Ex Parte Shuster et al

Patent Trial and Appeal Board

Oct 31, 2012

11407792 (P.T.A.B. Oct. 31, 2012)

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.
11/407,792 04/20/2006 James Shuster 2005P14436US01 8708
28524 7590 11/01/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
SWARTHOUT, BRENT
ART UNIT PAPER NUMBER
2685
MAIL DATE DELIVERY MODE
11/01/2012 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 JAMES SHUSTER, JANIS SHUSTER, and PAUL STRELECKI
____________

Appeal 2011-006198
Application 11/407,792
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/407,792

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-6, 8-13, and 18-25 (App. Br. 3). Claims 7 and 14-17 were
cancelled (id.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary claim 21 follows:
21. A visual alert device, comprising:

a) a solid state light source configured to radiate light
in response to a control signal, the light radiating at intensity at
least 15 candela;

b) a programmable current source having a current
output operably coupled to the solid state light source and a
control input;

c) a switch operably coupled controllably make or
break a current path through the solid state light source; and

d) a controller operably coupled to a control terminal
of the switch and operably coupled to the control input of the
programmable current source

Claims 1, 2, 8-11, 12, and 18-20 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Right (U.S. 7,218,238) in view of Smith
(U.S. 2004/0114366) and Munson (U.S. 2003/0160580) (Ans. 3-5).
Claims 3 and 4 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Right in view of Smith, Munson, and Jenkins (U.S.
5,006,971) (Ans. 5).
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Claims 5 and 6 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Right in view of Smith, Munson, and Strip (EP 1460884)
(Ans. 6)
Claims 13 and 21-25 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Right in view of Smith, Munson, and Rhodes (U.S.
2004/0260812) (Ans. 6-8).
Claims 18-20 stand rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter (Ans. 8).

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in concluding that the combination of Right,
Smith, Munson, and Rhodes renders obvious a light source, a programmable
current source, a switch and a controller operably coupled in the manner
recited in independent claim 21?
2. Did the Examiner err in concluding that claims 18-20 are directed to
non-statutory subject matter?

ANALYSIS
35 U.S.C. § 103 Rejection of Claims 1-6, 8-13, and 18-25
We disagree with Appellants’ assertions regarding the Examiner’s
obviousness rejections of claims 1-6, 8-13 and 18-25. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
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Application 11/407,792

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the Answer (Ans. 3-11) in response to arguments made in Appellants’
Appeal Brief and Reply Brief. We concur with the conclusion reached by
the Examiner. We highlight and address certain findings and arguments
below.
Appellants contend that the Examiner erred in rejecting independent
claim 21 as obvious because the combination of Right, Smith, Munson, and
Rhodes do not render obvious a light source, a programmable current source,
a switch and a controller operably coupled in the manner recited in claim 21
(App. Br. 13-16). In support of their contention, Appellants argue that the
combination does not “include ‘a controller . . . operably coupled to the
control input of the programmable current source’” (id. at. 13). Appellants
also argue that the combination does not “include ‘a switch operably coupled
controllably make or break a current path through the solid state light
source’” (id. at 14). Finally, Appellants argue that the combination does not
include “any device operably coupled to both ‘a control terminal of the
switch and . . . the control input of the programmable current source’” (id.).
The Examiner concluded, however, that the combination of prior art
references renders obvious the coupling of the light source, programmable
current source, switch and controller recited in clam 21 (Ans. 10-11). We
agree with the Examiner. Munson teaches a programmable current source
and a light source by disclosing the supply to a lighting loop of “an
adjustable constant current that is unaffected by supply voltage variations or
other electrical disturbances” (¶ [0002]). Munson also teaches a controller
and a switch by disclosing that a programmable logic device 78 forces a
“switch closed, [and] reduces brightness to a selectable low level” (¶
[00027]; FIG. 3). In addition, it would have been obvious to try to couple
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the light source, programmable current source, switch and controller of
Munson in the manner recited in claim 21 because there are only a small
number of ways to couple these components so that the current to the light
source is properly controlled. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (“When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp”).
Appellants also contend that the Examiner erred in rejecting not only
claim 21 but all the other claims on appeal, because “there is no rationale for
modifying the Right/Smith combination with the programmable current
supply of Munson as proposed” (App. Br. 8). In support of their contention,
Appellants argue that “there is no teaching or suggestion that the modified
LED alarm device of Right/Smith would be subject to the kind of electrical
disturbances and/or power supply variations that would require, or benefit in
any way from, the programmable current supply of Munson” (id. at 8-9).
But we agree with the Examiner’s underlying factual findings and ultimate
legal conclusion that it would have been obvious to use Munson’s
programmable current supply with a system of LEDs as taught by Smith “in
order to provide durable long lasting lighting with lower maintenance, due to
longer time between light source replacement, and to efficiently control
power to a lighting system to avoid electrical disturbances due to supply
voltage variations” (Ans. 4). Electronic devices like the LED alarm device
of Right/Smith are susceptible to supply voltage variations caused by power
surges and lightning.
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Appellants also contend that the Examiner erred in rejecting claim 10
as obvious because “the programmable logic 78 [of Munson] is not coupled
to any programmable current source and therefore cannot control any
programmable current source” (App. Br. 11). The Examiner found,
however, that “Munson controls the line on which current is found, [and]
such a line would be in effect a current source” (Ans. 10). We agree with
the Examiner. Munson teaches a current control 20 including programmable
logic 78 that “maintains a constant output current” (¶ [0027]; FIG. 3).
For these reasons, we find no error in the Examiner’s obviousness
rejections of claims 1-6, 8-13, and 18-25.

35 U.S.C. § 101 Rejection of Claims 18-20
The Examiner rejected claims 18-20 as being “directed to non-
statutory subject matter” (Ans. 8). The Examiner reasoned that “the claims
do not require use of a particular machine or transformation of a particular
article” (id.). Appellants argue that the Examiner erred because claim 18
“requires controlling a programmable current source, which is a physical
device, to provide a controlled constant current to a solid state visual alert
device, which is a transformation of a particular article” (App. Br. 7). We
agree with Appellants. The Examiner provided no response whatsoever to
Appellants’ argument, let alone explain how claim 18 could possibly not
require a statutory machine when it recites controlling a programmable
current source to provide a controlled constant current (see Ans. 8-11).

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DECISION
We affirm the Examiner’s decision rejecting claims 1-6, 8-13, and 18-
25 as obvious and reverse the Examiner’s decision rejecting claims 18-20 as
being directed to non-statutory subject matter.
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

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