Ex parte Nilssen

Board of Patent Appeals and Interferences

Jan 20, 1998

08287409 (B.P.A.I. Jan. 20, 1998)

Canceled claims 1-43 were the subject of an earlier1
appeal to the Board. (Papers 17, 23 and 25.)
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This opinion (1) was not written for publication and
(2) is not binding precedent of the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte OLE K. NILSSEN
____________
Appeal No. 96-3090
Application 08/287,409
____________
ON BRIEF
____________
Before CALVERT, THOMAS, and TORCZON, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
BACKGROUND
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 44-65, all of the pending claims.1
(Paper 29 at 1.) We affirm in part.
Appellant filed the subject application on 8 August 1994.
Appellant claims the benefit of United States patent
application number 06/717,441, filed 28 March 1985, now
abandoned. (Paper 25 at 1.)
Appeal No. 96-3090 Page 2
Application 08/287,409
The examiner failed to repeat this ground of2
rejection in his answer (Paper 32 at 2-3), but did defend the
rejection in his response to Appellant's argument (Paper 32
at 6).
Appellant entitled his application "Programmable wall
switch actuator/timer". (Paper 1.) According to the
abstract, this "actuator/timer unit can easily be mounted
directly to the outside of the face plate of a standard wall
switch [and] can be programmed to operate the lever of a wall
switch in accordance with a program that automatically repeats
on a diurnal, weekly or other cyclical basis." Claim 50 is
representative of the claim subject matter (Paper 28):
50. An arrangement comprising:
a wall switch having a face plate and a
switch lever protruding through an aperture in the
face plate; the face plate being of ordinary size
and shape; and
a programmable actuator mounted onto the
wall switch in engagement with the switch lever; the
programmable actuator being further characterized by
causing repetitive and periodic reciprocating
movement of the switch lever in accordance with a
pre-established program.
REJECTIONS
The examiner rejected claims 44-65 under 35 U.S.C.
§ 112[1] as lacking a basis in the specification. The
examiner also objected to the specification on the same basis.
(Paper 29 at 2.) The examiner rejected claims 44-49 under2
Appeal No. 96-3090 Page 3
Application 08/287,409
We note there is no corresponding rejection of3
claim 56 relying on Pfeiffer.
section 112[2] as indefinite. (Paper 29 at 2.) The examiner
also relied on the following references in rejecting the
claims:
Schneidinger 3,740,680 19 June 1973
Augustyniak 3,818,156 18 June 1974
Angott 4,041,325 9 Aug. 1977
Pfeiffer et al. (Pfeiffer) 4,508,943 2 Apr. 1985
(filed 28 Mar. 1983)
The examiner rejected claims 44, 46, 48-50, 52, 54, 55,
57-61, and 63-65 under 35 U.S.C. § 102(b) as anticipated by
Schneidinger. (Paper 29 at 3.) The examiner rejected
claims 44-46, 48-52, 54, 55, and 57-65 under section 102(e) as
anticipated by Pfeiffer. (Paper 29 at 3.) The examiner
rejected claims 45, 47, 51, 53, 56, and 62 under 35 U.S.C.
§ 103 as unpatentable over Schneidinger in view of Augustyniak
or Angott. (Paper 29 at 4.)
The examiner rejected claims 47 and 53 under section 103 as3
unpatentable over Pfeiffer in view of Augustyniak or Angott.
(Paper 29 at 4.)
Appeal No. 96-3090 Page 4
Application 08/287,409
We assume that by "it" Appellant means "the sub-4
assembly". Appellant should clarify this point in further
prosecution.
INDEFINITENESS
We treat the rejection of claims 45-49 for indefiniteness
first since it has bearing on the other rejections directed
against these claims. Claims 44-49 stand or fall together for
the purposes of the indefiniteness rejection. (Paper 31
(Brief) at 3.) Claims 45-49 each depend directly from
claim 44. Claim 44 recites (Paper 28, emphasis added):
44. An assembly mounted at the location of an
ordinary wall switch and characterized by including:
a pair of terminals connected with a pair of
power line conductors as well as with a load; the
terminals being so arranged that: (i) when they are
electrically connected together, a power line
voltage is applied to the load; and (ii) when they
are electrically disconnected from each other, the
power line voltage is removed from the load; and
a sub-assembly connected with the terminals and
operative to cause these terminals to be shorted
together at certain pre-determined points in time
and to be disconnected from each other at certain
other pre-determined points in time; the sub-
assembly being further characterized in that:
(i) the pre-determined points in time repeat in a
substantially periodic manner; (ii) a wall switch
face plate is interposed between the sub-assembly
and the terminals; and (iii) it will function to4
cause the pre-programmed points in time to occur
irrespective of the presence of a power line voltage
at the power line conductors.
