MAGNA MIRRORS OF AMERICA, INC.

Patent Trials and Appeals BoardAug 4, 2021

2020004938 (P.T.A.B. Aug. 4, 2021)

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. 14/615,821 02/06/2015 Justin E. Sobecki DON09- P2445/425380 5384 153508 7590 08/04/2021 HONIGMAN LLP/MAGNA 650 TRADE CENTRE WAY SUITE 200 KALAMAZOO, MI 49002-0402 EXAMINER BROOKS, JERRY L. ART UNIT PAPER NUMBER 2882 NOTIFICATION DATE DELIVERY MODE 08/04/2021 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): asytsma@honigman.com patent@honigman.com tflory@honigman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUSTIN E. SOBECKI and JAKE MOHAN Appeal 2020-004938 Application 14/615,821 Technology Center 2800 Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–6, 8–12, and 14–22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In this Decision, we refer to the Specification filed February 6, 2015 (“Spec.”); the Final Office Action dated February 7, 2019 (“Final Act.”); the Appeal Brief filed July 8, 2019 (“Appeal Br.”); and the Examiner’s Answer dated April 17, 2020 (“Ans.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Magna Mirrors of America, Inc. Appeal Br. 2. Appeal 2020-004938 Application 14/615,821 2 CLAIMED SUBJECT MATTER The claims are directed to illumination modules for vehicles. Spec. ¶ 2. Independent claim 1, reproduced below with emphasis to highlight a key disputed limitation, is illustrative of the claimed subject matter: 1. An illumination module for a vehicle, said illumination module configured for mounting at a side of a vehicle, said illumination module comprising: an illumination source and a three dimensional single formed lens optic; wherein said illumination source comprises a single light emitting diode; wherein said single light emitting diode is mounted at a circuit board; wherein said circuit board is accommodated at an upper end of a housing of said illumination module, and wherein a plurality of electrical terminals extend from said circuit board; wherein an outer cover is disposed at a lower end of said housing; wherein said three dimensional single formed lens optic is disposed at said lower end of said housing; wherein said circuit board is angled relative to said outer cover; wherein, when said single light emitting diode is operated to emit light and when said illumination module is mounted at a side of a vehicle equipped with said illumination module, emitted light passes through said three dimensional single formed lens optic; wherein said three dimensional single formed lens optic is configured such that light emitted by said single light emitting diode that passes through said three dimensional single Appeal 2020-004938 Application 14/615,821 3 formed lens optic provides a ground illumination pattern projected, without masking, over an illuminated ground region at or near the side of the equipped vehicle at which said illumination module is mounted; wherein the ground illumination pattern comprises (a) general illumination of the illuminated ground region and (b) within the illuminated ground region, at least one of (i) an icon projected onto a portion of the illuminated ground region at or near the side of the equipped vehicle, wherein the projected icon has a light intensity greater than illumination of the illuminated ground region adjacent to the projected icon, (ii) a logo projected onto a portion of the illuminated ground region at or near the side of the equipped vehicle, wherein the projected logo has a light intensity greater than illumination of the illuminated ground region adjacent to the projected logo, and (iii) indicia projected onto a portion of the illuminated ground region at or near the side of the equipped vehicle, wherein the projected indicia has a light intensity greater than illumination of the illuminated ground region adjacent to the projected indicia; and wherein, with said illumination module mounted at the side of the equipped vehicle and when said single light emitting diode is operated to emit light, the general illumination of the illuminated ground region comprises illumination of at least 2 lux over a 600 mm by 1200 mm rectangular-shaped illuminated ground region. Appeal Br. 30–31 (Claims App.). Independent claims 11 and 19 include a similar limitation regarding a “single light emitting diode at a circuit board.” Appeal 2020-004938 Application 14/615,821 4 REJECTIONS I. Claims 1, 2, 4, 8, 9, 11, 12, 14, 15, 17, and 22 are