Joovv, Inc.

Patent Trials and Appeals Board

Jul 1, 2020

15616028 - (D) (P.T.A.B. Jul. 1, 2020)

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.
15/616,028 06/07/2017 Scott Nelson JOOVV.002A 4846
124179 7590 07/01/2020
Schwie Law, LLC
445 Minnesota St
Suite 1500
St. Paul, MN 55101
EXAMINER
MOSS, JAMES R
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
talia@schwielaw.com
wes@schwielaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT NELSON and JUSTIN STRAHAN
____________

Appeal 2020-000073
Application 15/616,0281
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–16 and 21–24. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Joovv, Inc.
(Appeal Br. 3.)
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CLAIMED SUBJECT MATTER
Appellant states that the “invention relates to a light source for use in
therapy, and more particularly for treating a large external surface of a
patient with an easy to use hanging apparatus so the light source is
adjustable.” (Spec. ¶ 1.)
Claim 1 is the sole independent claim on appeal.2 It recites:
1. A light therapy system, comprising:
a hollow housing having a first surface, a second surface
parallel to the first surface and facing opposite the first surface,
a first side extending perpendicular between the first surface and
the second surface, a second side parallel to the first side and
facing opposite the first side, and a first end extending
perpendicular between the first surface, the second surface, the
first side and the second side, wherein the first surface comprises
a plurality of openings;
a plurality of light emitting diodes (LEDs) coupled to the
hollow housing and arranged in predetermined arrays within the
hollow housing so that the plurality of LEDs are substantially
aligned with the plurality of openings, wherein no LEDs of the
plurality of LEDs emit light having a wavelength of less than at
least 600 nm;
a plurality of attachment posts coupled to the first end; and
a positioning system comprising:
a plurality of attachment members detachably
coupled to the plurality of attachment posts,
a connection member coupled to the plurality of
attachment members, and
a winching system integrated with the connection
member, wherein the winching system is arranged and

2 We note that claim 1 as reproduced in the Appeal Brief contains a
typographical error not appearing in the claim as amended on
December 5, 2018, and as entered by the Examiner in the Final Action
mailed March 12, 2019. We reproduce the claim as entered by the
Examiner.
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configured to adjust a vertical position of the hollow
housing.

REJECTIONS
Claim 13 is rejected under 35 U.S.C. § 112(b) as indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventors regard as the invention.
Claims 1, 3, 4, 6–13, 15, 16, and 21–243 are rejected under 35 U.S.C.
§ 103 as unpatentable in view of Kind LED Grow Lights, K5 Series
Instructions, https://www.kindledgrowlights.com/pages/k5-setup (last
visited June 18, 2020) (hereinafter “K5 Instructions”), Butler
(US 2004/0008523 A1, pub. Jan. 15, 2004), Creative Fish Studio, Ekostore 6
Watt Multi-color 36 LED Aquarium Light for 5 Gallon Tank, posted
May 13, 2016, https://www.youtube.com/watch?v=s4FcYd81Pbw (last
visited June 18, 2020) (hereinafter “Fish”).
Claims 2 and 5 are rejected under 35 U.S.C. § 103 as unpatentable in
view of K5 Instructions, Butler, Fish, and Huang (US 2015/0307332 A1,
pub. Oct. 29, 2015).4

3 The Examiner states that “[c]laims 1, 3-4, 6-13 and 15-18 is/are rejected
under 35 U.S.C. 103.” (Final Action 7.) However, claims 17 and 18 had
been cancelled. The discussion following the statement refers to claims 1, 3,
4, 6–13, 15, 16, and 21–24. (Id. at 7–19.) We treat the reference to
cancelled claims 17 and 18, and the omission of reference to claims 21–24
as harmless error.
4 The Examiner states that “[c]laim(s) 2 and 5 is/are rejected under 35
U.S.C. 103 as being unpatentable over the modified Instructions in view of
Huang.” (Final Action 19.) The Examiner defines the term “Instructions”
as referring to K5 Instructions. The Examiner does not define the term
“modified Instructions.” However, in view of the discussion in the Final
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Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable in view of
K5 Instructions, Butler, Fish, and Mouser Electronics, ENCLOSURE AND
RACKS, https://www.mouser.com/catalog/catalogusd/648/dload/
pdf/ENCLOSECTION.pdf (last visited June 18, 2020) (hereinafter
“Mouser”).5

ANALYSIS
The § 112(b) rejection
Dependent claim 13 is rejected under § 112(b) because “the second
end appears to be claimed as the same thing as the second surface.
Therefore the claim does not clearly define the metes and bounds of what is
being claimed and is indefinite.” (Final Action 6.) Appellant does not argue
against this rejection in the Appeal Brief. We will summarily affirm this
rejection.

