Ex Parte Morris

Board of Patent Appeals and Interferences

Jun 18, 2008

10629971 (B.P.A.I. Jun. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GLENN MORRIS
____________

Appeal 2008-0881
Application 10/629,971
Technology Center 2800
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Decided: June 18, 2008
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and MARC S.
HOFF, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-8 and 10-17. Claims 9 and 18 have been indicated as
containing allowable subject matter (Ans. 2). We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellant invented an actuation system that enables remote actuation
of a device using laser light transmitted over long distances. Specifically, a
laser module transmits laser light that is detected by a receiver module.
Upon detection of the laser light, an apparatus connected to the receiver
module is actuated. Such a system improves upon the shortcomings found
in radio controlled systems.1 Claim 1 is illustrative:
1. A laser light actuation system for remotely and selectively
actuating a function of a known apparatus, the system comprising:

a laser module adapted to produce a known laser light signal suitable
for transmission over a long distance; and

a receiver module adapted to receive and detect the known laser light
signal and selectively produce an actuation signal in response to the known
laser light signal to selectively actuate such an apparatus, the receiver
module further comprising a timer operatively associated with the receiver
module to selectively limit the time of actuation of such an apparatus in
response to the laser light signal.

The Examiner relies on the following prior art references to show
unpatentability:
Schwartz US 5,079,646 Jan. 7, 1992
Teetzel US 5,526,749 Jun. 18, 1996
Teremy US 5,541,695 Jul. 30, 1996
Perkins US 2002/0124779 A1 Sep. 12, 2002
Kaje US 2003/0122665 A1 Jul. 3, 2003
Zak US 6,690,003 B2 Feb. 10, 2004
(filed Mar. 25, 2002)

1 See generally Spec. ¶¶ 0002-15; Abstract.
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1. Claims 1 and 10 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Zak.
2. Claims 2 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zak and APA.
3. Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zak and Teremy.
4. Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zak and Schwartz.2
5. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zak, APA, and Schwartz.
6. Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zak, Teremy, and Schwartz.
7. Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zak and Teetzel.
8. Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaje in view of Official Notice, as evidenced by
Perkins.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief3 and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by

2 The Examiner rejects claims 4-6 and 13-15 in the same paragraph based on
combining Schwartz with Zak, and either Teremy or APA depending on the
claims rejected (Ans. 5). In effect, this paragraph presents three separate
rejections of (1) claims 4 and 13; (2) claims 5 and 14; and (3) claims 6 and
15. For clarity, we separately list each of these rejections as Rejection
Numbers 4 through 6, respectively.
3 We refer to the most recent Brief filed August 21, 2006 throughout this
opinion.
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Appellant. Arguments which Appellant could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
The Anticipation Rejection
We first consider the Examiner’s anticipation rejection of claims 1
and 10 over the disclosure to Zak (Ans. 3). 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 as well as
disclosing structure which is capable of performing the recited functional
limitations. RCA Corp. v. App. Digital Data Sys., Inc., 730 F.2d 1440, 1444
(Fed. Cir. 1984); W.L. Gore and Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540,
1554 (Fed. Cir. 1983).
Regarding representative claim 1,4 Appellant argues that Zak does not
disclose the receiver module comprising a timer operatively associated with
the receiver module to selectively limit the time of actuation of a known
apparatus in response to a light signal, as claimed. Although Appellant
acknowledges that Zak teaches using a monostable multivibrator to achieve
a timed ON or timed OFF operation, Appellant contends that this is not the
same as selectively limiting the time of actuation (Br. 5-7; emphasis in
original).

