Ex Parte Panuce

Patent Trial and Appeal Board

Mar 10, 2016

12691872 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/691,872 01122/2010
57726 7590 03/14/2016
MILLER, MATTHIAS & HULL LLP
ONE NORTH FRANKLIN STREET
SUITE 2350
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Donald G. Panuce
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ACI4 1657
EXAMINER
SMALL, NAOMI J
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
03/14/2016 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):
bmatthias@millermatthiashull.com
mloye@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD G. P ANUCE
Appeal2014-004697
Application 12/691,872
Technology Center 2600
Before JEFFREY S. SMITH, ADAM J. PYONIN, and NABEEL U. KHAN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-004697
Application 12/691,872
STATEMENT OF THE CASE
Introduction
Appellant's disclosure is directed "to an apparatus and method for
using a wireless alternating current (AC) switch." Spec. i-f 1. Claim 1 is
representative, presented here with additional formatting:
1. An AC wireless switch for controlling a device,
compnsmg:
a transmitter remote from the device powered by an AC
power source and configured to transmit signals wirelessly;
a receiver at the device powered by an AC power source
and configured to receive signals wirelessly; and
at least one switch in electrical communication with the
transmitter and configured to provide a signal to the transmitter,
the signal indicating the activation and deactivation of one of
the device and the transmitter.
References and Rejections
Claims 1, 3---6, 8, 10, 12, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Atkins (US 7,656,308 B2; Feb. 2, 2010)
and Elberbaum (US 2009/0121842 Al; May 14, 2009). Final Act. 2---6.
Claims 2, 7, 9, 11, 13, 14, 17, and 18-20 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Atkins and Elberbaum in
combinations with additional references. Final Act. 6-13.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. Appellant does not argue separately
claims 1-20. See Br. 10. We select claim 1 as representative of the group.
See 37 C.F.R. § 41.37(c)(l)(iv). We adopt the Examiner's findings and
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Application 12/691,872
conclusions (see Final Act. 2-13; Ans. 13-14) as our own, and we add the
following primarily for emphasis.
Appellant argues:
the present rejections are fatally flawed for at least two reasons:
(1) there is no rationale given in the Action as to why one of
skill in the art would make the asserted combination, and (2)
the combination, if made, would defeat Atkins' purpose and
method of operation, which require that the receiver be remote
from the device being controlled
Br. 10.
Appellant does not persuade us the Examiner erred. First, we agree
with the Examiner that, in light of the Specification, the recited "receiver at
the device" broadly but reasonably encompasses receivers located proximate
to the device. See Ans. 13; see also Fig. 1 (showing device 124 separate
from receiver 120). Atkins similarly teaches or suggests a receiver
proximate to the device. See Atkins, Fig. 1; compare Fig. 1. Thus, we find
no "direct conflict" between the Examiner's combination using Elberbaum's
receiver at a device, and Atkin's "three-way configuration" for light
switches. Contra Br. 10; see also Ans. 13;
Second, Appellant's arguments are not responsive to the Examiner's
findings that one of skill in the art would place the receiver of Elberbaum
"at the device" of Atkins (Final Act. 3); this combination does not result in
"defeat[ing] the three-way feature [of Atkins] and becom[ing] a regular two-
state switch system" (Br. 10). See Ans. 13 ("[T]he location of the receiver
with respect to the device to be controlled is not essential for the operation
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Application 12/691,872
of the system."). 1 Even assuming, arguendo, that the Examiner's
combination modified Atkins so that the master switch is located within the
light switch, we are not persuaded of error. Appellant has not provided
persuasive argument or sufficient evidence to show that one of skill in the art
would not locate a master light switch at the light itself, for use in Atkins 3-
way light switch system.
Third, we agree with the Examiner that one of skill in the art would
combine Atkins with Elberbaum "to improve the communication method of
Atkins" (Final Act. 3) which "provid[es] greater ease of use for a user" (Ans.
13). We find the Examiner's explanation to constitute articulated reasoning
with rational underpinnings sufficient to justify the legal conclusion of
obviousness. In contrast, Appellant fails to persuade us that the combination
of Atkins' wireless switching system and Elberbaum's wireless receiver
yields anything other than predictable results. See KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.").
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claim 1.
DECISION
The Examiner's rejection of claims 1-20 is affirmed.
1 We note Atkins is directed to a three way light switch configuration rather
than a three way wiring circuit configuration. See Atkins 2:50-54; see also
Elberbaum i-f 39.
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Appeal2014-004697
Application 12/691,872
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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