Ex parte Peterson

Board of Patent Appeals and Interferences

Dec 17, 1998

08279157 (B.P.A.I. Dec. 17, 1998)

Application for patent filed July 22, 1994.1
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN PETERSON

_____________
Appeal No. 96-4189
Application 08/279,1571
______________
ON BRIEF
_______________
Before MARTIN, FLEMING and CARMICHAEL, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
Appeal No. 96-4189
Application 08/279,157
2
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 8 through 16, all of the claims pending in the
present application. Claims 1 through 7 have been canceled.
The invention relates to security systems. In
particular, the invention relates to a security system having
a remote control unit for producing IR signals to arm or
disarm the security system. On page 6 of the specification,
Appel- lant discloses that Figure 1 is a schematic of the
invention. Figure 1 shows a security system 2 provided with
an indoor remote signal receiver 20 having a display 30, a
personal remote control 22 and a control panel 6. On page 7
of the specification, Appellant discloses the disarming se-
quence of the security system which is controlled by the
remote control 22. A user positions himself adjacent a window
pane 42 of the dwelling such that the display 30 of the indoor
remote signal receiver 20 is visible. A first IR signal is
Appeal No. 96-4189
Application 08/279,157
3
generated by the remote control when the user presses button
24 on the remote control. The indoor remote signal receiver
20 then communicates with the control panel 6 via another
communication channel such as RF. The control panel 6 then
sends to the indoor remote signal receiver a prompt, "enter
first code." This prompt is displayed on the display 30 of
the
indoor remote signal receiver 20 to instruct the user. The
user then presses a series of actuations of either of the
buttons 24 or 26 of the remote control 22 to enter the first
code. The display 30 then provides a second prompt asking the
user to enter a second code. On page 8 of the specification,
Appellant discloses when all of the proper codes have been
properly entered, display 30 then provides a prompt, "do you
want the system to remain armed" and again the user can commu-
nicate "yes" or "no" by pressing a particular sequence of the
buttons on the remote control 22.
The independent claim 8 is reproduced as follows:
Appeal No. 96-4189
Application 08/279,157
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8. A security system comprising a number of sensors for sensing
an alarm condition, a control panel for receiving signals from said sensors
and processing the same for determination of an alarm event, an interior
keypad for inputting information to said control panel, said security system
further comprising a wireless remote control arrangement having a portable
unit to be carried by a user and an interior receiver arrangement for
receiving signals from said portable unit and communicating with said control
panel to alter the status of the security system including arming and disarm-
ing of the security system; said portable unit including at least one key
actuator and means to generate and transmit a predetermined IR signal in
response to actuation of said at least one key actuator, said receiver
arrangement upon receipt of said predetermined IR signal from said portable
unit providing visual feedback to the user to assist the user in the entry of
an identification code produced by means of a series of IR signals produced by
multiple actuation of said at least one key actuator and to also assist the
user in the entry of instructions to alter the status of the security system,
said interior receiver upon receipt of said IR signals to alter the status of
the security system instructing said control panel to change the status of
the security system in accordance with said received IR signals.
The Examiner relies on the following references:
Lewiner et al. (Lewiner) 4,692,762 Sept. 8,
1987
van den Boom et al. (van den Boom) 4,723,121 Feb. 2,
1988
Jacob 4,908,604 Mar. 13,
1990

