Ex Parte Asner

Board of Patent Appeals and Interferences

May 19, 2009

10908971 (B.P.A.I. May. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEROME L. ASNER
____________

Appeal 2009-1339
Application 10/908,9711
Technology Center 2800
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Decided:2 May 19, 2009
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

1 Application 10/908,871, Impact-Activated Trigger with Omni-Directional
Sensor, filed 2 June 2005. The Specification is referred to as the
“871 Specification,” and is cited as “Spec.” The real party in interest is
listed as Jerome L. Asner. (Appellant’s Brief, filed 8 March 2008
(“Br.”), 1.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1339
Application 10/908,971

2
A. Introduction
Jerome L. Asner (“Asner”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection3 of claims 1-3, 5, and 6 under 35 U.S.C. § 102(b) in
view of Nowakowski.4 We have jurisdiction under 35 U.S.C. § 6. We
REVERSE.
The subject matter on appeal relates to an impact-activated trigger.
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. An impact-activated trigger comprising:
a frame;
a switch mounted in the frame, the switch being movable
between an inactive position and an active position so
that in the active position the switch activates an
operation; and
a contact member movable between a resting position
and an engaged position and engageable with the switch
so that, as the contact member moves toward the engaged
position, the switch moves toward to active position.
a biasing member tensioned to urge the contact member
toward the resting position;
a spherical weight; and
a plurality of flexible suspension ligaments connecting
the weight to the contact member, the ligaments being
adapted to suspend the weight resiliently in the frame for
omni directional movement in response to an impact

3 Office action mailed 31 August 2007 (“Final Rejection”; cited as “FR”).
Remaining pending claims 4 and 7-9 have been objected to as depending
from a rejected base claim, but are otherwise indicated to be allowable.
4 Victor A. Nowakowski, Motion Sensor Switch and Circuit for Use
Therewith, U.S. Patent 4,337,402 (1982).
Appeal 2009-1339
Application 10/908,871

3
from any direction, so that movement of the sphere in
any direction is transmitted to the contact member to
cause the contact member to move toward the engaged
position.
(Claims App., Br., Claims App. A-1; indentation added.)
We note initially that Asner does not argue for the separate
patentability of any of the dependent claims. Arguments that could have
been raised in the principal Brief on Appeal, but that were not, have been
waived. 37 C.F.R. § 41.37(c)(1)(vii). Hence we shall consider only
contested limitations in claim 1, with which the remaining claims on appeal
stand or fall.
The Examiner relied on switches depicted in Nowakowski Figures 2
and 3, which are reproduced below.

{Figures 2 and 3 are said to show motion sensor switches}5

5 The text in curly braces following the Figures is provided to ensure
compliance with section 508 of the U.S. Rehabilitation Act for publication
of this Decision on the USPTO website pursuant to the Freedom of
Information Act. It is not part of the Decision.
Appeal 2009-1339
Application 10/908,871

4
Regarding the switches shown in Figure 2, Asner argues that the Examiner
improperly read the switch recited in claim 1 on conductive mass 56 and
conductive ribs 42-49, while also reading the contact member and the
spherical weight on conductive mass 56. (Br. 7.) The same flaws are said to
apply to the switch in Figure 3. (Id.) Asner argues that “the Examiner’s
interpretation of claim 1 improperly names elements in the reference to serve
double duty, which renders several of the elements of claim 1 redundant or
superfluous.” (Br. 8.)
The dispositive issue in this case is did the Examiner err in reading the
switch, the contact member, and the spherical weight so broadly that they
encompass the same element or elements in the switch assembly taught by
Nowakowski?
B. Discussion
During examination of an application for patent, “the PTO applies to
the verbiage of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). Claimed subject matter is anticipated only if every
element recited in the claim is found in a prior art reference, arranged as
recited in the claim under review. In re Bond, 910 F.2d, 831, 833 (Fed.
Cir. 1990).
Claim 1 recites, inter alia, a switch, a contact member, and a spherical
weight. The contact member is recited to be “engageable with the switch so
Appeal 2009-1339
Application 10/908,871

5
that, as the contact member moves toward the engaged position, the switch
moves toward the active position.” The term “engageable,” in ordinary use,
is applied to two separate parts that may be linked together. While it is true
that the two engageable parts may be joined, for example, by a cord or other
flexible member, a single part is not ordinarily said to be “engageable” with
itself. In a similar way, claim 1 recites that the spherical weight is connected
by a plurality of flexible suspension ligaments to the contact member, and
that movement of the sphere is transmitted to the contact member, to cause
the latter to move toward the engaged position (and thus to cause the switch
to move toward the active position). Thus, the plain language of the claim
indicates that the spherical weight is a distinct element from the contact
member.
An applicant may, of course, define terms idiosyncratically in the
supporting specification. In the present case, however, the Examiner has not
directed our attention to any disclosure in the 871 Specification that
indicates that Asner intends to give the terms in the appealed claims a
reading different from the ordinary meaning. Nor are any idiosyncratic
meanings apparent in the supporting disclosure. We conclude that the
Examiner’s interpretation of the claim language is broader than the broadest
reasonable usage as would have been understood by a person having
ordinary skill in the art, in light of the supporting disclosure.
Thus, regarding the switch shown in Nowakowski Figure 2, if the
recited switch is read on ribs 42-49 and on the surface of conductive
sphere 56, it is inconsistent to read the contact member on conductive
sphere 56. Moreover, if the contact member is read on conductive
sphere 56, it is inconsistent to read the spherical weight, which must be
Appeal 2009-1339
Application 10/908,871

6
suspended from the contact member by flexible suspension ligaments, on the
same conductive sphere 56. The Examiner’s position with respect to the
switch shown in Nowakowski Figure 3 is less clear, as the Examiner has not
clearly identified what in that figure meets the switch. But if ribs 42-49 are
part of the switch, then a conductive segment of spring 78 must be the other
conductive contact of the switch, since the spherical mass 76 is said to be
nonconductive. But the Examiner identifies a “segment of element 78” as
the contact member. (FR 3). As already discussed, claim 1 requires the
contact member and the switch to be separate structures. Thus, the
Examiner’s finding that claim 1 is anticipated—that all the elements of
claim 1 are found in Nowakowski, arranged in the same way as recited in the
claim—is incorrect.
C. Order
We REVERSE the rejection of claims 1-3, 5, and 6 under
35 U.S.C. § 102(b) in view of Nowakowski.
REVERSED

PL Initial:
sld

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