Ex Parte 7619539 et al

Patent Trial and Appeal Board

Dec 21, 2015

95002260 (P.T.A.B. Dec. 21, 2015)

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.
95/002,260 09/14/2012 7619539 CP00220-00 9353
15027 7590 12/21/2015
Condo Roccia Koptiw LLP
1800 JFK Boulevard
Suite 1700
Philadelphia, PA 19103
EXAMINER
NASSER, ROBERT L
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/21/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

CRESTRON ELECTRONICS, INC.
Requester

v.

LUTRON ELECTRONICS CO., INC.
Patent Owner and Appellant
________________

Appeal 2015-006389
Reexamination Control 95/002,260
Patent 7,619,539 B2
Technology Center 3900
________________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner appeals the Examiner’s decision to reject claims 1–36.
Claim 37 is canceled. PO App. Br. 3. We have jurisdiction under 35 U.S.C.
§§ 134 and 315.
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Claims 1–36 are rejected under 35 U.S.C § 103(a) as obvious over
Mogilner (US 2003/0222603 A1; published Dec. 4, 2003) and Stevens (US
2002/0145886 A1; published Oct. 10, 2002). RAN 12–27.
Claims 1–30 are rejected under 35 U.S.C § 103(a) as obvious over
Katyl (US 6,388,396 B1; issued May 14, 2002) and Stevens. RAN 27–49.
Claims 1–6 and 9–36 are rejected under 35 U.S.C § 103(a) as obvious
over Wang (US 2006/0044152 A1; published Mar. 2, 2006) and Bogdan
(US 6,040,661; issued Mar. 21, 2000). RAN 50–64.
We affirm-in-part.

STATEMENT OF THE CASE
This proceeding arose from a request by Crestron Electronics Co., Inc.
for an inter partes reexamination of Patent 7,619,539 B2, titled “Multple-
Input Electronic Ballast with Processor” (“the ’539 patent”). The
’539 patent describes “ballasts having processors therein for controlling a
gas discharge lamp in response to a plurality of inputs.” ’539 patent, col. 1,
ll. 15–17. Claim 1 is illustrative:
1. An electronic ballast for driving a gas discharge
lamp, comprising:
an inverter for producing a high frequency drive voltage
for driving a lamp current in said gas discharge lamp, said drive
voltage having an operating frequency and an operating duty
cycle;
a microprocessor electrically connected to said inverter
for directly controlling said inverter to control said lamp
current, said microprocessor operable to provide an output
signal to said inverter, such that said operating frequency and
said operating duty cycle of said drive voltage are substantially
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the same as a frequency and a duty cycle of said output signal;
and
a port in electrical communication with said
microprocessor for sending a first message from said
microprocessor comprising at least one command and for
sending a second message from said microprocessor comprising
at least one ballast configuration onto a communication link
operable to connect said electronic ballast to at least one other
electronic ballast connected to said communication link,
wherein:
said microprocessor is operable to send the first message
to said at least one other electronic ballast to control the
operation of said at least one other electronic ballast, and to
send the second message to said at least one other electronic
ballast to inform said at least one other electronic ballast of its
configuration to enable said at least one other electronic ballast
to use said ballast configuration message to adjust its operation.

ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 1–36 OVER MOGILNER AND
STEVENS
The Examiner finds the combination of Mogilner and Stevens teaches
all limitations of claim 1. RAN 13–22. The Examiner finds Mogilner’s
ballast with bi-directional Power Line Carrier (PLC) communication teaches
the recited (claim 1) microprocessor operable “to send the second message
to said at least one other electronic ballast to inform said at least one other
electronic ballast of its configuration to enable said at least one other
electronic ballast to use said ballast configuration message to adjust its
operation.” RAN 21–22 (citing Mogilner, ¶¶ 106–07); see also RAN 66
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(“Mogilner simply teaches a remote control unit and a ballast as alternatives,
and does not actually teach away from ballasts”).
Patent Owner presents the following principal argument:
“[P]aragraph 0107 of Mogilner teaches that the ballast sends the lamp
and current measurement to a remote entity that clearly is not a ballast.” PO
App. Br. 9. “Mogilner suggests that the ballast can pass commands to other
ballasts that reside on the same line (Id.). Accordingly, although paragraph
0107 may teach a ballast that can pass a command to another ballast,
Mogilner nowhere teaches or suggests a ballast that sends a ballast
configuration to another ballast.” PO App. Br. 10. “[T]he ballast reporting
‘the status including lamp current and voltage measurements,’ as recited in
paragraph 0107[,] is clearly a communication to the [branch remote
control unit] BRCU, and not a ballast sending a ballast configuration to
another ballast as alleged in the RAN.” PO App. Br. 10. “Mogilner
nowhere teach[es] or suggest[es] a ballast that is operable to send a ballast
configuration to another ballast, it also nowhere teaches or suggests that the
configuration duties of a BRCU can be alternately performed by a ballast.”
PO App. Br. 11.
In response, Third Party Requester argues the claims do not require a
ballast that is operable to send a command and a ballast configuration to
another ballast because sending to another ballast is an intended use. See
3PR Resp. Br. 4–6.
Third Party Requester further argues, in the alternative, Mogilner’s
ballasts do transmit commands and ballast configuration messages to other
ballasts. See 3PR Resp. Br. 7–9.
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We are persuaded that the Examiner erred in finding that Mogilner
teaches the recited (claim 1) microprocessor is operable “to send the second
message to said at least one other electronic ballast to inform said at least
one other electronic ballast of its configuration to enable said at least one
other electronic ballast to use said ballast configuration message to adjust its
operation.”
First, regarding claim construction, even accepting Third Party
Requester’s arguments that sending to another ballast is an intended use (see
3PR Resp. Br. 4-6), the microprocessor must nevertheless be capable of
performing this intended use. Cf. In re Schreiber, 128 F.3d 1473, 1477–78
(Fed. Cir. 1997). The Examiner, however, has not shown persuasively such
capability. Rather, we agree with Patent Owner that “the feature limits the
scope of where/how the claimed ballast may send the ballast configuration”
(PO App. Br. 12), at least to the extent that the microprocessor must be
capable of performing this function.
The ’539 patent discloses:
In an exemplary embodiment of the system 500, each ballast is
assigned a unique address, which enables other ballasts and/or a
controller to issue commands to specific ballasts. The infrared
capable terminals on each processor of each ballast can be
utilized to receive a numerical address which is directly loaded
into the ballast, or can serve as a means to “notify” a ballast that
it should acquire and retain an address that is being received on
a digital port.
’539 patent, col. 10, ll. 53–60.
This disclosure in the ’539 patent is not a limiting definition.
Nonetheless, this disclosure informs our construction. We conclude that the
broadest reasonable interpretation of the recited functions of sending a
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ballast configuration to another ballast and informing another ballast of its
ballast configuration requires more than the capability of sending
configuration information on the same communication channel or media
through which another ballast communicates. The cited passage of the
’539 patent’s Specification indicates that the claimed first-ballast
microprocessor must possess some sort of means for directing the ballast
configuration message specifically to the at least one other electronic
ballast—not merely to the first ballast’s port.
Second, we do not agree with Third Party Requester’s arguments (see
3PR Resp. Br. 7-9) that Mogilner’s ballasts transmit commands and ballast
configuration messages to other ballasts, or that they are capable of doing so.
Nor do we agree with the Examiner’s finding (see RAN 21–22) that
Mogilner’s ballast with bi-directional PLC communication teaches the
disputed limitation. Nor do we agree with the Examiner’s explanation (see
RAN 66) that a remote control unit and a ballast are alternatives.
Mogilner (¶ 107 (emphasis added)) discloses:
The PLC communication can be used for remotely
commanding the ballast and each of its lamps and/or light
fixtures. The PLC can also be used for remote configuration of
the ballast. When bi-directional communication is used, the
ballast can acknowledge commands and can report the status
including lamp current and voltage measurements, which are
obtained as feedback signals 554 from power circuits 558.
This disclosure teaches that a ballast can report its configuration (lamp
current and voltage measurements) by utilizing bi-directional PLC
communication. However, this reporting is in response to remote
configuration of the ballast. Accordingly, this reporting is to a remote
control unit (RCU), such as a branch control unit (BRCU). At best, the
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reporting message is sent along the same communication medium to which
another ballast is connected, but the message is not sent to another ballast
and does not inform another ballast of a ballast configuration. Further, we
do not see any explanation on the record as to why a remote control unit and
a ballast would have been alternatives. Thus, Mogilner does not teach the
disputed limitation.
We, therefore, do not sustain the Examiner’s rejection over Mogilner
and Stevens of claim 1, or of claims 3–21 and 31–35, which depend from
claim 1.
We also do not sustain the Examiner’s rejection over Mogilner and
Stevens of independent claim 2, which recites “said first port transmitting on
to said digital communication link a ballast configuration message to inform
said at least one other electronic ballast of the ballast configuration of said
electronic ballast to enable said at least one other electronic ballast to adjust
its operation based on said ballast configuration[,]” or of claims 22–30 and
36, which depend from claim 2.