4 Appellant argues claims 1 and 10 together as a group. See Br. 5-7.
Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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The Examiner disagrees, and notes that the selection of the timer (i.e.,
the monostable multivibrator) is achieved by the receiver unit’s reception of
the laser light signal (Ans. 8-9).
The issue before us, then, is whether Appellant has shown that the
Examiner erred in finding that Zak anticipates representative claim 1. The
issue turns on whether Zak’s receiver module with timed ON and OFF
functionality actuated by laser light fully meets a timer operatively
associated with the receiver module to selectively limit the time of actuation
of a known apparatus in response to a light signal, as claimed. We find that
it does.
Zak discloses a laser-actuated “remote operator” that enables the user
to remotely control various devices. As shown in Figure 1, a hand-held laser
device 10 emits a narrow beam of radiation at a certain wavelength that is
aimed at a “remote operator” 20. The remote operator is essentially a laser-
actuated switch comprising a photosensor 24, switch actuator circuit 28, and
a power relay circuit 30. Upon detection of incoming laser radiation, the
photosensor 24 actuates or triggers the switch actuator circuit which is a
toggle-type flip flop that changes state (i.e., between on and off) each time it
receives a signal from the photosensor. This actuation is coupled to the
power relay circuit which, in turn, actuates electrical load devices connected
thereto (Zak, col. 2, ll. 1-13; col. 2, l. 55 - col. 3, l. 25; Fig. 1).
In the switch actuator circuit, a monostable multivibrator can be used
to achieve a timed ON actuation, at the end of which the load device is
automatically switched off. Similarly, this device can provide a timed OFF
or timed interrupt operation (Zak, col. 3, ll. 17-21).
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Based on this functionality, we agree with the Examiner that Zak fully
meets the limitations of representative claim 1. As the Examiner indicates
(Ans. 8), the timed ON operation, in effect, limits the time of actuation of
the apparatus connected to the remote operator (i.e., the load device to be
controlled). Furthermore, this timer is responsive to the detected laser light
signal emitted from the laser device 10.
Significantly, the fact that the user in Zak can selectively turn the load
device on or off for a predetermined time period via the laser pointer, in
effect, means that the time of actuation is likewise selectively limited. That
is, when the user actuates the device via the laser pointer, the device’s
actuation time is likewise selected (and therefore limited via this selection).
Nothing in the claim requires that different time periods are selected via the
laser light signal.
That a monostable multivibrator can be used to achieve such timed
actuation in Zak does not affect our conclusion. Apart from providing a
definition of a monostable multivibrator from Wikipedia (Br. 6 n.1),
Appellant has simply not persuasively shown why such devices would not or
could not selectively limit the time of actuation of the apparatus as noted
above. For these reasons alone, Appellant has not persuaded us of error in
the Examiner’s interpretation of Zak with respect to the limitations of
representative claim 1.
Nevertheless, we further note that the table lamp embodiment of
Figure 3 of Zak provides yet another illustration of such user selectivity. As
shown in Figure 3, the lamp 50 is plugged into remote actuator 20 which, in
turn, is plugged into a standard AC wall outlet 34 (Zak, col. 3, ll. 48-65; Fig.
3). Clearly, the user can simply plug the lamp in the wall outlet 34 and turn
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on the lamp in the conventional manner.5 In this case, the lamp would
remain on until manually turned off. Alternatively, the user can plug the
lamp into the receiver module 20 and, when actuated via the laser module,
limit its time of actuation via the timer functionality noted above. In this
case, the user has selectively limited the lamp’s time of actuation via the
timer.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claim 10 which falls with
claim 1.

The Obviousness Rejection of Claims 2 and 11
We now consider the Examiner’s obviousness rejection of claims 2
and 11 over Zak and APA (Ans. 3-4). In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17
(1966).

5 Zak also notes that a push button switch is provided on the housing 22 of
the remote actuator module 20 to permit manual actuation to turn the lamp
on or off (Zak, col. 3, ll. 58-60). Furthermore, in the embodiment of Figure
1, Zak discloses that the switch actuator circuit also comprises a manual
override switch 32 that permits actuation without the use of the laser device
10, when desired (Zak, col. 3, ll. 25-27).
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Discussing the question of obviousness of a patent that claims a
combination of known elements, the Court in KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727 (2007) 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. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving 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, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires:
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.” Id. at 1741 (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
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Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Regarding representative claim 2,6 Appellant reiterates the arguments
made with respect to the alleged shortcomings of Zak (Br. 7). Appellant
also contends that the Examiner’s motivation to modify Zak to include an
electromechanical feeder as in APA is insufficient to establish a prima facie
case of obviousness since, among other things, the Examiner’s motivation is
not supported by evidence that ordinarily skilled artisans would make such a
modification. As such, Appellant contends, the Examiner’s motivation
“appears to have been gleaned from Appellant’s disclosure” (Br. 7-9).
The Examiner notes that Zak teaches controlling a wide variety of
apparatus including, among other things, lamps, ceiling fans, dimmer
switches, and factory and industrial equipment. In light of this broad
application, the Examiner takes the position that ordinarily skilled artisans
would have therefore found Zak’s remote control device to be applicable to
agricultural environments (e.g., electromechanical feeders as in claim 2)
(Ans. 9-10).
The issue before us, then, is whether Appellant has shown that the
Examiner erred in combining the teachings of APA with Zak. The issue
turns on whether there has been a showing that there was an apparent reason
to combine the known elements in the fashion claimed. For the following
reasons, we find ample reason to combine these teachings in the manner
proposed by the Examiner.

