Ex Parte Flick

Board of Patent Appeals and Interferences

Oct 23, 2009

09993930 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENNETH E. FLICK
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Appeal 2009-002466
Application 09/993,930
Technology Center 2600
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Decided: October 23, 2009
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Before KENNETH W. HAIRSTON, CARLA M. KRIVAK,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
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Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 3 to 13, 15 to 24, 26 to 29, 31 to 34,
36, 37, 39 to 48, 50 to 60, and 62 to 71.1 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellant’s disclosed and claimed invention relates to a remote
control system and method for moving an access door (e.g., garage door
opener) (Abs.; Spec. 1:14-16). The system includes a controller, at least one
uniquely coded remote transmitter, and an indicator for indicating whether a
new uniquely coded remote transmitter has been learned (Abs.; claims 1, 13,
24, 29, and 34; Fig. 1). The system and method may also include indicating
whether a new uniquely coded remote transmitter has been learned based
upon the controller being switched to the door moving mode (claims 1 and
48).
Claims 1 and 13 are representative of the claimed invention, and read
as follows:
1. A remote control system for moving an access door and
comprising:
at least one indicator;
at least one uniquely coded remote transmitter; and
a controller being switchable to a learning mode for learning a unique
code of a remote transmitter to define a learned remote transmitter, said

1 Claims 2, 14, 25, 30, 35, 38, 49, and 61 have been objected to by the
Examiner as being dependent upon a rejected base claim, but allowable if
rewritten in independent form including all of the limitations of the base and
any intervening claims (Final Rej. 10).
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controller also being switchable to a door moving mode for moving the
access door based upon receiving a signal from the learned remote
transmitter;
said controller cooperating with said at least one indicator for
indicating whether a new uniquely coded remote transmitter has been
learned based upon said controller being switched to the door moving mode.
13. A remote control system for moving an access door and
comprising:
at least one indicator;
at least one uniquely coded remote transmitter;
a controller being switchable to a learning mode for learning a unique
code of a remote transmitter to define a learned remote transmitter, said
controller also being switchable to a door moving mode for moving the
access door based upon receiving a signal from the learned remote
transmitter; and
at least one remote switch for causing said controller to cooperate
with said at least one indicator for indicating whether a new uniquely coded
remote transmitter has been learned.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Liotine US 4,529,980 July 16, 1985

The Examiner rejected claims 1, 3 to 13, 15 to 24, 26 to 29, 31 to 34,
36, 37, 39 to 48, 50 to 60, and 62 to 71 under 35 U.S.C. § 102(b) based upon
the teachings of Liotine.
In establishing a prima facie case of anticipation under § 102(b) the
Examiner relies upon Liotine as teaching the transmitter, controller, and
indicator recited in the claims on appeal (Ans. 3-7). The Examiner
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determines (Ans. 3-4, 7-10) that Liotine’s “flashing ready signal” from LED
92 in transmitter 9, indicating that a programming cycle has been completed,
meets the limitations of the claims on appeal. The Examiner also determines
(Ans. 4, 10-11) that Liotine’s receiver 30, including program mode switch
41 and microcomputer 33, cooperates with the indicator 92 to indicate a new
transmitter code has been learned.

