Ex parte Heitschel et al.

Board of Patent Appeals and Interferences

Nov 4, 1999

08700610 (B.P.A.I. Nov. 4, 1999)

Application filed August 12, 1996, for reissue of U.S.1
Patent No. RE 35,364, which is based on Application No.
08/425,724, filed April 20, 1995, which is a continuation of
Application 08/087,142, filed July 2, 1993, now abandoned;
which is a continuation of Application 07/715,006, filed June
13, 1991, now abandoned; which is a continuation of
Application 07/398,379, filed August 24, 1989, now abandoned;
which is a continuation of Application 06/792,661, filed
October 29, 1985, now U.S. Patent No. 4,750,118; which is a
continuation-in-part of Application 06/615,339, filed May 30,
1984, now U.S. Patent No. 4,638,433.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CARL HEITSCHEL, COLIN WILLMOTT,
and WAYNE SCHINDLER
__________
Appeal No. 1999-0880
Application 08/700,6101
__________
HEARD: October 18, 1999
__________
Before KRASS, BARRETT, and FRAHM, Administrative Patent
Judges.
Appeal No. 1999-0880
Application No. 08/700,610
2
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 20 through 45, all of the claims pending in this
reissue application.
The invention is directed to remote control garage door
openers. More particularly, manual code switches for
transmitters in such systems are eliminated by the instant
invention via a system which enables a garage door opener to
learn the identities of and respond to multiple transmitters
with different codes. In a program mode, the receiver stores
a pre-programmed code which it receives from a transmitter.
Representative independent claim 20 is reproduced as
follows:
20. An operator for controlling a position of a barrier
comprising:
at least one radio frequency transmitter having a non-
user changeable code for radio frequency transmitting a radio
frequency transmission corresponding to the transmitter
a radio frequency receiver for being adapted to receive
the first-mentioned radio frequency transmission from the
first-mentioned radio frequency transmitter and being adapted
to receive a second radio frequency transmission from a second
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radio frequency transmitter having a second non-user
changeable code, different from said first non-user changeable
code;
a program mode designator for designating a program mode;
a memory comprising a plurality of storage locations;
a processor having a processor controlled code location
pointer and responsive to a program mode designation by said
program mode designator and the reception by said radio
frequency receiver of said first-mentioned radio frequency
transmission for storing a first stored code corresponding to
the first-mentioned radio frequency transmitter in one of said
plurality of storage locations derived from the processor
controlled code location pointer, the processor responsive to
said program mode designation by said program mode designator
and the reception by said receiver of said second radio
frequency transmission for storing a second stored code
corresponding to the second radio frequency transmitter in
another of said plurality of storage locations derived from
the processor controlled code location pointer, and the
processor responsive to an operate mode and the reception of
said first-mentioned radio frequency transmission after the
storage of said first stored code for moving the barrier and
responsive to said operate mode and to the reception of said
second radio frequency transmission after the storage of said
first and said second stored codes for moving said barrier.
The examiner relies on the following references:
Tolson 3,337,992 Aug. 29, 1967
Early 4,369,481 Jan. 18, 1983
Tsubaki et al. 4,385,296 May 24, 1983
(Tsubaki)
Pinnow 4,573,046 Feb. 25, 1986
(Pinnow ‘046) (filed Nov. 1, 1983)
Pinnow 4,665,397 May 12, 1987
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Application No. 08/700,610
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(Pinnow ‘397) (filed effective Nov. 1, 1983)
Claims 20, 21, 33, 35 through 39, 41 and 44 stand
rejected under 35 U.S.C. § 112, second paragraph, as being
vague and indefinite. Claims 20 through 45 stand rejected
under 35 U.S.C. § 251 as being based on new matter added to
the patent for which reissue is sought. Claims 20 through 45
stand further rejected under 35 U.S.C. § 112, first paragraph,
as relying on an inadequate written description. Still
further, claims 20 through 45 stand rejected under 35 U.S.C. §
103 based on five alternative rejections: Tsubaki and Early;
either one of Pinnow ‘397 or Pinnow ‘046 in view of Tolson and
Early; or either one of Pinnow ‘397 or Pinnow ‘046 in view of
Tsubaki and Early.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
We have carefully considered the evidence before us
including, inter alia, the arguments by appellants and the
examiner, the Rhyne, Willmott and Rolls declarations, Special
Master reports and the October 13, 1999 Federal Circuit
decision in Overhead Door Corporation and GMI Holdings, Inc v.
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Application No. 08/700,610
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The Chamberlain Group, Inc., No. 98-1428 (Fed. Cir. Oct. 13,
1999) in reaching the following findings.
We turn first to the rejection under 35 U.S.C. § 112,
second paragraph. The examiner contends that it is unclear
whether claim 20 is limited to a second transmitter because
line 3 only requires “at least one” transmitter and the
receiver “being adapted to” receive a transmission from a
second transmitter does not positively require a second
transmitter. The examiner also questions the “can be”
language of claims 33 and 35 as being indefinite because it is
not clear to the examiner if the functions following this
language are positively required by the claims.
