Ex parte Heller
Appeal 2010002978; Appl. No. 10/354,842; Tech. Center 2600
Decided: April 17, 2012
The invention related to an automotive brake light using an illuminated trademark or logo. One of the claims on appeal read:
37. A vehicle symbol illumination apparatus operable in conjunction with a vehicle braking or lighting system consisting essentially of:
one or more light sources;
one or more light-transmissive portions;
one or more non-light transmissive portions;
wherein said one or more light-transmissive portions are encased by said one or more non-light transmissive portions so as to form a logo, symbol or trademark associated with a vehicle model or vehicle manufacturer;
wherein said one or more light transmissive portions illuminate in conjunction with the activation of the vehicle braking system;
wherein said apparatus is to be located upon production substantially in the center of the trunk, spoiler, air dam or roof of the vehicle;
wherein said one or more light transmissive portions illuminate upon the braking of the vehicle simultaneously performing the function of the mandated high-mounted stop lamp and as a logo, symbol or trademark associated with a vehicle or vehicle manufacturer now merged together to form a single component of original manufacturer's automotive
wherein said light transmissive portion is a lens allowing illumination upon braking of the vehicle.
The Examiner rejected claim 37 as obvious over a single patent reference, Lee. The Examiner acknowledged that Lee did not disclose the "trunk" limitation, but asserted that brake lights are "typically" placed on trunks, and thus it would be obvious to modify Lee to use this location in order to intensify the illuminated appearance of the vehicle. The Examiner also acknowledged that Lee did not disclose the "lens" limitation, but asserted that "it is conventional in the art to use lens means to allow brake light illumination to pass in high mount brake light systems."
On appeal, the Applicant argued that Lee did not teach the "encased" limitation. The Applicant then argued that modifying Lee to use a trunk location would require "extensive tooling and redesign," so that a POSITA would not be motivated to use the claimed location. Finally, the Applicant attacked the Examiner's findings about a "typical" location and a "conventional" use of a lens, on the basis that these findings did not take into account the relevant timeframe, which is the time of the invention rather than the time of the rejection. "Further, to the extent the Examiner is considering what is typical [or conventional] now, he has overlooked the fact that the obviousness inquiry focuses on the time period of when the invention was made." (Citing W.L. Gore & Assocs. Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983).)
The Board affirmed the rejection. The Board first found that the Applicant's interpretation of "encased" was too narrow, and that Lee disclosed this limitation under a proper interpretation. The Board was not persuaded by the redesign argument, instead finding that a POSITA "can choose the specific location merely depending on the style of vehicle and aesthetic effect desired by a vehicle manufacturer," making such a choice obvious. Finally, the Board was not persuaded by the Applicant's obviousness timeframe argument:
We ... adopt the Examiner’s finding that the use of a lens would be obvious because lens have been employed for many decades, including the relevant time period, in brake light devices. (Ans. 7). Appellant has not offered any further explanation to rebut the Examiner’s assertion that the use of a lens would have been obvious.
My two cents: I know some practitioners who view the timeframe for obviousness as a weak point in most rejections. Some would probably say the Examiner hasn't actually made a prima facie case without a showing that the missing feature and/or the rationale-for-combining was known at the time of the invention.
Yet I never see this argument made. And this case seems to illustrate why not. While it may be true that the Examiner did not make a showing that lens were known and used in brake lights in 2003, who's going to go on record and actually say that they weren't? Nobody. So the best you can do is make the Examiner shore up his case with evidence, or perhaps an explicit taking of Official Notice. Perhaps that's all the attack-the-obviousness-timeframe-finding argument is meant to do.
In the end, the Board seemed to treat the Examiner's statement about the lens as quasi-Official Notice. Not surprisingly, the Applicant didn't bother to refute the statement that lens were known in 2003, nor that it was obvious in 2003 to employ a lens for a light transmissive portion of an illumination apparatus.