FINDINGS OF FACT (FF)
1. As indicated supra, Appellant describes and claims a system (Fig. 1)
and method (Figs. 2, 3) for moving an access door 12 whereby a user
is notified by an indicator 50/52 that a new uniquely coded remote
transmitter has been learned (Abs.; Spec. 1:14-16, 2:30 to 6:21). The
system also includes a controller 22 and at least one uniquely coded
remote transmitter 28 (Abs.; claims 1, 13, 24, 29, and 34; Fig. 1). The
system and method may also include indicating whether a new
uniquely coded remote transmitter has been learned based upon the
controller 22 being switched to the door moving mode (claims 1 and
48; Fig. 2, step 106).
2. Liotine describes a remote control method and system for opening a
garage or access door (Figs. 1-4; Abs.; col. 1, ll. 15-30, 60-61). The
system includes a transmitter 9 (Figs. 1, 7A, 7B) having a unique code
(see col. 1, ll. 33-59; col. 3, ll. 20-23), a ready indicator LED 92 (see
Fig. 7B; col. 6, ll. 40-42), and a receiver and controller 30 having a
microprocessor 33 (Figs. 3, 8A, 8B).
3. Liotine describes the system as having a garage door opening mode
and a programming mode controlled by, and based upon, the position
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of program mode switch 41 (see Figs. 3, 4; col. 2, l. 62 to col. 4, l. 4;
col. 4, ll. 40-61). When switch 41 is closed the receiver controller
30/33 generates and learns a new randomly generated code for
programming a new uniquely coded remote transmitter 9 (i.e.,
programming mode) (col. 4, ll. 44-54; Fig. 4). “The receiver [30]
continues to transmit the code until the program mode switch 41 is
opened after which the receiver monitors the receiver input port from
the RF section [32] and antenna [31]” (col. 4, ll. 58-61; Fig. 4). The
RF section 32 receives input from the transmitter 9 and in response
controls an access or garage door (col. 2, l. 44 to col. 3, l. 6) (i.e.,
when switch 41 is opened the system goes from programming mode
to door opening mode).
4. Liotine also describes that when a new code has been learned in the
system a new code is detected by “the transmitter which then
produces a flashing ready signal to indicate to the operator that the
programming cycle has been completed” (col. 1, ll. 53-55). When the
programming signal and new code are detected, the transmitter 9
“outputs a flashing ready signal to indicate that the programming
cycle has been completed” (col. 5, ll. 30-34).

ISSUES
Claims 1, 3 to 13, 48, and 50 to 59
With regard to the rejection of independent claims 1 and 48, and
claims 3 to 13 and 50 to 59 depending respectively therefrom, Appellant
argues, inter alia (Br. 9-11), that Liotine fails to teach lighting the LED
indicator 92 based on the controller being in the operating mode, and instead
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discloses lighting LED 92 based on completion of a programming cycle.
Appellant’s main contention in this regard is that column 4, lines 58 to 61 of
Liotine describes an operating mode based on the position of program mode
switch 41 (i.e., whether switch 41 is in program mode or operation mode),
and not the end of the programming cycle (Br. 9-10).
Based on Appellant’s arguments, the following issue is presented: Has
Appellant shown that the Examiner erred in determining that Liotine teaches
a controller cooperating with an indicator to indicate whether a new uniquely
coded remote transmitter has been learned based upon the controller being
switched to a door moving mode, as set forth in independent claims 1 and
48?
Claims 15 to 24, 26 to 29, 31 to 34, 36, 37, 39 to 47, 60, and 62 to 71
With regard to the rejection of independent claims 13, 24, 29, 34, and
60, and claims 16 to 23, 26 to 28, 31 to 33, 36, 37, 39 to 47, and 62 to 71
depending respectively therefrom, Appellant argues, inter alia (Br. 11-13)
that Liotine fails to teach a controller in cooperation with an indicator or that
the transmitter, and not the receiver, causes the indicator to indicate.
Based on Appellant’s arguments, the following issue is presented: Has
Appellant shown that the Examiner erred in determining that Liotine teaches
a controller in cooperation with an indicator for indicating whether a new
uniquely coded remote transmitter has been learned, as set forth in each of
claims 13, 24, 29, 34, and 60?

PRINCIPLES OF LAW
Analysis of whether a claim is patentable over the prior art under
35 U.S.C. § 102 begins with a determination of the scope of the claim. We
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determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as they would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
Appellant has the burden, when on appeal to the Board, to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).