Appeal No. 96-3090 Page 5
Application 08/287,409
The examiner urges that claim 44 is indefinite because
the phrase "the location of an ordinary wall switch" lacks an
antecedent basis. (Paper 32 at 6-7.) To avoid
indefiniteness, claims must (1) reasonably apprise those
skilled in the art both of the use and the scope of the
invention and (2) use language that is as precise as the
subject matter permits. Shatterproof Glass Corp. v.
Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641
(Fed. Cir. 1985). While we agree that, strictly speaking,
"the location" lacks an antecedent basis, we do not believe
that failing renders the claim imprecise or incomprehensible
for those skilled in the art. Certainly the simplest
alternative--"a location of an ordinary wall switch"--would do
little to improve this particular claim. Consequently, we
will not sustain the rejection for this reason.
The examiner also urges that it is not clear how the sub-
assembly is connected to the terminals. We too are uncertain
what Appellant intends to encompass with the term "sub-
assembly". The underlined portions of claim 44 are not
consistent. This inconsistency is best illustrated when
Appellant explains what he means by "sub-assembly" (Paper 31
(Brief) at 4, emphasis in original):
Appeal No. 96-3090 Page 6
Application 08/287,409
[A]s interpreted in light of the specification and
the rest of claim 44, the recited "sub-assembly"
must clearly include the following elements: (i) the
mechanical switch inherently associated with the
switch lever SL of Fig. 1 (which mechanical switch
provides for connection with the "pair of terminals"
recited in line 3 of claim 44, which "pair of
terminals" must inherently be present "at the
location of an ordinary wall switch"); (ii) face
plate FP of Fig. 1; and (iii) the actuator/timer
unit ATU of Figs. 2a, 2b, 3 and 5.
If the face plate is interposed between the sub-assembly and
the terminals, then how can the sub-assembly include (a) the
face plate and (b) the mechanical switch, which must be
between the face plate and the terminals in order to connect
the rest of the sub-assembly to the terminals? These
limitations are logically inconsistent. Yet if the sub-
assembly does not include the mechanical switch, we agree with
the examiner (Paper 32 at 7) that it is not clear how the sub-
assembly is connected to the terminals to turn the power on
and off. Given the uncertainty surrounding claim 44, both as
written and as argued, we conclude that we must sustain the
rejection of claims 44-49 under section 112[2] as indefinite.
We reverse all of the remaining rejections of claims 44-
49 without saying anything about the merits of these
rejections because the meaning of these claims is so uncertain
that we cannot find facts based on the language of the claims.
Cf. In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295
Appeal No. 96-3090 Page 7
Application 08/287,409
(CCPA 1962) (reversing a prior art rejection); In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) (reversing
a prior art rejection); In re Dossel, 115 F.3d 942, 946,
42 USPQ2d 1881, 1885 (Fed. Cir. 1997) (reversing a written
description rejection). For the purposes of the other
rejections, claims 44-49 are no longer on appeal.
WRITTEN DESCRIPTION
We reverse the rejection of the remaining claims under
section 112[1]. The examiner grounds this rejection on the
failure of the specification to support the term "sub-
assembly". (Paper 32 at 6.) Whatever the merits of such a
rejection as applied to claim 44, it has no applicability to
claims 50-65, which do not use the offending term.
ANTICIPATION - SCHNEIDINGER
Appellant groups together all of the claims rejected
under section 102 over Schneidinger. (Paper 31 (Brief) at 3;
see also 37 CFR § 1.192(c) (1995) (requiring separate grouping
and separate arguments).) We choose claim 50 as the broadest
of the remaining claims in this group.
Schneidinger teaches an arrangement comprising an
ordinary wall switch 10 and face plate 12 with a switch
lever 18 protruding through the face plate. (2:32-37; Figs. 1
Appeal No. 96-3090 Page 8
Application 08/287,409
& 3.) An actuator 24 is mounted on the wall switch and
engages the switch lever. (Fig. 3.) The actuator toggles the
switch lever to turn the light on and off. (1:50-61.)
We find that Schneidinger teaches the actuator is
programmable since it has "means to adjust the time cycle".
(6:10-12.) See " program" in Webster's New Collegiate2
Dictionary 912 (1979) (attached) ("2: to work out a sequence
of operations to be performed by (a mechanism)"). The
actuator can be set to turn the lights on and off
"intermittently". (2:1-3.) We find "intermittently" to
include both repetitive action and periodic action. See
"intermittent" in Webster's at 598 ("coming and going at
intervals" and "syn INTERMITTENT, RECURRENT, PERIODIC,
ALTERNATE"). We note in support of this finding that
Schneidinger points out that "the timer may be so constructed
as to be only actuated once and in its own mechanism (not
shown) to reverse its actuation after a given elapsed time.
