Ex parte Holling et al.

Board of Patent Appeals and Interferences

Aug 6, 1999

08443044 (B.P.A.I. Aug. 6, 1999)

Application for patent filed May 17, 1995. According to1
the appellant, the application is a continuation of
Application 08/042,439, filed April 5, 1993, now abandoned.
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not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RONALD W. HOLLING, PATRICK J. GLOTZBACH
and JEROME D. HUENER
__________
Appeal No. 97-0391
Application 08/443,0441
___________
ON BRIEF
___________
Before HAIRSTON, BARRETT, and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the Examiner's final rejection of Claims 1 to 12. Claims 6, 8
and 9 were canceled in an amendment after the final rejection,
Appeal No. 97-0391
Application 08/443,044
2
[paper no. 14].
The disclosed invention is a remote control device for an
appliance and it has a sensor capable of detecting an adverse
or hostile environmental condition adverse to the normal
operation or structural integrity of the remote control. Such
a condition would be detected by, for example, a temperature
sensor capable of detecting when the remote control has been
placed on the burner of a stove. The heat from the burner is
typically sufficient to damage the remote control so that it
cannot operate or is physically damaged. The sensor will
detect the adverse condition and the remote control will
provide a warning. The remote control can also turn off the
burner in response to the sensor to prevent damage to the
remote control.
Representative claim 1 is reproduced as follows:
1. An electronic control for use with a cooking
appliance, comprising:
a control unit adapted to be detached from and located
remote from a cooking appliance, said control unit having
sensor means for sensing an adverse predefined
environmental condition adverse to operation of said control
unit, and
Appeal No. 97-0391
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3
warning means operatively connected to said sensor means
whereby, in the event said sensor means senses said predefined
environmental condition, said warning means generates a
warning signal.

The Examiner relies on the following references:
U.S. Patents
Durst et al. al. (Durst) 4,977,404 Dec. 11,
1990
Doyle et al. al. (Doyle) 5,402,105 Mar. 28,
1995

Foreign Patents
Zinkann 3,437,398 Apr. 17,
1986
(Translation of German Offenlegungsschrift)
Malik WO 90/14,563 Nov. 29, 1990