ANALYSIS
Claims 1, 3 to 13, 48, and 50 to 59
Independent claims 1 and 48 recite a remote control system and a
method, respectively, for moving an access door including a uniquely coded
remote transmitter and a controller, the controller being in cooperation with
an indicator for “indicating whether a new uniquely coded remote
transmitter has been learned based upon the controller being switched to the
door moving mode” (claims 1 and 48 (emphasis added)).
The Examiner is correct that (i) Liotine’s “flashing ready signal” from
LED 92 in transmitter 9, indicates that a programming cycle has been
completed (Ans. 3-4, 7-10), and (ii) Liotine’s receiver 30, including program
mode switch 41 and microcomputer 33, cooperates with the indicator 92 to
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indicate a new transmitter has been learned (Ans. 4, 10-11). However,
Liotine’s indication (i.e., flashing ready signal) is based on the position of
program mode switch 41 (FF 3), and is not based on the controller being
switched to a door moving mode.
We agree with Appellant (see Br. 9-11) that Liotine’s column 4, lines
58 to 61 do not teach the recited limitation of indicating whether a new
transmitter has been learned “based upon the controller being switched to the
door moving mode, as recited in independent Claims 1 and 48” (Br. 9).
Instead, this passage from Liotine describes making the indication based on
the position of program mode switch 41 (FF 3), and not based on any action
of controller 30/33.
In view of the foregoing, Appellant has persuasively rebutted the
Examiner's prima facie case of anticipation for claims 1 and 48 (see Ans. 3,
4, 7-10). It follows that anticipation has not been established by the
Examiner because Liotine does not disclose each and every limitation of the
claimed invention as set forth in claims 1 and 48. Atlas Powder Co., 190
F.3d at 1347; Paulsen, 30 F.3d at 1478-79. The same holds true for claims 3
to 12 and 50 to 59 which depend from claims 1 and 48, respectively.
Claims 13, 15 to 24, 26 to 29, 31 to 34, 36, 37, 39 to 47, 60, and 62 to 71
We agree with the Examiner’s findings of fact and determination that
a prima facie case of anticipation has been established with respect to claims
13, 24, 29, 34, and 60 (Ans. 3-4, 10-12), and adopt them as our own, along
with some amplification of the Examiner’s explanation of the teachings of
Liotine (FF 2-4). Based on our findings with regard to Liotine (FF 2-4), and
the reasons that follow, we will sustain the anticipation rejection of claims
13, 15 to 24, 26 to 29, 31 to 34, 36, 37, 39 to 47, 60, and 62 to 71.
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As discussed supra, the Examiner is correct that Liotine’s receiver 30
and controller 33 cooperate with program mode switch 41 and indicator 92
to indicate (i) that a programming cycle has been completed (Ans. 3-4, 7-
10), and (ii) a new transmitter has been learned (Ans. 4, 10-11). See FF 3, 4.
Although Liotine’s indication (i.e., flashing ready signal) is based on the
position of program mode switch 41 (FF 3), and is not based on the
controller being switched to a door moving mode, claims 13, 24, 29, and 34
do not put any limitation on the basis for making the indication (as opposed
to claims 1 and 48, discussed supra, which recite a specific basis for making
the indication). Claim 60 recites that the indication be made “based upon
activation of the at least one remote switch,” a condition which is met by
Liotine’s switch 41 (see FF 3, 4).
Claim 13 (reciting a controller to “cooperate with” an indicator), and
claims 24, 29, and 34 (reciting a controller “cooperating with” an indicator),
under the broadest reasonable construction in light of the specification as
they would be interpreted by one of ordinary skill in the art, merely require
that the controller and the indicator of the remote control system work
together to cause the indicator to indicate “whether a new uniquely coded
remote transmitter has been learned” (claims 13, 24, 29, and 34). See Am.
Acad. of Sci. Tech Ctr., 367 F.3d at 1364. Thus, Appellant’s contentions
(Br. 11-13) that Liotine’s controller does not cooperate with an indicator
because the transmitter determines the programming mode (as opposed to
the receiver), are not persuasive inasmuch as they are not commensurate
with the language of the claims.
Claims 13, 24, 29, 34, and 60 merely recite a remote control method
and system having an indicator, transmitter, and controller. These claims do
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not recite that the indicator or controller be located in a certain place in the
system. Thus, claims 13, 24, 29, 34, and 60 broadly encompass a remote
control system having a controller and an indicator working in cooperation
to make an indication to a user, and do not require that the controller or
indicator be located in a specific location or that the determination that a
programming mode is present be made by the receiver. Claims 13 and 60
add the limitation of a remote switch, and broadly encompass a remote
control method and system in which the remote switch causes the controller
and indicator to work in cooperation to make an indication to a user, and do
not require a specific type of connection (wired or RF) between the remote
switch and the controller or that the remote switch be in a specific location
(other than just generally being “remote”).
Appellant’s contentions with respect to claims 13, 24, 29, 34, and 60
(Br. 11-13), that (i) Liotine fails to teach a controller in cooperation with an
indicator, (ii) and that Liotine’s transmitter, and not the receiver, causes the
indicator to indicate are unconvincing in light of our findings with regard to
Liotine (FF 2-4), and the breadth of these claims as just discussed.
Appellant has not persuasively rebutted the Examiner's prima facie
case of anticipation with respect to claims 13, 24, 29, 34, and 60, as set forth
in the Examiner’s Answer (see generally Ans. 3-4, 10-12). Appellant has
not demonstrated that the Examiner erred in determining that the remote
control method and system of Liotine teaches all of the limitations of claims
13, 24, 29, 34, and 60, including the controller being in cooperation with the
indicator to indicate if a new uniquely coded remote transmitter has been
learned or programmed as set forth in those claims. For the foregoing
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reasons, we will sustain the Examiner’s rejection of claims 13, 24, 29, 34,
and 60.
Appellant presents (Br. 12-13) only nominal arguments with respect
to claims 15 to 23, 26 to 28, 31 to 33, 36, 37, 39 to 47, and 62 to 71, relying
on the dependency of these claims on respective independent claims 13, 24,
29, 34, and 60 for patentability. Accordingly, we will sustain the
Examiner’s rejection of these dependent claims for similar reasons as to
claims 13, 24, 29, 34, and 60.
In view of the foregoing, Appellant has not convincingly
demonstrated that the Examiner erred in rejecting claims 13, 15 to 24, 26 to
29, 31 to 34, 36, 37, 39 to 47, 60, and 62 to 71 under 35 U.S.C. § 102(b) as
being anticipated by the teachings of Liotine (Kahn, 441 F.3d at 985-86),
and we will sustain the Examiner’s rejection as to these claims.