6 Appellant argues claims 2 and 11 together as a group. Accordingly, we
select claim 2 as representative.
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At the outset, our previous discussion regarding Zak applies equally
here and we therefore incorporate that discussion here by reference. In the
disclosure of the present application, Appellant admits that remote actuating
systems for electromechanical feeders using transmitted and received radio
signals are well known in the art (Spec. ¶¶ 0002, 0005; Fig. 1).
In our view, there is ample reason on this record to combine the
teachings of the APA with Zak. First, as the Examiner indicates, Zak
envisions using a laser to control a wide variety of devices, including
industrial devices (Zak, col. 27-46; Fig. 6). Indeed, Zak indicates in the
Abstract that not only can the remote operator control ceiling fans, wall
switches, table lamps, but also “any other device in need of remote
controlled operation” (Zak, Abstract; emphasis added). In short, Zak’s
intent to utilize the disclosed laser-actuated remote operator in a wide variety
of devices and applications involving remote control could not be clearer.
Furthermore, Zak in the Background section of the patent describes
the shortcomings of radio-frequency (RF) remote operation which include,
among other things, susceptibility to RF interference, jamming, RF traffic,
and noise, as well as having a limited range (Zak, col. 1, ll. 30-41, 64-67).
Based on the record before us, we agree with the Examiner that
ordinarily skilled artisans would have ample reason to apply Zak’s teachings
to an electromechanical feeder to, among other things, control the feeder
remotely via laser light thus avoiding the known shortcomings of radio
control noted above. Such a showing, in our view, clearly evidences
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” See KSR, 127 S. Ct. at 1741. For this reason
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alone, Appellant has not shown error in the Examiner’s proposed
combination of references.
We further note that the combination of the collective teachings of
Zak and APA is tantamount to the predictable use of prior art elements
according to their established functions -- an obvious improvement. See
KSR, 127 S. Ct. at 1740. In our view, ordinarily skilled artisans would have
recognized that replacing the radio remote control functionality of the APA
system shown in Figure 1 of the present application with a laser light
actuation system as in Zak would have yielded the predictable result of an
optical remote control system that overcomes the shortcomings of radio
control systems, namely susceptibility to RF interference, jamming, RF
traffic, and noise.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 2. Therefore, we will
sustain the Examiner’s rejection of that claim, and claim 11 which falls with
claim 2.

The Obviousness Rejection of Claims 3 and 12
We now consider the Examiner’s obviousness rejection of claims 3
and 12 over Zak and Teremy (Ans. 4-5). Regarding representative claim 3,7
Appellant reiterates the arguments made with respect to the alleged
shortcomings of Zak (Br. 9-10). Appellant also contends that the
Examiner’s motivation to modify Zak to in light of the teachings of Teremy
is insufficient to establish a prima facie case of obviousness since, among

