Ex Parte Birchbauer et al

Patent Trial and Appeal Board

Apr 28, 2016

13097119 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/097,119 04/29/2011
92556 7590
HONEYWELL/HUSCH
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
05/02/2016
FIRST NAMED INVENTOR
Dave Dale Birchbauer
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.
H0027890/4874/l 13774 5879
EXAMINER
CASILLASHERNANDEZ, OMAR
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
patentservices-us@honeywell.com
amy.hammer@huschblackwell.com
pto-chi@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DA VE DALE BIRCHBAUER and
DAMIEN D. RUSHING
Appeal2014-005569
Application 13/097, 119
Technology Center 2600
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDO\VSFJ, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-9, 12-14, and 16-19. Claims 10, 11, and 15
have been cancelled. (App. Br. 14--15). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appeal2014-005569
Application 13/097, 119
STATEMENT OF THE CASE
Appellants' invention is directed to a power outlet coupled to security
or monitoring systems with restricted access. (Spec. i-f 1 ). Claim 1,
reproduced below with the disputed limitations in italics, is representative of
the claimed subject matter:
1. An outlet control unit comprising:
a housing;
a device to receive an access requesting input, carried by
the housing; and
control circuitry, carried by the housing, and responsive to
the access requesting input to switch electrical energy to an
output port carried by the housing, wherein the control circuitry
monitors current flow from the output port and terminates the
current flow in response to at least one selected condition, and
wherein the at least one selected condition includes the current
flow from the output port spiking where spiking indicates
potential theft by an unidentified user.
REJECTIONS
Claims 1-9, 12-14, and 16-19 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
Claim 1-9, 12, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Outwater (US 2010/0065627
Al; published Mar. 18, 2010) and Nee (US 5,272,431; issued Dec. 21,
1993).
Claim 13, 14, 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Williams (US 6,081,205;
issued June 27, 2000) and Nee.
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Application 13/097, 119
ANALYSIS
Enablement Rejection
The Specification is presumed to be in "compliance with the enabling
requirement of the first paragraph of§ 112 unless there is reason to doubt
the objective truth of the statements contained therein." In re Marzocchi,
439 F.2d 220, 223 (CCPA 1971). The Examiner has the "burden of giving
reasons, supported by the record as a whole, why the specification is not
enabling ... [and] [s]howing that the disclosure entails undue
experimentation ... " In re Angstadt, 537 F.2d 498, 504 (CCPA 1976). In
determining whether any given disclosure requires undue experimentation to
practice the claimed subject matter, the Examiner should consider, inter alia,
the quantity of experimentation necessary, the amount of direction or
guidance presented, the presence or absence of working examples, the nature
of the invention, the state of the prior art, the relative skill of one of ordinary
skill in the art, the predictability or unpredictability of the art, and the
breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Determining enablement is a question of law based on factual
underpinnings. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991).
The Examiner's rejection, as set forth in the Final Office Action from
which this appeal is taken, states:
Applicant claim[s] in lines 8, 10 and 6 of claims 1, 13 and
16, respectively, "where spiking indicates potential theft by
an unidentified user". The applicant does not contain a full,
clear and concise written description that enables one in the
ordinary skill in the art to have a system that detect spikes
specifically indicating potential theft by an unauthorized user. At
most, applicant discloses that current spikes occur when another
user may have spliced into an existing charging line (~0014).
However, there is no sufficient written description on how the
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system differentiate a spike that indicate potential theft by an
unauthorized user to other spikes apparently indicating other
condition to enable one in the ordinary in the skill in the art to
make and/ or use the invention therefore, failing to meet the
written description requirement.
(Final Act. 3).
Appellants contend the "specification does, in fact, provide a criterion
for detecting theft" and cites to paragraph 11 of the Specification. (App. Br.
6; Reply Br. 2). Paragraph 11 states: "the following can be detected: ...
when current usage spikes, indicating that another user may have spliced
into an existing charging line." Appellants also argue the Final Office
Action provides no basis for questioning the objective truth of the statements
contained in the Specification, so therefore the enablement rejections are
improper. (App. Br. 6, citing In re Marzocchi, 439 F.2d at 223).
In the Answer, the Examiner states:
Examiner acknowledge[ s] that the specification disclose
detection of current spikes and also that a current spike may
indicate an unauthorized user splicing into an existing charging
line (possibly trying to steal power). However, there is no further
written description on how the system determines that a detection
of a current spike that specifically, indicate a potential theft, in a
way to enable a person with ordinary skill in the art, make and/or
use the invention therefore, failing to meet the written description
requirement, as indicated in office action dated 11/07/2013
(Final Rejection Page 3, Paragraph 1 ).
In order to enable this limitation, appellant must show how
this system differentiates a current spike that indicates potential
theft with any other current spike indicating other condition
(lightning, short circuit, power outage, etc ... ).
(Ans. 3, emphasis omitted).
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Application 13/097, 119
The Examiner's enablement rejection does not appear to make any
assessment of the level of experimentation that would be required for one of
ordinary skill in the art to be able to make and use the invention. In other
words, the Examiner makes no explicit finding that "undue experimentation"
would be required for one of ordinary skill in the art to make and use the
invention in light of the disclosure. Further, the Examiner fails to explicitly
address any of the Wands factors or make findings that specifically pertain
