Ex Parte Wendt et al

Patent Trial and Appeal Board

Aug 31, 2017

13388358 (P.T.A.B. Aug. 31, 2017)

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.
13/388,358 02/01/2012 Matthias Wendt 2009P01041WOUS 4345
138325 7590 09/05/2017
PHILIPS LIGHTING HOLDING B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
GARLEN, ALEXANDER K
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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 MATTHIAS WENDT and
HARALD JOSEF GUNTHER RADERMACHER1
Appeal 2015-006813
Application 13/388,358
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
DEBRA L. DENNETT, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 rejecting claims 16-24 and 26-29, which are all of the
claims pending in the above-identified application. We have jurisdiction
under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as “Koninklijke Philips
Electronics, N.V., at Groenewoudseweg 1, Eindoven, The Netherlands,
5621BA.” Appeal Brief filed February 19, 2015 (“App. Br.”) 1.
2 Final Action entered September 19, 2014 (“Final Act.”) 2-13; and the
Examiner’s Answer entered May 14, 2015 (“Ans.”) 2-5.
Appeal 2015-006813
Application 13/388,358
We AFFIRM, but designate our affirmance as including NEW
GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b) for the
reasons stated below.
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to a lighting unit or
a lighting system comprising such lighting unit. Spec.3 1,11. 1—4. Figure 1,
which illustrates one embodiment of such lighting unit, is reproduced below:
Figure la depicts lighting unit 1 attached to a ceiling of an office space.
Spec. 13,11. 8-9. Lighting unit 1 “has a plurality of supports 11, indicated
by means of individual members si 1, sl2, [and] sl3” and carriers 10,
individually referenced el 1-12 and el2-13, comprising a light source 20
(individually referenced light sources LI, L2, and L3 having light beams Bl,
B2, and B3) adjustably connected to supports si 1, si2, and sl3 with
3 Our reference to Appellants’ Specification is to the Specification of WO
2011/015971 which was filed in the US Patent and Trademark Office on
February 1, 2012 (“Spec.”).
2
Appeal 2015-006813
Application 13/388,358
adjustable connections 12. Spec. 13,11. 13-32. “Support s 12 is provided
with an actuator 40, which is arranged to adjust the orientation of the
elements [(carriers)] el 1-12 and el2-13 in dependence on the electrical
power signal (not drawn)[.]” Spec. 13,1. 33-14,1. 1.
The light intensity of the light beams B has a pre-determined
relationship with the orientation of the light beam: when the
orientation corresponds to a high degree of concentration, the
light beams have a large light intensity . . . whereas the light
intensity is moderate when the orientation corresponds to a low
degree of concentration[.]
Spec. 14,11. 14-18. In another embodiment, “the light intensity is dependent
on an average level of the electrical power signal.” Spec. 5,11. 3^4. In yet
another embodiment, “the light intensity is dependent on the average level of
the electrical power signal and the orientation is dependent on the average
level of the electrical power signal.” Spec. 5,11. 11-13. According to page
3, lines 17-26 of the Specification,
[t]he term “predetermined relationship” may relate to the
orientation of the light beam and the light intensity of the light
beam being functionally related to each other, in particular in a
one-to-one relationship. Each setting of light intensity, defined
by the electrical power signal, thus relates to a specific
orientation. A change of light intensity, by changing the
electrical power signal, thus results in a corresponding change
in orientation, effected by the -same- electrical power signal.
The pre-determined relationship may be a one­
time determined relationship that cannot be changed. The
pre-determined relationship may correspond to a user-
selected pre-determined relationship, which is selected by a
user, e.g. using a remote control or another type of suitable user
interface, from a plurality of predetermined relationships
(which may also be referred to as presets).
Emphasis added.
3
Appeal 2015-006813
Application 13/388,358
The “intensity and illumination profile of the light generated by the lighting
system may be variable and may be controlled by [a] controller.” Spec. 10,
11. 10-11 (emphasis added).
