Ex Parte Domel et al

Board of Patent Appeals and Interferences

Mar 31, 2008

10062895 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS R. DOMEL and WINSTON G. WALKER
____________

Appeal 2007-4385
Application 10/062,895
Technology Center 3600
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Decided: March 31, 2008
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Douglas R. Domel et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 3, 5-6, and 11 through 13.
Claims 2, 4, and 7 through 10 have been canceled. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).
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THE INVENTION
Appellants’ invention is directed towards a motorized window
covering including a window covering 14, an actuator 10 coupled to the
window covering 14, a motor 52 coupled to the actuator 10 (Spec. 3, l. 19;
Spec. 6, l. 3; figs. 1 and 5), a pulse detector 226 electrically connected to the
motor used to count the current pulses through the motor as it revolves, a
microprocessor 230 for controlling the motion of the window covering
according to a user desired position (Spec. 11, ll. 1-15, Spec. 2, ll. 9-14, and
fig. 5), and a remote control unit 34 (Spec. 11, ll. 19-20 and fig. 4).
Appellants’ invention is also drawn to a method of controlling the
motorized window covering including moving the window covering to a
desired intermediate position between a fully raised and a fully lowered
position using the remote control unit 34, counting the pulses generated by
the pulse detector 226 as the window covering is moved to the desired
intermediate position, and storing the number of pulses in the
microprocessor 230 (Spec. 11, l. 24 through Spec. 12, l. 5 and fig. 6). At a
later time, by using the remote control unit 34, the user generates a signal
that energizes motor 52 to move the window covering 14 to the desired
intermediate location by counting pulses until the stored value is reached and
the motor is automatically stopped (Spec. 12, ll. 6-17 and fig. 7).
Claims 1 and 5 are illustrative of the claimed invention and read as
follows:
1. A method for controlling a motorized window covering,
comprising the acts of:
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in response to a set signal generated by a user,
establishing a user-defined position of the window covering,
the user-defined position being intermediate a fully raised
and fully lowered position of the window covering;
storing a pulse count corresponding to the user-defined
position;
in response to a subsequent user generated signal,
energizing a motor coupled to the window covering;
counting pulses of the motor until the pulse count is
reached, indicating that the window covering is at the user-
defined position, at which time the motor is automatically
stopped based on reaching the pulse count.

5. A motorized window covering, comprising:
a window covering;
an actuator coupled to the window covering, the actuator
being used to move the window covering;
a motor coupled to the actuator;
a pulse detector electrically connected to the motor, the
pulse detector counting pulses of the motor when the motor is
energized; and
a microprocessor receiving signals from the pulse
detector, the microprocessor storing at least one signal
corresponding to a user-defined position in response to a set
signal generated by a user, the microprocessor subsequently
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automatically causing the window covering to return to the
user-defined position using signals from the pulse detector
when a user generates a signal indicating a desire to return to
the user-defined position.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Archer US 5,038,087 Aug. 6, 1991
Bell US 5,467,808 Nov. 21, 1995

The following rejections are before us for review:1
Claims 1, 5-6, and 11-13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Archer.
Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over
Archer in view of Bell.
The Examiner provides reasoning in support of the rejections in the
Final Rejection (mailed February 19, 2004) and Answer (mailed October 6,
2004). The Appellant presents opposing arguments in the Appeal Brief
(filed May 24, 2004) and the Reply Brief (filed October 14, 2004).

FINDINGS OF FACT
Archer
We make the following findings of fact with respect to Archer:

1 The rejection of claim 3 under 35 U.S.C. § 103 as unpatentable over
Archer in view of Domel et al. (US Patent No. 6,060,852) has been
withdrawn by the Examiner (Ans. 5).
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1. Archer discloses a motor operated blind including a motor 3, a
gearbox 4, a digital counter, and an axle 6 for turning hubs 5 upon which
lifting cord 7 is wound (col. 2, ll. 8-11 and figs. 2 and 6).
2. The digital counter has a memory portion for storing digital pulses via
input 12 (col. 2, ll. 35-37 and fig. 2).
3. In using the motor operated blind of Archer the user must first
initialize the system. This is achieved by first raising the blind to its highest
position and setting the digital counter to zero. The blind is then lowered to
its lowest position and the total pulses due to the motor’s rotation are stored
in the digital counter’s memory (col. 3, ll. 12-20).
4. In operation, the blind stops automatically when the counter reaches
zero, this being the position where the blind is fully raised. Similarly, the
blind is automatically stopped when the number of pulses counted are equal
to the number of pulses in the memory of the digital counter, this being the
position where the blind is fully lowered (col. 3, ll. 23-32).
5. The lifting or lowering of the blind may be stopped in an intermediate
position. Later, the blind may be automatically lowered or lifted to its
highest and lowest end positions from the stopped intermediate position (col.
3, l. 58 through col. 4, l. 3).

