Ex Parte Hauck et al

Board of Patent Appeals and Interferences

Jun 30, 2005

10062921 (B.P.A.I. Jun. 30, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERIC W. HAUCK and WINSTON G. WALKER
____________
Appeal No. 2005-1123
Application No. 10/062,921
____________
ON BRIEF
____________
Before FRANKFORT, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 2-4, 6-8,
15-19 and 21-23. Claims 9-13 were canceled by amendment subsequent to the final
rejection.
We AFFIRM.
Appeal No. 2005-1123
Application No. 10/062,921
Page 2
1 We derive our understanding of this reference from an English language translation, obtained by
the USPTO, a copy of which is attached hereto.
BACKGROUND
The appellants’ invention relates to remote controls for use with motorized
window coverings and to systems for controlling motorized window coverings. A copy
of the claims under appeal is set forth in the appendix to the appellants’ brief.
The Prior Art
The examiner relied upon the following prior art references of record in rejecting
the appealed claims:
Kovach et al. (Kovach) 5,793,174 Aug. 11, 1998
Hosono et al. (Hosono) 1999-98028 Apr 9, 19991
(Japanese Kokai Patent Application)
The Rejection
Claims 2-4, 6-8, 15-19 and 21-23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kovach in view of Hosono.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejection, we make reference to the answer
(Paper No. 16) for the examiner's complete reasoning in support of the rejection and to
the brief (Paper No. 15) and reply brief (Paper No. 17) for the appellants’ arguments
thereagainst.
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Application No. 10/062,921
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OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. For the reasons
which follow, we sustain the examiner’s rejection.
Appellants have opted to group all of their claims together for purposes of this
appeal (brief, page 2) and have presented arguments as to the patentability of the
claims without regard to any particular claim. Therefore, we shall decide this appeal on
the basis of representative claim 15, with claims 2-4, 6-8, 16-19 and 21-23 standing or
falling therewith. See In re Wiseman, 596 F.2d 1019, 1021-1022, 201 USPQ 658, 660
(CCPA 1979); In re Burckel, 592 F.2d 1175, 1178-1179, 201 USPQ 67, 70(CCPA
1979); In re Hellsund, 474 F.2d 1307, 1309-1310, 177 USPQ 170, 172(CCPA 1973).
The examiner has rejected claim 15 as being unpatentable over Kovach in view
of Hosono. Kovach discloses an infrared (IR) transmitter (remote control unit) 218
having UP and DOWN buttons 220a, 220b used to remotely activate a window shade
106 provided with a motor 122 mounted in the head rail 102 thereof for driving a reel
shaft 124 which in turn causes movement of a lift cord 120' to raise or lower the blind.
The window shade is also equipped with an interface module having an IR receiver 216.
According to Kovach, in a preferred embodiment, the IR transmitter 218 is
provided with a two-position channel selection switch 222, which allows a user to
choose between two channels A and B. Kovach teaches that “[t]he channel selection
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Application No. 10/062,921
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feature is especially advantageous in rooms where more than one window covering
assembly is to be installed” (column 9, lines 46-48). When the UP or DOWN button on
the transmitter 218 is pushed, a coded sequence of pulses corresponding to the button
pushed and the channel selected is generated. This sequence comprises a command
signal and has an identical number of pulses, with the sequence being repeated as long
as the button is depressed. Each pulse in a sequence is modulated with a 38 kHz
carrier before being transmitted.
The IR receiver filters and demodulates the sensed command signal and outputs
a sequence of pulses corresponding to that generated within the transmitter before
being modulated. The pulses are read by the processor 214 and matched against a
reference sequence stored in ROM. If a match occurs, the processor sends out the
appropriate signals to energize the motor. See column 9, last paragraph.
Hosono discloses a remote control transmitter comprising a laser beam emitter 6
for emitting a laser beam 10, an infrared light emitter 5, a convex lens 14 for restricting
the directivity of the infrared light 11 and a half mirror 13 for making the directivity of the
infrared light 11 and laser beam 10 the same. See Figure 4 and page 6 of the
appended translation. As illustrated in Figure 4, the infrared beam 11 is broader than
the visible laser beam 10. Hosono teaches that the laser beam emitter emits visible
light (laser beam 10) for the purpose of ensuring that the target device is the
transmission target for the command contents of the infrared light (translation, page 1).
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Hosono explains that the visible laser beam is provided to overcome the problem
in the prior art that, if there were a number of devices which received the same remote
control format within a close distance in a room, the control extended to devices besides
the target device (translation, page 2). Previous attempts to overcome this problem by
providing separate function keys for each device made the transmitter complex and the
provision of a slide switch to switch control between different devices A to C was
inconvenient, as it required the user to slide the switch with each change of the
operating devices A to C (translation, page 3). Hosono points out that the visible light
beam permits the user to confirm whether the transmitted remote control signal, which
is not visible to the human eye, is accurately directed toward the target device