Details of the appealed subject matter are recited in representative
claims 16 and 26,4 which are reproduced below from the Claims Appendix
of the Appeal Brief (with disputed limitations italicized):
16. A lighting unit, comprising:
at least two light sources provided on a first [carrier] and
a second carrier,
each of the first and second carriers] supported on a first
and a second end by a respective first support and a second
support, the respective second support positioned at an opposite
end of the respective carrier from the first support, wherein
the first support supports both the first carrier and
the second carrier;
an actuator electrically connected to an electrical power
supply;
each of the at least two light sources generates a light
beam having an orientation and a light intensity dependent
upon an electrical power signal directed thereto;
the actuator is affixed to the first support and
mechanically acts upon one of the first and second carrier[s] to
change the orientation of the at least two light sources upon a
corresponding change in the electrical power signal by
modifying an angle of each of the first and second carrier[s]
relative to the first support, such that the orientation of each of
the light beams generated by the at least two light sources have
a predetermined relationship to the change in the light
intensity.
4 Appellants only argue certain limitations in independent claims 16 and 26
and rely upon these arguments for claims 23, 27, 28, and 29. App. Br. 6-11.
Thus, we limit our discussion to independent claims 16 and 26 pursuant to
37 C.F.R. § 41.37(c)(l)(iv) (2013). The remaining claims on appeal, namely
claims 17-22 and 24, stand or fall with independent claim 16. 37 C.F.R.
§ 41.37(c)(l)(iv).
4
Appeal 2015-006813
Application 13/388,358
26. An adjustable lighting unit with controllable orientation,
comprising:
a first [carrier] and a second carrier, each of the first and
second carriers] supporting a plurality of LEDs;
a central support commonly affixed to a first end of the
first and second carrier[s];
a power supply providing power to an actuator, the
actuator interposed between the power supply and the central
support;
wherein the first and second carriers] have an adjustable
output angle relative to the central support,
the actuator receiving an electrical power signal,
the actuator responsive to a change in the electrical
power signal to modify the adjustable output angle;
the actuator mechanically acting upon the first end of the
first and second carrier[s] through the first central support to
change the adjustable output angle orienting the output light
from the first and second carrier and adjusting the light
intensity of the corresponding light beams according to a pre­
determined relationship to the change in the light intensity.
App. Br., Claims Appendix i-iii.
The Examiner maintains, and Appellants seek review of, the
following grounds of rejection:
1. Claims 16-22, 24, and 26-29 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Galke (US 2008/0068838 Al, published
Mar. 20, 2008);
2. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Galke and Masui (US 2007/0236810 Al, published
Oct. 11, 2007). Final Act. 2-16; Ans. 2-5; App. Br. 5; Reply Brief filed
July 14, 2015 (“Reply Br.”) 1-3.
5
Appeal 2015-006813
Application 13/388,358
DISCUSSION
Upon consideration of the evidence relied upon by the Examiner and
Appellants in light of each of Appellants’ contentions,5 we affirm the
Examiner’s rejections of claims 16-24 and 26-29 under 35 U.S.C. § 103(a).
However, pursuant to 37 C.F.R. § 41.50(b), we designate our affirmance as
including new grounds of rejection because our reasons for affirming the
§ 103(a) rejections are based on additional facts and rationales not relied
upon by the Examiner. See In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir.
2011) (“Mere reliance on the same statutory basis and the same prior art
references, alone, is insufficient to avoid making a new ground of rejection
when the Board relies on new facts and rationales not previously raised to
the applicant by the examiner.”). Our reasons follow.
The Examiner finds, and Appellants do not dispute, that Galke, in
reference to Figures 10A and 10B, discloses a lighting unit comprising at
least two light sources, such as LEDs, on first and second carriers 74 that
have first and second ends supported by moveable slider 76 and an
unlabeled fixed slider (which are relied upon by the Examiner as the first
5 Any new arguments raised in the Reply Brief, which could have been
raised in the Appeal Brief, will not be considered. 37 C.F.R.
§ 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative)
(explaining that under the previous rules, which are similar to the current
rules, “the reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not”).
