PHILIPS LIGHTING HOLDING B.V.

Patent Trials and Appeals Board

Jul 15, 2020

15028153 - (D) (P.T.A.B. Jul. 15, 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.
15/028,153 04/08/2016 PHILIP STEVEN NEWTON 2013P01432WOUS 3847
138325 7590 07/15/2020
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
YANG, AMY X
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
07/15/2020 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):
Gigi.Miller@signify.com
jo.cangelosi@signify.com
kim.larocca@signify.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP STEVEN NEWTON,
RAMON ANTOINE WIRO CLOUT, and
BARTEL MARINUS VAN DE SLUIS

Appeal 2019-005222
Application 15/028,153
Technology Center 2800
____________

Before MICHAEL P. COLAIANNI, DONNA M. PRAISS, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 5–7, 9, 11, 12, 15, 19, 20, 22–24,
29, and 30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 In this Decision, we refer to the Specification filed Apr. 8, 2016 (“Spec.”),
the Final Office Action dated July 28, 2017 (“Final Act.”), the Appeal Brief
filed Jan. 30, 2018 (“Appeal Br.”), the Examiner’s Answer dated Jan. 8,
2019 (“Ans.”), and the Reply Brief filed Mar. 8, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Philips Lighting Holding B.V. as the
real party in interest. Appeal Br. 6.
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STATEMENT OF THE CASE
The invention relates generally to lighting control, more particularly,
to an attachable control device to control one or more properties of light
emitted by a nearby light source. Spec. ¶ 1. According to the Specification,
“[a] given light source may be configured to generate electromagnetic
radiation within the visible spectrum, outside the visible spectrum, or a
combination of both. Hence, the terms ‘light’ and ‘radiation’ are used
interchangeably herein.” Id. ¶ 23. Claims 1, 19, 22, 29, and 30, reproduced
below, are illustrative of the subject matter on appeal (emphasis added).
1. An attachable lighting control apparatus, comprising:
one or more touch pads;
a placement sensor to detect that the attachable lighting
control apparatus is secured to a surface;
a microcontroller configured to generate, based on touch
input received at the one or more touch pads, a lighting
instruction to cause a light source to emit light having one or
more lighting properties; and
a communication interface configured to wirelessly
transmit the lighting instruction to the light source,
wherein the microcontroller is further configured to
transition the attachable lighting control apparatus from a first
state in which the apparatus consumes a first amount of power
to a second state in which the apparatus consumes a second
amount of power that is greater than the first amount of power,
in response to detection by the placement sensor that the
apparatus is secured to a surface.
19. A method of commandeering and controlling a light
source, comprising:
securing an attachable lighting control apparatus to a
surface;
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initiating commissioning of the attachable lighting
control apparatus for wireless control of one or more properties
of light emitted by the light source; and
providing touch input at one or more touch-sensitive
sensors of the attachable lighting control apparatus to cause the
attachable lighting control apparatus to generate, based on the
touch input, a lighting instruction for wireless transmission to
the light source, the lighting instruction to cause the light source
to emit light having one or more lighting properties,
wherein the initiating is performed in response to
exposing a coded light sensor of the attachable lighting control
apparatus to a coded light signal emitted by the light source, to
enable the apparatus to extract an identifier associated with the
light source from the coded light signal.
22. The method of claim 19, wherein the initiating is
performed in response to removing a peelable cover from an
adhesive surface of the attachable lighting control apparatus.
29. The attachable lighting control apparatus of claim 1,
wherein the microcontroller is configured to transition the
attachable lighting control apparatus from the first state to the
second state in response to detection by the placement sensor
that the apparatus is secured to any surface.
30. The method of claim 19, wherein the initiating is
performed in response to exposing the coded light sensor to any
light.
Appeal Br. 22, 25–27 (Claims Appendix).

ANALYSIS
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
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the alleged error in the examiner’s rejections.”)). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded of reversible error in the
appealed rejections.
The Examiner rejects claims 1–3, 5–7, 9, 11, 12, 15, 19, 20, 22–24,
29, and 30 as follows for the reasons provided in the Final Office Action.3
Final Act. 4–15.
Claim(s) 35 U.S.C. § Reference(s)/Basis
22, 24, 29, 30 112(a) Written Description
1, 2, 5–7, 9, 11 103 Reydel,4 Smith5
3, 12 103 Reydel, Smith, Wright6
15 103 Reydel, Smith, Knibbe7
19, 22, 23 103 Altonen,8 Knibbe, Van Der Stok9
20 103 Altonen, Knibbe, Van Der Stok, Wright
24 103 Altonen, Knibbe, Van Der Stok, Reydel

Appellant does not argue the prior art rejections. Instead, Appellant
argues dependent claims 29 and 30 are patentable over the prior art
rejections of independent claims 1 and 19 and dependent claims 2, 3, 5–7, 9,
11, 12, 15, 19, 20, 23, and 24. Appeal Br. 15–21. However, Appellant’s

