Ex Parte Sundell

Board of Patent Appeals and Interferences

Apr 13, 2011

11157038 (B.P.A.I. Apr. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte INGVAR SUNDELL
_____________

Appeal 2010-002197
Application 11/157,038
Technology Center 2800
______________

Before ROBERT E. NAPPI, CARL W. WHITEHEAD Jr., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

Dissenting Opinion filed by Baumeister, Administrative Patent Judge.

DECISION ON APPEAL
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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 4, 6, 7, 9 through 11, and 13 through 24.
We affirm.

INVENTION
The invention is directed to an automatic darkening filter used in a
shield to protect a welder from incident light. See Specification 1-2. Claim
1 is representative of the invention and reproduced below:
An automatic darkening protective shield, comprising:
an ADF helmet;
a switchable filter mounted in the ADF helmet, said switchable filter
capable of changing from a light state to a dark state in response to a control
signal;
a switchable filter control unit capable of generating and sending the
control signal to the switchable filter in response to information indicative of
presence of incident light; and
a power management control unit that controls the switchable filter
control unit based on whether a signal indicative of movement satisfies a
threshold condition;
wherein if the threshold condition is satisfied, the power management
control unit activates the switchable filter control unit causing it to enter an
ON state, in which the switchable filter control unit generates and sends the
control signal to the switchable filter indicative of presence of incident light;
wherein if the threshold condition is not satisfied, the power
management control unit causes the switchable filter control unit to remain
in or return to an OFF state, in which the switchable filter control unit does
not generate and send the control signal to the switchable filter indicative of
presence of incident light.

REFERENCES
Wenstrand US 2004/0155860 A1 Aug. 12, 2004
Fergason US 2005/0001155 A1 Jan. 6, 2005

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REJECTION AT ISSUE
The Examiner has rejected claims 1 through 4, 6, 7, 9 through 11, and
13 through 24 under 35 U.S.C. § 103(a) as being unpatentable over Fergason
in view of Wenstrand. Answer 5-7.1

ISSUES
Appellant argues on pages 7 through 12 of the Brief2 that the
Examiner’s 35 U.S.C. § 103(a) rejection is in error. Appellant’s contentions
present us with the following issues:
1) Did the Examiner err in combining Fergason and Wenstrand
because, as asserted by Appellant, they constitute non-analogous art?
2) Did the Examiner err in combining Fergason and Wenstrand
because, as asserted by Appellant, the combination would change a principle
operation of Fergason?
3) Did the Examiner err in combining Fergason and Wenstrand
because, as asserted by Appellant, Fergason teaches away from the
combination?
4) Did the Examiner err in finding that the combination of Fergason
and Wenstrand teaches control of a switchable filter based upon whether a
signal of movement satisfies a threshold?

1 Throughout this decision we refer to the Examiner’s Answer dated
September 4, 2009.
2 Throughout this decision we refer to Appellant’s Brief filed July 6, 2009,
and Reply Brief filed November 4, 2009.
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ANALYSIS
First issue:
Appellant’s arguments directed to the first issue have not persuaded us
that the Examiner erred in combining Fergason and Wenstrand. Appellant’s
arguments directed to this issue center on Fergason being directed to an
auto-darkening lens for welding protection and Wenstrand being directed to
a computer mouse. Thus, Appellant concludes that they solve different
problems and as such are non-analogous art. Brief 9; Reply Brief 2-3.
Appellant also points to the different classifications of the patents in the
patent classification system to further support the non-analogous argument.
The Examiner responds to Appellant’s arguments by finding that both
references are concerned with conservation of energy through the use of a
sleep mode. Answer 8. Based upon this finding the Examiner considers that
the skilled artisan would consider the teachings of both references to seek to
prolong battery life. Answer 8. We concur with the Examiner’s
conclusions. The test for non-analogous art is first whether the art is within
the field of the inventor’s endeavor and, if not, whether it is reasonably
pertinent to the problem with which the inventor was involved. In re Wood,
599 F.2d 1032, 1036 (CCPA 1979). A reference is reasonably pertinent if,
even though it may be in a different field of endeavor, it logically would
have commended itself to an inventor’s attention in considering his problem
because of the matter with which it deals. In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992). Here, the Examiner has shown that both references include
a sleep mode that is used to conserve power. Answer 5, 8. Appellant’s
claimed off state is also relied upon to conserve power. Specification 5.
Thus, even though the Wenstrand teaching is from a different field of
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endeavor, it is directed to a problem that was presented in Fergason’s
invention’s and the inventor’s device. Thus, Appellant has not persuaded us
that the Examiner erred in combining Fergason and Wenstrand because, as
asserted by Appellant, they constitute non-analogous art.