6
Appeal 2015-006813
Application 13/388,358
and second supports recited in claim 16), or a bar having moveable slider 76
and an unlabeled fixed slider (which is alternatively relied upon by the
Examiner as the central support recited in claim 26). Compare Final Act. 3
and 7, with App. Br. 6-11; see also Galke ^fl[ 67, 70 and Figs. 10A and 10B.
The Examiner also finds that:
Galke teaches a first support (labeled instance of 76, a
slider...) or [a central support (bar having slider 76),] which
mechanically acts upon one of the first and second carriers (acts
on at least one instance of 74) to change the orientation of the at
least two light sources (see Figs. 10A and 10B to see change in
orientation) by modifying an angle of each of the first and
second carrier parts (see modification of angle of 74, Figs. 10A
and 10B) relative to the first support (74 change angle relative
to [a] sliding [position] of... [moveable slider] 76), such that the
orientation of each of the light beams generated by the at least
two light sources have a predetermined relationship to the
change in the light intensity (as instances of 74 are moved away
from or toward a point in front of 74, the farther away a light
source is from a given point, the lower the intensity from said
source at said point, thus [showing] a predetermined
relationship which is notoriously well known in the
illumination art).
Final Act. 3^4 and 7.
The Examiner acknowledges that the lighting unit illustrated in
Galke’s Figure 10A or 10B does not show using an actuator to mechanically
act upon first and second carriers in the manner stated above through its first
support or central support. Final Act. 4 and 8.
To account for this missing actuator, the Examiner further finds that
Galke discloses employing actuator 18 electrically connected to an electrical
power supply to control the movement of a carrier containing light sources
in the context of the lighting unit illustrated in its Figures 1 and 1 A. Final
Act. 3^4 and 8. As is apparent from Figures 1 and 1A, actuator 18 pushes or
7
Appeal 2015-006813
Application 13/388,358
pulls to control the movement of a carrier containing light sources. As also
indicated supra, Galke’s slider 76 can be pushed or pulled (manually) to
control the movement of carriers containing light sources, such as LEDs, to
change the orientation of the light sources.
Thus, notwithstanding Appellants’ arguments to the contrary, we find
no reversible error in the Examiner’s determination that one of ordinary skill
in the art would have been led to affix an actuator to the first support (slider
76) or the central support (slider 17 which is part of the bar) to push and pull
slider 76 of the lighting unit illustrated in Galke’s Figures 10A and 10B to
mechanically, rather than manually, control the movement of at least one of
the first and second carriers to change the orientation of at least two light
sources in the manner stated above, with a reasonable expectation of
successfully obtaining the advantages associated with an automatic or
mechanical control means (actuator). See also In re Venner, 262 F.2d 91, 95
(CCPA 1958) (“it is well settled that it is not ‘invention’ to broadly provide
a mechanical or automatic means to replace manual activity which has
accomplished the same result” (citation omitted)).
Appellants contend that “Galke does not contemplate making both the
orientation and light intensity directly dependent on the same electrical
signal.” App. Br. 9. Appellants again contend that “Galke does not
contemplate adjusting both the intensity of light emitted by LEDs and an
adjustable output angle of claim 26 based on the same electrical power
signal.'” App. Br. 10. In support of these contentions, Appellants rely upon
8
Appeal 2015-006813
Application 13/388,358
page 3, lines 17-22, of the Specification to define the term “pre-determined
relationship” recited in claims 16 and 26.6 App. Br. 8.
In so contending, Appellants ignore the permissive or optional nature
of the language employed in the Specification to describe the term “pre­
determined relationship” recited in claims 16 and 26. App. Br. 8-10.
Appellants also ignore the additional description of the term “pre-determined
relationship” recited in claims 16 and 26 at page 3, lines 23-26 and page 14,
lines 14-18, of the Specification, which broadens the scope and the meaning
of the term “pre-determined relationship” recited in claims 16 and 26. Id.