Claims 1, 4, 7 and 10 stand rejected under 35 U.S.C. §
102 as being anticipated by Zinkann. Claims 1, 2, 4, 7 and 10
stand rejected under 35 U.S.C. § 102 as being anticipated by
Malik. Claims 3 and 5 stand rejected under 35 U.S.C. § 103 as
being obvious over Malik and Durst, while claims 11 and 12
stand rejected under 35 U.S.C. § 103 as being obvious over
Malik, Durst and Doyle.
Appeal No. 97-0391
Application 08/443,044
A supplemental brief was filed as paper no. 21. However,2
it merely corrected the informal deficiencies in the original
brief and presented no further arguments.
4
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the brief and the answer for2
the respective details thereof.
OPINION
We have considered the rejections advanced by the
Examiner and the supporting arguments. We have, likewise,
reviewed the Appellants’ arguments set forth in the brief.
It is our view that claims 1, 4, 7 and 10 are anticipated
by Zinkann and that claims 1, 2, 4, 7 and 10 are anticipated
by Malik. Claims 3 and 5 are obvious over Malik and Durst.
However, claims 11 and 12 are unobvious over Malik, Durst and
Doyle. Accordingly, we affirm in part.
We now consider the various rejections. In our analysis,
we are guided by the precedence of our reviewing court that
the limitations from the disclosure are not to be imported
Appeal No. 97-0391
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into the claims. In re Lundberg, 244 F.2d 543, 548, 113 USPQ
530, 534 (CCPA 1957); In re Queener, 796 F2d. 461, 464, 230
USPQ 438, , (Fed. Cir. 1986). We are also mindful of the
requirements of anticipation under 35 U.S.C. § 102.
Anticipation under 35 U.S.C. § 102 is established only when a
single prior art reference discloses, either expressly or
under the principles of inherency, each and every element of a
claimed invention. See RCA Corp. V. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984).
Rejection of claims 1, 4, 7 and 10 over Zinkann
We take claim 1 as representative. We have reviewed
Appellants’ arguments [brief, pages 3 to 9] and Examiner’s
position [final rejection, page 1 and answer, pages 4 to 7].
The parties disagree on the meaning of the term “adverse
. . . environmental condition adverse to operation of said
control unit” (claim 1, lines 4 to 5). The Examiner quotes
Webster’s New World Dictionary, 3rd College Edition, for the
meaning of “environmental” as “‘all the conditions,
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circumstances, and influences surrounding, and affecting . .
.’ something, . . .” [answer, page 6]. The Examiner continues
that, in the claims, “‘environmental’ conditions are not
limited to external atmospheric conditions, but could be
electrical conditions as well, . . . or merely the absence of
a critical voltage or current level,” id. Appellants have had
an opportunity to rebut this argument but have not. So we
assume that they agree with this definition of
“environmental”. Appellants, however, elaborate that the
words “adverse” and “hostile” as used in the claims and the
specification define the “predetermined environmental
condition” to mean “an environmental condition that can
prevent the remote control from operating normally, including
structural damage to the remote control.” [Brief, page 5].
Appellants further explain their position that “the term
hostile defines an environmental condition that is more harsh
. . ., but is a condition that impairs the operation or
structural integrity of the remote control (emphasis added)”.
[Brief, page 6].
Therefore, we come to the conclusion that “environmental”
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7
means any condition, internal or external to the device,
surrounding and affecting the device, and “adverse” or
“hostile” means any condition that impairs the operation or
structural integrity of the device. Keeping this in mind, we
agree with the Examiner that Zinkann anticipates the claimed
invention of claim 1 as argued by the Examiner. Zinkann
inherently has to have a sensor that will detect the “adverse
. . . environmental condition” in order to be able to provide
to the user an indication of its malfunction. We agree with
Appellants that Zinkann’s two remote controls are used for a
different purpose, however, the teaching of the operation of
each remote control is, nevertheless, available as a reference
for anticipation of the claimed invention. Therefore, we
sustain the anticipation rejection of claim 1 over Zinkann.
Appellants have not separately and individually argued other
claims under this heading. It is not the function of the
Board to examine claims in greater detail than argued by
Appellants. In re Baxter Travenol Labs., 952 F.2d 388, 391, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991). Therefore, the
anticipation rejection of claims 4, 7 and 10 over Zinkann is
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8
also sustained.
Rejection of Claims 1, 2, 4, 7 and 10 over Malik
These claims are rejected as being anticipated by Malik
under 35 U.S.C. § 102. We have studied Appellants’ arguments
[brief, pages 10 to 13] and the Examiner’s position [answer,
pages 7 and 8]. We agree with Appellants that the remote
control of Malik transmits a control signal to the controlled
unit when the environmental temperature exceeds a desired
temperature setting in the remote control, and the remote
control does not sense any failure of the remote control as
regards the temperature condition of the environment. The
Examiner’s contention that the remote control of Malik will
fail in response to some very high temperature of the
environment is mere speculation. However, by Appellants’ own
admission, the term “adverse” or “hostile” defines an
environmental condition as a condition that impairs the
operation or structural integrity of the remote control.”
[Brief, page 6]. With this definition in, Malik properly
anticipates the invention of claim 1. For example, Malik “has
a display 12 which . . . may also have other display, such as
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BAT as shown on the figure 1 to indicate the battery status, .
. .”[page 3]. Thus, we conclude that the remote control of
Malik will sense “an adverse . . . environmental condition
adverse to operation of said control unit” (claim 1, lines 4
and 5) when it senses that the battery is low and its function
will be impaired if a new battery is not substituted. Malik
also shows a warning means in the form of the display 12
[figure 1 and page 3]. Therefore, we sustain the anticipation
rejection of claim 1 over Malik. Appellants have not
individually argued any claims under this heading. It is not
the function of the Board to examine claims in greater detail
than argued by Appellant. Baxter Travenol Labs. 952 F.2d at
391, 21 USPQ2d at 1285. Consequently, we also sustain the
anticipation rejection of claims 2, 4, 7 and 10 over Malik.
Rejection of Claims 3 and 5 over Malik and Durst
The Examiner states:
In view of Durst et al. (‘404), . . . it would have been
obvious to one of ordinary skill in the art [at the time of
the invention,] to provide a [sic] orientation-responsive
remote control means in the remote control . . . shown by
WO9014563 in order to notify the user when the control unit is
in a given operating position. [Final rejection, page 2].
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Appellants do not give any specific arguments against the
above combination to reject claims 3 and 5. Instead, they
rely on the above arguments relating to claim 1 and Malik.
Thus, Appellants urge that claim 1 is not in any way obvious
in view of the alleged combination . . . [brief, page 14]. In
the absence of any rebuttal to the combination for the
purposes of rejecting claims 3 and 5, we will sustain the
obviousness rejection of claims 3 and 5 over Malik and Durst.
Rejection of claims 11 and 12 over Malik, Durst and Doyle
We have reviewed Appellants’ arguments [brief, pages 15
and 16] and the Examiner’s position [final rejection, pages 2
to 3 and answer, pages 8 and 9]. In our view, the Examiner
has failed to present a prima facie case to reject claim 11
and hence its dependent claim 12. Claim 11 calls for, among
other things, “transmitting an output signal including said
error code from said transmitter means to said receiving
means” (claim 11, lines 12 to 13). The Examiner has not
addressed this limitation. Even though Appellants too have
not argued for this limitation, the initial burden is on the
Examiner to present a prima facie case to reject a claim. In
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the absence of a prima facie rejection, the offered
obviousness rejection of claim 11 and hence claim 12 is not
sustained. In summary, we have affirmed the Examiner’s
rejection under 35 U.S.C. § 102 of claims 1, 4, 7 and 10 as
anticipated by Zinkann, claims 1, 2, 4, 7 and 10 as
anticipated by Malik. We have also sustained the rejection
under 35 U.S.C. § 103 of claims 3 and 5 as being obvious over
Malik in view of Durst. However, we have not sustained the
rejection under 35 U.S.C. § 103 of claims 11 and 12 as being
obvious over Malik in view of Durst and Doyle.
Accordingly, the decision of the Examiner is affirmed in
part.
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Application 08/443,044
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED IN PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 97-0391
Application 08/443,044
13
PSL/pgg
Stephen D. Krefman MD 2200
Whirlpool Corporation
2000 North M 63
Benton Harbor, MI 49022-2692