Second issue:
Appellant’s arguments directed to the second issue have not
persuaded us that the Examiner erred in combining Fergason and Wenstrand.
Appellant’s arguments directed to this issue center on Fergason being
directed to a fast acting auto-darkening lens and that modifying Fergason
would slow down the shutter’s switching speed. Brief 10; Reply Brief 5.
The Examiner responds to Appellant’s arguments by finding that
combining Fergason with Wenstrand will not reduce Fergason’s lens
darkening reaction time. Answer 9. The Examiner bases this on the finding
that Fergason discusses an example where the helmet is in a sleep mode
when removed from the user’s head and placed on a table, and therefore by
utilizing Wenstrand’s motion control activated wakeup there would not be a
delay of the darkening of the helmet lens. Answer 9. The Examiner further
notes that the combination would increase safety by prolonging battery life.
Answer 9. We concur with the Examiner’s finding. While we recognize
that the modification would, as Appellant states “eliminate the shutter’s
ability to respond to the sensing of incident light when it is in the OFF state”
we do not consider this change to the principal operation of the device.
Brief 10. Fergason operates to block the light to the person welding, and
recognizes that when not in use the device need not operate. See ¶ [0064].
As stated by the Examiner, when the user places Fergason’s helmet on their
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head, they will surely move the helmet, which would be sensed by a motion
sensor, and permit the light sensor to become active and darken the filter as
needed (e.g. the modification device will still function to block the light for
the person welding). Answer 9-10. Thus, Appellant has not persuaded us
that the Examiner erred in combining Fergason and Wenstrand because the
combination would change a principle operation of Fergason.

Third issue:
Appellant’s arguments directed to the third issue have not persuaded
us that the Examiner erred in combining Fergason and Wenstrand.
Appellant’s arguments directed to this issue center on Fergason, by teaching
that the lens goes to the dark state quickly, teaching away from the
modifying the device to include the off state as claimed. Brief 11.
The Examiner responds to Appellant’s arguments by finding that
using light to wake up from sleep mode is not essential to Fergason’s device
and as such does not teach away. Answer 11. We concur with the
Examiner.
Our reviewing court has said:
[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citing United States v.
Adams, 383 U.S. 39, 52 (1966)). However, a reference that “teaches away”
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does not per se preclude a prima facie case of obviousness, but rather the
“teaching away” of the reference is a factor to be considered in determining
unobviousness. Id.
Appellant has not persuaded us that the teachings in Fergason would
discourage the skilled artisan from including other methods of conserving
power. Further, as discussed above, we do not find that the principle
operation of Fergason would be changed by the modification.
Thus, Appellant has not persuaded us that the Examiner erred in
combining Fergason and Wenstrand because, as asserted by Appellant,
Fergason teaches away from the combination.

