Ex Parte McMahon

Patent Trial and Appeal BoardMar 29, 2016

11496329 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111496,329 07/31/2006 32914 7590 04/19/2016 GARDERE WYNNE SEWELL LLP INTELLECTUAL PROPERTY SECTION 3000 THANKSGIVING TOWER 1601 ELM ST DALLAS, TX 75201-4761 FIRST NAMED INVENTOR Michael T. McMahon 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. 125426-1111 5056 EXAMINER KHAN,OMERS ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 04/19/2016 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): ip@gardere.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL T. MCMAHON Appeal2014-003637 Application 11/496,329 1 Technology Center 2600 Before HUNG H. BUI, IRVINE. BRANCH, and MICHAEL M. BARRY, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 50-57. Claims 1--49 are cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. STATEMENT OF THE CASE Appellant's claimed subject matter provides: [a] console device for controlling a door operator for a motor operated door includes a housing; a transmitter unit, a door operator control circuit, a user accessible door operator switch operable to control a door, an LED driven menu operably connected to the control circuit, an alphanumeric 1 According to Appellant, the real party in interest is Overhead Door Corporation (App. Br. 3). Appeal2014-003637 Application 11/496,329 keypad and user input push buttons. The LED driven menu provides visual programming feedback to the user. The LED driven menu may provide feedback such as a home state or ready indicator, a door selector, user code or PIN assignment designators and a programming error indicator. Spec. Abstract. Claim 50 is illustrative of Appellant's subject matter: 50. A wall console device for controlling a door operator, comprising: a door operator control circuit adapted to transmit signals to at least one door operator, the at least one door operator operable to move a motorized door; a power supply circuit for supplying electrical power from a power source to the door operator control circuit; a control pad including plural touch responsive command selectors and a door operator control means for user control over the opening and closing of the motorized door; said plural command selectors for providing input signals to the door operator control circuit comprising: a command selector to indicate a selectable operating function of the at least one door operator; a command selector to select the indicated operating function of the at least one door operator; a command selector to cancel the selected operating function of the at least one door operator; and plural visual indicators for assisting a user of the wall console device to program the wall console device to control the at least one door operator. 2 Appeal2014-003637 Application 11/496,329 THE REJECTIONS The Examiner rejected claims 50-57 under 35 U.S.C. Â§ l 12(a) or 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the new matter requirement. Ans. 2-3.2 The Examiner rejected claims 50, 51, 53, and 54 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsui (US 6,441,719 Bl; Aug. 27, 2002), Kho (US 2003/0122882 Al; July 3, 2003), Weinberger (US 5,408,443; Apr. 18, 1995), and Heitschel (US 5,576,701; Nov. 19, 1996). Ans. 3-8. The Examiner rejected claims 52 and 55 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsui, Kho, Weinberger, Heitschel, and Murray (US 2003/0214385 Al; Nov. 20, 2003). Ans. 8-9. The Examiner rejected claims 56 and 57 under 35 U.S.C. Â§ 103(a) as unpatentable over Tsui, Kho, Weinberger, Heitschel, and Meyerhoefer (US 5,666,186; Sept. 9, 1997). Ans. 9-10. THE 35 U.S.C. Â§ 112 REJECTION Claim 50 recites "a command selector to indicate a selectable operating function." The Examiner "cannot find a selector, i.e. a button that would indicate a selectable operating function" in Appellant's Specification. Ans. 2. We find these selectors described in paragraph 26 and shown in Figures 1-3, reference number 40, as pointed out by Appellant. App. Br. 11; Reply Br. 2. Accordingly, we are persuaded of Examiner error essentially 2 Throughout this Opinion, we refer to (1) Final Action mailed February 28, 2013 ("Final Act."); (2) the Appeal Brief filed September 30, 2013 ("App. Br."); (3) the Examiner's Answer mailed December 5, 2013 ("Ans."); and (4) the Reply Brief filed February 5, 2014 ("Reply Br."). 3 Appeal2014-003637 Application 11/496,329 for the reasons stated by Appellant. App. Br. 11; Reply Br. 2. We, therefore, do not sustain the rejection of claims 50-57 under 35 U.S.C. Â§ 112(a) or 35 U.S.C. Â§ 112 (pre-AIA), first paragraph. THE OBVIOUSNESS REJECTION OF CLAIMS 50 and 53 Appellant's arguments focus on the "plural command selectors" to: 1) "indicate a selectable operating function ... "; 2) "select the indicated operating function ... "; and 3) "cancel the selected operating function" "of the at least one door operator," as recited in claim 50 and commensurately recited in claim 53. See App. Br. 16-17, Reply Br. 3--4. The Examiner's rejection relies on a combination of Tsui, Kho, Weinberger, and Heitschel to reject claims 50 and 53. Ans. 3-7. The Examiner's position is the combination would have been obvious for the purpose of "designing a user friendly interface." Id. Appellant describes the references independently, arguing their individual teachings as to the elements for which the combination is cited (App. Br. 12-14; see also Reply Br. 3--4), dismisses the Examiner's proposed reasoning for making the combination as "conclusory" (App. Br. 15), and argues the Examiner fails to provide the evidentiary support from the references or otherwise for his reasoning. For example, the Examiner fails to articulate how the teachings drawn from the interfaces of a handheld computer and a drug dispenser