Claims 8 through 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Jacob in view of Lewiner and
van den Boom.
Appeal No. 96-4189
Application 08/279,157
The Examiner mailed a supplemental Examiner's answer on2
July 10, 1996. However, the answer is a substitute for the
Examiner's answer mailed on May 8, 1996. We will thereby
treat the July 10, 1996 as the Examiner's answer for this
appeal.
5
Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the brief and answer for2
the respective details thereof.
OPINION
We will not sustain the rejection of claims 8
through 16 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions
found
in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
Appeal No. 96-4189
Application 08/279,157
6
217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when
determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable
'heart' of the invention." Para-Ordnance Mfg. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
Appellant argues on pages 7 and 8 of the brief that
neither Jacob, Lewiner nor van den Boom, together or individ-
ually, teaches or suggests a portable unit and an interior
unit which allows for an interaction between the user
operation, the portable unit, and the interior unit, where the
user actuates the key in response to visual feedback from the
interior unit which cumulatively results in entry of a code to
change the status of the security system as recited in
Appellant's claim 8. Appellant argues on pages 17 and 18 of
the brief that neither Jacob, Lewiner nor van den Boom,
Appeal No. 96-4189
Application 08/279,157
7
together or individually, teaches or suggests generating and
transmitting of an IR signal
in response to actuation of the one key actuator, receiving
and recognizing the IR signal at the receiver arrangement,
providing visual feedback confirming receipt and recognition
of the predetermined IR signal, generating and transmitting
further predetermined IR signals in response to multiple
actuation of the at least one key actuator of the portable
unit and providing visual feedback confirming the receipt and
recognition of the IR signal when the authorization has been
received, and thereafter providing visual prompts to alter the
status of the security system as recited in Appellant's claim
16.
We note that Appellant's claims recite a series of
interactions between the user using a remote controller and
the interior receiver with a visual feedback after each entry
to the user to assist the user to change the status of the
security system. Appellant’s claim 8 recites a
means to generate and transmit a predeter-
mined IR signal in response to actuation of
Appeal No. 96-4189
Application 08/279,157
8
said at least one key actuator, said
receiver arrangement upon receipt of said
predeter- mined IR signal from said
portable unit providing visual feedback to
the user to assist the user in the entry of
an identification code produced by means of
a series of IR signals produced by multiple
actuation of said at least one key actuator
and to also assist the user in the entry of
instructions to alter the status of the
security system . . . .
Similarly, we note that the only other independent Appellant's
claim, claim 16 recites:
generating and transmitting a
predetermined IR signal in
response to actuation of at least
one key actuator of said portable
unit,
receiving and recognizing said
predetermined IR signal at said
receiver arrangement and
providing visual feedback
confirming receipt and
recognition of said predeter-
mined IR signal by said receiver
arrangement,
generating and transmitting
further predetermined IR signals
in response to multiple actuation
of the at least one key actuator
of said portable unit to thereby
enter an authorization code,
receiving and recognizing said
further predetermined IR signals
Appeal No. 96-4189
Application 08/279,157
9
at said receiver arrangement and
providing visual feedback con-
firming receipt and recognition
of said predetermined IR signals
by said receiver arrangement when
the authorization code has been
received, and thereafter,
providing visual prompts to
alter the status of the security
system . . . .
The Examiner argues on pages 4 and 5 of the answer
that Lewiner teaches in column 2, lines 53-63, and column 3,
lines 29-32, that multiple actuation of the keys of the remote
determines the entry code. The Examiner also states that
Lewiner teaches in column 4, lines 52-56, that the code can be
displayed to the user prior to being transmitted.
Upon a careful review of Lewiner, we fail to find
the Appellant's claimed limitations of the multiple sequence
of interaction between the user and the interior receiver in
which a predetermined IR signal is transmitted by the remote,
the receiver in response displays a visual prompt, a series of
IR signals is then transmitted by the remote and then the
receiver instructs the control panel to change the status of
Appeal No. 96-4189
Application 08/279,157
10
the security system. Lewiner teaches that the user opens the
garage door by pressing a series of keys on the remote to
transmit a coded signal to cause the receiver to open the
garage door. We agree that Lewiner also teaches that the
series of code numbers entered by the user may be displayed by
the remote as they are entered. However, Lewiner does not
teach Appellant's claimed multiple sequence of interactions
between the user and the interior receiver.
We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a
prior art reference, common knowledge or capable of
unquestion-able demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966).
Appeal No. 96-4189
Application 08/279,157
11
Furthermore, we fail to find any suggestion of
modifying Jacob to obtain the invention as recited in
Appellant’s claims. The Federal Circuit states that "[t]he
mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). "Obviousness may not be established using hindsight or
in view of the teachings or suggestions of the inventor."
Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing
W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13.
Therefore, we will not sustain the rejection of claims 8
through 16 under 35 U.S.C. § 103 as being unpatentable over
Jacob in view of Lewiner and van den Boom.
We have not sustained the rejection of claims 8
through 16 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
Appeal No. 96-4189
Application 08/279,157
12
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
psb
Appeal No. 96-4189
Application 08/279,157
13
Dennison Associates
Suite 301
133 Richmond Street West
Toronto, Ontario, Canada M5H 2L7