Ex Parte 8111008 et al

Patent Trial and Appeal Board

Jun 1, 2015

95002261 (P.T.A.B. Jun. 1, 2015)

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.
95/002,261 09/14/2012 8111008 CP00221-00 9098
15027 7590 06/01/2015
Condo Roccia Koptiw LLP
1800 JFK Boulevard
Suite 1700
Philadelphia, PA 19103
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/01/2015 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
________________

CRESTRON ELECTRONICS, INC.
Requester

v.

LUTRON ELECTRONICS CO., INC.
Patent Owner and Appellant
________________

Appeal 2015-001498
Reexamination Control 95/002,261
Patent 8,111,008 B2
Technology Center 3900
________________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
JEREMY J. CURCURI, Administrative Patent Judges.

Opinion for the board filed by Administrative Patent Judge CURCURI.

Opinion Concurring filed by Administrative Patent Judge BAUMEISTER.

CURCURI, Administrative Patent Judge.

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Patent 8,111,008 B2

2
DECISION ON APPEAL
Patent Owner appeals the Examiner’s decision to reject claims 1-15.
PO App. Br. 3. We have jurisdiction under 35 U.S.C. §§ 134 and 315, and
we heard the appeal on May 6, 2015.
Claims 1-15 are rejected under 35 U.S.C § 103(a) as obvious over
Pogodayev (US 2005/0128666 A1; published June 16, 2005) and
Hakkarainen (US 5,637,964; issued June 10, 1997). RAN 9-22.
Claims 1-15 are rejected under 35 U.S.C. § 112 as failing to comply
with the written description requirement. RAN 22-23.
We affirm.
STATEMENT OF THE CASE
This proceeding arose from a request by Crestron Electronics, Inc.
for an inter partes reexamination of Patent 8,111,008 B2, titled “Multiple-
Input Electronic Ballast With Processor” (“the ’008 patent”). The
’008 patent describes “ballasts having processors therein for controlling a
gas discharge lamp in response to a plurality of inputs.” ’008 patent, col. 1,
ll. 18-20. Claim 1 is illustrative:
1. A ballast for a gas discharge lamp comprising:
a processor for controlling a level of a ballast output
signal in response to a plurality of ballast control signals,
wherein:
said processor controls said ballast output signal in
accordance with a selected one of a plurality of
predetermined control processes;
each control process of said plurality of control
process comprises a unique algorithm for controlling said
ballast output signal; and
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parameters of said ballast output signal are
determined in accordance with a sequence and priority of
values of said ballast control signals;
an inverter for receiving a processor output signal from
said processor and providing said ballast output signal in
response to said processor output signal; and
a plurality of input terminals for receiving said plurality
of ballast control signals, wherein:
said plurality of ballast control signals is coupled
to said processor via said input terminals;
one of said plurality of input terminals is a dimmer
input for receiving a high-voltage phase-control signal
provided by a dimmer;
one of said plurality of input terminals is an
infrared (IR) receiver for receiving data signals from an
IR transmitter;
one of said plurality of input terminals is an analog
signal input for receiving a direct current signal; and
one of said plurality of input terminals is a
bidirectional terminal configured to receive and send
control signals, from and to, at least one other ballast via
an inter-coupled bidirectional interface.