(translation, page 4). Accordingly, the infrared light signal need not be emitted in a wide
range as was necessary in the prior art (translation, page 3).
Hosono discloses each and every element of claim 15. Specifically, Hosono
discloses a remote control transmitter, for controlling a target device, comprising a laser
beam emitter 6 (means for emitting a visible light beam) and an infrared light emitter 5
(means for emitting an encoded light beam), wherein the encoded infrared beam is
superimposed on the visible light beam (see Figure 4), the encoded infrared beam
carrying commands to the target device (translation, page 5, and claims 1 and 5 of
Hosono). Claim 15 does not recite a window covering. The language “for controlling a
window covering” and “to move the window covering” constitutes intended use. It is well
settled that the recitation of an intended use for an old product does not make a claim to
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2 Anticipation is established only when a single prior art reference discloses, expressly or under
the principles of inherency, each and every element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be
no difference between the claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991). It is not necessary that the reference teach what
the subject application teaches, but only that the claim read on something disclosed in the reference, i.e.,
that all of the limitations in the claim be found in or fully met by the reference. Kalman v. Kimberly Clark
Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
that old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). In this case, Hosono’s remote control transmitter is fully capable,
without modification, of being used for controlling a motorized window covering having
an IR receiver.
In light of the above, we conclude that Hosono anticipates2 claim 15. 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, 220 USPQ 1021, 1025 (Fed. Cir. 1984). See also In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In re Pearson, 494
F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974).
Moreover, it would have been obvious, in view of the combined teachings of
Kovach and Hosono, to provide a remote control transmitter for Kovach’s powered
window assembly comprising both an infrared light emitter for transmitting an encoded
infrared light signal carrying commands for moving the window covering and a visible
laser beam emitter, with the infrared light beam being superimposed on the visible light
beam, as illustrated in Figure 4 of Hosono. The motivation for providing such a remote
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control transmitter, in place of the two-channel IR transmitter of Kovach, comes from
both of the references, as pointed out by the examiner on page 4 of the answer.
Specifically, both Kovach and Hosono recognize that the placement of two or more
remotely controlled devices controlled by the same transmitter in close proximity to one
another renders it more difficult for the operator to target the intended device for control.
Further, Hosono appreciates that the two-channel solution in prior art transmitters such
as that of Kovach is inconvenient for operators and teaches one instead to provide on
the transmitter means for emitting a visible light beam, aligned with and narrower than
the IR control beam, to help the operator to direct the control beam to target the
intended device for control. As such, Hosono would have provided ample motivation to
one of ordinary skill in the art to provide in Kovach’s remote control transmitter a means
for emitting a visible laser beam, coaxial with and narrower than the emitted IR control
beam, to permit the operator to accurately target the intended window blind for control.
The appellants’ argument that Hosono is non-analogous art (brief, page 3) is not
well taken. Two criteria have evolved for determining whether prior art is analogous: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the particular problem with which
the inventor is involved. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992). See also In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315
(Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979).
Appeal No. 2005-1123
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Hosono is analogous art with respect to the invention recited in claim 15, as both
Hosono and claim 15 are from the field of remote control units. Moreover, even if
Hosono were not considered to be from the same field of endeavor as the invention of
claim 15, Hosono is still reasonably pertinent to the particular problem which the
appellants’ invention seeks to solve, namely, permitting the operator to direct the remote
control beam at just one receiver when one or more actuators are placed in close
proximity to one another (see appellants’ specification, page 1, and the discussion of
Hosono above). Therefore, Hosono qualifies as analogous art with respect to the
appellants’ invention under either of the two established criteria.
For all of the above reasons, we shall sustain the examiner’s rejection of claim
15, as well as claims 2-4, 6-8, 16-19 and 21-23 which stand or fall with claim 15, as
being unpatentable over Kovach in view of Hosono.
CONCLUSION
To summarize, the decision of the examiner to reject claims 2-4, 6-8, 15-19 and
21-23 under 35 U.S.C. § 103 is affirmed.
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Application No. 10/062,921
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
Appeal No. 2005-1123
Application No. 10/062,921
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John L. Rogitz, Esq.
ROGITZ & ASSOCIATES
750 “B” Street, Suite 3120
San Diego, CA 92101
Attachment: English language translation of Hosono reference