THE OBVIOUSNESS REJECTION OF CLAIMS 1–30 OVER KATYL AND STEVENS
The Examiner finds the combination of Katyl and Stevens teaches all
limitations of claim 1. RAN 27–39. The Examiner concludes:
[T]he claim only requires that the microprocessor is operable to
send the [] message out of the ballast.
Katyl clearly shows this feature in column 6, lines 36–48,
where it says that the processor of the ballast sends parameters,
including lamp voltage and current, to the building main
computer. Voltage and Current fall under the realm of the
ballast configuration. As such, Katyl has [a] ballast that sends
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its own configuration outside of the ballast on a communication
line, which meets the claim limitation.
RAN 67.
Patent Owner presents the following principal argument:
“A claim feature that requires a ballast be operable to send a ballast
configuration to another ballast is a limitation on the configuration of the
claimed ballast. That is, the feature limits the scope of where/how the
claimed ballast may send the ballast configuration, (PO App. Br. 11–12) at
least to the extent that the ballast must be capable of performing this
function.”
In response, Third Party Requester argues the claims do not require a
ballast that is operable to send a command and a ballast configuration to
another ballast because sending to another ballast is an intended use. See
3PR Resp. Br. 4–6.
Third Party Requester further argues, in the alternative, Katyl may be
modified such that ballasts transmit commands and ballast configuration
messages to other ballasts. See 3PR Resp. Br. 10–12.
We are persuaded that the Examiner erred in finding that Katyl
teaches the recited (claim 1) microprocessor is operable “to send the second
message to said at least one other electronic ballast to inform said at least
one other electronic ballast of its configuration to enable said at least one
other electronic ballast to use said ballast configuration message to adjust its
operation.”
First, as explained above, we conclude that the broadest reasonable
interpretation of the recited sending a ballast configuration to another ballast
and informing another ballast of its ballast configuration requires more than
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the capability of sending along the same media where another ballast is
connected.
Accordingly, we do not agree with the Examiner’s finding (see
RAN 67) that Katyl discloses the disputed limitation because Katyl’s
sending its own configuration outside of the ballast on a communication line
(see Katyl, col. 6, ll. 36–48) is insufficient to meet the claim limitation given
our claim construction.
Second, we do not consider Third Party Requester’s arguments (see
3PR Resp. Br. 10–12) that Katyl may be modified such that ballasts transmit
commands and ballast configuration messages to other ballasts. These
arguments in the Respondent Brief are not supported by the record. See
RAN 3–9 (expunging similar arguments from the record). Further, these
arguments are not in response to an issue raised in Patent Owner’s Appeal
Brief because the Examiner relies on Katyl, without modification, for
disclosing the second message limitation. See RAN 67.
We, therefore, do not sustain the Examiner’s rejection over Katyl and
Stevens of claim 1, or of claims 3–21, which depend from claim 1.
We also do not sustain the Examiner’s rejection over Katyl and
Stevens of independent claim 2, which recites “said first port transmitting on
to said digital communication link a ballast configuration message to inform
said at least one other electronic ballast of the ballast configuration of said
electronic ballast to enable said at least one other electronic ballast to adjust
its operation based on said ballast configuration,” or of claims 22–30, which
depend from claim 2.