Bell
We make the following findings of fact with respect to Bell:
6. Bell discloses an automatic blind or curtain suspension system
including a headrail 10, a controller 12, a remote control handset unit 16, a
lead traveler 27, vane travelers 28 connected to blind vanes 30, first and
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second end stops 48, a first motor 44a for traversing the vanes, and a second
motor 44b for rotating the vanes (col. 6, ll. 34-46; col. 7, ll. 28-32; col. 8, ll.
4-11; and figs. 1 and 3).
7. The controller 12 uses pulses to determine and a store a derived value
indicating the position of the lead traveler 27 relative to the first and second
end stops 48 (col. 8, ll. 37-39).
8. The derived value is detected by the controller 12 as an increase in the
current applied to the first motor 44a when traveler 28 is being retarded in its
motion by end stop 48 (col. 8, ll. 39-49).
9. In a subsequent operation of the system, the controller 12 regulates the
first motor 44a depending upon the derived stored value to interrupt current
to the first motor 44a when the stored derived value indicating the actual
position of the traveler 28 reaches a predetermined value between zero and
the stored value (col. 8, ll. 49-55).
10. The predetermined value is fixed by the user using the remote control
handset 16 (col. 8, ll. 55-57).
11. The automatic blind or curtain suspension system of Bell improves
security and benefits the disabled, blind, elderly or infirm occupants (col. 1,
ll. 15-18).
OPINION
Claim 1
The issue presented in this appeal is whether Appellants have
demonstrated that the Examiner erred in determining that the subject matter
of claim 1 is unpatentable over Archer. The issue turns on whether it would
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have been obvious to store an “intermediate position” in the digital counter
of Archer as proposed by the Examiner (Final Rejection 2).
Appellants argue that Archer does not teach or suggest “storing the
intermediate count as corresponding to a user-defined position in response to
a user set signal” such that a user can subsequently “return the blind to the
intermediate position by automatically stopping the motor based on the pulse
count” (App. Br. 4-5 and Reply Br. 1).
It is elementary that to support an obviousness rejection, all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
In this case, we find that Archer discloses a method of controlling a
blind system by defining user-set end points corresponding to the highest
and lowest positions of the blind using a digital counter to store a number of
pulses corresponding to the user-set end points (Findings of Fact 2 and 3).
Although we find that either one of Archer’s end points is a “user-defined
position” of the blind, we do not find a “user-defined position” that is
“intermediate a fully raised and fully lowered position” such that
subsequently a user can generate a signal that will move the window
covering to the “intermediate position.” Therefore, in light of the above, we
agree with Appellants that the digital counter of Archer does not store the
number of pulses (pulse count) corresponding to an “intermediate position”
such that a user can subsequently “return the blind to the intermediate
position by automatically stopping the motor based on the pulse count.”
The Examiner contends that Archer’s disclosure of stopping the blind at the
intermediate position and storing the number of pulses to get to that position,
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so that counting can be resumed when the blind moves again (col. 3, l. 58 et
seq.), is either a teaching to program the controller to stop the blind at a
previously stored intermediate location or a suggestion to do so (Ans. 5-6).
This simply is not supported by Archer. While the Examiner points out that
it is well known that blinds are frequently positioned between the fully
opened and fully closed positions (Ans. 5), the Examiner has not articulated
any rational basis as to why one of ordinary skill would store any
“intermediate position” for automatic subsequent return thereto in the system
of Archer.
[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” KSR Int'l. Co. v. Teleflex lnc., 127 S.Ct.
1727, 1741(2007) quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).

Therefore, we shall not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 1 because the Examiner has failed to set forth a prima
facie case of obviousness of the subject matter of claim 1.

