Ex Parte Zeigler et al

Patent Trial and Appeal BoardJul 20, 2015

11980280 (P.T.A.B. Jul. 20, 2015)

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. 11/980,280 10/30/2007 Warren L. Zeigler MSH-419 9592 8131 7590 07/20/2015 MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 EXAMINER TOMPKINS, ALISSA JILL ART UNIT PAPER NUMBER 3749 MAIL DATE DELIVERY MODE 07/20/2015 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 WARREN L. ZEIGLER, ROBERT M. BERLIN, and DAVID A. SWEITZER ____________ Appeal 2013-007000 Application 11/980,280 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Warren L. Zeigler et al. (Appellants) seek review, under 35 U.S.C. § 134(a), of the Examiner’s decision to reject claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The subject matter “deals with an improved fume hood that has an external sensor that automatically controls at least one lighting fixture associated with the fume hood” such that the light automatically turns on or off based on the presence or absence, respectively, of a technician. Spec. 1, Appeal 2013-007000 Application 11/980,280 2 ll. 12–18. Independent claim 1, shown below, is illustrative of the claims on appeal: 1. An improved fume hood, the improvement comprising in combination: a fume hood having a front fascia, a coverable opening, and a movable covering for the opening[;] an exterior active presence sensor mounted on or in the fume hood; a lighting control operator box housing a timer said timer having adjustability ranging from seconds to hours; an electrical cable, electrically connected to the active presence sensor and to the lighting control operator box; the lighting control operator box having an electrical cable electrically connected to a fume hood interior lighting fixture. REJECTION ON APPEAL Claims 1–10 are rejected under 35 U.S.C. § 103(a) as unpatentable over DeCastro (US 2006/0079164 A1 (pub. Apr. 13, 2006)), Hofstra (US 5,181,883 (iss. Jan. 26, 1993)), and Chan (US 7,339,471 B1 (iss. Mar. 4, 2008)). ANALYSIS Appellants argue the patentability of independent claim 1 and do not separately argue the patentability of the remaining claims. Appeal Br. 5–6. Accordingly, we will address only claim 1, with claims 2–10 standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(1)(iv) (2012). Appeal 2013-007000 Application 11/980,280 3 First, Appellants “note . . . that both the control and the light of Hofstra are contained within the smoking booth whereas the sensor for the light of the instant invention is not contained within the fume hood.” Appeal Br. 4. Thus, Appellants state, “Hofstra teaches only the sensing of presence in the hood, not presence in front of the hood.” Id. In response, the Examiner states “that claim 1 recites ‘an exterior active presence sensor mounted on or in the fume hood . . .’, rather than [A]ppellants[’] assertion that it has to be simply ‘on’ the fume hood.” Ans. 7. We are not apprised of error based on Appellants’ argument for the reason set forth by the Examiner. Appellants’ argument fails because it is not commensurate in scope with the claim language. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments “not based on limitations appearing in the claims”). In addition, nonobviousness cannot be established by attacking references individually when the rejection is based on a combination of prior art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Appellants argue that Hofstra does not teach the limitation at issue even though the Examiner relies on DeCastro to satisfy that limitation. See Ans. 5. Second, Appellants allege that, in rejecting claim 1, the Examiner engaged in improper hindsight reconstruction because, the Examiner “turned to Chan to teach controlled lighting, but . . . had the benefit of the teaching of the instant invention to do so.” Appeal Br. 4. Appellants contend that “[n]owhere in . . . DeCastro and/or Hofstra is there any direction or suggestion to go to Chan . . . .” Id.; see also id. at 5 (“One skilled in the art would not have enough information from DeCastro and/or Hofstra to direct them to Chan.”). In response, the Examiner states that as long as a rejection Appeal 2013-007000 Application 11/980,280 4 “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper.” Ans. 8 (citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)). The Examiner also restates the reasoning to apply Chan. Cf. Ans. 8 with id. at 6 and Final Act. 4 (mailed Oct. 5, 2011). We are not apprised of error based on Appellants’ second set of arguments for the reasons set forth by the Examiner, with some additional comments. Rejections based on obviousness must be supported by “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Although Appellants assert that the Examiner engaged in hindsight reconstruction, Appellants do not address the rationale provided by the Examiner. We determine that the Examiner’s articulated reasoning (Ans. 5– 6) supports a prima facie case of obviousness of claim 1. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). By not addressing the Examiner’s reasoning, Appellants have not shown error in the conclusion as to obviousness. See id. (discussing how, if a prima facie case is presented, “the burden of coming forward with evidence or argument shifts to the applicant”). Further, although a conclusion of obviousness must be supported by findings and analysis establishing a reason to combine the known elements in the manner required in the claim at issue, the analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a Appeal 2013-007000 Application 11/980,280 5 person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Thus, contrary to Appellants’ argument, DeCastro and/or Hofstra need not explicitly direct one of ordinary skill in the art to apply Chan. For the reasons set forth above, we sustain the decision to reject claim 1, and claims 2–10 falling with claim 1, as unpatentable over the combined teachings relied upon by the Examiner.1 CONCLUSION For the reasons set forth above, we AFFIRM the decision to reject claims 1–10 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rvb 1 With the Appeal Brief, Appellants filed a “Response Under Rule 37 C.F.R. 1.116” addressing various objections set forth by the Examiner. See Appeal Br. 6 (discussing the Response); see also Final Act. 2–3 (setting forth certain objections). We will not address Appellants’ arguments, however, because review of these objections is accomplished via petition to the Director under 37 C.F.R. § 1.181, not by appeal to the Board. See Frye, 94 USPQ2d at 1077–78.