7 Appellant argues claims 3 and 12 together as a group. Accordingly, we
select claim 3 as representative.
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other things, the Examiner’s motivation does not provide reasons that skilled
artisans confronted with the same problems as the inventor, and with no
knowledge of the claimed invention, would modify Zak to arrive at the
claimed invention. According to Appellant, there is no motivation to control
the brightness of Zak’s laser beam, as is done in Teremy, since Zak merely
pertains to activating a remote device (Br. 10-13).
The Examiner notes that ordinarily skilled artisans would have
recognized that certain controlled loads in Zak have different operating
states (e.g., different brightness settings for the table lamp, different fan
speeds). According to the Examiner, Teremy was relied on for teaching
modulating a laser light signal differently with respect to a given action to be
performed (i.e., a first transmission state for one type of function, and a
second transmission state for a different function). As such, the Examiner
takes the position that combining this teaching with Zak would have
suggested transmitting multiple states from the laser transmitter to the
receiver for different operating states of the controlled devices (e.g., the
different brightness settings of the lamp or different fan speed settings) (Ans.
10-13).
The issue before us, then, is whether Appellant has shown that the
Examiner erred in combining the teachings of Teremy with Zak to arrive at
the claimed invention. The issue turns on whether there was an apparent
reason to combine the known elements in the fashion claimed. For the
following reasons, we find ample reason to combine these teachings in the
manner proposed by the Examiner.
Teremy discloses a camera 14 with a laser remote controller 10. The
remote controller transmits laser radiation towards the camera in a first state
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(i.e., a relatively bright beam) for aiming purposes and to commence initial
camera functions. The controller also transmits a dimmer laser beam (i.e., a
second state) for actuating image recording functions at the camera
responsive to detecting the dimmer beam. As shown in Figure 4, the
electrical current driving the laser diode for the first brighter state is pulsed
on for a longer duration as compared to the second dimmer state shown in
Figure 5 (Teremy, Abstract, col. 2, l. 60 - col. 3, l. 12; col. 3, l. 55 - col. 4, l.
12; Figs. 1, 2, 4, 5).
We agree with the Examiner that ordinarily skilled artisans would
have reasonably applied such a teaching to Zak’s laser-based remote control
system, particularly since Zak strongly suggests controlling different lamp
intensities (Zak, col. 4, ll. 12-17) and fan speeds (Zak, col. 4, ll. 3-6). These
different intensities and speeds, in our view, reasonably correspond to
different functional states of the controlled device. Therefore, ordinarily
skilled artisans, in our view, would have recognized that by providing
sparsely modulated laser light signals associated with a respective state as
taught by Teremy, the receiver module in Zak could distinguish the control
of one state from another from the laser beam itself. This reasoning, in our
view, clearly evidences “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” See KSR, 127
S. Ct. at 1741. For this reason alone, Appellant has not shown error in the
Examiner’s proposed combination of references.
We add that providing a known, sparsely modulated laser signal in
Zak would have also been tantamount to the predictable use of prior art
elements according to their established functions -- an obvious
improvement. See KSR, 127 S. Ct. at 1740. In addition to the reasons
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above, we further note that skilled artisans would recognize that such an
improvement would also yield other predictable results, namely reducing
power requirements of producing the laser beam itself. Specifically,
modulating a laser signal from the laser source (e.g., by pulsing it on and
off) would, among other things, yield the predictable result of reducing
power requirements for the laser source by precluding the need for a
continuous beam. Therefore, adapting the laser module of Zak to produce a
known, sparsely modulated laser light signal is tantamount to the predictable
use of prior art elements according to their established functions.8
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 3. Therefore, we will
sustain the Examiner’s rejection of that claim, and claim 12 which falls with
claim 3.

The Obviousness Rejections of Claims 4-6 and 13-15
We now consider the Examiner’s obviousness rejections of claims
over 4-6 and 13-15 over Zak, APA, Teremy, and Schwartz (Ans. 5).
Regarding representative claim 4,9 Appellant reiterates the previous

