694955, Case Nos. 2015-
1810, 2015-1811 (Fed. Cir. Nov. 15,2016), slip op. 4.
We acknowledge that Appellants’ invention and Russell are not from
the same field of endeavor. However, we agree with the Examiner that
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Application 13/126,072
Russell is reasonably pertinent to the particular problem confronting
Appellants. Appellants’ Specification describes the invention as “relating]
to a lighting arrangement including a carpet unit. The invention further
relates to a method for providing light effects or information using such
lighting arrangement as well as to the lighting arrangement for specific
purposes.” Spec. 1:2-4. Significantly, Appellants’Background of the
Invention identifies U.S. Published Application 20070037462 as relevant.
That application, according to Appellants, “describes a method for
manufacturing a distributed optical fibers scrim comprising functional
optical fibers.” Spec. 1:14—15. Thus, the problem Appellants addressed in
their application is broader than the narrow problem they suggest in their
Appeal Brief.
The Supreme Court’s decision in KSR International Co. v.
Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the
scope of analogous art broadly, stating that ‘ familiar items may
have obvious uses beyond their primary purposes, and a person
of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” Id. at 402.
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). We find
that Russell’s solution of illuminating tufts of a toothbrush “is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering [the] problem [Appellants’
confronted].” In re Clay, 966 F. 2d 656, 659 (Fed. Cir. 1992). The problem
confronting Appellants of how to backlight a tufted article is the same as that
confronting Russell, and Russell’s solution is reasonably pertinent to it.
Accordingly, we find no error in the Examiner’s using Russell in
combination with Harrison to reject claim 19.
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Application 13/126,072
Appellants make the same arguments in connection with claims 2—8,
14—18, and 20-31. Appeal Br. 8. For the reasons stated above, we are not
persuaded the Examiner erred in rejecting these claims.
Additional Arguments Regarding Claim 18
Appellants make additional, separate arguments for allowance of
claim 18. Claim 18 includes, in relevant part, the limitation that the control
unit illuminates a path from a starting location to an ending location of a
path and “said path remains illuminated until said person returns to the
starting location.” Appeal Br. IX, ii (Claims App.). Appellants argue that
this exact function is not shown in Harrison and that the Examiner must be
relying on “Official Notice” to find such a function. Appeal Br. 8. We find
no reliance by the Examiner on any disclosure outside the cited references.
Harrison discloses manual and automatic switches. The Examiner correctly
identifies the subject limitation in claim 18 as an intended use limitation and
reasonably found that the control unit shown in Harrison (6:2—9; Fig. 30)
would be capable of performing the claimed function. Final Act. 2, Ans. 4.
Appellants have not provided sufficient evidence or arguments to establish
this finding is in error. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997) (claims directed to an apparatus must be distinguished from
the prior art in terms of structure rather than function). Indeed, Appellants
have pointed to no structural difference between Harrison and claim 18 in
connection with the control unit.
Appellants suggest that
[t]he “output signal” is a structural feature of claim 17 [from
which claim 18 depends] that controls the light sources to
illuminate another structural feature of claim 17 — a path — from
a starting location of a person to an ending location. Claim 18
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Application 13/126,072
then modifies this structure, reciting that the “path remains
illuminated until said person returns to the starting location.”
Appeal Br. 9-10. We do not agree. The output signal merely describes
what the claimed control does, not what it is. "[Apparatus claims cover
what a device is, not what a device does." Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Claim 18 (including the
claims from which it depends) does not positively recite any structure related
to the claimed control signal. Accordingly, we are not persuaded the
Examiner erred in rejecting claim 18.
Additional Arguments Regarding Claim 20
Appellants argue claim 20 separately. Claim 20 depends from claim
19 and adds that “said carpet unit comprises at least one light transmissive
layer disposed between the tufts and the carpet unit back side.” Appeal Br.
IX, iii (Claims App.). The Examiner finds this feature is taught by
Harrison’s housings 47. Appellants argue that the housings are not
described as being between Harrison’s tufts and the carpet unit backside and
that the fact that Harrison’s housings 47 extend through openings in the
carpet means they cannot be between the tufts and the carpet unit backside.
Appeal Br. 10. Appellants urge no special definition of the terms “tufts” or
“between,” and we give these terms their ordinary meanings. “Between” in
the present context, is defined as “in the time, space, or interval that
separates.”2 The term “carpet unit back side” is described in the
Specification as the “external face” of the carpet backing. Spec. 30:16—17.
2 http://www.merriam-webster.com/dictionary/between, last viewed Nov.
21,2016.
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Application 13/126,072
Harrison describes its carpet assembly: “Each unit has at least one
opening 46 therein which is open to the upper surface of the unit. A light
transmissive housing 47 is inset in each opening.” Harrison 4:22—25
(emphasis omitted). Harrison describes another light transmissive housing
as
an integrally molded light transmissive member having flange
portions 51 which extend outward from the bottom thereof. The
flange portions serve to secure the housing into the carpet tile
and prevent it from being pulled up through the opening in the
modular unit into which the housing is inset (see FIG. 21). The
housing has a top or dome portion 52 which is visible when the
housing is installed in the floor covering unit (see FIG. 21).
Harrison 4:40-48 (emphasis omitted). Figures 21 and 22 of Harrison are
reproduced below:
FIG. 21 illustrates the light-emitting means of FIG. 20 in a carpet tile.
FIG. 22 is a sectional view, taken along line 22-22 of FIG. 21, of a
light-transmissive housing inset into a carpet tile.
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Application 13/126,072
These Figures clearly show the light transmissive housing 47,
including its dome portion 52, in the interval that separates the tufts 58 and
the secondary backing 57. Accordingly, we are not persuaded that the
Examiner erred in rejecting claim 20.
DECISION
For the above reasons, the Examiner’s rejection of claims 2—8 and 10—
31 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)(l)(iv) (2009).
AFFIRMED
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