to undue experimentation. Accordingly, on this record the Examiner has not
can-ied the burden to establish that one of ordinary skill in the art armed with
the disclosures set forth in the subject Specification and given the state of the
prior art would not have been enabled to practice the method of independent
claim 1 without undue experimentation.
Accordingly, we reverse the Examiner's 35 U.S.C. § 112, first
paragraph, rejection of claim 1, and claims 2-9, 12-14, and 16-19 for the
same reasons.
Obviousness Rejections
Appellants contend the combination of Outwater and Nee does not
teach or suggest "where spiking indicates potential theft by an unidentified
user," as recited in independent claims 1, 13, and 16. (App. Br. 7-8). The
Examiner relies on column 6, lines 6-9, of Nee to teach or suggest the
limitation "control circuitry ... terminates the current flow in response to at
least one selected condition, and wherein the at least one selected condition
includes the current flow from the output port spiking." (Final Act. 5). This
portion of Nee states "[t]he activator 72 contains a Ground Fault Interrupt
( GFI) circuit breaker 7 5 to shut off the electric supply to outlet 20 if a
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current spike occurs." (Nee, col. 6:6-9) (emphasis omitted). The Examiner
finds "the system of Nee detect[s] any type of current spike and produce[s] a
response (shutting down the power)." (Ans. 4).
However, the Examiner finds the combination of Outwater and Nee
"does not explicitly disclose wherein spiking indicates potential theft by an
unidentified user." (Final Act. 5; Ans. 4). The Examiner finds it would
have been obvious to one of ordinary skill in the art at the time of invention
to detect spiking that indicates potential theft by an unidentified user for two
reasons. (Final Act. 5; Ans. 4--5). First, because current spiking indicating
potential theft is only one of the potential causes for current spiking,
selecting any particular option out of a limited universe of potential options
(causes for current spiking) would provide the same predictable result of
shutting down the power to protect the user and/or avoid power theft. (Ans.
5). Second, the Examiner finds selecting a specific indication of why the
spiking would occur amounts to a recitation of the intended use, without
resulting in any structural differences in the prior art. (Final Act. 5; Ans. 5).
Finally, the Examiner states that even if the combined system of Outwater
and Nee only detects current spikes due to ground fault currents, the system
will still be functionally equivalent because detecting current spikes renders
the same result, shutting down the power. (Ans. 6).
Appellants argue Nee discloses use of a ground fault interrupter that
interrupts current spikes due to ground faults to protect a human user, which
is not the same as the current spikes of the claimed invention, which are
caused by theft of current. (Id.; Reply Br. 5). Appellants argue ground fault
detectors work in a fundamentally different way than circuit protection
devices (spike detectors) in general. (App. Br. 4). Appellants note the
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Application 13/097, 119
"ground fault currents would be relatively small whereas spiking due to
potential theft or charging current could be many orders of magnitude higher
than ground fault currents." (App. Br. 7-8). Finally, Appellants argue "the
Office Action has failed to establish any credible basis why one skilled in
the art would have been led by the relevant teachings of the applied
references to make the claimed invention." (App. Br. 11 ).
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings. (Final Act. 4--13; Ans. 4--6). We agree with the
Examiner that Nee teaches or suggests shutting off the power supply if any
current spike is detected. (Ans. 4). As such, we agree with the Examiner
(Ans. 5) that it would be obvious to one of ordinary skill in the art to detect
spiking where spiking indicates potential theft by an unidentified user (i.e.,
via splicing the line) because that is only one of the potential causes for
current spiking, and that selection provides the same predictable results of
shutting down the power to protect the user and/ or avoid power theft. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). As noted by the
Court in KS"'R. "[a J person of ordinary skill is also a person of ordinary
creativity, not an automaton." 550 U.S. at 42 L
We therefore find the Examiner's analysis is sufficient pursuant to
KSR, given that Appellants have not persuaded us that the combination is
"uniquely challenging or difficult for one of ordinary skill in the art." See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418--419). Appellants merely contend
spiking caused by potential theft may be orders of magnitude higher than
spiking caused by ground faults (for example), which would result in
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Application 13/097, 119
detection of both causes of spiking (rather than, for example, theft-caused by
spiking alone). (See App. Br. 7; Ans. 6).
Additionally, Appellants argue there is no reason to combine the
references because "none of the cited references of Outwater, Lee or
Williams recognize the problem solved by the claimed invention[,]" that is,
"detecting current theft at charging stations." (App. Br. 11). We are not
persuaded by this argument because although the problem faced by an
applicant is a relevant factor to take into consideration in an obviousness
determination, an invention may be obvious for reasons the inventor did not
contemplate. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane).
Further, "the motivation in the prior art to combine the references does not
have to be identical to that of the applicant to establish obviousness." In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); see KSR, 550 U.S. at 419 ('"In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under§ 103'').
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejections
of independent claims 1, 13, and 16 for the foregoing reasons. For the sarne
reasons, we sustain the Examiner's 35 U.S.C. § l03(a) rejections of
dependent claims 2----9, 12, 14, and 17----19, which were not argued separately.
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DECISION
The Examiner's 35 U.S.C. § 112, first paragraph, rejection of claims
1-9, 12-14, and 16-19 is reversed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 1-9, 12-14,
and 16-19 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)(l)(iv).
AFFIRMED
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