We will not sustain the rejection of claims 20, 21, 33,
35 through 39, 41 and 44 under 35 U.S.C. § 112, second
paragraph. Claim 20 recites “at least one” transmitter, which
means there may be one or more transmitters but there must be
at least one transmitter. This is not inconsistent with the
receiver “being adapted to” receive first and second RF
transmissions from respective first and second transmitters.
The language merely indicates that there need not be a second
transmitter, but if there is a second transmitter, the
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receiver “is adapted to” receive an RF transmission from that
second transmitter, as well as from the first transmitter.
The “can be” language of claims 33 and 35 also is not
found to be indefinite in any way. It merely indicates,
consistent with the specification, that while a code stored in
memory does not need to be changed, it “can be” changed by
switching to program mode and energizing a transmitter with a
code different from that previously stored in the memory.
Similarly, in claim 35, while a code in a transmitter may
never be derived if such transmitter is not activated in a
program mode, the claim merely states that an RF signal
carries a code from which the transmitter code “can be”
derived if it is desired to do so.
We turn now to the rejections of claims 20 through 45
based on prior art. We will not sustain any of the rejections
under 35 U.S.C. § 103 because we find no prima facie case of
obviousness based on the evidence provided by the applied
references.
While there are many distinctions between the instant
claimed invention and the primary references to Tsubaki and
Pinnow, we find it unnecessary to discuss these distinctions
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because each one of the prior art rejections relies, at least
in part, on Early and we find Early to constitute nonanalogous
art. Early is applied by the examiner for a teaching of a
non-user-changeable code, the examiner concluding that it
would have been obvious to have modified the primary
references, allegedly disclosing user-changeable code, in
order to provide for a plurality of transmitters with non-
user-changeable codes.
Early is directed to a key which is “coded” in an optical
manner so that when the key is inserted into a lock, a
correctly “coded” key will unlock the lock. The “coded” key
comprises light reflecting means on the key. When the key is
inserted into the lock, these light reflecting means are
located in the path of a laser beam and, if the key is a valid
one, light reflected back to a unique pattern of photo-diodes
will cause the lock to be unlocked.
Early is not directed to anything related to garage door
opener systems or to controlling a position of a barrier, as
claimed. Early does not employ radio frequency signals nor is
Early directed to a remote control of an object since the
“coded” key in Early must be inserted into the lock.
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Therefore, we find it difficult to discern any reason for the
artisan skilled in the RF remote control garage door opener
art to have looked to Early for any guidance on improving or
modifying remote control garage door openers taught by Tsubaki
and only tangentially suggested by the Pinnow references
(e.g., column 9, lines 55-61) which are primarily concerned
with a universal electronic locking system contained in a
wristwatch and employing a photo-optical system for
controlling a locking mechanism.
A two-prong test has evolved in determining whether prior
art is analogous. First, we ask whether the prior art is from
the same field of endeavor as applicants’ invention,
regardless of the problem addressed. Then, if a reference is
not within the same field of endeavor, we ask whether the
reference is still reasonably pertinent to the particular
problem with which the applicants are involved. In re Wood,
599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979).
Quite clearly, Early is not directed, in any manner, to
the same field of endeavor, viz., garage door openers, as the
instant invention. Thus, we must determine whether Early
might still be reasonably pertinent to the particular problem
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with which applicants were involved. That problem was the
elimination of DIP switches to set codes in a transmitter and
receiver. Applicants’ solution was to employ RF signals and
to use a non-user changeable code in the transmitter and have
the receiver learn that code from the transmitter when the
device is in a program mode. We do not find Early’s key for
operating a locking mechanism by optical means to be
reasonably pertinent to applicants’ problem of eliminating the
use of DIP switches in RF-remote control devices nor do we
find Early suggestive, in any manner, of a non-user-changeable
code in a transmitter which is learned by a receiver in a
program mode.
We find Early to constitute non-analogous art and, as
such, to be not applicable to the instant claimed invention.
Since the examiner has relied on Early for each and every one
of the rejections of the claims under 35 U.S.C. § 103, we will
not sustain the rejection of claims 20 through 45 under 35
U.S.C.
§ 103 based on any combination of references set forth by the
examiner. None of the remaining references discloses or
suggests the claimed non-user changeable code in a transmitter
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which is learned by a receiver in a program mode within a
system for controlling the position of a barrier.
Finally, we turn to the rejections of claims 20 through
45 under 35 U.S.C. § 251 and under 35 U.S.C. § 112, first
paragraph. We treat these rejections together because they
are both based on the examiner’s position that there is no
support for a “processor controlled code location pointer” or
memory selection means in claims 20, 22 and 35, for a
“software controlled code location pointer” or memory selector
in claims 21, 23, 28, 30 and 40, or for a microprocessor
incrementing the code location pointer to select the memory
address in claim 34.
The examiner contends that the only reference in the
specification to a “code location pointer” is at column 4,
line 55, and such is directed to switch 23 which is the only
code location pointer disclosed. The examiner dismisses the
flow charts of Figures 3 and 4 because the description of the
flowcharts in the specification does not specify that the
flowcharts represent software or are in any way limited to a
processor control as a second embodiment of the invention.
