Ex Parte Katrak et al

Board of Patent Appeals and Interferences

Jun 2, 2009

10965509 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KERFEGAR K. KATRAK and PAUL A. BAUERLE
____________

Appeal 2009-1849
Application 10/965,509
Technology Center 2800
____________

Decided:1 June 2, 2009
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 3-23, 26, 31-33, and 37-40 (Br. 4).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
According to Appellants, the invention places systems, methods, and
devices into a desired operating state in response to the position of a multi-
position actuator switch. A ternary switching code is employed to
implement multi-state rotary or linear switches capable of identifying any
number of switchable states. As a lever is activated, the states may
correspond to lever positions identified by multiple switches and their
respective positions. (Figs. 4, 5; Abstract; Spec. ¶ 0003).
Exemplary claims 1 and 9 follow:
1. A rotary switching system for providing a control
signal to a controlled component in response to a position of an
actuator selected from among a plurality of adjacent positions,
the switching system comprising:
a first switching input configured to provide a first
ternary value as a function of the position of the actuator with
respect to a first set of switching contacts, wherein the first
ternary value is selected from a low reference value, a high
reference value, and an intermediate value, each of the low
reference value, high reference value and intermediate value
representing an electrical voltage;
a second switching input configured to provide a
second ternary value selected from the low reference value, the
high reference value and the intermediate value as a function of
the position of the actuator with respect to a second set of
switching contacts; and

2 Appellants’ Brief (filed Dec. 10, 2007) (“Br.”) and the Examiner’s Answer
(mailed Feb. 21, 2008) (“Ans.”) detail the parties’ positions.
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decoding circuitry comprising first and second
analog-to-digital converters configured to receive the first and
second ternary values, respectively, and further comprising
processing logic configured to produce the control signal in
response to the first and second ternary values, wherein the
plurality of adjacent positions are arranged to define a rotary
switch such that any change from any one position of the rotary
switch to an adjacent position of the rotary switch is
represented by a change in only a single one of the first and
second ternary values, with the other one of the first and second
ternary values remaining unchanged, for every one of the
plurality of adjacent positions.
9. The switching system of claim 8 wherein the plurality
of adjacent positions are defined by the first and second ternary
values (Inputl and Input2) as follows:
State Input1 Input2
1 v v
2 v 0
3 0 0
4 0 v
5 0 1
6 v 1
7 1 1
8 1 v
9 1 0

The Examiner relies on the following prior art reference:
Brandestini US 5,519,393 May 21, 1996
The Examiner rejected claims 1, 3-8, 18-21, and 31-33 as anticipated
under 35 U.S.C. § 102(b) based on Brandestini.
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The Examiner rejected claims 9-17, 22, 23, 26, and 37-40 as obvious
under 35 U.S.C. § 103(a) based on Brandestini.3

ISSUES
Did Appellants demonstrate that the Examiner erred in finding that
Brandestini discloses a first and second set of switching contacts as set forth
in claim 1?
Did Appellants demonstrate that the Examiner erred in finding that
Brandestini suggests the first and second ternary values recited in claim 9?
Did Appellants demonstrate that the Examiner erred in finding that
Brandestini suggests a control signal that indicates a default condition when
the first and secondary ternary values are each in the intermediate state as
recited in claim 40?

FINDINGS OF FACT (FF)
Appellants’ Disclosure
1. Appellants’ Specification states: “Switch contacts 212 are any
devices, circuits or components capable of producing a binary, ternary or
other appropriate output on conductor 106” (Spec. ¶ 0021; see also Figs. 2,
3).
2. Appellants describe the different input states arbitrarily with
varying types of nomenclature for ternary states:
As used herein, input state 404 is arbitrarily referred to
as ‘1’ or ‘high’ and corresponds to a short circuit to Vref, B+ or

