Ex Parte Keller et al

Board of Patent Appeals and Interferences

Jan 17, 2012

09842346 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/842,346 04/25/2001 Robert Roy Keller JR. 5569/70550 6975
22242 7590 01/18/2012
FITCH EVEN TABIN & FLANNERY
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
01/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ROBERT ROY KELLER JR., JOSEPH JOHN CACCIATORE and
MARK A. McCARTHY

Appeal 2009-013721
Application 09/842,346
Technology Center 2600
______________

Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and THOMAS S.
HAHN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013721
Application 09/842,346
2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 and 3 through 21.
We reverse.

INVENTION
The invention is directed to a transmitter which includes several
transmit keys and is programmable for transmitting a plurality of different
modulations and frequencies. The transmitter is programmed in learning
mode by using a set of switches which define the signal configuration
associated with a specific transmit key. See Specification pages 5 and 6.
Claim 1 is representative of the invention and reproduced below:

1. A transmitter for transmitting security codes at a plurality of
modulations and frequencies comprising:

a plurality user manipulatable signal configuration switches
which are adjusted by an operator to define signal configuration
settings for transmitter signals, the signal configuration settings
comprising at least a code to be transmitted by the transmitter;

a plurality of user manipulatable transmit initiation keys;

a controller responsive to the signal configuration switches
during a learn mode for storing the signal configurations defined by
the signal configuration switches in a memory location in association
with selected ones of the user manipulatable transmit initiation keys;

apparatus responsive to user interaction with each transmit
initiation key during an operate mode for retrieving the signal
configuration stored in association therewith; and

transmitter circuitry for transmitting the retrieved signal
configuration received from the controller at a predetermined
frequency.
Appeal 2009-013721
Application 09/842,346
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REFERENCES
Heitschel US 4,750,118 Jun. 7, 1988
Fischer US 5,552,641 Sep. 3, 1996
Tsui US 6,249,673 B1 Jun. 19, 2001
Allen US 6,366,198 B1 Apr. 2, 2002
Tsui US 6,556,813 B2 Apr. 29, 2003

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 4, 5, 8, and 9 under 35 U.S.C.
§ 102(e) as being anticipated by Tsui (‘673). Answer 3-5.1
The Examiner has rejected claims 3 and 10 under 35 U.S.C. § 103(a)
as being unpatentable over Tsui (‘673) and Tsui (‘813). Answer 5-6.
The Examiner has rejected claims 6 and 16 through 19 under 35
U.S.C. § 103(a) as being unpatentable over Tsui (‘673). Answer 6-8.
The Examiner has rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Tsui (‘673) and Fischer. Answer 8-9.
The Examiner has rejected claims 11 through 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Tsui (‘673), Tsui (‘813) and Allen.
Answer 9-10.
The Examiner has rejected claims 20 and 21 under 35 U.S.C. § 103(a)
as being unpatentable over Tsui (‘673) and Heitschel. Answer 10.

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
June 19, 2006.
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Application 09/842,346
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ISSUES
Appellants argue on pages 7 and 8 of the Brief 2 that the Examiner’s
anticipation rejection is in error. Appellants argue that Tsui (‘673) discloses
a single type of switch (switches S1-Sn) which are associated with and recall
a particular parameter set. Brief 8. Appellants argue these switches do not
define signal configuration settings including a code to be transmitted for
storage in memory as claimed. Brief 7. These arguments present us with
the issue: did the Examiner err in finding that Tsui (‘673) teaches switches
which define signal configuration settings including a code to be transmitted
for storage in memory location associated with transmit initiation keys?
Appellants’ arguments directed to the obviousness rejections present
us with the same issue as the anticipation rejection.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We agree with Appellants’
conclusion that the Examiner erred in finding that Tsui (‘673) teaches
switches which define signal configuration settings including a code to be
transmitted for storage in a memory location associated with transmit
initiation keys. Independent claim 1 recites a transmitter which includes
configuration switches that define signal configurations, and in a learn mode
the configurations are stored in memory locations associated with transmit
initiation keys. Independent claims 8 and 9 include similar limitations. The
Examiner finds that the switches S1-Sn of Tsui perform both of these

2 Throughout this opinion we refer to Arguments presented in the Appeal
Brief received March 30, 2006.
Appeal 2009-013721
Application 09/842,346
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functions. Answer 11. We disagree with the Examiner’s finding. We
concur with Appellants’ characterization of Tsui, that the transmitter
includes a detection circuit which determines the signal configuration
settings, frequency and modulation parameters, as read from a template
remote controller. Brief 7. These signal parameters are associated with
switches S1-Sn but the switches do not define the signal parameters. Thus,
we do not find that Tsui (‘673) discloses all of the elements of independent
claims 1, 8 and 9, and we will not sustain the Examiner’s anticipation
rejection of claims 1, 4, 5, 8, and 9.
The Examiner’s obviousness rejections rely upon similar findings
regarding Tsui (‘673), and the Examiner has not shown that any of the
additional references teach such a modification to Tsui is obvious.
Accordingly, we will not sustain the Examiner’s rejections of claims 3, 6, 7,
and 10 through 21 under 35 U.S.C. § 103(a).

SUMMARY
Appellants arguments have persuaded us of error in the Examiner’s
rejection of claim 1, 4, 5, 8, and 9 under 35 U.S.C. § 102(e) and the
rejections of claims 3, 6, 7, and 10 through 21 under 35 U.S.C. § 103(a).
ORDER
The decision of the Examiner to reject claims 1 and 3 through 21 is
reversed.

REVERSED
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