Ex parte Sievers

Board of Patent Appeals and Interferences

Jan 28, 2000

08215205 (B.P.A.I. Jan. 28, 2000)

Application for patent filed March 21, 1994. According1
to appellant, this application is a continuation of
Application No. 07/988,730, filed December 10, 1992, now
abandoned; which is a continuation-in-part of Application No.
07/809,388, filed December 17, 1991, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RICHARD L. SIEVERS
________________
Appeal No. 1996-1577
Application No. 08/215,2051
________________
ON BRIEF
________________
Before JERRY SMITH, BARRETT and LALL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1996-1577
Application No. 08/215,205
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This is a decision on the appeal under 35 U.S.C. §
134 from the examiner’s rejection of claims 1, 2, 5-8, 11-13,
18 and 19. Claims 3, 4, 9, 10, 14 and 15 have been indicated
as containing allowable subject matter. Claims 16 and 17 have
been canceled. An amendment after final rejection was filed
on
July 10, 1995. This amendment has not been officially
entered, and the entry or nonentry of this amendment has never
been communicated to appellant. The appeal brief includes the
claims in amended form. The examiner’s answer indicates both
that the appellant’s statement of the status of amendments
after final rejection is incorrect [answer, section (2)] and
that the copy of the claims contained in the brief is correct
[id., section (6)]. Since the noted amendment only makes minor
corrections of form to the claims, our decision is not
affected by whether or not the amendment has been entered by
the examiner.
The disclosed invention pertains to an apparatus for
dimming a plurality of parallel connected gas discharge lamps.
A complete AC supply voltage waveform is applied to each
ballast of the gas discharge lamps upon initial application of
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power or upon momentary interruption of power. The AC supply
voltage waveform applied to the ballasts is progressively
reduced in response to control signals to act as a dimmer.
The reduced AC supply voltage is then applied to each of the
lamp ballasts after the control signals are removed.
Representative claim 1 is reproduced as follows:
1. An apparatus for dimming a plurality of parallel
connected gas discharge lamps wherein each of said lamps
includes a ballast, comprising:
first means in response to a first set of control signals
for applying an entire voltage waveform of an AC supply
voltage to each ballast of said lamps upon the initial
application or the momentary interruption of power to said
dimming apparatus;
second means in response to a second set of control
signals for progressively reducing said AC supply voltage
applied to each of said ballasts from said entire voltage
waveform to a minimum portion of each half-cycle; and
means for applying reduced AC supply voltage to each of
said ballasts in response to the deactivation of said second
set of control signals.

The examiner relies on the following references:
Helmuth 3,944,876 Mar. 16, 1976
Niimi 4,904,998 Feb. 27, 1990
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Application No. 08/215,205
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Sievers 4,950,963 Aug. 21, 1990
Claims 1, 2, 5, 6, 18 and 19 stand rejected under
35 U.S.C. § 102(b) as anticipated by, or in the alternative,
under 35 U.S.C. § 103 as unpatentable over Helmuth. Claims 7
and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Helmuth in view of Niimi. Finally, claims
11-13 stand rejected under 35 U.S.C. § 103 as unpatentable
over Helmuth in view of Sievers.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the prior
art evidence relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
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Application No. 08/215,205
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rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon does not fully meet
nor render obvious the invention as set forth in claims 1, 2,
5-8, 11-13, 18 and 19. Accordingly, we reverse.
We consider first the rejection of independent claim 1
on the alternative grounds of 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103 based on Helmuth. With respect to the rejection under 35
U.S.C. § 102, 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.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228
(1984); W.L. Gore and Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
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support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem from
some teaching, suggestion or implication in the prior art as a
whole or knowledge generally available to one having ordinary
skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins
& Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664
(Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
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applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
The examiner indicates how he reads claim 1 on the
disclosure of Helmuth and, alternatively, why the invention of
claim 1 would have been obvious over Helmuth [answer, pages 3-
5]. A key portion of the examiner’s rejection is based on the
examiner’s position that several limitations of claim 1 relate
to an intended use of the apparatus or to “futuristic”
limitations which may not occur. According to the examiner,
these claim limitations are not entitled to patentable weight
[id., page 5].
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Appellant argues that the apparatus of claim 1 is
recited in means plus function form and that the examiner has
failed to properly consider the functional language of claim 1
[brief, pages 3-6]. We agree with appellant.
The examiner frequently defines appellant’s invention
as the application of an entire voltage waveform to a lamp
followed by application of a reduced voltage to the lamp and
ballast [answer, pages 9 and 12]. This simplistic reduction
of appellant’s invention ignores some of the limitations
clearly set forth in claim 1. The claimed first means must
operate both in response to initial application of power to
the lamps or in response to a momentary interruption of power
to the lamps to provide a specific voltage to each ballast of
the lamps as set forth in appellant’s specification. We fail
to see how Helmuth performs the function of the first means
under both conditions as disclosed and claimed. The claimed
second means progressively reduces the AC supply to each
ballast. Helmuth does not even disclose a plurality of lamps
and ballasts. The claimed third means maintains the
application of the reduced AC supply voltage even when the
signals which initiated the reduction are removed. We fail to
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Application No. 08/215,205
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see how this function is performed in Helmuth using the
control signals as defined by the examiner in the rejection.
Thus, we agree with appellant that the examiner has
ignored specific language of claim 1 in making the rejections.
Since the examiner has not properly considered the scope of
independent claim 1, he has failed to establish a prima facie
case of anticipation or obviousness. Therefore, we do not
sustain the examiner’s rejection of independent claim 1 under
either
35 U.S.C. § 102 or § 103. Since all the dependent claims
depend from claim 1, we also do not sustain the rejection of
any of the dependent claims as well based on Helmuth alone.
Although the teachings of Niimi or Sievers are additionally
applied against claims 7, 8 and 11-13, neither Niimi nor
Sievers overcomes the basic deficiencies of Helmuth discussed
above. Therefore, we also do not sustain the rejection of
these dependent claims under
35 U.S.C. § 103.
In conclusion, we have not sustained any of the
examiner’s rejections of the claims. The decision of the
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Application No. 08/215,205
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examiner rejecting claims 1, 2, 5-8, 11-13, 18 and 19 is
reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
)
LEE E. BARRETT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
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Appeal No. 1996-1577
Application No. 08/215,205
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