Ex Parte Wyner et al

Patent Trial and Appeal Board

Apr 15, 2013

11481145 (P.T.A.B. Apr. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/481,145 07/05/2006 Elliot F. Wyner 2005P19125US01 4205
24252 7590 04/15/2013
OSRAM SYLVANIA INC
100 ENDICOTT STREET
DANVERS, MA 01923
EXAMINER
HOLLWEG, THOMAS A
ART UNIT PAPER NUMBER
2879
MAIL DATE DELIVERY MODE
04/15/2013 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 ELLIOT F. WYNER, KAREN A. PROVOST, EBON L.
MCCULLOUGH, and RICHARD A. KINGSTON
____________

Appeal 2010-012199
Application 11/481,145
Technology Center 2800
____________

Before JOHNNY A. KUMAR, BRYAN F. MOORE, and BARBARA A.
PARVIS, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-9, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2010-012199
Application 11/481,145

2
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a holder for an arc tube-shroud
assembly (Spec. ¶ [0004]). Independent claim 1 is illustrative of the
invention and reads as follows:
1. A holder for an arc tube-shroud assembly comprising:
a planar disc having a plurality of shroud-holding arms
peripherally spaced about the disc and extending in a first direction
transverse to the plane of said planar disc;
at least two arc tube holding arms formed from the disc and
extending in a second direction opposite to said first direction for
positioning an arc tube laterally within a shroud; and
at least one arc tube locking tab extending in the opposite
direction for positioning the arc tube axially within the shroud.

The Rejection
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williamson (US 2004/0178715 A1, Sep. 16, 2004) in
view of Van Gennip (US 5,594,295, Jan. 14, 1997). Ans 3.

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting exemplary
claim 1 under 35 U.S.C. § 103(a) because: (1) Williamson (Br. 12-
13) fails to suggest “a planar disc,” as recited in independent claim
1, and (2) because Van Gennip fails to suggest “at least two arc
tube holding arms,” as recited in independent claim 1. (Br. 13-
15).
2. Appellants contend that the Examiner erred in rejecting claim 1
because there is a lack of motivation to combine the cited
Appeal 2010-012199
Application 11/481,145

3
references to practice Applicants’ claimed invention (Br. 13) and
because combining the references would be “unworkable.” (Br.
16)

Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious because
the combination of Williamson and Van Gennip fails to teach or suggest the
recited “planar disc” and “at least two arc tube holding arms”?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. 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 (see Ans. 9-12)
in response to Appellants’ Appeal Brief. However, as outlined infra, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis.
As to contention 1, we agree with the Examiner’s analysis (Ans. 9-10)
in response to Appellants’ arguments. The Examiner correctly points out
(Ans. 9) that a “skilled artisan would clearly understand that the shroud
holder shown in figures 3-6 of Williamson is both planar and disc shaped.”
Ans. 3, 9 (citing Williamson, ¶¶ 0019-0022). The Examiner also correctly
points out that Van Gennip explicitly discloses “at least two type of arc tube
holding arms (22, 22', 22").” Ans. 4, 10 (citing Van Gennip, Figures 1-4, col
3, ll. 46-65).
Appeal 2010-012199
Application 11/481,145

4
As to contention 2, we agree with the Examiner’s proposed rationale
for combining the references based on the improvements one of ordinary
skill in the art would have recognized would be obtained from using Van
Gennip's arc tube holding arms to ensure a more secure coupling with the
arc tube in Williamson (see Ans. 10). We also note that Appellants’
challenge to the combined references as being “unworkable” is not
convincing of error in the Examiner’s position, because all of the features of
the secondary reference need not be bodily incorporated into the primary
reference, but consideration should be given to what the combined
teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary
skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Furthermore, the artisan is not compelled to blindly follow the teaching of
one prior art reference over the other without the exercise of independent
judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984)). The Examiner also explains (Ans. 4) that a person having
ordinary skill in the art would find it obvious to obtain Williamson’s holder,
by replacing the single type of arc tube holding arms with the different types
of arc tube holding arms, taught by Van Gennip, where at least two arc tube
holding arms are formed from the disc and extended in a second direction
opposite to said first direction for positioning an arc tube laterally within a
shroud; and at least one arc tube locking tab extending in the second
direction for positioning the arc tube axially within the shroud because this
arrangement would position thearc tube in the holder more securely because
of the variety of arc tube holding arms. Ans. 4. We agree with the
Examiner’s analysis.
Appeal 2010-012199
Application 11/481,145

5
Regarding claims 3, 4, 5, 8, and 9, while Appellants raised additional
arguments for patentability of the cited claims (Br. 17-22), we find that the
Examiner has rebutted in the Answer each and every one of those arguments
by a preponderance of the evidence. Ans. 10-12. Therefore, we adopt the
Examiner’s findings and underlying reasoning, which are incorporated
herein by reference. Consequently, we have found no error in the
Examiner’s rejections of claims 3, 4, 5, 8, and 9. Separate patentability is not
argued for the remaining claims.

CONCLUSION
On the record before us, we conclude that, because the references
teach or suggest all the claim limitations, the Examiner has not erred in
rejecting claims 1-9 as being obvious over Williamson and Van Gennip.

DECISION
The decision of the Examiner rejecting claims 1-9 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)(iv).

AFFIRMED

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