Ex Parte ARNOUT

Patent Trials and Appeals Board

Jan 31, 2019

13950699 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/950,699 07/25/2013
23117 7590 02/04/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Klaas ARNOUT
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SDJ-2752-85 3987
EXAMINER
CHAN,WEI
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
02/04/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAAS ARNO UT 1
Appeal2017-010266
Application 13/950,699
Technology Center 2800
Before RAEL YNN P. GUEST, DONNA M. PRAISS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 6-9, and 12-14 under 35 U.S.C. § 102(b) as
anticipated by Bergman2 and claims 2-5, 10, 11, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Bergman in view of additional prior art. See
Examiner's Non-Final Office Action, dated Sept. 13, 2016 ("Non-Final
Act."); Examiner's Answer, dated May 8, 2017 ("Ans."). We have
jurisdiction under 35 U.S.C. § 6(b ).
1 Appellant identifies Manzana BVBA as the real party in interest.
Appellant's Appeal Brief ("Br. 3").
2 US 2009/0200967 Al, published August 13, 2009, naming Bergman et al.
as inventors.
Appeal2017-010266
Application 13/950,699
We REVERSE.
Appellant's invention is related to a contact switch for the operation
of lighting. Specification ("Spec.") 1:2. According to the Specification, the
invention provides a switch for simple and efficient changes in light
schemes, including changing, for example, the level of light ( dimming)
and/or color. Id. 1:14--21, 4:15-17. In particular, the Specification
describes a switch where the color and the light level of an LED can be
varied depending on the time period in which a sensor is contacted. Spec.
7:14--8:2.
Independent claim 1 is exemplary of the subject matter on appeal and
reproduced below:
1. Switch, suitable for forwarding at least two functions
to a lighting system, wherein the switch comprises the
following elements:
- a sensor, configured to detect a contact;
- an illuminating element;
- an LED, wherein the LED can assume a plurality of
colours, and wherein the LED is configured to illuminate the
illuminating element; and
- an electronic circuit, configured to measure the time
period of contact with the sensor, and configured to select a
function from the at least two functions;
wherein the selection of a function from the at least two
functions is dependent on the time period in which the sensor is
contacted, and wherein the colour of the LED varies depending
on the time period in which the sensor is contacted, wherein the
electronic circuit is configured to control the LED with a
periodic colour change in a repeating cycle during contact with
the sensor.
Br. 23, Claim App'x.
2
Appeal2017-010266
Application 13/950,699
In addition to Bergman as a primary reference, the Examiner applies
the following prior art references:
Schlangen et al. (Schlangen) US 2010/0277316 Al
Chemel et al. (Chemel) US 2010/0296285 Al
Jeanneteau et al. (Jeanneteau) US 2011/0187539 Al
Bahrehmand US 8,344,639 B 1
The Examiner maintains the following rejection:
Nov. 4, 2010
Nov. 25, 2010
Aug. 4, 2011
Jan. 1, 2013
1. Claims 1, 6-9, and 12-14 underpre-AIA 35 U.S.C. § 102(b) as
being anticipated by Bergman;
2. Claims 2, 4, 5, and 15 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over of Bergman in view of Chemel;
3. Claim 3 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Bergman in view of Chemel and Bahrehmand;
4. Claim 11 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Bergman in view of Schlangen;
5. Claim 10 underpre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Bergman in view of Jeanneteau.
II. DISCUSSION
\Vith respect to claim L Appellant mainly contends that Bergman does
not teach an electronic circuit that "is configured to control the LED vvith a
'--'
periodic colour change in a repeating cycle during contact with the sensor,'~
as recited in claim 1. Br. 8.
'The Examiner finds that Bergman teaches this limitation in teaching:
~ 0
that the "light emitting-elements 23 are thus capable of emitting light of
3
Appeal2017-010266
Application 13/950,699
different colors" (Bergman ii 39) and "a full rotation of the finger tip over
the ring-shaped hue selection surface 20 may accomplish the selection of
one of the hues" (Bergman ir 48). Non-Final 4----5. The Examiner fmiher
finds that the limitation is an intended use of the claimed electronic circuit
and that the prior art svvitch of Bergman is capable of performing the
intended use by the user operating the touch sensor and completing a fu11
rotation of the finger. Non-FinaL 3.
Appellant is coffect (Br. 13) that when functional language is
associated with programming or some other structure required to perfonn
the function, that programming or stmcture must be present in order to meet
the claim limitation, See Typhoon Touch Techs., Inc. v, Dell, Inc., 659 F.3d
1376, 1385 (Fed. Cir. 2011), As such, in these circmnstances, the '"capable
of" test requires that the prior art structure be capable of performing the
function without further programming. Id
\Ve agree with the Appellant that the Examiner has not explained ,vith
sufficient specificity how the prior mi teaches a s,vitch ,vith an electronic
circuit configured such that sensor contact causes both color variation
depending upon the time period in which the sensor is contacted and a
periodic color change in a repeating cycle. Bergman describes a first switch
in which sensor contact provides a color palate that zooms into a second
more nan-ow color palate (i.e. a single, not periodic or repeating, color
change) after sensor contact in a single location fr_)r a period of time. s~ee
Bergman ~,r 11, 48 (Figs. 3A-3C} Bergman also describes an alternative
switch in which the color palate changes in the first instant based on the
Particular location in which the sensor is contacted (.i.e .. bv moving a / ,.; '--'
fingertip a full rotation over the ring-shaped hue selection surface 20), rather
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Appeal2017-010266
Application 13/950,699
than by the time period in which the sensor is contacted. Bergman iri] 11, 55
(Figs, 5A----5C). ' ..._, ,,
The Examiner has not shm.\-11 that Bergman describes with sufficient
specificity an embodiment meeting aH the limitations of the claim, namely
where sensor contact causes both color variation depending upon the time
period in which the sensor is contacted and a periodic color change in a
repeating cycle.
Appellant presents separate arguments for claims 6 and 9 as a group,
claim 8, claims 12 and 13 as a group, and claim 14. However1 because the
Examiner relied upon the same finding of Bergman with respect to these
claims, which we found insufficient to anticipate the independent claims, we
do not sustain the rejection of these claims for the same reason.
Similarly, the Examiner relies on the same findings in rejecting
dependent claims based on obviousness. Accordingly, we do not sustain the
Examiner's obviousness rejections on appeal for the same reasons.
In sum, we do not sustain any of the Examiner's rejections and
reverse the Examiner's decision to reject claims 1-15.
REVERSED
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