ANALYSIS
THE WRITTEN DESCRIPTION REJECTION
The Examiner finds claims 1-15 fail to comply with the written
description requirement. RAN 22-23. The Examiner explains:
It is noted that the abstract portion of the ’008 patent mentions
that the ballast includes a “high voltage phase controlled
signal” (Abstract). However, the specification never discusses a
“high voltage phase controlled signal”. Rather, the
specification makes numerous references to a “high frequency
AC voltage signal”. (e.g., col. 4:19-25, col. 6:64-65 to col. 7:6;
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and col. 7:43) As such, a “high voltage phase controlled
signal” was not described in such a way by the ’008 patent as to
reasonably convey the inventor(s) had possession of the
invention because the ’008 patent describes high-frequency
signals and not high-voltage signals.
Ans. 23.
Patent Owner presents the following principal arguments:
i. The Abstract provides 35 U.S.C. § 112, first paragraph, support
for the recited high-voltage phase-control signal. See PO App. Br. 10-11; see
PO Reb. Br. 6-7.
ii. The Specification provides 35 U.S.C. § 112, first paragraph,
support for the recited high-voltage phase-control signal. See PO App.
Br. 11 (citing ’008 patent, col. 5, ll. 46-56).
iii. Figure 5 provides 35 U.S.C. § 112, first paragraph, support for
the recited high-voltage phase-control signal. See PO App. Br. 11 (“phase-
controlled input signal may be provided by a dimmer at line voltage”).
A person of skill in the art would clearly recognize line voltage
as high voltage, as compared to other input signals “such as the
conventional 0-10V analog signal” (see col. 2, ll. 20-24). As
such, the phase-controlled signal that is input to the ballast at
line voltage is a high-voltage phase-controlled input signal.
PO App. Br. 12.
Third Party Requester responds that, without further discussion
beyond the recitation of “high-voltage phase-control signal” in the Abstract,
claims 1-15 fail to comply with the written description requirement. See 3PR
Resp. Br. 3-5. Third Party Requester further responds:
[T]he ’008 patent does not disclose that the RMS voltage of the
phase-controlled signal shown in FIG. 5 is equal to line voltage,
much less the specific values identified in the Appeal.
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Moreover, the ’008 patent never distinguishes the claimed
phase control signal as having a higher voltage than a 0-10 V
analog signal, nor would one skilled in the art at the time of the
invention have recognized such a distinction.
3PR Resp. Br. 5.
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
The Abstract describes: “The ballast includes a high-voltage phase-
controlled signal provided by a dimmer.” The Specification (’008 patent,
col. 5, ll. 46-56) describes “a phase controlled input signal coupled to
processor terminal 34a [in Figure 2].” The ’008 patent, Fig. 5, depicts a
dimmer receiving a line voltage as input and outputting a phase-controlled
signal. Although the RMS voltage of the phase-controlled signal shown in
Fig. 5 is not always equal to line voltage because of dimming, still the
phase-controlled signal reasonably may be considered a high-voltage phase-
control signal in light of the ’008 patent’s disclosure.
Thus, we find the above disclosure in the Specification, including the
Abstract and the Drawing, adequate to convey reasonably to those skilled in
the art that Patent Owner had possession of the recited “one of said plurality
of input terminals is a dimmer input for receiving a high-voltage phase-
control signal provided by a dimmer” as of the filing date.
We, therefore, do not sustain the Examiner’s written description
rejection of claims 1-15 under 35 U.S.C. § 112, first paragraph.