rejected under 35 U.S.C. § 103 as obvious over Leis,3 Pastrick,4 and Fürst;5 II. Claims 3, 19, 20, and 21 are rejected under 35 U.S.C. § 103 as obvious over Leis, Pastrick, Fürst, and Boals;6 III. Claims 10 and 18 are rejected under 35 U.S.C. § 103 over Leis, Pastrick, Fürst, and Castillo;7 IV. Claims 5, 6, and 16 are rejected under 35 U.S.C. § 103 over Leis, Pastrick, Fürst, and Lo.8 DISCUSSION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). The dispositive issue before us on appeal is whether the Examiner reversibly erred in finding that Pastrick teaches a “single light emitting diode 3 Griesinger et al., WO 2005/035308 A1, published April 21, 2005. The Examiner and Appellant refer to this reference as Hans-Georg Leis based on the second named inventor, Manfred Griesinger. To avoid confusion, we do the same in this Decision. 4 Pastrick, US 2012/0320618 A1, published Dec. 20, 2012. 5 Fürst et al., US 6,152,590, issued Nov. 28, 2000. 6 Boals, US 2014/0185019 A1, published July 3, 2014. 7 Castillo, US 2013/0223062 A1, published Aug. 29, 2013. 8 Lo et al., US 2010/0149801 A1, published June 17, 2010. Appeal 2020-004938 Application 14/615,821 5 is mounted at a circuit board” (Final Act. 6), thereby supporting the conclusion that Appellant’s claimed invention would have been obvious to one of ordinary skill in the art. After considering Appellant’s arguments and the evidence of record, we answer this question in the affirmative and, therefore, reverse the Examiner’s obviousness rejections based on the combination of Leis, Pastrick, and Fürst, alone or further in view of other references. We add the following for emphasis. During prosecution, an applicant’s claims are given their broadest reasonable scope consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be read in light of the specification, as it would have been interpreted by one of ordinary skill in the art at the time of the invention. Id. Dictionary definitions may be used in tandem with the specification to enlighten the broadest reasonable interpretation of a claim term. In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1298–99 (Fed. Cir. 2007). The Examiner’s interpretation of “a circuit board” as “any conductive support for an electronic component” is unreasonably broad. Ans. 4. Appellant’s Specification does not define what is meant by “circuit board,” but Appellant contends that based on its ordinary meaning, as evidenced by Merriam Webster, https://www.merriam- webster.com/dictionary/board (last visited July 28, 2021), the broadest reasonable interpretation of the term “circuit board,” consistent with Appellant’s Specification, is “a sheet of insulating material carrying circuit elements and terminals so that it can be inserted in an electronic apparatus (such as a computer).” Appeal 2020-004938 Application 14/615,821 6 We agree with Appellant that the broadest reasonable interpretation of the term “circuit board,” consistent with Appellant’s Specification, is a board with attached electrical circuits. See Spec. ¶ 31 (“An electrical lead . . . is electronically connected to circuitry at the circuit element or board . . . .”). The Examiner’s unreasonably broad interpretation of “circuit board,” resulted in reversible error. The Examiner finds that Pastrick’s Figure 25 teaches “a base supporting 126 in fig.25, the base supporting 126 is a conductive support which connects the light source 126 to the power supply.” Ans. 4. Therefore, the Examiner finds that the base support in Pastrick is a “circuit board” as in claim 1. Id. The Examiner, however, has not identified sufficient factual evidence that the base supporting 126 in Pastrick includes the requisite circuitry to establish that the base supporting 126 is a circuit board as in claim 1. Because each of the rejections relies on the Examiner’s erroneous finding that Pastrick teaches a single light emitting diode mounted at a circuit board,” we do not sustain the obviousness rejections on appeal. CONCLUSION The Examiner’s decision to reject claims 1–6, 8–12, and 14–22 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 8, 9, 11, 12, 14, 15, 17, 22 103 Leis, Pastrick, Fürst 1, 2, 4, 8, 9, 11, 12, 14, 15, 17, 22 Appeal 2020-004938 Application 14/615,821 7 3, 19, 20, 21 103 Leis, Pastrick, Fürst, Boals 3, 19, 20, 21 10, 18 103 Leis, Pastrick, Fürst, Castillo 10, 18 5, 6, 16 103 Leis, Pastrick, Fürst, Lo 5, 6, 16 Overall Outcome 1–6, 8–12, 14–22 REVERSED