3 The Examiner (Ans. 5) and Appellants (Br. 10) erroneously refer to claims
24, 25, 27, and 28 as being rejected also, but those claims are not pending
and therefore not before us (see Br. 25, 26).
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another high reference voltage. Similarly, input state 408 is
arbitrarily referred to as ‘0’ or ‘low’, and corresponds to a
short circuit to ground or another appropriate low reference
voltage. Intermediate input state 406 is arbitrarily described as
‘value’ or ‘v’, and may correspond to an open circuit or other
intermediate condition of switch 212. Although these
designations are applied herein for consistency and ease of
understanding, the ternary states may be equivalently described
using other identifiers such as “0”, “1” and “2”, “A”, “B” and
“C”, or in any other convenient manner. The naming and signal
conventions used herein may therefore be modified in any
manner across a wide array of equivalent embodiments.
(Spec. ¶ 0031) (emphasis added).
Brandestini
3. Brandestini discloses four sets of sliding contacts 34, 35, 36, and
37, each depicted as having dual prongs (a pair of contacts) distributed along
a track 31. Different positions of the track are either grounded via a sliding
contact 32, connected to the supply voltage via a sliding contact 33, or left
open or floating. (Fig. 3; col. 5, ll. 7-12).
4. The four sets of contacts each connect to a separate line with each
line feeding a set of comparators. Each line produces, with the comparators,
one of three voltage values depending on the position of the particular
contact set, corresponding to low, intermediate or open, and high
(respectively corresponding to 2, 0, and 1) ternary voltage values. The four
lines produce a ternary code word. (Col. 5, ll. 13-30; Figs. 3, 4).
5. Brandestini discloses, as depicted infra in FF 7, a sequence of 24
code triplets represented by 24 columns, with the first column “012”, and the
twenty fourth column “212” (Fig. 2b; see also col. 4, ll. 20-39). This ternary
coding scheme applies to Brandestini’s “contacting, magnetic and capacitive
examples” (col. 7, ll. 43-46) which include the examples in Figures 1 and 3
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described above in FF 3 and FF 4 (see also col. 4, ll. 40-49; col. 5, ll. 51-59).
“[A]djacent code words in the output sequence of Fig. 2b differ in exactly
one digit” (col. 4, ll. 34-35).
6. Brandestini generally discloses 27 possible ternary code states,
“[f]or simplicity” (col. 4, ll. 17-18), which include the 24 code states
described supra in FF 5. The 24 code states are obtained by eliminating, in
sensor schemes employing equally spaced sensors, the three code patterns
having three identical code digits. In other words, the codes 000, 111, and
222 are not employed in embodiments having equally spaced sensors. (Col.
4, ll. 17-39; Figs. 2a, 2b).
7. Brandestini’s Figure 2b is depicted below.

The table above depicts 24 columns having the 24 possible ternary code
words described supra in FF 5 and FF 6.
8. Brandestini summarizes the disclosed invention as sensing absolute
positions of a first member with respect to a second member supported for
relative movement, by sensing codes at a plurality of positions along the
second member (col. 1, l. 60 to col. 2, l. 9). Increasing the number of
contacts increases the resolution or number of possible code states sensed.
Ternary codes reduce the number of contacts required as compared to binary
codes. (Col. 3, ll. 50-63; col. 7, ll. 43-46; col. 8, ll. 13-18).

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PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Under § 102, 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).
Under § 103, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-17
(2007), after outlining certain principles underlying the demonstration of
obviousness, stated:
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.
Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner makes such a demonstration, the burden then shifts to
Appellants to overcome the prima facie case with arguments and/or
evidence. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See Oetiker, 977
F.2d at 1445.
During examination of a patent application, the PTO “is obligated to
give claims their broadest reasonable interpretation during examination.” In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
“[T]he words of a claim ‘are generally given their ordinary and customary
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meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(en banc) (citations omitted). “‘[C]laims must be construed so as to be
consistent with the specification, of which they are a part.’” Id. at 1316
(citation omitted). However,
[t]hough understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
“It is the applicants’ burden to precisely define the invention, not the
PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“The problem
in this case is that the appellants failed to make their intended meaning
explicitly clear.”).

ANALYSIS
Claims 1, 3-8, 18-21, and 31-33
Appellants argue (Br. 11) that the Examiner erred (Ans. 4) in finding
that Brandestini anticipates claims 1, 31, and 37, contending that Brandestini
fails to disclose the first and second sets of contacts.4 Appellants state (Br.

4 Appellants assert (Br. 11-12), based on similar arguments without more
than nominal distinctions, that Brandestini does not anticipate claims 1, 31,
and 37. However, the Examiner rejected (Ans. 5-7) claim 37 as obvious
over Brandestini and responded (Ans. 9, 10) to Appellants’ arguments. The
findings and responses are reasonable. Appellants’ arguments do not
address the obviousness rejection and therefore fail to demonstrate error
with respect to claim 37. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), claim 1 is
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11): “[T]he claims recite that the two ternary values are provided with
respect to two separate sets of switching contacts. The Brandestini
reference does not anticipate this feature, as described more fully below.”
Appellants then describe features of “Brandestini’s FIG. 10” (id.).
However, the Examiner cited Figures 1 and 3 of Brandestini as
disclosing at least two separate sets of contacts from the group of contacts
34-37 with each one a set providing a ternary value (Ans. 3, 4, 7-9). As the
Examiner also found, “Brandestini discloses that the switching inputs (figure
3, items 34-37) use a two-pronged sensor to detect the voltage at two
different points” (Ans. 8). Brandestini reasonably supports the Examiner’s
findings–one pair of prongs on each contact constitutes a set (FF 3, 4).
Moreover, the Examiner’s finding with respect to Brandestini’s
“contacts” (see Ans. 7-9) is consistent with Appellants’ disclosed contacts
which include “any devices” capable of producing ternary codes (FF 1), and
is supported by the record (FF 3-7). “It is the applicants’ burden to precisely
define the invention, not the PTO’s.” Morris, 127 F.3d at 1056 (“The
problem in this case is that the appellants failed to make their intended
meaning explicitly clear.”).
Thus, Appellants’ reliance on Brandestini’s Figure 10 fails to
demonstrate that the Examiner erred in finding that Brandestini discloses
first and second switching contacts with each providing ternary values as set
forth in claims 1 and 31. Therefore, we sustain the Examiner’s rejection of
claims 1 and 31, and claims 3-8, 18-21, 32, and 33, not separately argued.
Claims 9-17, 22, 23, 26, 37, and 38

