Ex parte Gilliam et al.

Board of Patent Appeals and Interferences

Feb 26, 1998

08368026 (B.P.A.I. Feb. 26, 1998)

Application for patent filed January 3, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DANNY W. GILLIAM and WADE C. PATTERSON
__________
Appeal No. 97-1177
Application 08/368,0261
___________
ON BRIEF
___________
Before CALVERT, Administrative Patent Judge, McCANDLISH, Senior Administrative
Patent Judge, and MEISTER, Administrative Patent Judge.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3, 6 and 8 to 20, all the
claims remaining in the application.
The appealed claims are drawn to a system for, and method of, controlling the
Appeal No. 97-1177
Application 08/368,026
In an advisory action dated October 7, 1996 (Paper No. 13), the examiner2
stated that the rejection of claims 12 and 14 on this ground was overcome by the
amendment filed September 3, 1996.
2
flow of water to a water rinsing device, such as a faucet or urinal, and are reproduced
in the appendix to appellants’ brief.
The reference applied in the final rejection is:
Shiba et al. (Shiba) 5,133,095 Jul. 28, 1992
The appealed claims stand finally rejected on the following grounds:
(1) Claims 1, 15 and 19, unpatentable for failing to comply with 35 U.S.C. § 112,
second paragraph.2
(2) Claims 1, 3, 6, 8 to 11 and 14 to 16, anticipated by Shiba, under 35 U.S.C.
§ 102(b).
(3) Claims 6, 8, 12 to 14 and 17 to 20, unpatentable over Shiba, under 35 U.S.C.
§ 103.
Rejection Under 35 U.S.C. § 112, Second Paragraph
This rejection is not mentioned in appellants’ brief. Under normal circumstances,
we would remand the application to the examiner to provide appellants with a one-
month period to file a supplemental brief. See M.P.E.P. § 1206, third paragraph of
“APPEAL BRIEF CONTENT” section.
However, in the present case, we are entering pursuant to 37 CFR § 1.196(b) a
Appeal No. 97-1177
Application 08/368,026
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new ground of rejection, also under 35 U.S.C. § 112, second paragraph. Therefore, in
the interest of administrative efficiency, we will sustain the examiner’s § 112 rejection,
pro forma, and incorporate the grounds of that rejection in our own rejection under 37
CFR § 1.196(b). Appellants will then have the opportunity to respond as specified in
parts (1) and (2) of § 1.196(b).
The fact that we find a number of the claims to be indefinite does not here
preclude our consideration of the merits of the rejections of those claims under 35
U.S.C. § § 102 or 103. Cf. Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. &
Int. 1993).
Rejections Under 35 U.S.C. § § 102(b) and 103
We will not sustain either of these rejections. The independent claims recite,
inter alia, the following:
Claim 1: “visible light intensity sensor means positioned to sense a decrease of
visible light responsive to said object approaching said water rinsing device and for
generating an electrical signal indicative of said decrease of visible light;”
Claim 11: “visible light sensor means for generating an electrical current
responsive to the presence of said user;”
Claim 12: “a visible light sensor to detect an object in substantial proximity to
said water rinsing device,”
Claim 19: “(1) testing, at said predetermined intervals, visible light sensor means
for sensing the approach of said user to said faucet;”
Appeal No. 97-1177
Application 08/368,026
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Shiba does not disclose a visible light sensor as recited in these claims. The
visible light sensor of Shiba, element 5a, is not responsive to an object or user as
recited in these claims, but rather is used “to detect a brightness of the place
surrounding the urinal basin 1, such as the interior of a bathroom or toilet” (col. 1, lines
57 to 59). The examiner’s statement at page 6 of the answer that Shiba’s photocell is
operable for generating an electrical signal due to a shadow is not borne out by the
reference’s disclosure that the sensor 5a does not provide a signal when the area is
dark, “for example while a light of a bathroom or toilet is kept turned off,” but does
provide a signal when it detects “brightness” of the area, ”such as when the bathroom
light is turned on” (col. 2, lines 42 to 53). There is no disclosure that element 5a
detects the approach, presence or proximity of any person or object.
Since Shiba does not disclose, expressly or inherently, the above-noted
limitations of claims 1 and 11, it cannot constitute an anticipation of them; likewise,
since there is no evidence that the above-noted limitations of claims 12 and 19 which
are not present in Shiba would have been obvious therefrom, the rejection of those
claims under § 103 is untenable. The rejections of the claims dependent on claims 1,