Fourth issue:
Appellant’s arguments directed to the fourth issue have not persuaded
us that the Examiner erred in finding that the combination of Fergason and
Wenstrand teaches control of a switchable filter based upon whether a signal
of movement satisfies a threshold. Appellant’s arguments directed to this
issue center on Fergason not including a teaching that the switchable filter is
controlled based upon movement and Wenstrand not teaching using
information indicative of movement to activate/deactivate another
functionality unrelated to movement. Brief 12.
The Examiner finds that Wenstrand teaches switching on a device in
response to a threshold motion condition. Answer 5, 12. Further, the
Examiner concludes that combining the sensing of motion to wake up the
system with the ADF helmet of Fergason would be an obvious modification.
We concur with the Examiner’s conclusion. We disagree with Appellant’s
argument that Wenstrand does not use the signal indicative of movement to
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activate/deactivate another functionality unrelated to sensing movement.
Wenstrand teaches that the sensing of movement is used to wake up
components of the mouse, including an RF(radio frequency) source, which
is not related to sensing of movement. ¶¶ [0045]-[0046]. Thus, Wenstrand
contemplates that the sensing of movement is used to activate/deactivate
functionality unrelated to sensing movement. Accordingly, Appellant has
not persuaded us that the Examiner erred in finding that the combination of
Fergason and Wenstrand teaches a control of a switchable filter based upon
whether a signal of movement satisfies a threshold.

ORDER
The decision of the Examiner to reject claims 1 through 4, 6, 7, 9
through 11, and 13 through 24 is affirmed.
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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BAUMEISTER, Administrative Patent Judge, DISSENTING:
Each of the independent claims specifies a sequence wherein
activation of a motion detecting power management control unit provides a
threshold signal that permits the protective shield's light-activated switchable
filter control unit to then function. Of these elements, Fergason only
discloses the light detector. Wenstrand only discloses that a motion detector
can be used as a threshold wake-up/activation sensor for waking itself up
(the motion detecting circuitry) and also for waking up other circuits of a
system related to the operation of a motion detector (a mouse). Even if
Wenstrand were to be interpreted more broadly, the broadest reasonable
interpretation is that Wenstrand teaches that motion detection circuitry can
serve as an activation sensor for waking up some other circuits in general.
The Examiner notes Fergason’s disclosure that the welding helmet
may be placed on a table during a break time (Ans. 9), and the Examiner
further recognizes that a helmet must necessarily be moved from the table
before it can be used again (id.). From these facts, the Examiner concludes
that motivation existed to use a motion detector a threshold sensor
specifically for waking up the helmet’s light detection circuitry (Ans. 9-10).
The problem with this reasoning is that Fergason, as opposed to
Appellant or the Examiner, does not actually recognize the inherent fact that
a helmet must necessarily be moved from a break table before it is again
used, much less recognize that a motion detector can therefore be used as a
power saving measure to take advantage of this inherent fact. Wenstrand, in
turn, only recognizes that a motion detector can be used as a threshold
activation sensor within a larger system that is still generally related to
motion detection (a mouse). Wenstrand does not disclose or recognize that a
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motion detector may serve as a threshold activation sensor within either (i) a
system completely unrelated to motion detection, or (ii) a system specifically
directed to light detecting circuitry.
This is not to say that no prior art could only render the present claims
unpatentable unless it anticipates the claims under 35 U.S.C. § 102. For
example, a proper § 103 obviousness rejection conceivably could have been
based upon combining Fergason with some hypothetical secondary reference
directed to a perimeter defense system wherein a motion detector is used to
activate a battery-powered light sensor. This is not to say that any such art is
known to exist or that the discovery of such prior art would necessarily be
sufficient to render the present claims obvious. The point is simply that the
nexus between Fergason and Wenstrand is not strong enough to serve as a
reason to combine the teachings in the manner proposed by the Examiner.
Based on the prior art that actually is of record, the Examiner’s stated
rationale (for saving battery power during break time) appears to be gleaned
only from the benefit of Appellant’s disclosure. There is no independent
basis in the record for why one would have thought of using the mouse’s
motion detection circuitry specifically for waking up light-sensing circuitry.
That is, the obviousness rejection is a product of impermissible hindsight.
For these reasons, I respectfully dissent.

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