Ex Parte Khalsa et al

Patent Trial and Appeal Board

Mar 24, 2016

12587169 (P.T.A.B. Mar. 24, 2016)

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.
12/587,169 10/03/2009 Kamlapati Khalsa ZIL-845 4006
47713 7590 03/25/2016
IMPERIUM PATENT WORKS
P.O. BOX 607
Pleasanton, CA 94566
EXAMINER
LUONG, HENRY T
ART UNIT PAPER NUMBER
2844
MAIL DATE DELIVERY MODE
03/25/2016 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
____________

Ex parte KAMLAPATI KHALSO, YEFIM GLUZMAN, QUYEN TRAN,
and DAVID D. EATON
_____
____________

Appeal 2014-003272
Application 12/587,169
Technology Center 2800
____________
Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1–20 of Application 12/587,169
filed October 3, 2009. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 Appellants identify the real party in interest as IXYS Corp. (App. Br. 1).
Appeal 2014-003272
Application 12/587,169
2
BACKGROUND
The subject matter on appeal relates to a method and apparatus for
turning off a fluorescent lamp using a wireless fluorescent lamp starter.
App. Br. 2. Claims 1 and 19 are illustrative and reproduced from the Claims
Appendix of the Appeal Brief as follows:
1. A method of dimming a multi-lamp fluorescent light fixture
comprising:
(a) turning off a first fluorescent lamp using a first wireless
fluorescent lamp starter unit, wherein the first fluorescent lamp
is taken from a plurality of illuminated fluorescent lamps of the
multi-lamp fluorescent light fixture.
19. An apparatus comprising:
a first fluorescent lamp coupled to a first ballast, wherein the
first ballast is adapted to receive an Alternating Current (AC)
line voltage from an AC line voltage supply;
a second fluorescent lamp coupled to a second ballast, wherein
the second ballast is adapted to receive the AC line voltage
from an AC line voltage supply; and
means for turning off the first lamp and the second lamp at
substantially the same time without disconnecting the AC line
voltage supply, and subsequently turning on the second lamp
without turning on the first lamp.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Budike US 2008/0111498 A1 May 15, 2008

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THE REJECTIONS
1. Claim 20 stands rejected under 35 U.S.C. § 112, first paragraph,
for lack of enablement.2
2. Claims 1, 3, 4, 7–14, and 17–19 stand rejected under 35 U.S.C.
§ 102(a) as anticipated by Budike.
3. Claims 2, 5, 6, and 15–20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Budike.
DISCUSSION
1. § 112 Enablement Rejection
To be enabling, the specification of a patent must teach those skilled in
the art how to make and use the full scope of the claimed invention without
‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d
1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993)). “The scope of the claims must be less than or equal to the scope
of the enablement to ensure that the public knowledge is enriched by the
patent specification to a degree at least commensurate with the scope of the
claims.” Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008)
(quoting Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166
F.3d 1190, 1195-96 (Fed. Cir. 1999)); see also In re Fisher, 427 F.2d 833,
839 (CCPA 1970) (“[T]he scope of the claims must bear a reasonable

2 The propriety of the Examiner’s claim objections (Non-final Act. (mailed
Jan. 28, 2013) (hereinafter, “Non-final Act.”) 3; Ans. 2; App. Br. 7–8; Reply
Br. 5–6) is petitionable, not appealable to the Board. See MPEP §
1002.02(c)(4) (Rev. 2, May 2004).

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correlation to the scope of enablement provided by the specification to persons
of ordinary skill in the art.”).
When rejecting a claim under the enablement requirement of § 112,
the Examiner bears an initial burden of setting forth a reasonable explanation
as to why the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the specification of
the application; this includes providing sufficient reasons for doubting any
assertions in the specification as to the scope of enablement. In re Wright,
999 F.2d 1557, 1561–62 (Fed. Cir. 1993). If the Examiner meets this
burden, the burden then shifts to the Applicant to provide suitable proofs
indicating that the specification is indeed enabling. Id., citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971).
The Examiner concludes that Appellants’ Specification (hereinafter
“Spec.”) would not have enabled a person of ordinary skill in the art to make
the apparatus of claim 20, which depends from claim 19 and recites the
additional limitation that “the means turns off the second lamp and
subsequently turns on the second lamp within one millisecond.” Non-final
Act. 4. Specifically, the Examiner concludes that the Specification does not
enable turning on the second lamp within one millisecond of turning it off.
Id. Appellants argue that under the factors set forth by the Court of Appeals
for the Federal Circuit in In re Wands, 858 F.2d 731 (Fed. Cir. 1988),
experimentation would not have been undue, particularly because parent
claim 19 is admittedly enabled, and the Specification describes how to turn
on and off a fluorescent light using a starter unit. App. Br. 9; Spec. ¶¶ 45–
47. Appellants further dispute the Examiner’s finding that turning on a lamp
after turning it off “is different and more difficult than merely turning on the
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lamp” and argue that there is no factual basis for the Examiner’s assertion
that turning on a fluorescent lamp within one millisecond of turning it off
would be beyond the level of ordinary skill in the art. Reply Br. 7; Ans. 3.
Appellants’ arguments are persuasive of reversible error in the
rejection. The Examiner has not met the burden of providing a reasonable
explanation why the Specification would not have enabled turning on the
second lamp within one millisecond of turning it off. The Examiner’s belief
that the feature of claim 20 would require an “added structure to the circuit,
which has not been clearly disclosed” is not supported by sufficient
reasoning, and does not take into consideration whether undue
experimentation would have been necessary. Ans. 3; see In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). Accordingly, we reverse the rejection of
claim 20 for lack of enablement.
2. § 102(b) Rejection
We reverse the rejection, and therefore need address only the
independent claims, i.e., claims 1, 13, and 19.
Claims 1 and 13
Claims 1 and 13 require turning off a fluorescent lamp using a
wireless fluorescent lamp starter unit. The Examiner relies upon the
transceivers disclosed in Budike as corresponding to Appellants’ first and
second wireless fluorescent lamp starter units. Non-final Act. 5; Budike Fig.
5, 105c.3 As set forth in the Board’s Opinion in Appellants’ appeal 2013–
009356 relating to application 12/587,130, which relates to similar subject

