Ex Parte Marks et al

Patent Trial and Appeal Board

May 28, 2014

11548462 (P.T.A.B. May. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/548,462 10/11/2006 Mitchell J. Marks 09515.20495 5413
7590 05/29/2014
MITCHELL J. MARKS
9158 NORTH ALPINE LANE
BROWN DEER, WI 53223
EXAMINER
WILSON, BRIAN P
ART UNIT PAPER NUMBER
2687
MAIL DATE DELIVERY MODE
05/29/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MITCHELL J. MARKS and JAMES N. RICHEY

Appeal 2012-001150
Application 11/548,462
Technology Center 2600
____________

Before STEPHEN C. SIU, ANDREW J. DILLON, and
IRVIN E. BRANCH, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 22-26. Claims 1-21 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants’ invention is directed to a smoke detector which employs a
receiver and a remote transmitter to silence the audible alarm of the smoke
detector in the event the detector was triggered by a nuisance alarm.
See Spec. 31, Abstract of the Disclosure.
Appeal 2012-001150
Application 11/548,462
2

Claim 22 is illustrative, with key disputed limitations emphasized:
22. A smoke detector comprising:

a first power supply, an integrated circuit, a smoke detection component, an
audible alarm, and an RF receiver, each of the foregoing being electrically
connected;

the smoke detection component being in a normally open non-conductive
state and being operable to detect a quantity of smoke in the ambient air, the
smoke detection component being further operable to change to the
closed or conductive state upon activation by the presence of smoke
particles in the air;

the smoke detection component being in electric connection with the
integrated circuit;

the integrated circuit being operable to activate the alarm component when a
smoke condition is detected by the smoke detection component and being
operable to command the RF receiver to operate at a higher power status
when the integrated circuit has activated the alarm component;

the RF receiver in electric connection with the integrated circuit, the RF
receiver being operable in a low power status to reduce battery usage; the
RF receiver being operable at a higher power status upon command by the
integrated circuit;

a remote transmitter comprising an RF transmitter and a second power
supply for use in silencing false or nuisance alarms, the RF transmitter being
operable to transmit a signal sent by a user using the RF transmitter to the
RF receiver,

the RF receiver further being operable upon receipt of a signal from the RF
transmitter to transmit such signal to the integrated circuit;

the integrated circuit being operable to silence the alarm for a
preprogrammed period of time while the remainder of the circuit remains
Appeal 2012-001150
Application 11/548,462
3
active such that, if the conditions that activated the smoke detection
component remain, the smoke detection component is always operable to
detect the presence of smoke particles;

the integrated circuit being operable to reactivate the alarm upon the
expiration of the preprogrammed period of time if the smoke detection
component remains in the conductive state; and

wherein each of the first and second power supplies is a self-contained
battery.

The Examiner relies on the following as evidence of unpatentability:
Marman US 6,624,750 B1 Sep. 23, 2003
Applicants’ Admitted Prior Art, Application 11/548,462, page 17, ll. 17-20
and page 18, ll.1-6 (hereinafter “AAPA”).

THE REJECTION
The Examiner rejected claims 22-26 under 35 U.S.C. § 103(a) as
unpatentable over AAPA in view of Marman. Ans. 5-8.
1

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 4-7) and the Reply Brief (Reply
Br. 2-7) that the Examiner has erred. We agree with Appellant’s ultimate
conclusion of Examiner error for the reasons we set forth below.
Initially, Appellants dispute the Examiner’s characterization of
Applicants’ Admitted Prior Art as an admission that the RF receiver is the
unique feature which distinguishes Appellants’ invention from the prior art.
App. Br. 4.

1
Throughout this opinion, we refer to the Appeal Brief filed March 3, 2011;
the Examiner’s Answer mailed May 31, 2011; and, the Reply Brief filed
August 1, 2011.
Appeal 2012-001150
Application 11/548,462
4
Specifically, Appellants urge that the statement within the description
of Figure 2 that the system depicted therein “incorporates all the features of
the prior art smoke detector with the addition of an RF receiver” does not
preclude the presence of other novel features within the invention. Id. at 5.
The Examiner cites the § 2129 of the Manual of Patent Examination
Procedure (MPEP) noting that “a statement by an applicant >in the
specification or made < during prosecution identifying the work of another
as “prior art” is an admission **> which can be relied upon for both
anticipation and obviousness determinations.” Ans. 9.
We find Appellants’ statement to be an admission that the illustrated
embodiment of Appellants’ invention within Figure 2 is prior art, but for the
addition of the “RF receiver.”
Consequently, we find the Examiner did not err in the characterization
of the cited portion of Appellants’ Specification as prior art.
Appellants also argue that Marman fails to show or suggest an
integrated circuit which is operable “to command the RF receiver to operate
at a higher power status when the integrated circuit has activated the alarm
component” as set forth in claim 22. App. Br. 5.
The Examiner finds this feature to be shown within Marman at
column 28, lines 18-20, which states “[w]henever any of the sensors or
base station 12 need to send a message, its transceiver chip 72 first transmits
the wake-up message.”
We find that the cited portion of Marman fails to show or suggest
commanding the RF receiver to operate at a higher power status in response
to the activation of an alarm, as specifically required by claim 22. We
therefore find the Examiner erred in rejecting claims 22-26 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA in view of Marman.
Appeal 2012-001150
Application 11/548,462
5
We recognize that Appellants’ arguments present additional issues.
Some of the arguments presented by the additional issues are not persuasive;
nonetheless we were persuaded of error by the issue stated above and as
such we do not reach the additional issues as the issue stated above is
dispositive of the appeal.

CONCLUSION
The Examiner erred in rejecting claims 22-26 under § 103.

ORDER
The Examiner’s decision rejecting claims 22-26 is reversed.

REVERSED

ELD