8 Although the Examiner alleges that there is no motivation to modify Zak to
change the brightness of the laser beam (Ans. 11), we disagree for the
reasons noted in this paragraph, and in light of the U.S. Supreme Court’s
ruling in KSR which was decided after the Examiner’s Answer was mailed.
9 Appellant argues claims 4-6 and 13-15 together as a group. See Br. 14-20.
Nevertheless, since the statement of the Examiner’s rejections (Ans. 5), in
effect, presents us with three different rejections as noted on page 3 n.5,
supra, of this opinion, we treat each these rejections separately. We
therefore select claim 4 as representative of the claim grouping of claims 4
and 13 that pertains to the first rejection based on Zak, APA, and Schwartz.
Furthermore, since Appellant has not argued the other rejections separately,
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arguments regarding Zak, but adds that the Examiner’s motivation to modify
Zak to include a telescopic sight operatively associated with laser module as
claimed is insufficient to establish a prima facie case of obviousness since,
among other things, the Examiner’s motivation is not supported by evidence
that ordinarily skilled artisans would make such a modification. As such,
Appellant contends, the Examiner’s motivation “appears to have been
gleaned from Appellant’s disclosure” (Br. 14-19). Appellant also argues
that Schwartz is non-analogous art (Br. 19-20).
The Examiner notes that Zak teaches using the laser device for factory
and industrial devices which enable remote actuation of devices located high
above a factory floor. According to the Examiner, adding a telescopic sight
in conjunction with the laser light source as taught by Schwartz would have
therefore been obvious to ordinarily skilled artisans for more accurate
sighting of distant targets. The Examiner further argues that Schwartz’s
teachings are in fact analogous since they pertain to aligning a laser light
beam towards a target (Ans. 13-16).
The issue before us, then, is whether Appellant has shown that the
Examiner erred in combining the teaching of Schwartz with the teachings of
the cited prior art. The issue turns on (1) whether there was an apparent
reason to combine the known elements in the fashion claimed, and (2)
whether Schwartz constitutes analogous art. For the following reasons, we
answer “yes” to both of these questions.
Schwartz discloses in the Background section of the patent providing
laser light sources that emit a narrow beam of light impinging on the target

our rationale with respect to the merits of the rejection of claim 4 applies to
the other rejections as well.
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of interest in conjunction with optical telescopes. Such an arrangement,
among other things, enhances alignment (Schwartz, col. 1, ll. 39-46; col. 1, l.
62 - col. 2, l. 6).
Based on the record before us, we agree with the Examiner (Ans. 14)
that skilled artisans would recognize that providing a telescopic sight in
conjunction with the laser light source would at least enhance optical
alignment of the laser source with the target. Clearly, the user in Zak must
aim the laser source at the target receiver device to actuate the attached
devices as shown in Figures 1 and 3 of Zak. As the distance between the
laser source and the target increases, the possibility of misalignment likewise
increases. Providing a telescopic sight in conjunction with the laser source
would, in our view, achieve the predictable result of enhancing the
alignment of the source with the target. As the Examiner indicates, the fact
that Zak specifically uses the device to actuate devices located high above
factory floors only reinforces our conclusion that using a telescopic sight to
enhance alignment in such situations would have been desirable -- and
indeed predictable -- based on the record before us.
We also agree with the Examiner that Schwartz is analogous art.
“Two separate tests define the scope of analogous prior art: (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 Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). While Schwartz is primarily directed to weapons with
telescopic sights, the Background of the reference nonetheless generally
teaches emitting laser light in conjunction with a telescopic sight for
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alignment purposes. Notwithstanding this relevance, even if we assume,
without deciding, that Schwartz is not in the same field of Appellant’s
endeavor, we nonetheless find that Schwartz is reasonably pertinent to
Appellant’s problem with respect to representative claim 4, namely
selectively directing laser radiation to a target in conjunction with a
telescopic sight. Appellant has therefore not persuaded us of error in the
Examiner’s reliance on the teachings of Schwartz.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 4. Therefore, we will
sustain the Examiner’s rejection of that claim over Zak and Schwartz, and
claim 13 which falls with claim 4. We will also sustain the Examiner’s
rejections of (1) claims 5 and 14 over Zak, APA, and Schwartz; and (2)
claims 6 and 15 over Zak, Teremy, and Schwartz for similar reasons.

The Obviousness Rejection of Claims 7 and 16
We now consider the Examiner’s obviousness rejection of claims 7
and 16 over Zak and Teetzel (Ans. 6). Regarding representative claim 7,10
Appellant reiterates the previous arguments regarding Zak, but adds that the
Examiner’s motivation to modify Zak to include a detonator operatively
associated with the receiver module and selectively actuated as claimed is
insufficient to establish a prima facie case of obviousness since, among other
things, the Examiner’s motivation is not supported by evidence or reasons
why ordinarily skilled artisans would make such a modification (Br. 21-24).

