Ex Parte Scherschel et al

Board of Patent Appeals and Interferences

Nov 22, 2010

10931172 (B.P.A.I. Nov. 22, 2010)

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.
10/931,172 08/31/2004 William Scherschel 5569/82586 (04-21) 8213
22242 7590 11/23/2010
FITCH EVEN TABIN & FLANNERY
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
PEREZ, ANGELICA
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
11/23/2010 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 WILLIAM SCHERSCHEL and HAROLD J. MORROW
____________________

Appeal 2009-009166
Application 10/931,172
Technology Center 2600
____________________

Before JOHN C. MARTIN, ALLEN R. MACDONALD, and CARLA M.
KRIVAK, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009166
Application 10/931,172

STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention is exemplified by a conventional cellular
telephone with a conventional garage door opener glued to the cellular
telephone. (Spec. ¶¶ [0035] and [0036]).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows
(emphasis added):
1. A communication system for transmitting and receiving
wireless communications and controlling an access control device
operator comprising:
a wireless communication portion comprising a wireless
communication transmitter for providing wireless communications
between a user at a communication device and a target
communication device; and
an accessory portion connected to but functionally separate
from the wireless communication transmitter, the accessory portion
including an access control transmitter having a power source that is
not shared with the wireless communication transmitter, the access
control transmitter providing a signal to activate an access operator.

Rejections
1. The Examiner rejected claims 1, 7, 10, and 11 under
35 U.S.C. § 112, first paragraph as “failing to comply with the written
description.”
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Application 10/931,172

2. The Examiner rejected claims 1-3, 5-13, and 15 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ryohei,
Japan Published Application 2001295526, and Irvin, U.S. Patent 6,192,236.
3. The Examiner rejected dependent claims 4 and 14 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ryohei,
Irvin, and Sahai, U.S. Patent Application Publication 2005/0190041. 2

Appellants’ Contentions
1. At pages 4-6 of the Appeal Brief, Appellants contend that the
Examiner erred in rejecting claims 1, 7, 10, and 11 under 35 U.S.C. § 112
because Appellants’ Figures 6a and 6b are sufficient support for these
claims.
2. At page 7 of the Appeal Brief and page 2 of the Reply Brief,
Appellants contend that the Examiner erred in rejecting claims 1-3, 5-13,
and 15 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Ryohei and Irvin because Figure 5 of Irvin fails to teach providing the
remote power control with a power source that is not shared by the
radiotelephone.
Issues on Appeal
(1)
Whether the Examiner has erred in rejecting claims 1, 7, 10, and 11
under 35 U.S.C. § 112 because Appellants’ Figures 6a and 6b are sufficient
support for these claim?

2 The rejection of dependent claims 4 and 14 under 103(a) is not separately
argued from the rejection of the independent claims under 103(a).
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Application 10/931,172

(2)
Whether the Examiner has erred in rejecting claims 1-3, 5-13, and 15
because the references do not teach the separate power supply source
limitation required by these claims?

FINDINGS OF FACT (FF)
1. Appellants admit that a conventional “portable barrier control
transmitter” is known in the prior art. (Spec. ¶¶ [0001]-[0002]).
2. Appellants admit that a conventional wireless communication
devices are known in the prior art. (Spec. ¶ [0003]).
3. Ryohei teaches that a portable remote door opener with a
built-in battery is known in the prior art. (Ryohei ¶¶ [0002]-[0003]).
4. Ryohei teaches that a portable telephone unit is known in the
prior art. (Ryohei ¶ [0003]).
5. Ryohei teaches the portable telephone unit having a built-in
battery is known in the prior art. (Ryohei ¶ [0004]).
6. Irvin teaches that a conventional radiotelephone is know in the
prior art. (Irvin col. 1, ll. 14-15).
7. Irvin teaches that remote controls are known in the prior art.
(Irvin col. 1, ll. 28-33).
8. Appellants admit that the desirability of combining wireless
transmitters and barrier controls is known in the prior art. (Spec. ¶ [0004]).
9. Ryohei teaches that the desirability of combining a portable
telephone unit and remote door opener is known in the prior art. (Ryohei
¶ [0004]).
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Application 10/931,172

10. Irvin teaches that the desirability of combining a radiotelephone
and remote control is known in the prior art. (Irvin at Figure 5).

PRINCIPLES OF LAW
In Anderson's-Black Rock, Inc. v. Pavement Salvage Co.,
396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), the Court
elaborated on this [functional] approach. The subject matter of
the patent before the Court was a device combining two pre-
existing elements: a radiant-heat burner and a paving machine.
The device, the Court concluded, did not create some new
synergy: The radiant-heat burner functioned just as a burner
was expected to function; and the paving machine did the same.
The two in combination did no more than they would in
separate, sequential operation. Id., at 60-62, 90 S.Ct. 305. In
those circumstances, “while the combination of old elements
performed a useful function, it added nothing to the nature and
quality of the radiant-heat burner already patented,” and the
patent failed under § 103. Id., at 62, 90 S.Ct. 305 (footnote
omitted).
KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 416-17 (2007).

ANALYSIS
Rejection under 35 U.S.C. § 112
Appellants argue that the Examiner has erred. We agree with
Appellants’ contention.
Rejection under 35 U.S.C. § 103
Appellants argue that the Examiner has erred because Figure 5 of
Irvin fails to teach providing the remote power control with a power source
that is not shared by the radiotelephone.
Although we agree with Appellants that Figure 5 of Irvin fails to teach
the required limitation. We disagree with Appellants’ conclusion that the
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Application 10/931,172

Examiner has erred in rejecting the claims as unpatentable based on these
references.
We find that wireless communication devices with their own power
source are known in the prior art. (FF 2 and FF 4-6). We find that access
control transmitters with their own power source are known in the prior art.
(FF 1, FF3, and FF 7). We also find that desirability of combining a
wireless communication device and an access control transmitter is known
in the prior art. (FF 8-10).
The claims before us are directed to a device combining a pre-existing
wireless transmitter and a pre-existing barrier control. The combination
does not create a new synergy. Rather, the pre-existing elements continue to
function solely as is conventional in the prior art. While the combination of
old elements performs a useful function, it adds nothing to the nature and
quality of the elements already known in the prior art.
Because our rationale in support of our conclusion of obviousness
differs from the Examiner’s rationale, we designate this affirmance as a new
ground of rejection.

37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:
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Application 10/931,172

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same record.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-15 as being
unpatentable under 35 U.S.C. § 103(a).
(2) The Examiner has erred in rejecting claims 1, 7, 10, and 11 as
under 35 U.S.C. § 112.
(3) Claims 1-15 are not patentable.

DECISION
The Examiner's rejections of claims 1-15 under 35 U.S.C. § 103 are
affirmed.
The Examiner rejection of claims 1, 7, 10, and 11 under 35 U.S.C.
§ 112 is reversed.
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)(v).

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Application 10/931,172

AFFIRMED
37 C.F.R. § 41.50(b)

ELD

FITCH EVEN TABIN & FLANNERY
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
8