Ex parte Nilssen

Board of Patent Appeals and Interferences

May 30, 2000

08295150 (B.P.A.I. May. 30, 2000)

Application for patent filed August 24, 1994. This1
appli- cation is a continuation of Application Serial No.
07/401,475, filed August 29, 1989, pending; which is a contin-
uation of Application Serial No. 06/709,932, filed March 8,
1985, 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(2) is not binding precedent of the Board.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. 53
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte OLE K. NILSSEN

_____________
Appeal No. 1996-3399
Application 08/295,1501
______________
ON BRIEF
_______________
Before THOMAS, BARRETT and HECKER, Administrative Patent
Judges.
Appeal No. 1996-3399
Application 08/295,150
2
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the exam-
iner's final rejection of claims 49 through 60, the examiner
having indicated the allowance of claim 37.
Representative claim 49 is reproduced below:
49. An arrangement comprising:
In a building having rooms and a main power supply
system operative to distribute power line voltage from an
ordinary electric utility power line to an ordinary household
electrical outlet in each room; the power line voltage suffer-
ing from occasional periods of interruption; the improvement
comprising:
an auxiliary power supply system having an auxiliary
source of power operative to distribute an auxiliary voltage
to a special power outlet in each room; each power outlet
being operative to receive and disconnectably hold a special
power plug; the maximum amount of power extractable from any
one of the special power outlets being limited so as to be
safe from fire initiation hazard; the auxiliary power supply
system being further characterized by providing the auxiliary
voltage during said periods of interruption as well as during
other periods.
The following references are relied on by the exam-
iner:
Attema 3,771,103 Nov. 6, 1973
Appeal No. 1996-3399
Application 08/295,150
3
Powell 4,140,959 Feb. 20, 1979
Ebert, Jr. (Ebert) 4,241,261 Dec. 23, 1980
Marez et al. (Marez) 4,315,304 Feb. 9, 1982
Rumble 4,543,624 Sept. 24, 1985
(filed Aug. 17,
1982)
The grandparent application was the subject of
Appeal No. 88-2771, decided on May 31, 1989 of which a deci-
sion on a
request for reconsideration was issued on July 27, 1989. The
parent application to the present application was also the
subject of Appeal No. 94-0197, the decision of which was
issued on November 23, 1993.
From our study of the final rejection in this appli-
cation and the examiner's answer, the examiner has rejected
all claims on appeal, claims 49 through 60, under the
enablement provision of the first paragraph of 35 U.S.C. §
112. Appellant mischaracterizes this rejection as being based
upon a lack of support. Next, claims 49, 52, 56 and 58 stand
rejected under the second paragraph of 35 U.S.C. § 112 as
being indefinite. Finally, claims 49 through 60 (as expressed
Appeal No. 1996-3399
Application 08/295,150
At page 12 of the answer, the examiner has withdrawn a2
rejection of certain claims under the fourth paragraph of 35
U.S.C. § 112. At pages 6 and 12, the examiner has also made
note of the withdrawal of another rejection under 35 U.S.C. §
103, that being based upon the references to Cullen [sic,
Callen], Elms and Rumble.
4
at pages 8 through 11 of the examiner's answer, claims 59 and
60 are also a part of this rejection) stand rejected under 35
U.S.C. § 103. As evidence of obviousness, the examiner relies
upon the collective teachings and showings of Powell, Rumble,
Ebert, Attema and Marez.2
Rather than repeat the positions of the appellant
and the examiner, reference is made to the briefs and the
answers for the respective details thereof. These include the
principal examiner's answer mailed on April 22, 1996 as well
as a supplemental answer mailed on November 1, 1996.
Appellant's initial brief was filed on January 22, 1996 with a
so-called addendum to the appeal brief filed on June 10, 1996.
Finally, we have also considered appellant's second addendum
to the appeal brief filed as a facsimile communication on
Appeal No. 1996-3399
Application 08/295,150
5
August 15, 1996, which bears no official paper number in the
file wrapper. A supplemental appeal brief filed on February
22, 2000 does not bear on the merits of the issues on the
appeal.
OPINION
We reverse the rejection of claims 49 through 60
under the enablement provision of the first paragraph of 35
U.S.C.
§ 112. The examiner's basis of this rejection appears to
focus upon page 6 of the specification as filed to the extent
it relates to an obviousness miscalculation of a current
value. The examiner complains that the corrected value is
much higher than the applicant's cited safe limit of this
current value. The
examiner is of the belief that this so-called safety limit
provides the only basis for the recited safety features in
many of the claims on appeal.
Appeal No. 1996-3399
Application 08/295,150
6
Appellant believes the examiner's view is that the
specification provides no support for certain presently
claimed features. With respect to this rejection at page 3 of
the principal brief on appeal, appellant indicates and
recognizes the error of the current value presented at page 6
and argues that the noted portion of page 6 of the
specification as filed relates to unclaimed, electric shock
safety features. Appellant even presents a proposed amendment
to the specification at page 2 of the first addendum to the
brief to correct the error in the current value listed at page
6 of the specification. It is noted, however, that this
amendment is unnecessary since it was listed at page 1 of the
amendment filed on July 24, 1995. It is thus apparent that
there is no substantive basis or deficiency in the
specification as filed to support the examiner's views that
claims 49 through 60 are not enabled within the first
paragraph of 35 U.S.C. § 112.
We next turn to the rejection of claims 49, 52, 56
and 58 under the second paragraph of 35 U.S.C. § 112. At page
Appeal No. 1996-3399
Application 08/295,150