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THE OBVIOUSNESS REJECTION OF CLAIMS 1–6 AND 9–36 OVER WANG AND
BOGDAN
The Examiner finds the combination of Wang and Bogdan teaches all
limitations of claim 1. RAN 50–56. The Examiner finds Wang’s local
control master ballast and slave ballasts teach the recited (claim 1)
microprocessor operable “to send the second message to said at least one
other electronic ballast to inform said at least one other electronic ballast of
its configuration to enable said at least one other electronic ballast to use
said ballast configuration message to adjust its operation.” RAN 55–56
(citing Wang, ¶¶ 42–44); see also RAN 67.
Patent Owner presents the following principal argument:
“A ballast configuration as claimed allows a receiving ballast to
mimic the configuration of the sending ballast. However, the slave ballast of
Wang cannot mimic a master ballast in allowing devices into the network.”
PO App. Br. 12.
In response, Third Party Requester argues the claims do not require a
ballast that is operable to send a command and a ballast configuration to
another ballast because sending to another ballast is an intended use. See
3PR Resp. Br. 4–6.
Third Party Requester further argues, in the alternative,
Even if the claim language at issue were entitled to patentable
weight, there is nothing in the claims which supports Lutron’s
proposed construction of the phrase “to use said ballast
configuration message to adjust its operation” as requiring “a
receiving ballast to mimic the configuration of the sending
ballast” such that “the indication taught by Wang cannot be a
ballast configuration as claimed” if “the slave ballast of Wang
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cannot mimic a master ballast in allowing devices into the
network.”
3PR Resp. Br. 13.
We are persuaded by the Examiner that Wang teaches the recited
(claim 1) microprocessor is operable “to send the second message to said at
least one other electronic ballast to inform said at least one other electronic
ballast of its configuration to enable said at least one other electronic ballast
to use said ballast configuration message to adjust its operation.”
First, as explained above, we conclude that the broadest reasonable
interpretation of the recited sending a ballast configuration to another ballast
and informing another ballast of its ballast configuration requires more than
the capability of sending along the same media where another ballast is
connected. Nevertheless, we conclude that the broadest reasonable
interpretation of the claim does not require a receiving ballast to mimic the
configuration of the sending ballast.
Second, given our construction, we agree with the Examiner that
Wang teaches the disputed limitation. Wang (¶ 44) discloses:
[T]he local control master sends out beacons or polling
messages at a predetermined interval to maintain the health of
light control network 100. In this manner the network slave
devices are periodically informed of the local control master’s
status. The local control master status may include whether the
local control master is allowing new devices to join the
network. Additionally, the local control master can monitor the
status of the slave devices on the network.
Thus, Wang discloses the recited sending the second message
(Wang’s beacon or polling message). Wang’s receiving ballast, by joining
the network, adjusts its operation.
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We, therefore, sustain the Examiner’s rejection over Wang and
Bogdan of claim 1, as well as claims 2–6 and 9–36, which are not separately
argued with particularity.

ORDER
The Examiner’s decision rejecting claims 1–6 and 9–36 is affirmed.
The Examiner’s decision rejecting claims 7 and 8 is reversed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

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PATENT OWNER:

CONDO ROCCIA KOPTIW LLP
1800 JFK Boulevard
Suite 1700
Philadelphia, PA 19103

THIRD PARTY REQUESTER:

David E. Shifren
CRESTRON ELECTRONICS, INC.
15 Volvo Drive
Rockleigh, NJ 07647-2507