Ex Parte Jensen et al

Patent Trial and Appeal Board

Sep 17, 2014

12084786 (P.T.A.B. Sep. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/084,786 05/09/2008 Svend Erik Knudsen Jensen 66383-088-7 3271
25269 7590 09/18/2014
DYKEMA GOSSETT PLLC
FRANKLIN SQUARE, THIRD FLOOR WEST
1300 I STREET, NW
WASHINGTON, DC 20005
EXAMINER
FIGUEROA, FELIX O
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
09/18/2014 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 SVEND ERIK KNUDSEN JENSEN,
JESPER RORBY JENSEN, VERNER SMIDT,
and BJAME CARSTENSEN
__________

Appeal 2012-012098
Application 12/084,786
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 2 and 5-12, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on September 9, 2014.
We AFFIRM.
The subject matter on appeal is directed to an electric hand-held controller,
especially for an electrically adjustable bed. Claim 9 is representative of the
subject matter on appeal and is reproduced below from the Claims Appendix of the
Appeal Brief dated March 6, 2012 (“Br.”).
Appeal 2012-012098
Application 12/084,786

2

9. A hand-held controller which comprises:
a cup-shaped housing,
a circuit board mounted in the housing,
a plurality of pairs of activation switches mounted on the circuit
board, a separate electrical circuit connecting the activation switches
of each of said plurality of pairs of activation switches, and
a separate controller means for each separate electrical circuit
for completing or interrupting each separate electrical circuit and
thereby activating or deactivating each pair of activation switches in
the associated electrical circuit, each controller means comprising an
on-off switch connected in the respective electrical circuit and a
separate rotatable knob for operating each on-off switch.
The claims on appeal stand rejected as follows: (1) claims 9, 11, and 12
under 35 U.S.C. § 103(a) as unpatentable over Larsen1 in view of Marchant2 and
(2) claims 2, 5-8, and 10 under 35 U.S.C. § 103(a) as unpatentable over Larsen in
view of Marchant and Jacobi.3
As to rejection (1), the Appellants argue the patentability of claims 9, 11,
and 12 as a group. Therefore, claims 11 and 12 stand or fall with the patentability
of claim 9. As to rejection (2), the Appellants do not present any arguments in
support of the separate patentability of claims 2, 5-8, and 10. Therefore, the
patentability of claim 2, 5-8, and 10 will be considered based on the arguments set
forth in support of the patentability of claim 9. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
B. DISCUSSION
Larson discloses a hand-held controller for an electrically adjustable hospital
bed. Larsen 1, ll. 4-6. The Examiner finds, and the Appellants do not dispute, that
the controller comprises all of the limitations of claim 9 with the exception of a

1 WO 2005/036576 A1, published April 21, 2005.
2 US 6,674,025 B1, issued January 6, 2004.
3 US 1,842,451, issued January 26, 1932.
Appeal 2012-012098
Application 12/084,786

3

controller means comprising an on-off switch that completes or interrupts the
electrical circuit connecting pair of activation switches 7. Instead, Larsen uses
mechanical blocking means 12 to complete or interrupt the electric circuit. Ans. 4-
5.4
Marchant discloses a controller for electronic devices, including appliances
and machinery. Marchant, col. 1, ll. 49-50 and col. 3, ll. 42-44. The Examiner
finds that the controller comprises controller means 19 which includes an on-off
switch. The Examiner finds that controller means 19 completes or interrupts an
electrical circuit, thereby activating or deactivating pair of activation switches 17.
Ans. 5. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to replace mechanical blocking means 12 of Larsen with
controller means 19 of Marchant “to prevent unauthorized operation of the
activation switches and avoid mechanical malfunction.” Ans. 5.
The Appellants argue that “the electrical circuitry of Marchant has nothing
to do with a hand controller of the type disclosed in Larsen.” Br. 7. Therefore, the
Appellants contend that the Examiner’s conclusion of obviousness is based on
impermissible hindsight. Id.
It is of no moment that the electrical circuitry of the controllers of Larsen
and Marchant may be different. The Examiner merely relies on Marchant to show
that “[o]ne of ordinary skill in the art would have recognized that a mechanical
blocking means and an electrical interrupting means are known equivalents for
activating or deactivating a pair of activation switches.” Ans. 9.
As explained in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), “if
a technique has been used to improve one device, and a person of ordinary skill in

4 Examiner’s Answer dated May 11, 2012.
Appeal 2012-012098
Application 12/084,786

4

the art would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or her
skill.” In this case, the Appellants have failed to demonstrate that the use of
Marchant’s controller means 19 in Larsen’s controller is more than the predictable
use of a prior art element according to its established function (i.e., activating or
deactivating a pair of activation switches). Id.; see also Ans. 9 (combination leads
to a predictable result).
The § 103(a) rejections are sustained.
C. DECISION
The decision of the Examiner 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).

AFFIRMED
bar