7
7 of the answer, the examiner's view is that there is no
antecedent
basis for the safety aspects of the claims relating to the
recited claim feature of "fire-initiation hazard." Part of
the examiner's reasoning there appears to be based upon the
uncorrected current value at page 6 of the specification as
filed just discussed in the context of the enablement
rejection. We note again that the current value in the middle
of page 6 has been corrected. On the other hand, appellant
is of the view at page 3 of the first addendum to the appeal
brief that the examiner appeared to him to be confused
between the indefiniteness of the claim and the lack of
support in the specification for the noted feature. For his
part, the appellant has already noted at page 4 of the
principal brief on appeal various portions of the
specification which supported or discussed the safety aspects
associated with the noted "fire-initiation hazard" of the
claims on appeal. Furthermore, from our study of each
independent claim on appeal, claims 49, 56 and 58 where this
Appeal No. 1996-3399
Application 08/295,150
8
feature appears, there appears to us to be no antecedent basis
problem within the claims themselves or in the context of the
disclosed invention. Therefore, we reverse the rejection of
claims 49, 52, 56 and 58 under the second paragraph of 35
U.S.C. § 112.
Finally, we turn to the rejection of claims 49
through 60 under 35 U.S.C. § 103. Assuming for the sake of
argument that
the teachings of the respective references of Powell, Rumble,
Ebert, Attema and Marez are properly combinable within 35
U.S.C. § 103, we reverse the rejection.
The examiner's view at page 8 of the answer that
Powell "discloses all aspects of claims 49, 56, and 58 except
for the special outlets and power plugs recited in all three
claims" is misplaced. Only independent claims 49 and 56
recite the special outlets and power plugs, independent claim
58 making no mention of either of them.
Appeal No. 1996-3399
Application 08/295,150
9
The examiner's view of Rumble appears to generally
accurately characterize this reference's teaching that his
electrical voltage converter, because it teaches of multiple
geometries of various inlet pins, would have obviously
suggested to the artisan various geometries of special room
sockets as well. However, the collective teachings of Powell,
Rumble, Ebert, Attema and Marez are incomplete as to one basic
feature (to be discussed momentarily) common in each
independent claim 49, 56 and 58 on appeal.
We observe that independent claim 56 is essentially
identical to independent claim 49 except for the addition of
language relating to the plurality of rooms in a building.
The examiner's supplemental answer appears to attempt to
address
appellant's arguments traversing this rejection found in the
second addendum to the appeal brief. It appears to us that
the examiner has not come to grips with various portions of
this document relating to arguments of the appellant and
certain features of the claims. None of the references
relates to the feature most clearly recited in independent
Appeal No. 1996-3399
Application 08/295,150
10
claims 49 and 56 (and argued at page 3 of the second addendum
to the appeal brief) that these claims recite an arrangement
"whereby in each of plural rooms in a building, two different
power outlets are provided: (i) one providing ordinary power
line voltage from the local electric utility company; and (ii)
one providing an 'auxiliary voltage' which will be present
even during periods when no ordinary power line voltage is
being supplied from the local electric utility company." As
noted by appellant, this feature is not described or suggested
in any of the applied references. The auxiliary power supply
system of independent claims 49 and 56 requires special
power outlets in each room as well as special power plugs. In
contrast, the two separate systems of independent claim 58 do
not require special power outlets and
plugs but do require special loads directly connected to the
separate auxiliary power supply system claimed.
The examiner's earlier noted reliance upon Powell as
Appeal No. 1996-3399
Application 08/295,150
11
to the majority of the features of each independent claim is
misplaced because Powell's system is clearly designed to
supplement the normal electric power distribution network.
Powell's abstract reveals that the supplemental system
provides "power which is added to and utilized in the normal
or primary electrical power distribution network." Similarly,
the supplemental system "develops electrical energy which is
stored for intermittent or periodic transfer into the primary
power system."
The separateness of the power supplies of claims 49
and 56 is emphasized by the special power outlets and special
power plugs in addition to the name of the separate systems
being a main power supply system and an auxiliary power supply
system. As to independent claim 58, there is recited a main
power supply system as well as an auxiliary power system, the
latter of which provides power to special loads recited in
this claim. The other references relied upon by the examiner
other than Powell do not make up for these noted deficiencies
with respect to each independent claim 49, 56 and 58 on
appeal. Therefore, we must reverse the rejection of each of
Appeal No. 1996-3399
Application 08/295,150
12
these independent claims as well as their respective dependent
claims.
CONCLUSION
We have reversed the rejection of claims 49 through
60 under the first paragraph of 35 U.S.C. § 112 and the
rejection of
claims 49, 52, 56 and 58 under the second paragraph of 35
U.S.C. § 112. We have also reversed the rejection of claims
49 through 60 under 35 U.S.C. § 103. Therefore, the decision
of the examiner rejecting various claims on appeal on various
statutory bases is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
Appeal No. 1996-3399
Application 08/295,150
13
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
JDT:psb
Appeal No. 1996-3399
Application 08/295,150
14
Ole K. Nilssen
408 Caesar Drive
Barrington, IL 60010