Specifically, the Specification, at page 3, lines 17-26, states that
[t]he term “predetermined relationship” may relate to the
orientation of the light beam and the light intensity of the light
beam being functionally related to each other, in particular in a
one-to-one relationship. Each setting of light intensity, defined
by the electrical power signal, thus relates to a specific
orientation. A change of light intensity, by changing the
electrical power signal, thus results in a corresponding change
in orientation, effected by the -same- electrical power signal.
The pre-determined relationship may be a one-
6 Appellants appear to interpret the limitation “change the orientation of the
at least two light sources upon a corresponding change in the electrical
power signal.. .such that the orientation of each of the light beams generated
by the at least two light sources have a predetermined relationship to the
change in the light intensity” as recited in claim 16 as requiring “making
both the orientation and light intensity directly dependent on the same
electrical signal” and the limitation “change the adjustable output angle
orienting the output light from the first and second carrier and adjusting the
light intensity of the corresponding light beams according to a pre­
determined relationship to the change in the light intensity” as recited in
claim 26 as requiring “adjusting both the intensity of light emitted by LEDs
and an adjustable output angle of claim 26 based on the same electrical
power signal.” App. Br. 8-10 (emphasis original).
9
Appeal 2015-006813
Application 13/388,358
time determined relationship that cannot be changed. The
pre-determined relationship may correspond to a user-
selected pre-determined relationship, which is selected by a
user, e.g. using a remote control or another type of suitable user
interface, from a plurality of predetermined relationships
(which may also be referred to as presets).
Emphasis added.
The Specification also states (Spec. 14,11. 14-18) that:
The light intensity of the light beam B has a pre-determined
relationship with the orientation of the light beam: when the
orientation corresponds to a high degree of concentration, the
light beams have a large light intensity.. .whereas the light
intensity is moderate when the orientation corresponds to a low
degree of concentration^]
Emphasis added.
Moreover, claims 16 and 26, unlike the Specification, do not require a
controller or any other devices capable of providing different or variable
levels of the intensity of the light generated by a power supply (e.g., an
electrical power signal). Spec. 10,11. 10-11 (“intensity and illumination
profile of the light generated by the lighting system may be variable and
may be controlled by the controller”) (emphasis added)). Thus, consistent
with the written description of the Specification and the broad language of
claims 16 and 26, we interpret the highlighted (italicized) limitations in
question recited in claims 16 and 26 as including (1) light sources connected
to a power supply (an electrical power signal) to provide a given light
intensity and (2) an actuator connected to the same power supply (i.e., the
same electrical power signal from any of the sockets in a home or an office
subjected to the same power supply or from any of the sockets on a power
surge protecting device (the same power supply) connected to any socket in
a home or an office) to provide a desired orientation of the light beams to
10
Appeal 2015-006813
Application 13/388,358
alter or adjust the light intensity of the light beams. In re Herz, 537 F.2d
549, 551 (CCPA 1976) (“It is axiomatic that claims are given their broadest
reasonable construction consistent with the specification. . . . [A]n applicant
who has not clearly limited his claims is in a weak position to assert a
narrow construction.”). Having interpreted the limitations in question in this
manner consistent with the broad language of the claims and the broad
description of the Specification, we find that the lighting unit suggested by
Galke is not excluded by the claims on appeal.
Accordingly, we concur with the Examiner that that a preponderance
of the evidence weighs heavily in favor of the obviousness of the subject
matter recited in claims 16-24 and 26-29 within the meaning of 35 U.S.C.
§ 103(a).
ORDER
Upon consideration of the record, and for the reasons given, we
AFFIRM the Examiner’s decision rejecting claims 16-24 and 26-29 under
35 U.S.C. § 103(a). However, pursuant to 37 C.F.R. § 41.50(b), we
designate our AFFIRMANCE as new grounds of rejection because our
reasons for affirming the § 103(a) rejections are based on additional facts
and rationales not relied upon by the Examiner.
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
11
Appeal 2015-006813
Application 13/388,358
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen Prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceedings will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceedings be
reheard under § 41.52 by the Board upon the same record. . . .
AFFIRMED: 37 C.F.R, $ 41.50(b)
12