Wollner, Mark R. et al.

Patent Trials and Appeals Board

Mar 4, 2020

12375299 - (D) (P.T.A.B. Mar. 4, 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.
12/375,299 01/27/2009 Mark R. Wollner 60612US009 6383
32692 7590 03/04/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
TUMEBO, TSION M
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
03/04/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK R. WOLLNER, JACQUELYN A. WEDELL,
JUNKANG J. LIU, REBECCA A. SHIPMAN,
MICHAEL A. MEIS, GORDON D. HENSON,
DEAN J. STYCH, and NICHOLAS A. LEE
____________

Appeal 2019-001362
Application 12/375,299
Technology Center 2800
____________
Before LINDA M. GAUDETTE, AVELYN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
12/375,299 filed Jan. 27, 2009; the Final Office Action dated Jan. 25, 2018
(“Final Act.”); the Appeal Brief filed June 20, 2018 (“Appeal Br.”); the
Examiner’s Answer dated Oct. 4, 2018 (“Ans.”); and the Reply Brief filed
Dec. 3, 2018 (“Reply Br.”).
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Application 12/375,299

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6, 8, 10, 11, 13–19, and 34–41 of
Application 12/375,299, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter of the invention relates to illumination devices for
the interior or exterior lighting of vehicles and vehicle glazing. Spec. 1:4–5.
Claim 1, reproduced below from the Claims Appendix of the Appeal Brief,
represents the claimed subject matter:
1. An illumination device for the interior lighting of a vehicle,
comprising:
a. at least one light source,
b. at least one light management device comprising a
front light guide having at least one light input face through
which light from the source can be supplied to the light guide, a
light directing face, and a light output face opposite the light
directing face, the light output face having a light extraction
layer thereon, the light extraction layer having a light exit face
that extracts supplied light from the light guide through the
light output face,
c. a cover that is illuminated by the light source and
is operatively adapted to form a portion of the interior surface
of a vehicle, wherein the cover covers the light exit face and
transmits light received from the light source, and
d. a brightness enhancement film disposed between
the light exit face and the cover for redirecting and recycling

2 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 3M Company
and 3M Innovative Properties Company. Appeal Br. 2.
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light to increase a brightness of light exiting the illumination
device, wherein the illumination device is substantially
optically transparent allowing ambient light to pass through.
Appeal Br. 7 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Sa US 2006/0044825 A1 Mar. 2, 2006
Yeo et al. (“Yeo”) US 2006/0056166 A1 Mar. 16, 2006
Iwauchi et al.
(“Iwauchi”)
US 2006/0146573 A1 July 6, 2006
Mueller et al.
((“Mueller”)
US 2007/0035958 A1 Feb. 15, 2007
Chen et al.
(“Chen”)
US 7,284,886 B2 Oct. 23, 2007
REJECTIONS
The Examiner maintains the following rejections of the claims under
35 U.S.C. § 103(a)3:
A. Claims 1, 2, 4, 6, 8, 10, 11, 13, 16–18, 34, and 35 over Chen in
view of Yeo.
B. Claims 3, 19, and 36–41 over Chen in view of Yeo and further
in view of Sa.
C. Claim 5 over Chen in view of Yeo and further in view of
Mueller.
D. Claims 14 and 15 over Chen in view of Yeo and further in view
of Iwauchi.
Final Act. 2–13.