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in determining that
Liotine teaches a controller cooperating with an indicator to indicate whether
a new uniquely coded remote transmitter has been learned based upon the
controller being switched to a door moving mode, as set forth in independent
claims 1 and 48. Accordingly, the Examiner erred in rejecting claims 1, 3 to
12, 48, and 50 to 59 under 35 U.S.C. § 102(b).
Appellant has not shown that the Examiner erred in determining that
Liotine teaches a controller cooperating with an indicator to indicate whether
a new uniquely coded remote transmitter has been learned, as set forth in
independent claims 13, 24, 29, 34, and 60. Accordingly, the Examiner erred
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in rejecting claims 13, 15 to 24, 26 to 29, 31 to 34, 36, 37, 39 to 47, 60, and
62 to 71 under 35 U.S.C. § 102(b).

ORDER
The decision of the Examiner rejecting claims 1, 3 to 12, 48, and 50 to
59 is reversed, and the decision of the Examiner rejecting claims 13, 15 to
24, 26 to 29, 31 to 34, 36, 37, 39 to 47, 60, and 62 to 71 is affirmed.
Accordingly, the decision of the Examiner rejecting claims 1, 3 to 13, 15 to
24, 26 to 29, 31 to 34, 36, 37, 39 to 48, 50 to 60, and 62 to 71 is affirmed-in-
part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

KIS

ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST P.A.
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