The § 103 rejection of claims 1, 3, 4, 6–13, and 16
Obviousness is a legal conclusion involving a determination of
underlying facts.

Action, we understand this term to refer to K5 Instructions modified in view
of Butler and Fish. (See Final Action 6–19.)
5 The Examiner states that “[c]laim 14 is/are rejected under 35 U.S.C. 103 as
being unpatentable over Instructions in view of Mouser.” (Final Action 20.)
In view of claim 14 depending from claim 1, and claim 1 being rejected over
the modified Instructions, we understand claim 14 to be rejected over the
modified Instructions in view of Mouser, i.e., rejected over K5 Instructions,
Butler, Fish, and Mouser. (See also id. at 21 (“combining it with the
disclosure from the modified Instructions.”) We treat the omission of
“modified” on page 20 of the Final Action as harmless error.
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Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that K5 Instructions “discloses a light therapy lighting system”
comprising
a hollow housing having a first surface . . . , a second surface
parallel to the first surface and facing opposite the first surface,
a first side extending perpendicular between the first surface and
the second surface, a second side parallel to the first side and
facing opposite the first side.

(Final Action 7.) The Examiner further finds that K5 Instructions discloses
“a first end extending perpendicular between the first surface, the second
surface, the first side and the second side,” and “wherein the first surface
comprises a plurality of openings.” (Id. at 7–8.) Additionally, the Examiner
finds that K5 Instructions discloses “a plurality of light emitting diodes
(LEDs) coupled to the hollow housing and arranged in predetermined arrays
within the hollow housing so that the plurality of LEDs are substantially
aligned with the plurality of openings,” and “a plurality of attachment
posts.” (Id. at 8.) K5 Instructions refers to the product as a “complete
spectrum grow light” including “a high powered yet efficient mix of 3 and 5
Watt Light Emitting Diodes.” (K5 Instructions 2.)
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With regard to the location of the attachment posts disclosed in K5
Instructions, the Examiner provides multiple reasons to modify the K5
Instructions. (Final Action 8.) Under one rationale, the Examiner finds that
K5 Instructions “does not explicitly disclose a plurality of attachment posts
coupled to the first end.” (Id.) Rather, the posts are shown coupled to the
second surface. (See K5 Instructions 2.) The Examiner then determines that
“[t]he posts are known as discussed above and there are only 6 sides on the
rectangular surface of the [K5] Instructions device on which to mount,” and
that it would have been obvious to try “choosing from a finite number of
identified (the 6 sides), predictable solutions (effective hanging), with a
reasonable expectation of success.” (Final Action 8–9.) The Examiner
determines that a motivation for making the modification is simply the
desire to position the device so as to apply light to a target area.
(Answer 23.)
Appellant argues that
any alteration to the device to achieve the vertical hanging
claimed invention would be fundamentally contradictory to what
is taught by [K5] Instructions. Moreover, there is no motivation
or reason for a person having ordinary skill in the art to alter a
grow light such that the light would no longer shine down on the
plant canopy.

(Appeal Br. 5–6 (footnote omitted).)
In KSR, the Supreme Court stated:
Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the
manner claimed.
. . . .
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
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solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.