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THE OBVIOUSNESS REJECTION
The Examiner finds Pogodayev and Hakkarainen teach all limitations
of claim 1. RAN 9-13. The Examiner finds Pogodayev’s signal conveying
lamp type and signal conveying dimming level teach the recited plurality of
ballast control signals. RAN 9-10 (citing Pogodayev, ¶¶ 30, 36). The
Examiner further finds Pogodayev’s lamp type selection preceding dimmer
level selection, and Pogodayev’s reduced brightness determined by the
dimmer level selection having priority over the maximum brightness
determined by the lamp selection, teaches the recited parameters of the
ballast output signal being determined in accordance with a sequence and
priority of values of the ballast control signals. RAN 10 (citing Pogodayev,
¶ 36).
Patent Owner presents the following principal arguments:
i. Pogodayev does not teach the recited parameters of the ballast
output signal being determined in accordance with a sequence and priority of
values of the ballast control signals. See PO App. Br. 13-15. “[T]he RAN
incorrectly attempts to transform a sequence into a priority.” PO App. Br.
13.
[A]t startup the ballast uses a single value (i.e, the lamp type
selection) and after warm up the ballast again uses a single
value (i.e, the dimming level). Given that the order of use is
predefined (and always the same), there is no need for
Pogodayev to prioritize ballast control signals. Accordingly,
Pogodayev nowhere teaches or suggests even so much as
assigning priority values to ballast control signals, much less
determining parameters of a ballast output signal in accordance
with any such priority values.
PO App. Br. 14.
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ii. Pogodayev does not teach or suggest a plurality of ballast
control signals. See PO App. Br. 15-16. “[A] ballast control signal is a signal
in response to which a ballast processor controls the level of a ballast output
signal.” PO App. Br. 15. Pogodayev’s dimming level may control an
operation of the ballast, but Pogodayev’s lamp type does not control an
operation of the ballast. See PO App. Br. 15-16. “Conveying the lamp type,
however, does not command the ballast to drive the lamp. The ballast, based
on its preconfigured turn on procedure, starts the lamp at the lamp’s
‘maximum brightness.’” PO App. Br. 16 (citing Pogodayev, ¶36); see also
PO Reb. Br. 7-8.
Third Party Requester explains that “Pogodayev at paragraph [0036]
implicitly assigns a later-received dimming level selection priority over a[n]
earlier-received lamp type selection.” 3PR Resp. Br. 11. Third Party
Requester further explains that Pogodayev’s lamp type is used to determine
the desired initial intensity of the lamp. See 3PR Resp. Br. 7.
We see no error in the Examiner’s findings and conclusions.
Pogodayev (¶ 36) discloses determining the type of lamp to be driven,
and that “[t]he initial settings will be designed to drive the particular type of
lamp that has been selected, at its nominal power rating, e.g. maximum
brightness.” Pogodayev (¶ 36) also discloses determining a dimmer level,
and that “[a] number of predefined dimmer levels may be mapped to
corresponding inverter input voltage and inverter operating frequency, for
each type of lamp.”
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Regarding Patent Owner’s argument (ii), we find this argument
unpersuasive because Pogodayev maps dimming levels, for each lamp type,
to corresponding inverter input voltages and operating frequencies.
Thus, we agree with the Examiner that Pogodayev’s signal conveying
lamp type and signal conveying dimming level teach the recited plurality of
ballast control signals.
In addition, Pogodayev (¶ 36) discloses that determining the type of
lamp to be driven precedes determining a dimmer level. Thus, Pogodayev
discloses a sequence of ballast control signals. Pogodayev (¶ 36) further
discloses driving the lamp at the nominal power rating for the lamp type, and
then, obtaining the desired dimming level by adjusting the input voltage to
the inverter. Thus, the desired dimming level has priority over the nominal
power rating. Therefore, with respect to driving the inverter, the signal
conveying dimming level has priority over the signal conveying lamp type.
Thus, Pogodayev discloses a priority of ballast control signals.
Regarding Patent Owner’s argument (i), we find this argument
unpersuasive and agree with the Examiner that Pogodayev teaches the
recited parameters of the ballast output signal being determined in
accordance with a sequence (Pogodayev’s signal conveying lamp type,
Pogodayev’s signal conveying dimming level) and priority of values
(dimming level has priority over nominal power rating for the lamp type) of
the ballast control signals. We note that the sequence of the ballast control
signals is composed of the signal conveying lamp type and the signal
conveying dimming level. We distinguish this sequence (the mere presence
of multiple signals in sequence) from the priority of values of the ballast
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control signals, the priority being that the dimming level has priority over
the lamp type during dimming.
We, therefore, sustain the Examiner’s obviousness rejection of
claim 1, and of claims 2-15, which are not argued separately with
particularity.