Claim 3
Appellants rely on their argument with respect to claim 1, from which claim
3 depends, in contesting the rejection of claim 3 as unpatentable over Archer
in view of Bell (App. Br. 5). In rejecting claim 3, the Examiner relies on
Bell merely for the use of remote control to operate blinds (Final Rejection
2). The Examiner does not rely on Bell for any teaching that would
overcome the above-noted deficiency of the rejection of claim 1 as
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unpatentable over Archer. Hence, the rejection of claim 3 likewise cannot
be sustained.
Claims 5-6 and 11-13
Appellants argue all the claims rejected under 35 U.S.C. § 103(a)
together as a group. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii) (2007), we have selected claim 5 as the representative
claim to decide the appeal of the anticipation rejection, with claims 6 and
11-13 standing or falling with claim 5.
The issue presented in this appeal is whether Appellants have
demonstrated that the Examiner erred in determining that the subject matter
of claims 5-6 and 11-13 is unpatentable over Archer.
Appellants’ sole argument with respect to claim 5 is that Archer does
not teach or suggest using the “intermediate count…to return the blind to the
intermediate position…by subsequently automatically causing the window
covering to return to the user-defined position using signals from the pulse
detector when a user generates a signal indicating a desire to return to the
user-defined position” (underlining in original) (App. Br. 4-5).
We note that contrary to Appellants’ position, claim 5 does not require
that the limitation of a “user-defined position” be an “intermediate position.”
Hence, claim 5 does not require an “intermediate count.” Furthermore, we
note that the word “intermediate” does not appear at all in claim 5. We must
be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may
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be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”) The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
In this case, we find that Archer discloses a motor operated blind
including a motor, a gearbox and an axle (actuator), and a digital counter
with an internal memory (pulse detector and microprocessor) (Findings of
Facts 1 and 2). Further, we find that Archer discloses user-set end points
corresponding to the highest and lowest positions of the blind. Furthermore,
Archer discloses a digital counter that stores the number of pulses
corresponding to the user-set end points (Finding of Fact 3). As such, we
find that either one of Archer’s end points is a “user-defined position” of the
blind (window covering). Finally, we note that the automatic blind system
of Archer can be stopped in an intermediate position and then, at the
discretion of the user, is capable of returning automatically to either one of
its end points (user-defined positions) (Finding of Fact 5). Hence, we find
that Archer specifically teaches an automatic window covering (blind) that
returns to a user-defined position (user-defined end points) using signals
from a pulse detector (pulses stored in the digital counter memory) when a
user generates a signal indicating a desire to return to the user-defined
position (user-defined end points).
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In conclusion we find that Archer meets all the limitations of claim 5.
A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). See
also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494
F.2d 1399, 1402 (CCPA 1974).
For the foregoing reasons, Appellants’ argument does not persuade us
the Examiner erred in rejecting claim 5 as unpatentable over Archer. The
rejection of claims 5-6 and 11-13 is sustained.

NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Archer in view of Bell.
Discussing the question of obviousness of a patent that claims a
combination of elements, the Court in KSR, 127 S.Ct. at 1740 explains:
When a work is available in one field of
endeavor, design incentives and other market
forces can prompt variations of it, either in the
same field or a different one. If a person of
ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.
For the same reason, if 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.
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We must ask whether the improvement is more than the predictable use of
prior art elements according to their established functions. Id.
Here, although we agree with Appellants’ position regarding the
teachings of Archer, we note that Bell discloses an automatic blind or curtain
suspension system that uses a controller to store a value (pulse count)
indicating the position of the blind or curtain with respect to its ends
(Finding of Fact 7). The controller of Bell also stores a predetermined value
that is fixed by the user using a remote control handset (Finding of Fact 10).
Because the predetermined value is between zero and the stored value
(Finding of fact 9), we find that the predetermined value corresponds to an
intermediate position of the blind or curtain. In use, the controller of Bell
automatically stops motion of the blind or curtain when the value indicating
the actual position of the blind or curtain reaches the predetermined value
(Finding of Fact 9). Hence, the controller of Bell stores a signal
corresponding to an intermediate position of the blind or curtain and allows
a user to return the blind or curtain to the intermediate position by
automatically stopping the motor based on the stored signal. A person of
ordinary skill in the art would have readily appreciated that a controller of
the type taught by Bell provided with the capability to store both end and
intermediate positions and to automatically return the blind to any of those
positions would improve control of and enhance ease of operation of
Archer’s blind or curtain system by a disabled or infirm person (Finding of
Fact 11), especially in view of Archer’s teaching to stop the blind in an
intermediate position (Finding of Fact 5). Archer specifically teaches a
controller having the capability to stop the blind system at an intermediate
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position (Finding of Fact 5). Hence, the substitution of Archer’s digital
counter with Bell’s controller does not appear to be difficult for one of
ordinary skill in the art because it is no more than the “simple substitution of
one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement.” Id. Therefore,
the substitution is the product not of innovation but of ordinary skill and
common sense and thus does not patentably distinguish claims 1 and 3.
For the reasons discussed above, we conclude that the subject matter
of claims 1 and 3 is unpatentable under 35 U.S.C. § 103(a) over Archer in
view of Bell.
SUMMARY
The decision of the Examiner to reject claims 1, 3, 5, 6, and 11-13 is
affirmed as to claims 5, 6, and 11-13 and reversed as to claims 1 and 3.
Additionally, we enter a new rejection of claims 1 and 3 under 35 U.S.C.
§ 103(a) as unpatentable over Archer in view of Bell.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner,

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

The effective date of the affirmance is deferred until conclusion of the
proceedings before the examiner unless, as a mere incident to the limited
proceedings, the affirmed rejection is overcome. If the proceedings before
the examiner do not result in allowance of the application, abandonment or a
second appeal, this case should be returned to the Board of Patent Appeals
and Interferences for final action on the affirmed rejections, including any
timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. §41.50(b)

vsh

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JOHN L. ROGITZ
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