3 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant 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.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in the rejections of
claims 1–6, 8, 10, 11, 13–19, and 34–41.
The Examiner rejects all of the pending claims over at least the
combination of Chen and Yeo. See Final Act. 2–13. Appellant argues that
independent claims 1 and 17 are patentable over Chen and Yeo, and makes
no additional substantive arguments for patentability of the dependent
claims. See Appeal Br. 4–5. Thus, Appellant argues the claims as a group.
Accordingly, we decide each ground of rejection on the basis of the
arguments made in support of patentability of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Regarding claim 1, the Examiner finds that Chen teaches the claim
limitations except for (1) a light extraction layer on a light output face, the
light extraction layer having a light exit face that extracts supplied light from
the light guide through the light output face, and (2) a brightness
enhancement film (“BEF”) disposed between the light exit face and the
cover for redirecting and recycling light to increase a brightness of light
exiting the illumination device, wherein the illumination device is
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substantially optically transparent allowing ambient light to pass through.
Final Act. 2–3.
The Examiner finds that Yeo teaches the claim limitations that Chen
does not teach. Id. at 3; Ans. 3–4. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to have modified Chen’s light output face to include a light
extraction layer such as Yeo’s diffuser to increase optical efficiency and
brightness by reducing the appearance of speckle from the rear surface of the
light guide. Ans. 4. The Examiner determines that it would have been
obvious to have further modified Chen’s illumination device to include a
BEF (Yeo’s collimating film) disposed between the light exit face and cover
to direct more light toward the interior side of Chen’s moonroof, preventing
light from scattering and increasing optical efficiency and brightness of the
illumination device. Id. The Examiner finds that Yeo’s light extraction
layer and BEF are light transparent elements, and, therefore, would not
affect transparency in Chen’s modified moonroof, and would allow ambient
light to pass through.
Appellant argues that Yeo discloses prismatic BEF for increasing
brightness, and “it is commonly known and therefore, one of ordinary skill
in the art would have known, that BEF increases brightness by virtue of
recycling light (see, e.g., paragraph [0131], where recycling of light requires
the presence of a reflector as shown in FIG. 18.” Appeal Br. 4. Appellant
contends that “it is also commonly known that absent a reflector, BEF would
significantly reduce brightness.” Id. According to Appellant, it would not
have been obvious to modify Chen’s moonroof with Yeo’s BEF. Id. at 4. If
Yeo’s reflector was not included in the modification, Appellant argues that
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the moonroof would have significantly reduced brightness. Id. at 4–5. On
the other hand, if Yeo’s reflector was included in the modification,
Appellant argues that the moonroof would have been rendered non-
transparent, which is inconsistent with the requirement in claim 1 (and
independent claims 17) that the illumination device is substantially optically
transparent. Id. at 5.
In the Answer, the Examiner explains that the proposed modification
includes Yeo’s BEF, but not Yeo’s reflector. Ans. 15. The Examiner finds
that Chen’s moonroof includes a reflective surface for recycling light. Id.
(citing Chen Fig. 3, col. 5, ll. 16–28).
Appellant contends that the Examiner fails to make a prima facie
showing of obviousness because Yeo’s reflector is omitted from the
combination. Reply Br. 2. Under such circumstances, according to
Appellant, the modified illumination device does not provide light recycling
and cannot result in “recycling light to increase a brightness,” as required by
claim 1. Id.
We disagree.
Chen explains that “light introduced by means of the light source
. . . into the moonroof . . . substantially undergoes a total reflection at the
surface [] turned toward the exterior side of the motor vehicle.” Chen col. 4,
ll. 44–48. Appellant fails to address (and rebut) the Examiner’s finding that
Chen’s reflective surface recycles light. See Ans. 15; see also Reply Br.
generally. Moreover, Appellant’s assertions regarding the common
knowledge of one of ordinary skill in the art that the combined references
would either have significantly reduced brightness (absent Yeo’s reflector)
or would not be transparent (by including Yeo’s reflector) are unsupported
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attorney argument. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997) (“Counsel’s argument cannot take the place of evidence
lacking in the record.”).
On these bases, we are unpersuaded by Appellant’s arguments for
reversible error. We sustain the rejection of claim 1. For the same reasons,
we likewise sustain the rejections of claims 2, 4, 6, 8, 10, 11, 13, 16–18, 34,
and 35.
CONCLUSION
We affirm the Examiner’s rejections. More specifically, we affirm the
rejection of (1) claims 1, 2, 4, 6, 8, 10, 11, 13, 16–18, 34, and 35 over Chen
in view of Yeo; (2) claims 3, 19, and 36–41 over Chen in view of Yeo and
further in view of Sa; (3) claim 5 over Chen in view of Yeo and further in
view of Mueller; and (4) claims 14 and 15 over Chen in view of Yeo and
further in view of Iwauchi.
DECISION SUMMARY

Claims
Rejected 35 U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6,
8, 10, 11,
13, 16–18,
34, 35
§ 103(a)
Chen, Yeo 1, 2, 4, 6, 8,
10, 11, 13,
16–18, 34, 35

3, 19, 36–
41 § 103(a)
Chen, Yeo, Sa 3, 19, 36–41
5 § 103(a) Chen, Yeo, Mueller 5
14, 15 § 103(a) Chen, Yeo, Iwauchi 14, 15
Overall
Outcome
1–6, 8, 10,
11, 13–19,
34–41

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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).
AFFIRMED