11, 12 or 19 under § 102(b) or § 103 (as applicable) likewise cannot stand.
Rejection Under 37 CFR 1.196(b)
Pursuant to 37 CFR 1.196(b), claims 1, 3, 6, 8 to 10, 12, 13, 15 and 17 to 20 are
rejected under 35 U.S.C. § 112, second paragraph, for failing to particularly point out
Appeal No. 97-1177
Application 08/368,026
All references herein to particular lines of claims are to the claims as3
reproduced in the appendix to appellants’ brief.
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and distinctly claim the subject matter which appellants regard as their invention, for the
following reasons:
(1) A number of terms lack antecedent basis in the claims: “said water rinsing
system” (claim 1, line 4; claim 8, line 1; claim 9, line 1; claim 10, line 4); “said infrared3
sensor” (claim 1, line 22); “said urinal” (claim 15, lines 3 and 5); “said predetermined
levels” (claim 19, lines 4, 7 and 20).
(2) The examiner found claim 1 to be indefinite because it was unclear whether
the “water flow control means” (line 2) and “water rinsing device” (lines 2 and 3) were
intended to be part of the claimed combination (answer, page 5). Looking at claim 1 in
isolation, we consider that since these elements are recited in the preamble of the
claim, it might well be assumed that they are not claimed. However, each of dependent
claims 6, 8 and 9 contains only limitations relating to the preamble of claim 1; for
example, claim 8 defines the water rinsing system [sic] as a faucet. Since a dependent
claim must further limit a claim from which it depends, see 37 CFR § 1.75(c) and Ex
parte Hansen, 99 USPQ 319, 321 (Bd. App. 1953), the existence of claims 6, 8 and 9
would seem to indicate that the elements recited in the preamble of claim 1 do form a
part of the combination claimed. This lack of precision as to the scope of claim 1
causes it to be indefinite. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
Appeal No. 97-1177
Application 08/368,026
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1759 (Fed. Cir. 1994).
(3) Claim 12 recites a paired infrared transmitter and receiver in lines 8 and 9,
and then recites in lines 26 and 27 (step (4)) testing “a” receiver of said paired infrared
transmitter and receiver. The term “a receiver” implies that the paired transmitter and
receiver includes more than one receiver, but only one receiver is recited, thus
rendering the language of the claim indefinite and inconsistent. Apparently “a” should
have been --said-- or --the--.
Conclusion
The examiner’s decision to reject the claims on appeal under § 102(b) or § 103
is reversed, and to reject claims 1, 15 and 19 under § 112, second paragraph, is
affirmed. Claims 1, 3, 6, 8 to 10, 12, 13, 15 and 17 to 20 are rejected pursuant to 37
CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one or more claims, this
decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b) (amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10,
1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that “[a] new ground of rejection shall not be considered final for
purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1/197(b) provides:
(b) Appellant may file a single request for rehearing
Appeal No. 97-1177
Application 08/368,026
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within two months from the date of the original
decision . . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner . . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals
and Interferences upon the same record . . . .
Should the appellants elect to prosecute further before the Primary Examiner
pursuant to 37 CFR § 1.196(b)(1), in order to preserve the right to seek review under
35 U.S.C. § § 141 or 145 with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before the examiner unless,
as a mere incident to the limited prosecution, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner and this does not result
in allowance of the application, abandonment or a second appeal, this case should be
returned to the Board of Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for rehearing thereof.
Appeal No. 97-1177
Application 08/368,026
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No time period for taking any subsequent action connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART, 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
HARRISON E. McCANDLISH, Senior )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES M. MEISTER )
Administrative Patent Judge )
Appeal No. 97-1177
Application 08/368,026
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Mr. Phillips
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Suite K
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