Ex Parte PanuceDownload PDFPatent Trial and Appeal BoardMar 10, 201612691872 (P.T.A.B. Mar. 10, 2016) Copy Citation 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 2 Appeal2014-004697 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 3 Appeal2014-004697 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. 4 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 5 Copy with citationCopy as parenthetical citation