3 The Board’s Opinion in appeal 2013-009356 concerning application
12/587,130 relates to similar subject matter and also included a rejection
over Budike.
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matter and also included a rejection over Budike’s transceivers (105c) are
connected to sets of hallway fixtures (705), apply a signal to each transceiver
(105c)’s interface cable (120)’s interface jack (115)’s on/off pin (1), and
may have the same address so that all of the hallway fixtures can be
commanded to turn on and off simultaneously (¶¶ 31, 71–72; Figs. 1, 2A,
2B, 7).
The Examiner finds that Figs. 5A and 7 of Budike describe a wireless
fluorescent lamp starter because transceivers (105c) send an “on” signal to
the hallway fixtures (705), and initiate turn off of the hallway fixtures by
applying an “off” signal to their interface cable (120)’s interface jack (115)’s
on/off pin (1) (Ans. 4–5). The Examiner further finds that the broadest
reasonable interpretation of “starter unit” encompasses both traditional and
electronic fluorescent lamp starters, because the Specification does not
provide a special definition, and a person of ordinary skill in the art would
understand that a fluorescent lamp starter can be electronic, as shown in ON
Semiconductor, Electronic Starter for Fluorescent Lamps, Nov. 1999, p. 2.
Ans. 4–5.
The Examiner has not established that Budike’s transceiver circuit is
capable of starting a fluorescent lamp. Nor has the Examiner established
that Budike’s transceiver (105c), merely by virtue of including circuitry for
sending a signal to its interface cable (120)’s interface jack (115)’s on/off
pin (1), is a “fluorescent lamp starter unit” under the broadest reasonable
interpretation of that term as recited in claims 1 and 13.
Claim 19
Claim 19 requires 1) first and second fluorescent lamps coupled,
respectively, to first and second ballasts adapted to receive alternating
current (AC) line voltage from an AC line voltage supply, and 2) means for
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initiating turn off of first and second fluorescent lamps without
disconnecting the AC line voltage supply.
With respect to the second limitation of claim 19, the broadest
reasonable interpretation of means-plus-function claim language is
determined by interpreting the language in light of the corresponding
structure, material, or acts described in the Specification, and equivalents
thereof. In re Donaldson Co., 16 F.3d 1189, 1194–95 (Fed. Cir. 1994).
“The proper test for determining whether the structure in an accused device
is equivalent to the structure recited in a section 112, ¶ 6 [means-plus-
function] claim is whether the differences between the structure in the
accused device and any disclosed in the specification are insubstantial.” See
WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1351 (Fed. Cir.
1999).
The structure disclosed in Appellants’ Specification for initiating turn
off of first and second fluorescent lamps without disconnecting the AC line
voltage supply includes Figure 7’s circuitry inside the starter (4).
Specification ¶¶ 30–31. Budike discloses a dimming ballast (122, 822)
including a power converter (125) and a ballast circuit (130), wherein the
power converter provides AC power to the ballast circuit (¶ 38). Power is
shut off to the dimming ballast (122, 822) when transceiver (105c), by
pulling the interface cable’s (120, 820) interface jack’s (115, 815) on/off pin
(1) to ground, turns off the lamp without turning off the AC line voltage
(140) feeding the power converter (125). That is more than an insubstantial
difference from Appellants’ disclosed means for initiating turn off of first
and second fluorescent lamps without disconnecting the AC line voltage
supply, i.e., starter (4). Further, the Examiner has not shown how the
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differences between the structure disclosed in Appellants’ Specification and
Budike are insubstantial. Ans. 6. That is reversible error.
Accordingly, we reverse the rejection of claims 1, 13, and 19 as
anticipated by Budike.
3. § 103(a) Rejection
All of the dependent claims subject to Rejection 3 depend from claims
at issue in Rejection 2. Because we find reversible error in the
determination of anticipation of the independent claims, the Examiner does
not articulate how the deficiencies in the anticipation rejection are cured in
the obviousness rejection concerning the dependent claims, and Budike is
the only reference asserted in the § 103(a) rejection, we need not further
address the dependent claims subject to the obviousness rejection in which
the above-noted errors are not cured.
SUMMARY
We reverse the rejection of claim 20 under 35 U.S.C. § 112, first
paragraph, for the reasons set forth above.
We reverse the rejection of claims 1, 3–4, 7–14, and 17–19 under
35 U.S.C. § 102(b), for the reasons set forth above.
We reverse the rejection of claims 2, 5–6, and 15–20 under 35 U.S.C.
§ 103(c), for the reasons set forth above.

REVERSED