KSR Int’l Co., 550 U.S. at 420-21. Additionally, “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. In short, “[i]f a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” Id. at 417. Here, the design need was simply to
orient the housing of the device of K5 Instructions so as to apply light to a
desired target area.
We agree with the Examiner that there are “a finite number of
identified [locations] (the 6 sides), predictable solutions (effective hanging),
with a reasonable expectation of success.” (Final Action 9.) Appellant does
not persuasively argue why the design need itself did not provide sufficient
motivation to make the variation of modifying the position of the post
anchors, which provided the predictable result of hanging the housing so as
to apply light to the desired target area. Nor does Appellant persuasively
argue why the claimed combination of known elements according to known
methods that yielded predictable results was not an obvious variation of the
device disclosed in K5 Instructions, i.e., that the variation of the device was
“the product not of innovation but of ordinary skill and common sense.” See
KSR Int’l Co., 550 U.S. at 421.
We are not persuaded that the Examiner erred in rejecting claim 1
under § 103. Claims 3, 4, 6–13, and 16 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

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The § 103 rejection of claim 15
Claim 15 recites: “The light therapy system of claim 14, wherein the
first end plate has a plurality of slots positioned in predetermined locations
and at least two openings arranged and configured to receive the plurality of
attachment members.” (Emphasis added.)
The Examiner finds that K5 Instructions discloses “at least two
openings arranged and configured to receive the plurality of attachment
members ([K5] Instructions page 2 the figures under K5 Over view [sic];
‘A’ brass hanging anchors are received).” (Final Action 17.) The Examiner
also finds that “[t]he skill possessed by an ordinary mechanic acquainted
with the business would know of welding, rivets, nut-bolt, press fit and
adhesives.” (Answer 23.) In other words, the Examiner determines that it
would have been obvious to one of ordinary skill in the art, in view of K5
Instructions, to provide for “using a bolt and nut” as an anchor, and thus for
having openings to receive the bolts. (See id. at 23–24.)
The Examiner’s determination is directed to openings to receive
attachment posts rather than attachment members, as recited in claim 15.
Thus, the Examiner does not present a prima facie case with respect to K5
Instructions because the Examiner does not adequately explain why it would
have been obvious to modify K5 Instructions to include openings to receive
the plurality of attachment members.
We will reverse the Examiner’s rejection of claim 15 under §103.

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The § 103 rejections of claims 22–24
Claim 22 recites: “The light therapy system of claim 21, wherein the
positioning system is arranged and configured to position the plurality of
LEDs to face parallel to a ground surface.”
Claim 23 recites: “The light therapy system of claim 21, wherein the
positioning system is arranged and configured to position the plurality of
LEDs to face away from a ground surface.”
Claim 24 recites: “The light therapy system of claim 21, wherein the
positioning system is arranged and configured to position the first end to
face away from a ground surface.”
Claims 22–24 do not specify a particular arrangement and
configuration of the positioning system. The claims merely specify a
resulting position of the plurality of LEDs or of the first end of the housing.
The Examiner finds that the device disclosed in K5 Instructions, modified as
discussed above, “is functionally capable of performing th[e] function” of
being positioned as recited in claims 22–24. (Final Action 18–19.)
Specifically, the Examiner finds that attaching K5 Instructions’ carabineers,
i.e., attachment members, in particular configurations results in positioning
the device, and thus positioning the plurality of LEDs, in accordance with
claims 22–24. (Id.)
Appellant argues:
Detaching the carabineers, as well as reattaching them in
different locations, fundamentally changes the operation of the
grow light device and, as discussed in Group 1, directly
contradicts what is taught by [K5] Instructions. A person having
ordinary skill in the art would not reasonably contemplate
detaching two carabineers so that the device would hang in a
vertical manner from the two remaining attached carabineers,
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when the purpose of the grow light is to shine light down upon a
plant canopy. . . . There is no motivation or reason for a person
having ordinary skill in the art to alter a grow light such that the
light would no longer shine down on the plant canopy.

(Appeal Br. 7.)
In short, Appellant argues that because the purpose of the grow light
of K5 Instructions is to shine down, one would not be motivated to reorient
the device. But as discussed above, “[u]nder the correct analysis, any need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int’l Co., 550 U.S. at 420. Appellant does not
persuasively argue why the need to position the device to face a particular
direction did not provide a reason for combining the elements to produce the
claimed result.
We are not persuaded that the Examiner erred in rejecting claims 22–
24 under § 103.