ADDITIONAL DISCUSSION
In the Respondent Brief, Third Party Requester argues that, as an
alternative to Pogodayev teaching the recited plurality of ballast control
signals and the recited parameters of the ballast output signal being
determined in accordance with a sequence and priority of values of the
ballast control signals, Hakkarainen teaches these limitations.
See 3PR Resp. Br. 7-10, 12-13.
In the Rebuttal Brief, Patent Owner argues that Third Party
Requester’s arguments are improper because they are outside the scope of
the issues raised in Patent Owner’s Appeal Brief. See PO Reb. Br. 3-5.
Third Party Requester’s arguments in the Respondent Brief
technically comport with 37 C.F.R. § 41.68(a)(3) at least to the extent that
they are limited to the general obviousness issue raised in Patent Owner’s
opening brief. See 37 C.F.R. § 41.68(a)(3) (“The respondent brief shall be
limited to issues raised in the appellant brief to which the respondent’s brief
is directed.”).
Further, precedent demands consideration of Third Party Requester’s
additional rationale at least to the extent that it is supported by the record.
See Rexnord Industries, LLC v. Kappos, 705 F.3d 1347, 1356 (Fed. Cir.
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2013) (“On judicial review, the correctness of the decision appealed from
can be defended by the appellee on any ground that is supported by the
record, whether or not the appellant raised the argument.”).
Third Party Requester’s arguments in the Respondent Brief are
supported by the record. See Third Party Requester’s Comments after Non-
Final Action dated September 10, 2013; see also Third Party Requester’s
Comments after Action Closing Prosecution dated January 6, 2014. Third
Party Requester presents the following principal arguments:
i. Hakkarainen discloses a plurality of ballast control signals.
3PR Resp. Br. 9; see Hakkarainen, Abstract (“ballasts within the fixtures can
be further controlled by external dimmers, occupancy sensors, timeclocks,
photosensors and other types of input devices”); see also Hakkarainen,
Figures 13.
ii. Hakkarainen discloses parameters of the ballast output signal
being determined in accordance with a sequence and priority of values of the
ballast control signals. PO Resp. Br. 13. As explained by Hakkarainen:
[In Figure 13, d]immer 300 may set the maximum light level of
the lamp output or the minimum light level of the lamp output.
It may also override the internal dimmer control circuit 20 to set
the lamp output. In this case, the last operated of the external
dimmer 300 or radiation transmitter 40/50 will determine lamp
output.
Hakkarainen, col. 9, ll. 20–25.
Because we agree with the Examiner that Pogodayev teaches the
argued limitations, we end our additional discussion here, without deciding
whether Hakkarainen also teaches the argued limitations.

Appeal 2015-001498
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Patent 8,111,008 B2
11
ORDER
The Examiner’s decision rejecting claims 1-15 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
AFFIRMED

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

CRESTRON ELECTRONICS, INC.
Requester

v.

LUTRON ELECTRONICS CO., INC.
Patent Owner and Appellant
________________

Appeal 2015-001498
Reexamination Control 95/002,261
Patent 8,111,008 B2
Technology Center 3900
________________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
JEREMY J. CURCURI, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge, concurring.

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Patent 8,111,008 B2

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I.
I agree with the Majority’s decision not to sustain the rejection under
35 U.S.C. § 112, ¶ 1, for the Specification lacking adequate written
description.
II.
I disagree with the Majority’s rationale for sustaining the obviousness
rejection based upon Pogodayev and Hakkarainen. Patent Owner is correct
that Pogodayev has not been shown to teach the claim limitation “parameters
of said ballast output signal are determined in accordance with a sequence
and priority of values of said ballast control signals” (emphasis added).
E.g., PO App. Br. 13. The proposed rejection only demonstrates that
Pogodayev teaches a sequence: selecting an initial setting, such as maximum
brightness, and subsequently dimming the brightness level once the lamp has
warmed up. See RAN 6–8; ACP 4.
To say this sequence of events also constitutes a priority-based
determination completely reads the language “and priority” out of the
claims. “A claim construction that gives meaning to all the terms of the
claim is preferred over one that does not do so.” Merck & Co. v. Teva
Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). See also
Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-31 (Fed. Cir. 2008)
(rejecting claim construction that “ascribes no meaning to the term. . . not
already implicit in the rest of the claim”).
III.
I do concur with the Majority’s ultimate decision to sustain this
obviousness rejection, though—just for a different reason. As explained in
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the Majority’s “Additional Discussion” Section (Maj. Op. 9–10), Requester
alternatively argues in its Respondent Brief that Hakkarainen teaches the
recited plurality of ballast control signals and that Hakkarainen teaches the
recited parameters of the ballast output signal are determined in accordance
with a sequence and priority of values of the ballast control signals
(hereinafter “the alternative argument”). See 3PR Resp. Br. 7–10, 12–13.
Furthermore, our reviewing court has instructed the Board to consider
arguments of an appellee that are supported by the record, even when doing
so conflicts with an established agency rule on the timeliness of arguments.
See Rexnord Industries, LLC v. Kappos, 705 F.3d 1347, 1356 (Fed. Cir.
2013) (“On judicial review, the correctness of the decision appealed from
can be defended by the appellee on any ground that is supported by the
record, whether or not the appellant raised the argument.”). Cf. 37 C.F.R.
§ 41.68(a)(3) (“The respondent brief shall be limited to issues raised in the
appellant brief to which the respondent’s brief is directed.”).
III(A).
Regarding the merits of the alternative argument, Requester has
established sufficiently on the record that Hakkarainen teaches that
parameters of ballast output signals can be determined in accordance with a
priority of ballast control signal values. See Third Party Comments under
37 CFR § 1.947 6–7 (filed Sept. 10, 2013) (citing to passages of
Hakkarainen that teach various dimmer override controls); see also
3PR Resp. Br. 7–10, 12–13. Owner has not rebutted sufficiently the
obviousness of including such overrides in a device constructed according
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the combined teachings of Pogodayev and Hakkarainen as proposed by
Requester. See, e.g., PO Reb. Br. 3–4, 7–8.
For these reasons, I concur with the result reached by the Majority.
III(B).
In the course of addressing Owner’s contention that “Third Party
Requester’s arguments are improper because they are outside the scope of
the issues raised in Patent Owner’s Appeal Brief” (see Maj. Op. 9 (citing
PO Reb. Br. 3–5), the Majority makes a statement that is not dispositive of
the present dispute and that therefore constitutes mere dicta. Specifically,
the Majority states
Third Party Requester’s arguments in the Respondent Brief
technically comport with 37 C.F.R. § 41.68(a)(3) at least to the
extent that they are limited to the general obviousness issue
raised in Patent Owner’s opening brief. See 37 C.F.R.
§ 41.68(a)(3) (“The respondent brief shall be limited to issues
raised in the appellant brief to which the respondent’s brief is
directed.”).
Maj. Op. 9.
1

