Ex Parte Patel

Board of Patent Appeals and Interferences

Apr 16, 2010

10789096 (B.P.A.I. Apr. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NIRANJAN PATEL
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Appeal 2009-002198
Application 10/789,096
Technology Center 2800
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Decided: April 20, 2010
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Before JOSEPH F. RUGGIERO, KARL D. EASTHOM, and
THOMAS S. HAHN, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-002198
Application 10/789,096

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-18, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief (filed November 29, 2007) and the Answer
(mailed February 26, 2008) for the respective details. Only those arguments
actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the
Brief have not been considered and are deemed to be waived (see 37 C.F.R.
§ 41.37(c)(1)(vii) (2008)).

Appellant’s Invention
Appellant’s invention relates to a single day alarm clock including,
inter alia, a single touch alarm activation and deactivation feature, a flashing
light when the alarm is activated, a night light to indicate the alarm setting,
and a visual alarm reset button to prevent the undesired activation of the
alarm (see generally Spec. ¶¶ [0010]-[0015]).
Claim 1 is illustrative of the invention and reads as follows:
1. An apparatus, comprising an alarm-clock, wherein said alarm-clock
has at least one button and at least one alarm, and wherein when said alarm
is set said alarm button radiates light to provide a visual reminder that the
alarm has been set.

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The Examiner’s Rejections
The Examiner relies on the following prior art references to show
unpatentability:
Parissi US 2,444,748 Jul. 6, 1948
Jones, Jr. (Jones) US 5,402,396 Mar. 28, 1995
Claims 1-6, 8, and 9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Jones.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones.
Claims 10-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones in view of Parissi.

ISSUES
The pivotal issues before us are whether the Examiner erred in
determining that:
a) Jones discloses an alarm clock with an alarm button that
radiates light when the alarm is set; and
b) if so, the obviousness to the ordinarily skilled artisan of
combining the flashing alarm light feature of Parissi with Jones.

FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Jones discloses (Fig. 1; col. 1, ll. 37-47) an alarm clock with a
night light that illuminates the alarm ON/OFF button and the sleep button
when the alarm button is set to the ON position.
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2. Jones further discloses (col. 2, ll. 57-59) that the ON/OFF and
sleep buttons 24, 26 can “be rendered translucent and for light produced by
the night light be allowed to be transmitted therethrough.”
3. Jones also discloses (Fig. 2, col. 27-31) that the night light 28
includes two bulbs 40, 42 enclosed by a removable translucent cover.
4. The alarm clock 10 disclosed by Jones (Figs. 1-2) also includes
an AM-FM radio, an AC current source 32, and an alarm button 24 that
protrudes from the alarm clock housing.
5. Jones further discloses (Figs. 1-2; col. 2, ll. 35-39) that the
alarm clock 10 has a digital display 12 and includes a dimmer switch 30 for
controlling light radiating from the alarm clock.
6. Parissi discloses (Fig. 1; col. 1, ll. 4-6; col. 4, ll. 9-11) an alarm
clock with a light 10 that flashes when an alarm is activated to alert hearing
impaired users of the alarm activation.

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986); Lindemann Maschinenfabrik GMBH
v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citing Minn. Mining &
Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565
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(Fed. Cir. 1992)). “Anticipation of a patent claim requires a finding that the
claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO,
Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting
patent protection on the disputed claim would allow the patentee to exclude
the public from practicing the prior art, then that claim is anticipated,
regardless of whether it also covers subject matter not in the prior art.”)
(citations omitted).

2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Furthermore,
“there 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.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
35 U.S.C. § 102(b) REJECTION
Independent claim 1
Appellant’s arguments focus on the contention that, in contrast to the
invention set forth in independent claim 1, Jones does not disclose an alarm
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clock wherein, when the alarm is set, the alarm button “activates at least one
luminescent device” (App. Br. 10). According to Appellant (App. Br. 11-
13), the alarm on/off button 24 in Jones has no light when set or activated
but, rather, the light comes from a night light 28 which may or may not be
activated.
We do not agree with Appellant’s arguments as they are not
commensurate with the scope of the language of independent claim 1 before
us on appeal. Contrary to Appellant’s contention, claim 1 does not require
that the alarm button activate a luminescent device but, instead, only that the
alarm button “radiates light.”1 We agree with the Examiner (Ans. 4, 10, 11)
that Jones’s disclosure (FF 1-2) of translucent alarm buttons 24, 26 which
allow light produced by night light 28 to be transmitted through the buttons
satisfies the claimed “button radiates light” feature.
Further, Appellant’s arguments alleging that Jones teaches away from
the claimed invention (App. Br. 22) are irrelevant to the Examiner’s
anticipation rejection. See Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d
1349, 1356 (Fed. Cir. 2008) (noting that teaching away is irrelevant to
anticipation) (citation omitted).

