SORAA, INC.

Patent Trials and Appeals BoardMar 9, 2021

2020000762 (P.T.A.B. Mar. 9, 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. 15/261,351 09/09/2016 MICHAEL R. KRAMES 014151.130US4 2972 132877 7590 03/09/2021 FisherBroyles LLP - Ecosense 1650 Market Street 36th FLoor Philadelphia, PA 19103 EXAMINER CHEN, JIANZI ART UNIT PAPER NUMBER 2844 NOTIFICATION DATE DELIVERY MODE 03/09/2021 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): Stephen.Driscoll@fisherbroyles.com docketing@fisherbroyles.com jennifer.chungo@fisherbroyles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL R. KRAMES, TROY TROTTIER, FRANK M. STERANKA, WILLIAM D. HOUCK, and ARPAN CHAKRABORTY Appeal 2020-000762 Application 15/261,351 Technology Center 2800 Before GEORGE C. BEST, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing of our December 8, 2020 Decision (“Op.”). Request for Rehearing filed February 8, 2021 (“Request”). In the Decision, we affirmed the Examiner’s obviousness rejection. Op. 5. In a request for rehearing, an appellant is charged with stating the points believed to have been misapprehended or overlooked by the Board. 37 C.F.R. § 41.52. We review the points of the Decision contested by 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Soraa Inc. Appeal Brief of February 26, 2018 (“Appeal Br.”), 2. Appeal 2020-000762 Application 15/261,351 2 Appellant and determine whether we erred in fact finding or applying the law, and further determine whether any such error changes the outcome of the Decision when viewing all the evidence and arguments anew in light of the preponderance of the evidence standard. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that “patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument”). In this case, Appellant argues that “each of the . . . [four] bases for rejecting the Applicant’s argument and affirming the rejection was raised for the first time in the PTAB’s decision” to which Appellant has had no opportunity to reply. Request 2. To the extent Appellant’s argument asserts the Board’s affirmance of the Examiner’s rejection is based on a new ground—although it is unclear from the text of the Request—it is well- established that “[w]hile the Board’s explanation may go into more detail than the examiner’s, that does not amount to a new ground of rejection.” In re Adler, 723 F.3d 1322, 1328 (Fed. Cir. 2013). More specifically, the Board found that “Appellant’s argument is unsupported by evidence.” Request 2. Such a finding of lack of evidence in support of Appellant’s argument does not constitute a new ground of rejection. “The thrust of the Board’s rejection changes when . . . it finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts are the principal evidence upon which the Board’s rejection was based.” In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011). Appellant, being the party who initiated the appeal, has the burden on appeal to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006) (“On appeal to the Board, an Appeal 2020-000762 Application 15/261,351 3 applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). On appeal, the initial burden is on Appellant to come forward with evidence and argument showing harmful error in the Examiner’'s rejection. See, e.g., Shinseki v. Sanders, 556 U.S. 396, 409–10 (2009) (citations omitted) (“Lower court cases make clear that courts have correlated review of ordinary administrative proceedings to appellate review of civil cases in this respect. . . . [T]he party seeking reversal normally must explain why the erroneous ruling caused harm.”). Contrary to Appellant’s assertion that the Board is making certain arguments (Request 2), as a rule, the Board does not make arguments for Appellant or the Examiner, nor does it scour the record for evidence supporting arguments that have been made; the Board’s role is primarily to review the merits of arguments that have been made. In the Decision, we looked to Appellant’s Brief to show error in the proffered prima facie case and found Appellant’s argument is unsupported by evidence. Op. 4. Appellant’s Request does not identify the evidence that we allegedly overlooked or misapprehended in finding that Appellant’s was not supported by evidence. We therefore have no reason to revisit the issue or revise the finding. See 37 C.F.R. § 41.52. The Board also found that “Appellant’s argument that Chua’s teaching is limited to ‘independently control the current to single color LEDs’ (Appeal Br. 7) is [therefore] not supported by Chua’s teaching as a whole.” Op. 4; see also Request 2. Appellant does not disagree with our finding that Chua’s teaching is not so limited but argues instead that “this Appeal 2020-000762 Application 15/261,351 4 argument is irrelevant to the Applicant’s position that ‘[c]ritical to the operation of Chua is that the light emitters emit a single color.’” Request 3.2 Appellant’s Request does not identify what we overlooked or misapprehended in finding that Chua’s teaching as a whole provides an alternative method to individually controlling the LEDs to control the emitted light’s color. See Appeal Br. 6 (quoting Chua ¶ 44 (“Providing three separate light sources with three different colors (i.e.[,] blue, green, and red) in a flash module is desirable because each color can be individually controlled to produce a selected color temperature. Alternatively, a flash module combines two colors, such as blue and green, in a first light source, and has a red light source) (emphasis added)). We accordingly have no reason to revisit the issue or revise the finding. See 37 C.F.R. § 41.52. The Board also determined that “Appellant does not sufficiently explain why the Examiner’s proposed combination would prevent current to the colored emitters from being independently controlled” and that “Appellant does not argue that the Examiner’s proposed combination would render Chua inoperable.” Op. 4; see also Request 4. Appellant argues that our findings are conclusory and lack analysis. Request 4. We again emphasize that Appellant bears—and in this case fails to carry—the burden to show reversible error in the Examiner’s findings as well as to support Appellant’s arguments on appeal. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). “It is not the function of this court [or this Board] to examine the claims in 2 We further note that Appellant does not cite Chua to show that the reference states that such control method is “critical,” nor do we find such a teaching in the text of Chua. Appeal 2020-000762 Application 15/261,351 5 greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). By statute, this Board functions as a board of review, not a de novo examination tribunal. 35 U.S.C. § 7(b) (“The [board] shall . . . review adverse decisions of examiners upon applications for patents . . . .”). Appellant’s Request does not explain what we overlooked or misapprehended in finding that Appellant’s arguments do not identify reversible error in the Examiner’s findings and do not otherwise present evidence showing why the Examiner’s decision should not stand. We therefore have no reason to revisit the issue or revise the finding. See 37 C.F.R. § 41.52. DECISION SUMMARY Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 22, 24 103 Chua, Van 1, 22, 24 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 22, 24 103 Chua, Van 1, 22, 24 Appeal 2020-000762 Application 15/261,351 6 TIME PERIOD FOR RESPONSE 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). DENIED