This statement incorrectly implies that Rule § 41.68(a)(3) authorizes
Requester to raise the alternative argument addressed above in Section III(A)
merely by virtue of the fact that Owner’s Appeal Brief includes argument
pertaining to the proposed combination of Pogodayev and Hakkarainen
generally, regardless of how unrelated Requester’s alternative argument in
the Respondent Brief is to the arguments raised in Owner’s Appeal Brief.
Restated, the Majority incorrectly implies that the language “issue raised in

1
The statement is not dispositive of the present appeal because, as explained
in Section III(A), Requester’s argument in the Response Brief regarding the
alternative theory of obviousness is supported by the prosecution record.
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the appellant brief” is used within Rule § 41.68(a)(3) to mean “the ultimate
ground of rejection contested in the appellant brief.”
To be clear, the rule does not authorize such a sweeping range of
additional arguments. The rule narrowly limits respondent briefs to
addressing the specific issues that were raised in the appeal brief. If Rule
§ 41.68(a)(3) gave a respondent carte blanche freedom to argue any
previously raised or unraised issue that merely relates to the ultimate
question of the propriety of the of the disputed rejection, the rule would be
meaningless and unnecessary. An appellee typically has no reason or desire
to argue the propriety of an ultimate ground of rejection if an appellant has
not argued that ultimate ground of rejection in the appeal brief first. The
rule only makes sense if it is interpreted to mean that respondents must limit
their arguments regarding the ultimate ground of rejection to those specific
issues first argued in the appellant brief.
Moreover, nothing in Rexnord modifies how the language of
Rule § 41.68(a)(3) should be interpreted. As explained above, Rexnord does
stand for the proposition that the scope of permissible arguments that may be
contained in an appellee’s respondent brief is broader than the limited
“issues raised in the appellant brief,” as recited by the rule. Rexnord instead
clarifies that a respondent is permitted to defend the correctness of the
decision appealed more broadly “on any ground that is supported by the
record, whether or not the appellant raised the argument” (Rexnord, at
1356).
Furthermore, this additional scope of argument permitted by Rexnord,
itself, is not unlimited. Nothing in Rexnord indicates that an appellee’s
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respondent brief may raise a new argument merely because it relates to a
general, ultimate ground of rejection on the record. To the contrary,
Rexnord explained that appellee’s argument in the respondent brief was
permissible not only because the references were presented previously to the
Examiner, but also because “[t]he issue was fully raised before the
examiner”. Id., at 1355 (emphasis added).
To summarize, though, my concern with the Majority’s dicta does not
relate to how Rexnord should be interpreted. My concern is how the
Majority seems to be interpreting Rule § 41.68(a)(3).

Condo Roccia Koptiw, LLP
1800 JFK Boulevard
Suite 1700
Philadelphia, PA 19103

Third Party Requester:

Creston Electronics, Inc.
15 Volvo Drive
Rockleigh, NJ 07647-2507