Likewise, there may be two or more control dials or settings
for control of the timing device." (3:15-18.) Two or more
settings implies repeated actuations. The actuations may also
be light-triggered. (5:8-11.) If natural light is the
trigger, then the dominant actuation pattern would inherently
Appeal No. 96-3090 Page 9
Application 08/287,409
be repetitive and periodic (corresponding to sunrise and
sunset).
Schneidinger teaches all of the limitations of claim 50
so we affirm the rejection of claim 50 under section 102 over
Schneidinger. We also affirm the rejection of all remaining
claims grouped with claim 50, i.e., claims 52, 54, 55, 57-61,
and 63-65.
OBVIOUSNESS - SCHNEIDINGER
Appellant relies on his arguments regarding anticipation
to address the rejections under section 103. (Paper 31
(Brief) at 9.) Since we affirm the anticipation rejection
based on Schneidinger, we also affirm the related obviousness
rejections of remaining claims 51, 53, 56, and 62.
ANTICIPATION - PFEIFFER
Appellant groups together all of the claims rejected
under section 102 over Pfeiffer. (Paper 31 (Brief) at 3.) We
choose claim 50 as the broadest of the remaining claims in
this group.
Pfeiffer teaches an arrangement comprising a wall
switch 10 (2:47-53; Fig. 1) with a conventional face plate 50
(3:27-31). The operation of the programmed actuator is
described in patent application 06/408,330, which issued as
Appeal No. 96-3090 Page 10
Application 08/287,409
The obviousness rejection of claim 47 has been5
reversed pro forma. See page 5.
United States Patent 4,521,843. (2:53-56.) The examiner
identifies switch 52 as protruding through the face plate.
(Paper 32 at 11.) While this is true, switch 52 does not
reciprocate "in accordance with a pre-established program" as
claim 50 requires. The only other independent claim,
claim 60, has a corresponding limitation.
Pfeiffer does not teach all of the limitations of
claim 50 so we reverse the rejection of claim 50 under
section 102 over Pfeiffer. We also reverse this rejection for
all remaining claims grouped with claim 50, i.e., claims 51,
52, 54, 55, and 57-65.
OBVIOUSNESS - PFEIFFER
Claim 53 is the only remaining claim rejected over the5
combination of Pfeiffer and either Angott or Augustyniak. It
depends from claim 50 and requires, in addition, an electric
motor included with the programmable actuator.
Angott teaches an external thermostat timer for use with
an existing wall-mounted thermostat. He does not teach a
switch lever that protrudes through a conventional face plate
and that reciprocates according to a pre-determined pattern.
Appeal No. 96-3090 Page 11
Application 08/287,409
Angott uses a motor 158 to adjust the thermostat switch.
(8:56-9:11.)
Augustyniak suggests a switch lever that protrudes
through a conventional face plate and that reciprocates in
response to an actuator. (Fig. 1; 1:50-58; 3:3-19.) He also
teaches a motorized time-keeping mechanism 28. (1:59-2:13.)
Augustyniak provides motivation for a simple actuator that
uses an existing toggle switch. (1:29-34.)
Pfeiffer provides motivation for a computerized actuator.
A person having ordinary skill in the art would have been
motivated to use a computerized actuator with Augustyniak's
simpler mechanism. An artisan implementing this combination
would not, however, need to retain Augustyniak's motor or be
motivated to use the motor as the actuator in this
combination. Angott does not provide a reason to include a
motor with the actuator either. Consequently, neither
combination would produce a programmable actuator with an
electric motor as claim 53 requires. We cannot, therefore,
conclude that the subject matter of claim 53 would have been
obvious in view of Pfeiffer and either Angott or Augustyniak.
Appeal No. 96-3090 Page 12
Application 08/287,409
DECISION
We affirm the rejection of claims 44-49 under
section 112[2] as indefinite; consequently, we reverse pro
forma the other rejections of claims 44-49. We reverse the
rejection of claims 50-65 under section 112[1] as lacking
support in the disclosure. We affirm the rejection of
claims 50, 52, 54, 55, 57-61, and 63-65 under section 102 over
Schneidinger. We reverse the rejection of claims 50-52, 54,
55, and 57-65 under section 102 over Pfeiffer. We affirm the
rejection under section 103 of claims 51, 53, 56, and 62 over
Schneidinger in view of Augustyniak or Angott. We reverse the
rejection of claim 53 over Pfeiffer in view of Augustyniak or
Angott.
Appeal No. 96-3090 Page 13
Application 08/287,409
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a). See 37 CFR § 1.136(b).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES D. THOMAS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 96-3090 Page 14
Application 08/287,409
Ole K. Nilssen
Caesar Drive, Route 5
Barrington, IL 60010