selected to represent claims 1, 3-8, 18-21, and 31-33, rejected as anticipated
by Brandestini.
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The Examiner rejected claims 9-17, 22, 23, 26, 37, and 38 as obvious
based on Brandestini. Appellants focus on the Examiner’s reliance on In re
Boesch, 617 F.2d 272 (CCPA 1980) and assert that “the Examiner has failed
to provide an adequate reason for rejecting our claims” (Br. 12). However,
Appellants fail to address the Examiner’s following findings:
Although Brandestini figure 2b is not properly lined up, the
figure represents the sensor values produced as a function of
each actuator position (each column is a different position). It
would be obvious to one skilled in the art to label each of the
columns (actuator positions) in any manner deemed most
efficient by the user. For example, the columns may be
numbered 1 through 27 [sic–24]5 by starting on the left or the
columns may be numbered by starting on the right. Further, as
long as the adjacent columns follow the gray code rules (col. 4,
lines 3-14), it does not matter which column is the left-most or
right-most. Lastly, the name of each column can consists [sic]
of letters, colors or symbols instead of numbers.
The function of the switching system is not affected by
naming or numbering the actuator positions. Contrary to
appellants’ arguments (Appeal Brief, page 15, lines 12-15),
numbering one of a finite actuator positions does not provide
the claimed benefits . . . . Which specific position is labeled as
“position 2” is entirely arbitrary.
(Ans. 11).
In other words, the Examiner found that selecting any group of codes
from Brandestini’s list of 24 or 27 codes would have been obvious and
“entirely arbitrary.” That is, while Appellants recite a specific set of nine

5 Brandestini discloses both 24 and 27 possible code state schemes but there
are only 24 columns and corresponding codes in the example the Examiner
references (FF 5-7).
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ternary codes corresponding to two inputs in claim 9,6 specifying a specific
number of codes, such as nine from the group of 24 columns, would have
been obvious according to the desired number of actuator positions; whereas
the specific group of nine chosen is arbitrary. Appellants’ disclosure
similarly characterizes the specific codes and states assigned to the inputs as
“arbitrarily described” (FF 2).
Appellants’ lack of response to the Examiner’s articulated rationale
fails to demonstrate error. Assigning code values to a finite set of states
from Brandestini’s finite set of 24 (or 27–see supra n.5) switch code states
amounts to no more than, at most, predictably choosing a finite set of prior
art code states from a finite group of known code states. Assuming
arguendo that claim 9 is limited to the 9 states recited,7 skilled artisans
would have predictably tailored a specific number of sensed states (and their
respective arbitrary ternary codes) to correspond to the desired resolution
and sensed positions as Brandestini suggests (see FF 8).
Alternatively, Appellants’ claim 9 does not recite any order relating
the “states” to the “plurality of adjacent positions,” nor does it preclude more
states and more inputs, such as those disclosed by Brandestini (FF 3-8).
Also, as determined above, the claimed states can be in any arbitrary order.8

6 Claim 9 is selected to represent claims 9-17, 22. 23, 26, 37, and 38
pursuant to 37 C.F.R. § 41.37(c)(1)(vii), since Appellants argue the claims
together as a group without separate arguments therefor (Br. 12-16).
7 Appellants do not specifically argue such a limitation, and claims 22, 23,
and 26, argued together with claim 9, respectively recite 27, 26, and 26
states.
8 Claim 10 assigns multiple states to different inputs and contacts without
any specific order. Therefore, claim 9, from which claim 10 depends,
requires no specific order between states and inputs, or sensed positions.
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As such, the top two rows of input values in columns 15, 17, 18, 14, 2, 20, 4,
12, and 5 of Brandestini’s Figure 2b (see FF 7) respectively correspond to
states 1 through 9 as recited in the table of claim 9. Thus, Brandestini, at a
minimum, suggests the nine recited states and their ternary values.
Finally, as another alternative, as the Examiner found (see supra
quotation accompanying n.5), such arbitrary designations of inputs to states
do not change how the switch functions. Therefore, different ternary values
for arbitrarily designated states without a specific relation between the listed
order of states to any specific set of switch positions constitute nonfunctional
descriptive material.9 This claim interpretation is buttressed by the fact that
Appellants merely recite “Input1” and “Input2” in claim 9, without a clear
reference to the first and second switching inputs in claim 1. Thus, “Input1”
and “Input2” reasonably merely refer to arbitrary code values (see FF 2)
assigned to implied voltage patterns, as opposed to any implied voltage
pattern assigned to a substrate.10 Moreover, the first and second inputs