The examiner takes the position that any “control” must be
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interpreted as relying on, and responsive to, switch 23 as the
code location pointer since the original disclosure lacks any
reference to software or processor control of the pointer or
to the pointer being part of the processor. At page 6 of the
answer, the examiner states that
[t]here is no indication that the incrementing of
the location pointer in fig. 4 is a separate
software embodiment and this incrementing is
interpreted as controlled by movement of switch 23
to the next position based on the several references
to switch 23 determining the memory location in
appellants’s [sic] disclosure.
While we are not unsympathetic to the examiner’s
reasoning and we are not overly enthralled by appellants’ now
claiming a “processor controlled code location pointer” and
“software controlled code location pointer” in view of the
very meager description of any software and the rather cryptic
descriptions in the flowchart boxes of Figure 3, we must
reverse the rejection of claims 20 through 45 under both 35
U.S.C. § 251 and 35 U.S.C. § 112, first paragraph, because we
believe that Figure 3 does disclose enough to indicate that
the inventors did have in their
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possession, at the time of the original filing date, the
invention as now claimed, viz., a “processor” or “software”
controlled code location pointer.
Initially, we point out that we have read and are aware
of the recent decision of the Federal Circuit in Overhead Door
Corporation and GMI Holdings, Inc v. The Chamberlain Group,
Inc.. While appellants’ representative at the hearing of
October 18, 1999 indicated that the Federal Circuit has now
spoken on the issue with which we are confronted, we cannot
agree. In our view, we are not bound by the Overhead Door
decision because the court dealt therein with an appeal from a
District Court grant of summary judgment, concerned with
whether there were material issues of fact to be decided which
might negate the summary judgment decision. Further, the
claims with which we deal are different from the patented
claims in Overhead Door, the issues are different (we deal
with the factual question of whether there was an adequate
written description, or support, in the original disclosure
for that which appellants now claim) and Overhead Door was
directed to an infringement action wherein we deal with the
patentability of newly added claims in a reissue application.
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Thus, while Overhead Door is certainly closely related to the
issues with which we deal in this appeal, we do not find that
case to be dispositive of the issues before us notwithstanding
the dicta within the decision regarding a software embodiment.
In any event, we find, fortuitously, that there is
support in the original disclosure for the now claimed
“processor controlled code location pointer” and “software
controlled code location pointer” and, so, our decision is
compatible with the dicta in Overhead Door.
We have reviewed the arguments of appellants and the
examiner, as well as the Special Master’s reports and the
Rhyne declaration, of record. We find the declaration of Dr.
Rhyne to be persuasive. While the original specification
appears to disclose only one embodiment of a “code location
pointer,” viz., the mechanical switch 23 in Figure 2, Figures
3 and 4 appear to indicate that there was some software
embodiment originally envisioned by appellants. Now, it may
be that the flowcharts are merely system diagrams with
indications of the operations performed, those operations not
necessarily being performed by software. For example, the
diamond-shaped box in Figure 3 asking “In Program Mode?” is
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just an indication that switch 22 is either in program mode or
not. This box does not, necessarily, describe a software
operation. Similarly, further on down in the flowchart, when
it is indicating “Store code at location pointed to by the
code location pointer,” this is easily explained by the
microprocessor 44 storing the code at a location indicated by
mechanical code location pointer 23. Further, the instruction
in the next block, indicating “Increment code location
pointer. If pointer increments over five,” may very well
represent a manual “incrementation” of manual code control
pointer 23 back to the “1" position after storing a code in
the “5" position, notwithstanding Dr. Rhyne’s indication that
the term “increment” would be understood by artisans to refer
to a software embodiment. However, when the last mentioned
block in Figure 3 also recites, “then load code location
pointer with one” [emphasis ours], we agree with Dr. Rhyne
that this can only refer to a software-based action since
“load” is conventionally meant “[t]o place data into internal
storage” [see IEEE Dictionary (1984)-Exhibit B attached to the
Rhyne declaration]. In our view, it would not be reasonable
to attribute a “loading” function to the mechanical code
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control pointer 23 of Figure 2. Accordingly, although, in our
view, the decision comes down to one word, viz., “load,”
appearing in a box in the flow diagram of Figure 3, that is
enough to establish adequate support for the now claimed
“processor controlled code location pointer” and
“software controlled code location pointer” as it shows that
the inventors had possession of a processor controlled code
location pointer, in addition to the mechanical code location
pointer 23 of Figure 2, at the time the application was
originally filed. Thus, we will reverse the rejections of
claims 20 through 45 under 35 U.S.C. § 251 and 35 U.S.C. §
112, first paragraph.
We have reversed all outstanding rejections of the
instant claims. Accordingly, the examiner’s decision is
reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
Appeal No. 1999-0880
Application No. 08/700,610
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)
)
)
Lee E. Barrett ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Eric Frahm )
Administrative Patent Judge )
tdl
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