Docket No. 2014-1518
PROST, O’MALLEY, TARANTO (per curiam)
January 8, 2015
Brief Summary: Board decision that examiner examiner correctly rejected claims as obvious affirmed as prior art was “reasonably pertinent” and there was “no recitation in the patent disclosure or prosecution history that compels the narrow interpretation Mr. Shaneour advances”.
Summary: Mr. Shaneour appealed PTAB decision that the examiner correctly rejected his claims to a lighting system were unpatentable in view of two prior art patents. Mr. Shaneour first argued that the cited art was not pertinent since, he argued, the preamble limited the claims to lighting systems for athletic fields. This was not found persuasive since the preamble was not limiting because “it merely states ‘the purpose or intended use of the invention’” (Pitney-Bowes, FC 1999) and the art is “reasonably pertinent to the particular problem with which the invention was involved” (In re Antle, CCPA 1971 (“assumption that a skilled artisan has knowledge of all prior art in the ‘field of endeavor’ relevant to the claim”); In re Wood, CCPA 1979; and State Contracting & Eng’g, FC 2003 (similarity in structure and function…supports a conclusion that the prior art is within the inventor’s field of endeavor)). Mr. Shaneour also argued the Board’s claim construction was incorrect but the FC disagreed because “associated with an individual fixture” and “capable of producing a signal related to the light being produced” may be “quite reasonably read as covering sensors that are somewhat removed from the particular lamp” and there was “no recitation in the patent disclosure or prosecution history that compels the narrow interpretation Mr. Shaneour advances” (that the claims require each light sensor to be placed “at the point of [the light’s] origin” to measure only the “output of [each] individual lamp”). Thus, the Board decision was affirmed.