9 Non-functional descriptive material cannot render patentable an otherwise
unpatentable product or process. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). See also Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005)
(Informative Op.) (aff’d, Rule 36, Fed. Cir., slip op. 06-1003, June 2006)
(“Common situations involving non-functional descriptive material [include]
. . . a computer that differs from the prior art solely with respect to
nonfunctional descriptive material that cannot alter how the machine
functions (i.e., the descriptive material does not reconfigure the computer) . .
. .”).
10 Even if claim 1 implies a “substrate” from “adjacent positions . . .
arranged to define a rotary switch,” and even if “Input1” and “Input2” are
assigned to “adjacent positions,” the table in claim 9 does not a specify
which “State” (corresponding to Input1 and Input2) corresponds to which
position–i.e., the table in claim 9 specifies no order, notwithstanding the
listed order. Moreover, even if each “State” 1-9 in claim 9 corresponds to
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recited in claim 1 also do not necessarily correspond to any physical inputs
on a substrate, because the input values are arbitrarily defined, as noted
above (see FF 2).11
Therefore, we will also sustain the Examiner’s rejection of claim 9,
and claims 10-17, 22, 23, 26, 37, and 38, which were not separately argued.
Claims 39 and 40
Appellants argue claims 39 and 40 as a group (Br. 16-17).
Accordingly, pursuant to 37 C.F.R. § 41.37(c)(1)(vii), claim 40 is selected as
representative. Claim 40, in pertinent part, requires the control signal to
indicate “a default condition when the first and second ternary values are
each in the intermediate state.” The Examiner found, without any rebuttal
by Appellants, that any one of Brandestini’s switch positions can be
designated as a “default condition” (Ans. 12).
Brandestini also discloses several columns designating code states
wherein two input rows of the column correspond to equal intermediate
values “0” (FF 7 - see, e.g., col. 6 “002”; col. 10 “100”). The equal
intermediate values “0” correspond to open circuits and/or intermediate
voltages in a ternary scheme (FF 3, 4). At a minimum, it would have been
obvious to label any one or several of Brandestini’s code states, including
those having equal intermediate or open values, as a “default condition.” An

“adjacent positions” 1-9, each code set (v, v); (v, 0) . . . is “arbitrary” as
noted above–see also infra n.11.
11 Neither the Specification nor claim 9 precludes an interpretation whereby
the switches sense various voltages and convert such voltages to arbitrarily
defined ternary code inputs 404, 406, 408 (see FF 2)–i.e., the first and
second inputs recited in claims 1 and 9 can be arbitrarily defined codes or
values without any structural ties to such voltages.
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open voltage implies or suggests a “default condition” of no specific voltage
(i.e., ground or high) tied to the switch in that position.
Appellants assert (Br. 17) that Brandestini “teaches away” from
claims 39 and 40 because “Brandestini expressly states that states with equal
values are ‘forbidden’ and would not work ‘since they would repeat
themselves.’” However, as the Examiner found (Ans. 12), again without
rebuttal by Appellants, Brandestini at most only teaches away from such
forbidden states when the sensors are equally spaced (FF 6). Moreover,
Brandestini does not forbid equal states for two of the three inputs (FF 7 see,
e.g., col. 6 “002”; col. 10 “100”). That is, as explained above, Brandestini
discloses several code states wherein two of the three rows have equal
intermediate values, thereby meeting the argued limitations of claim 40.
As such, Appellants have failed to demonstrate that the Examiner
erred in finding claims 39 and 40 obvious based on Brandestini.
Accordingly, we will also sustain the Examiner’s rejection of claims 39 and
40.

CONCLUSION
Appellants did not demonstrate that the Examiner erred in finding that
Brandestini 1) discloses a first and second set of switching contacts as set
forth in claim 1; 2) suggests the first and second ternary values recited in
claim 9; and 3) suggests a control signal that indicates a default condition
when the first and secondary ternary values are each in the intermediate state
as recited in claim 40.

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DECISION
We affirm the Examiner's decision rejecting claims 1, 3-23, 26, 31-33,
and 37-40.
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

babc

CHRISTOPHER DEVRIES
General Motors Corporation
Mail Code 482-C23-B21
P.O. Box 300
Detroit, MI 48265-3000