3 The Examiner objects to claims 17, 27, and 28 as being dependent upon a
rejected base claim. Final Act. 15.
4 EP 2426656 A1, published Mar. 7, 2012. Appellant does not dispute the
translations recorded on April 8, 2016 (abstract) and January 13, 2017 (text).
5 US 2010/0135000 A1, published June 3, 2010.
6 US 2011/0193518 A1, published Aug. 11, 2011.
7 US 2012/0200226 A1, published Aug. 9, 2012.
8 US 2009/0251352 A1, published Oct. 8, 2009.
9 US 2011/0310621 A1, published Dec. 22, 2011.
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proposed amendment to claims 1 and 19 after the Final Office Action to
include the limitations of claims 29 and 30 was not entered for purposes of
this Appeal. Decision on Petition mailed June 25, 2019. Therefore, we
summarily affirm the prior art rejections and address below the written
description rejection of claims 22, 24, 29, and 30.

Claim 22
The Examiner finds claim 22, which depends from independent claim
19, requires a different “initiating commissioning” than claim 19 and that the
Specification “state[s] either exposing to coded light signal or removing a
peelable cover . . . as different embodiments.” Final Act. 5 (citing Spec. ¶ 70
[sic, 71]). The Examiner questions how removing the cover can start
commissioning per dependent claim 22 when commissioning is already
started in claim 19. Id.
Appellant argues “[t]he removal of the peelable cover is merely one
means of implementing the exposure claimed in claim 1 [sic, 19].” Appeal
Br. 13. Appellant quotes from the Specification’s paragraph 62: “removal of
a peelable cover from attachable lighting control apparatus 100 may expose
coded light sensor 222, enabling it to detect coded light signals within its
line of sight.” Id. (emphasis omitted). Thus removing the peelable cover can
correspond to the same embodiment Appellant contends. Id.
The Examiner’s response merely reiterates the basis for the rejection
and refers to Appellant’s proposed amendment to the independent claim to
encompass exposing the light sensor to “any light.”
We agree with Appellant’s position that the Specification’s paragraph
62 provides sufficient written description support for the initiating
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commissioning step to include both “exposing a coded light sensor . . . to a
coded light signal” as recited in claim 19 and “removing a peelable cover” as
recited in dependent claim 22. As paragraph 62 explains, removal of a
peelable cover (as required by claim 22) may expose the coded light sensor
to enable it to detect the coded light signals (required by claim 19). See
Spec. ¶ 62. Accordingly, we reverse the Examiner’s rejection of claim 22
under 35 U.S.C. § 112(a).

Claim 24
Similar to claim 22, claim 24 also depends from claim 19 and requires
that the initiating step be “performed in response to changing a resistance
between two or more electrodes of the attachable lighting control apparatus.”
Spec. 26 (Claims Appendix). As with the rejection of claim 22, the
Examiner finds “if in claim 19 you have already started commissioning how
does changing the resistan[ce] start commissioning? It seems initiating
commissioning is two different things which is not disclosed in the
specification.” Final Act. 5.
Appellant argues the Specification’s paragraph 60 discloses
commissioning may be in response to “various events” and paragraph 62
provides that commissioning can be triggered in response to both exposure
to a light sensor and a change of resistance of electrodes. Appeal Br. 14.
We agree with Appellant that paragraph 62’s statement “exposure of
coded light sensor 222, in addition to or instead of a change in resistance
between electrodes, is what triggers commissioning module 220 to attempt
to commandeer control of light output by a light source” adequately supports
the “changing a resistance between two or more electrodes” recited in claim
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24 as part of the commissioning step required by claim 19 from which it
depends. The Examiner’s response (Ans. 5–6) concerning claim 24’s
rejection does not address Appellant’s quotation from paragraph 62, but,
instead asks for a single embodiment in which both initiating in response to
light sensor and change in resistance are featured. The Specification’s
paragraph 62 indicates the inventors were in possession of the
commissioning step being triggered by exposure alone or in addition to a
change in resistance between electrodes. Accordingly, we reverse the
Examiner’s rejection of claim 24 under 35 U.S.C. § 112(a).