would create a user friendly interface to control a door operator. Moreover, the Examiner fails to explain why one of ordinary skill in the art would be motivated to create an interface as defined by the combination proposed by the Examiner. Rather, it appears as if the Examiner is impermissibly using Appellant's 4 Appeal2014-003637 Application 11/496,329 invention as a blueprint to cobble together structure and functionality from a variety of different references from a variety of different fields of endeavor to arrive at Appellant's invention. Id. 15-16. Appellant also asserts that the Examiner's rejection is based on hindsight. Id. 16. Because Appellant's various arguments against the references individually do not persuasively rebut the Examiner's findings as to their combined teachings, we see no error, for "the test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). "[I]f a technique has been used to improve one device, and a person of ordinary skill in 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." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellant's arguments have not persuaded us that it would have been beyond the skill of a person of ordinary skill in the art to combine the references' teachings as the Examiner reasons. Ans. 3-7. We rely particularly on the following: It would have been obvious to an ordinary skilled artisan at the time of invention to modify the invention of Tsui and incorporate the functionality of the handheld device on the keypad with a nice display so the user can easily select to navigate amongst menus and the menu items, select menu items, and select to cancel the activation of a menu; therefore, designing a user friendly interface. Id. 6 (discussing features of Tsui, Fig. 1, element 24, 2:50-3:12, 29--47). 5 Appeal2014-003637 Application 11/496,329 It would have been obvious to an ordinary skilled artisan at the time of invention to modify the combination above and modify Tsui keyboard to have designated SELECT and ENTER buttons for selecting and entering the operations; therefore designing a user friendly keyboard. Id. (discussing the incorporation of teachings from Kho i-fi-17, 18, and 19, into the teachings of Tsui). It would have been obvious to an ordinary skilled artisan at the time of invention to modify the combination above and have the Tsui's Keypad to also operate a motorized door in addition to providing security and other door operations, and have an open/close switch for user's convenience to open or close the door from the keypad. Id. 7 (discussing the incorporation of teachings from Heitschel, Fig. 1, into the teachings of Tsui and Kho). Further, we are unpersuaded that the Examiner's rationale of "designing a user friendly keypad," falls short of the required "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" to have successfully shifted the burden to Appellant to rebut the Examiner's case. KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We find no error in the Examiner's reasoning, for "'[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."' Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at 416). We also are not persuaded of error based on Appellant's arguments that "the Examiner fails to provide the evidentiary support from the references or otherwise for his reasoning" by, for example, "fail[ing] to 6 Appeal2014-003637 Application 11/496,329 articulate how the teachings drawn from the interfaces of a handheld computer and a drug dispenser would create a user friendly interface to control a door operator" (App. Br. 15-16) or "why one of ordinary skill in the art would be motivated to create an interface as defined by the combination proposed by the Examiner" (id. 16). See also Reply Br. 3--4. The Examiner provides citations to the references as evidence and is not tasked with articulating "how" or "why" the teachings are combinable, provided the Examiner's articulated reasoning is "rational." KSR, 550 U.S. at 418. Appellant's argument based on hindsight (App. Br. 16) is also unpersuasive because, among other reasons, as the Examiner explains, the Examiner's proposed reasoning of designing a user friendly interface is not Appellant's motivation (Ans. 16). Accordingly, Appellant has not persuasively rebutted the Examiner's case. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (An appellant may attempt to overcome an examiner's obviousness rejection on appeal to the Board by: (A) submitting arguments and/ or evidence to show that the examiner made an error in either ( 1) an underlying finding of fact upon which the final conclusion of obviousness was based or (2) the reasoning used to reach the legal conclusion of obviousness; or (B) showing that the prima facie case has been rebutted by evidence of secondary considerations of nonobviousness. ). We, therefore, sustain the Examiner's rejection of claim 50 and of claim 53, argued on the same basis. We also sustain the Examiner's 7 Appeal2014-003637 Application 11/496,329 rejection of claims 51, 52, 54, and 55, which Appellant argues based on claims 50 and 53. Appellant argues claims 56 and 57 separately (App. Br. 17), but we are unpersuaded of error for reasons similar to those discussed above and the Examiner's reasoning (Ans. 9-10, 17-18). CONCLUSIONS On the record before us, we do not sustain the Examiner's rejection of claims 50-57 under 35 U.S.C. Â§ 112(a) or 35 U.S.C. Â§ 112 (pre-AIA), first paragraph; however, we sustain the Examiner's rejections of claims 50-57 under 35 U.S.C. Â§ 103 over combinations of Tsui, Kho, Weinberger, Heitschel, Murray, and/or Meyerhoefer. DECISION Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner's decision rejecting claims 50-57 is affirmed. See 37 C.F.R. Â§ 41.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8