10 Appellant argues claims 7 and 16 together as a group. See Br. 20-24.
Accordingly, we select claim 7 as representative.
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The Examiner reiterates that Zak’s teaches controlling a wide variety
of apparatus including, among other things, lamps, ceiling fans, dimmer
switches, and factory and industrial equipment. In light of this broad
application, the Examiner takes the position that ordinarily skilled artisans
would have therefore found Zak’s remote control device to be applicable to
military environments (e.g., remote detonation devices) such as that
disclosed by Teetzel (Ans. 16-17).
The issue before us, then, is whether Appellant has shown that the
Examiner erred in combining the teaching of Teetzel with the teachings of
Zak. The issue turns on whether there was an apparent reason to combine
the known elements in the fashion claimed. For the following reasons, we
answer “yes” to this question.
Teetzel discloses a projectile that can be detonated by a laser beam.
The projectile is fitted with an infrared detector 114 that, when exposed
upon removal of cover 116, detects laser radiation emitted from the
launching weapon. Upon such detection, the projectile is detonated (Teetzel,
Abstract, col. 4, ll. 30-56; Fig. 1)
In our view, there is ample reason on this record to combine the
teachings of Teetzel with Zak. First, as we noted previously and as the
Examiner indicates, Zak envisions using a laser to control a wide variety of
devices, including industrial devices (Zak, col. 27-46; Fig. 6). Indeed, Zak
indicates in the Abstract that not only can the remote operator control ceiling
fans, wall switches, table lamps, but also “any other device in need of
remote controlled operation” (Zak, Abstract; emphasis added).
This broad range of applications, in our view, could reasonably
encompass military applications. Indeed, Appellant has not shown why
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Zak’s system could not be adapted to such military applications such as a
detonator. We find the Examiner’s position in this regard reasonable and
find no error in this approach. Furthermore, in light of Teetzel, utilizing
Zak’s system to actuate a detonator would have been tantamount to the
predictable use of prior art elements according to their established functions
-- an obvious improvement. See KSR, 127 S. Ct. at 1740.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 7. Therefore, we will
sustain the Examiner’s rejection of that claim, and claim 16 which falls with
claim 7.

The Obviousness Rejection of Claims 8 and 17
We now consider the Examiner’s obviousness rejection of claims 8
and 17 over Kaje11 in view of Official Notice, as evidenced by Perkins (Ans.
6-7). Appellant first argues that the patent that issued from the cited Kaje
published application does not teach or suggest a laser light actuation system
for remotely and selectively actuating a function of a known
electromechanical gate. Rather, Appellant argues, the patent instead teaches
activating a doorbell -- not a gate (Br. 24-26).
Although Appellant acknowledges that the Examiner cited Kaje’s
published application, Appellant nonetheless takes the position that the
Examiner should have cited the corresponding patent.12 According to
Appellant, the Kaje patent deleted language in the application that was relied