Claim 29
The Examiner rejects claim 29 under 35 U.S.C. § 112(a) on the basis
that the Specification discloses a specific surface that the apparatus has to be
attached to, therefore, there is no support in the Specification for attaching
the apparatus to “any surface.” Final Act. 5. The Examiner finds that the
embodiment with suction shows detecting the apparatus is attached to a
surface that is attachable via suction, which “surface has to be smooth clean
surface to create a suction based bond and therefore cannot be ‘any
surface.’” Ans. 3.
Appellant argues that simply because the Specification provides
several different ways in which detection of an attachment can be made, the
detection need not be limited to those particular attachment methods
disclosed in the Specification. Appeal Br. 9–10 (citing Spec. ¶¶ 54, 55, 73,
74). Instead, Appellant asserts, the examples provided in the Specification
sufficiently illustrate to a skilled artisan that the inventors had possession of
a placement sensor which can detect that the apparatus is secured to any
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surface. Id. Regarding the Examiner’s example of a surface attachable via
suction, Appellant argues “there is no limitation requiring a smooth, clean
surface, as a suction bond can be created with a rough surface if sufficient
pressure is applied.” Reply Br. 6–7. Appellant directs us to the
Specification’s paragraph 73 as support because it refers to a pressure or
strain sensor configured to detect when suction has been created between the
attachable lighting control apparatus and the surface. Id. at 6 (citing Spec.
¶ 73).
Appellant’s arguments persuade us that the Examiner reversibly erred
in rejecting claim 29 as lacking written description support for attaching to
“any surface.” The purpose of the written description requirement is to
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, applicant was in possession of the invention as now claimed.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).
Appellant’s Specification discloses that the lighting control apparatus “may
be secured to a surface on or near a light source in various ways.” Spec.
¶ 43. The Specification, thus, does not limit the surface to which the lighting
control apparatus may be attached, but, rather, discloses that attachment to a
surface may be by various methods of attachment besides the suction
embodiment identified by the Examiner. Accordingly, we reverse the
Examiner’s rejection of claim 29 under 35 U.S.C. § 112(a).

Claim 30
The Examiner rejects claim 30 under 35 U.S.C. § 112(a) on the basis
that the Specification discloses initiating in response to exposing the light
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sensor to coded light, therefore, there is no support in the Specification for
exposing the coded light sensor to “any light.” Final Act. 6.
Appellant directs us to the Specification’s paragraph 60 which states
“[c]ommissioning module 220 may commission attachable lighting control
apparatus 100 to control a light source in response to various events.”
Appeal Br. 11 (emphasis omitted). Appellant lists examples of these events
including removal of a peelable cover that may expose a coded light sensor,
enabling it to detect coded light signals within its line of sight. Id. According
to Appellant, the coded light signals are not required to trigger
commissioning, but, rather, it is the exposure of the light sensor from the
removal of a peelable cover that triggers the initialization of commissioning.
Id.
The Examiner responds that “any light” would include “infrared light”
and that if there were no peelable cover, the coded light sensor would always
be exposed to light. Ans. 4. Thus, the Examiner finds that the initiating is in
response to the removing of the peelable cover and not the exposure of the
light sensor since the peelable cover is a necessary part of the claim. Id.
We are persuaded that the Examiner reversibly erred in rejecting
claim 30 as lacking written descriptive support for “any light.” As the
Examiner notes (Ans. 4), “any light” broadly refers to both visible light and
infrared light. The Specification supports an expansive definition of “light”
by not restricting the light to any singular light or light source. Spec. § 23
(“A given light source may be configured to generate electromagnetic
radiation within the visible spectrum, outside the visible spectrum, or a
combination of both. Hence, the terms ‘light’ and ‘radiation’ are used
interchangeably herein.”). Appellant acknowledges that exposing the sensor
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to any light, regardless of whether or not such commissioning could also be
caused in the dark, would cause the initiation of commissioning required by
claim 30. Reply Br. 10. Thus, in the absence of any limitation on the term
“light” in the Specification, we reverse the Examiner’s written description
rejection of claim 30 and decline to adopt Appellant’s proposal (Reply Br.
10) to interpret “light” to mean “visible light.”
In sum, Appellant’s arguments are persuasive of error in the
Examiner’s conclusion that claims 22, 24, 29, and 30 lack written
description support in the Specification. Accordingly, we reverse the
Examiner’s rejection of claims 22, 24, 29, and 30 under 35 U.S.C. § 112(a).
Because Appellant does not argue the prior art rejections of the currently
pending claims, we likewise affirm those rejections as well.

CONCLUSION
For these reasons, we reverse the Examiner’s rejection of claims 22,
24, 29, and 30 under 35 U.S.C. § 112(a) and we uphold the Examiner’s
rejections of claims 1–3, 5–7, 9, 11, 12, 15, 19, and 22–24 under 35 U.S.C.
§ 103.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22, 24, 29,
30 112(a)
Written
Description
22, 24, 29,
30
1, 2, 5–7, 9,
11 103 Reydel, Smith
1, 2, 5–7, 9,
11
3, 12 103 Reydel, Smith, Wright 3, 12
15 103 Reydel, Smith, Knibbe 15
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19, 22, 23 103 Altonen, Knibbe, Van Der Stok 19, 22, 23
20 103
Altonen, Knibbe,
Van Der Stok,
Wright
20
24 103
Altonen, Knibbe,
Van Der Stok,
Reydel
24

Overall
Outcome
1–3, 5–7, 9,
11, 12, 15,
19, 22–24
29, 30

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 IN PART