1 The “activates at least one luminescent device” language appears in
amended versions of independent claims 1 and 10 presented in an
amendment after the Final Office Action of September 22, 2006. This
amendment was not entered by the Examiner (Advisory Action of December
20, 2006) and, accordingly, the versions of claims 1 and 10 containing the
argued language are not before us on Appeal. Further, as pointed out by the
Examiner (Ans. 15), issues regarding whether the Examiner improperly
failed to enter an amendment related to petitionable subject matter under 37
C.F.R. § 1.181 are not appealable subject matter. See Manual of Patent
Examining Procedure (MPEP) §§ 1002, 1201.
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In view of the above discussion, since we find that the Examiner did
not err in finding that Jones discloses all of the claimed limitations, the
Examiner’s 35 U.S.C. § 102(b) rejection of independent claim 1 is sustained.

Dependent claims 2 and 3
The Examiner’s anticipation rejection of dependent claims 2 and 3 is
also sustained. We find no error in the Examiner’s finding (Ans. 4, 5, 12)
that, as required by the claims, Jones discloses (FF 3) that the luminescent
night light 28, which is “associated with” the translucent material alarm
button 24, includes light bulbs 40, 42.

Dependent claims 4-6
We also sustain the Examiner’s anticipation rejection of dependent
claims 4-6. We find no error in the Examiner’s finding (Ans. 5, 12) that, as
claimed, Jones discloses (FF 4) an AM-FM radio (Fig. 1, element 14)
associated with an alternating current operated alarm clock 10 (Fig. 2, AC
source 32), which has an alarm button 24 which protrudes from the alarm
clock housing.

Dependent claims 8 and 9
The Examiner’s anticipation rejection of dependent claims 8 and 9 is
sustained as well. We agree with the Examiner (Ans. 5, 6, 13) that Jones
discloses (FF 5) that alarm clock 10 has a digital display and further includes
a dimmer switch 30 for controlling light radiating from the alarm clock as
claimed.

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35 U.S.C. § 103(a) REJECTIONS
Dependent claim 7
The Examiner’s obviousness rejection of dependent claim 7 based on
the teachings of Jones is sustained as well. We find no error in the
Examiner’s determination (Ans. 6, 7, 13) that an ordinarily skilled artisan
would have recognized and appreciated that in the United States standard
household current is between 120 and 240 volts. Appellant’s arguments
(App. Br. 18) rely on the arguments asserted previously against independent
claim 1, which arguments we have found to be unpersuasive for all of the
previously discussed reasons.

Claims 10-18
We also sustain the Examiner’s obviousness rejection, based on the
combination of Jones and Parissi, of claims 10-18. Appellant’s arguments
(App. Br. 22-23) focus on the contention that Parissi teaches away from the
claimed invention. We agree with the Examiner’s articulated line of
reasoning (Ans. 7, 14), however, that Parissi’s teaching (FF 6) that a light
that flashes when an alarm is activated to alert hearing impaired users of the
alarm activation would have served as an obvious enhancement to the
lighted alarm button feature of the alarm clock device of Jones.
Further, as with Appellant’s arguments with respect to independent
claim 1, we find that Appellant’s arguments that Jones has no disclosure of
an alarm button that “activates at least one luminescent device” are not
commensurate with the scope of independent claim 10 since this feature is
not included in claim 10 that is before us on appeal.

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CONCLUSION
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-6, 8, and 9 for anticipation
under 35 U.S.C. § 102(b), nor in rejecting claims 7 and 10-18 for
obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-6, 8, and 9 under
35 U.S.C. § 102(b) and claims 7 and 10-18 under 35 U.S.C. § 103(a) is
affirmed.
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) (2007).

AFFIRMED

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Mr. Aziz M. Ahsan
P.O. Box 251
Hopewell Junction, NY 12533