11 Unless otherwise indicated, all references to Kaje refer to the published
application cited by the Examiner.
12 See Br. 24 n.1 (“Since [the Kaje published application] issued as U.S.
Patent No. 6,897,765, the Examiner should be citing to U.S. 6,897,765.”).
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upon by the Examiner in the rejection and, as such, the patent was
specifically limited to a remotely activated doorbell (Br. 24-26).
Appellant also challenges the Examiner’s use of Official Notice
regarding concealing a security device in a location known only to certain
individuals. Although Appellant acknowledges the Examiner’s citation to
Perkins in response to an earlier challenge of such Official Notice, Appellant
nonetheless argues that the Examiner has not provided any motivation for
modifying Kaje with Perkins, nor is Perkins analogous art (Br. 26-30).
The Examiner notes that even if Kaje’s issued patent does not disclose
the particular features relied upon in the patent’s associated published
application, the published application nonetheless remains a valid reference.
As such, the Examiner contends, the published application’s disclosure of an
electromechanical gate was properly relied upon in the rejection (Ans. 17).
The Examiner adds that Perkins amply evidences the Examiner’s position
regarding the known procedure of concealing a security device in a location
unknown to unauthorized individuals. The Examiner further contends that
not only is Perkins analogous art since it pertains to security devices for
granting or denying access to a secured area, there is ample motivation to
combine these teachings as proposed (Ans. 18-19).
The issue before us, then, is whether Appellant has shown that the
Examiner erred in combining the teachings of the Kaje application with
known procedures evidenced by Perkins to arrive at the claimed invention.
The issue turns on (1) whether the Examiner’s reliance on the teachings of
the published Kaje application was proper; (2) whether the Examiner’s
reliance on Offical Notice (evidenced by Perkins) was proper; and (3) if
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such reliance was proper, whether there was an apparent reason to combine
the known elements in the fashion claimed.
Kaje discloses a remote control device 1 that, when actuated by a user,
transmits a visually perceptible signal to a sensor 3 associated with a
doorbell or any device compatible with the remote/sensor apparatus (e.g.,
garage door, spot-light, etc.) (Kaje, Abstract; ¶¶ 0016-17; Figure) (emphasis
added). According to the reference, “[a]ny supported and compatible
equipment (e.g. doorbell ringer, automatic door, automatic barrier for
buildings, machine, spot light), which comprises or includes the (3) laser
light sensor can be activated by any compatible (1) remote device…[T]he
same remote could be used to activate any compatible equipment” (Kaje,
text of claim 1 (emphasis added)).
We find these teachings are hardly limited to doorbells, and indeed the
teaching pertaining to actuating automatic barriers for buildings amply
suggests actuating an electromechanical gate via laser light, as presently
claimed. Even if we assume, without deciding, that Kaje’s granted patent
does not contain these teachings (a finding that we need not reach), the
corresponding published application is nonetheless prior art for all that it
teaches. Appellant’s arguments with respect to the granted patent are simply
irrelevant to the document that the Examiner relied upon in the rejection
(i.e., the published application) -- a document whose availability to the
public is undisputed.
Before considering Appellant’s challenge of the Examiner’s use of
Official Notice, we note that representative claim 8 does not actually require
the laser receiver module to be positioned in a selectively concealed location
known to a user, but merely be adapted to be so positioned. Since this
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clause merely constitutes a functional limitation, so long as the receiver
device in Kaje is capable of being so positioned, then it meets the claim.
While Kaje is short on specifics regarding the receiver device, we see no
reason why it would not be capable of being positioned in a selectively
concealed location as claimed.
In any event, even if such selective concealment were positively
recited so as to impart a structural limitation in representative claim 8, we
are not persuaded of error in the Examiner’s use of Official Notice. We
acknowledge that an Examiner's use of Official Notice unsupported by
documentary evidence should only be taken when the facts so noticed are
“capable of such instant and unquestionable demonstration as to defy
dispute.” See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (citations
omitted).
Nevertheless, we find no error in the Examiner officially noticing
concealing security devices in locations known only to those who are
permitted entry (Ans. 7). The Examiner merely stated what is otherwise a
common-sense security practice: a routine practice in situations where
knowledge of the location of a device to be secured could compromise the
very security of the device or something associated with the device. This is
clearly the type of well-known fact appropriate for Official Notice and
Appellant has not persuaded us of error in the Examiner’s approach.
In any event, the Examiner provided evidence of such a fact by citing
Perkins. Although Perkins discloses a hidden drawer safe, the fundamental
concept of hiding devices associated with this safe nevertheless reasonably
supports the Examiner’s statement of Official Notice in connection with the
claimed invention. Notably, Perkins notes that both the key switch 122 and
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push button switch 126 that deliver electric power to the solenoid in the
safe’s housing are hidden (Perkins, ¶¶ 0006-7, 0024; Fig. 10).
In our view, Perkins’ teaching of hiding key activating components of
the device (e.g., the switches) from view reasonably supports the Examiner’s
position that it is well known to selectively conceal certain security devices
known only to authorized individuals. Applying such a teaching to a remote
activation system, such as that disclosed by Kaje, would have been a
reasonable modification for, among other things, enhancing security. As
such, we find these fundamental security features reasonably combinable
with those of Kaje. Additionally, even if we assume, without deciding, that
Perkins is not in the same field of endeavor as Appellant’s invention,
Perkins’ fundamental teachings pertaining to selective concealment of key
activation components are nonetheless reasonably pertinent to the problems
solved by Appellant, at least with respect to enhancing security via selective
concealment in locations known only to certain users. As such, enhancing
security via such measures in Kaje would have yielded at least the
predictable results noted by the Examiner (Ans. 19), namely preventing
unauthorized individuals from tampering with the device or otherwise
breaching security.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 8. Therefore, we will
sustain the Examiner’s rejection of that claim, and claim 17 which falls with
claim 8.

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DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-8 and 10-
17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

KIS

WINSTEAD P.C.
P. O. BOX 50784
DALLAS, TX 75201