The § 103 rejection of claims 2 and 5
Claim 2 recites: “The light therapy system of claim 1, wherein the
winching system is electronically activated.”
Claim 5 recites: “The light therapy system of claim 4, wherein the
control panel is arranged and configured to activate the plurality of LEDs,
the plurality of fans, and the winching system.”
The Examiner determines that “[c]ombining an electric winch merely
makes the process of vertical movement not manual by applying a well-
known device in a well-known way which is also safer for the user.”
(Answer 25.)
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Appellant argues that
a person having ordinary skill in the art would not reasonably
combine a plant grow light, which directs multiple wavelengths
[of] light, including UV light, in a downward direction towards
the ground, with a winch powered by a motor vehicle to achieve
the claimed invention: a vertical hanging light therapy system
with an electronic winch operable to adjust the height of the
system, and LEDs emitting light of a wavelength of at least
600nm.

(Appeal Br. 8.)
Once again, “[u]nder the correct analysis, any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
KSR Int’l Co., 550 U.S. at 420. Here, the problem facing the inventors was
operation of the integrated winching system to position the lighting device.
To the extent Appellant’s argument is that Huang is not analogous art,
we disagree.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still 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). The power winch
disclosed in Huang is reasonably pertinent to the particular problem with
which the inventors were involved, i.e., operation of the winching system.
Appellant does not persuasively argue why the need to operate the
winching system does not provide a sufficient reason for combining the
elements to produce the claimed result, i.e., an electronically activated
winching system.
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We are not persuaded that the Examiner erred in rejecting claims 2
and 5 under § 103.

The § 103 rejection of claim 14
Claim 14 recites: “The light therapy system of claim 1, wherein the
hollow housing is comprised of a hollow extruded core having a first open
end and a second open end, a first end plate attached to the first open end,
and a second end plate attached to the second open end.”
The Examiner finds that “Mouser teaches wherein the housing is
comprised of a hollow extruded core having a first open end and a second
open end, a first end plate attached to the first open end, and a second end
plate attached to the second open end.” (Final Action 21 (citing
Mouser 2114).) The Examiner also finds that the device of K5 “Instructions
reference has a metal box.” (Answer 26.) The Examiner determines that it
would have been obvious to further modify the device of K5 Instructions
to include an extruded metal housing with end panels because as
shown in the non-patent literature numerous housing forms are
known and a uniform body with end panels is known in the art
and combining it with the disclosure from the modified [K5]
Instructions would be obvious to try and would render expected
results.

(Final Action 21.)
Appellant
argues that a person having ordinary skill in the art would not
reasonably combine a plant grow light, which directs multiple
wavelengths of light, including UV light, in a downward
direction towards the ground, with a metal box enclosure created
by an electronics company to achieve the claimed invention: a
vertical hanging light therapy system with a hollow housing, and
LEDs emitting light of a wavelength of at least 600 nm.
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(Appeal Br. 8.)
As discussed above with regard to claims 2 and 5, “[u]nder the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” KSR Int’l Co., 550 U.S. at 420. Here
the problem facing the inventors was housing the lighting device.
To the extent Appellant’s argument is that Mouser is not analogous
art, we disagree. The housing disclosed in Mouser is reasonably pertinent to
the particular problem with which the inventors were involved, i.e., to house
components of the lighting device. See In re Clay, 966 F.2d at 658–59.
Appellant does not persuasively argue why the need to provide a housing for
components of the lighting device does not provide a sufficient reason for
combining the elements to produce the claimed result, i.e., to include a
housing comprised of a hollow extruded core as disclosed in Mouser. Nor
does Appellant argue Examiner error in determining that it would have been
obvious to try the extruded metal housing of Mouser.
We are not persuaded that the Examiner erred in rejecting claim 14
under § 103.

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CONCLUSION
The Examiner’s rejection of claim 13 under 35 U.S.C. § 112(b) is
summarily affirmed.
The Examiner’s rejections of claims 1–14, 16 and 21–24 under
35 U.S.C. § 103 are affirmed.
The Examiner’s rejection of claim 15 under 35 U.S.C. § 103 is
reversed.
Specifically:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13 112(b) Indefiniteness 13
1, 3, 4, 6–13,
15, 16, 21–24
103 K5 Instructions,
Butler, Fish
1, 3, 4, 6–
13, 16, 21–
24
15
2, 5 103 K5 Instructions,
Butler, Fish, Huang
2, 5
14 103 K5 Instructions,
Butler, Fish,
Mouser
14
Overall Outcome 1–14, 16,
21–24
15

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