Ex Parte Warner

Board of Patent Appeals and Interferences

Sep 24, 2009

10464369 (B.P.A.I. Sep. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS P. WARNER
____________
Appeal 2008-005168
Application 10/464,3691
Technology Center 3700
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Decided: September 25, 2009
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Before JAMES D. THOMAS, LEE E. BARRETT, and
LANCE LEONARD BARRY, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 21, 23-28, 31-35, and 38-43. Claims 1-20, 22, 29, 30, 36,
and 37 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).

1 Filed June 17, 2003, titled "Universal-Control Mechanism for
Dental Implements." The real party in interest is now Clutterfree Dental
Solutions, LLC. Communication received January 28, 2009.
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We reverse.
STATEMENT OF THE CASE
Related appeal
An appeal was decided in Appeal 2008-0782 on May 7, 2008,
involving continuation-in-part Application 10/730,678, reversing all of the
Examiner's rejections. That decision does not control this decision.

The invention
The background of the invention describes that in a dental operatory,
the dental professional must have the ability to control the functions of
several implements as well as selectively shift between them. Most
implements are controlled by a foot pedal, thereby freeing the hands of the
dental professional. Spec. ¶ [0010].2 A control mechanism, such as a foot
pedal is frequently provided for each implement. Spec. ¶ [0011]. When the
pedals are hard-wired, the presence of many foot pedals requires on the floor
presenting a safety issue, Spec. ¶ [0012], and pedals may also cause
confusion as to which pedal to use at a given time, Spec. ¶ [0015].
The invention relates to a universal-control mechanism for remotely
controlling operation of implements. As shown in Figure 3, a supply of
compressed air or electricity 44 is input to a control device, such as a foot
pedal 32, which is adapted to be activated by a user of the mechanism and to
control the operation of the implement 28. ¶ [0042]. In one embodiment,
compressed air 44 is provided to the foot pedal 32. A pneumatically
actuated electrical switch 46 is activated when the foot pedal is depressed,
sensor 48 detects closure of the switch 46 and activates the signal

2 We refer to paragraph numbers of the Specification as filed.
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generator 40. The signal generated by signal generator 40 is determined the
selector switch 38 which is pre-set by the operator. ¶ [0043]. Each
implement 28 is identified with a unique "address" and the signal generator
is capable of sending different addresses, identified by the position of the
switch 38, to the implements via the receiver unit 42. ¶ [0044]. The signal
may be sent via existing AC power lines or radio frequency (RF). ¶ 0045].
The signal is received by the receiver unit 42 and the implement having the
particular address is activated by a circuit 50. ¶ [0046]. The implement 28
selected by the user responds to depression and release by the user of the
pedal 32 by turning "on" and "off" via the signal generator. ¶ [0045].

The claims
Claim 21 is reproduced below:
21. A system for remotely controlling at least one device, comprising:
an RF signal generator configured to transmit a first RF signal
when a foot-operated pedal is activated and a first device is selected,
the first RF signal having a first address value associated with the first
device, the RF signal generator further configured to transmit a
second RF signal when the foot-operated pedal is activated and a
second device is selected, the second RF signal includes a second
address value associated with the second device; and
a first RF receiver unit configured to receive the first RF signal
and to actuate the first device when the first RF signal has the first
address value.

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The references

Murry 4,156,187 May 22, 1979
Beier 4,571,681 Feb. 18, 1986
Brant 5,970,457 Oct. 19, 1999

The rejections
Claims 21, 23-25, 27, 28, 31-35, 39, 40, 42, and 43 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Beier and Murry.
Claims 26, 38, and 41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Beier and Murry, further in view of Brant.

PRINCIPLE OF LAW
Obviousness requires that the combination of references teach or
suggest to a person of ordinary skill in the art all of the claim limitations.
35 U.S.C. § 103(a).

FACTS
Beier
Beier discloses a switching device for dental instruments. The device
uses switches 1, 2, 3, 4 which are opened when the associated instrument
(I-IV) is withdrawn from its holder. An instrument encoder 5 transmits a
2-bit address identifying the particular instrument to a control data
memory 7 and also to an associated memory 8, which each have a number of
storage registers corresponding to the number of instruments (in this case
four). Col. 3, ll. 41-51.
Each register in the control data memory 7 stores a data signal or
operating signal for a particular instrument. Col. 4, ll. 2-7.
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The data control memory 7 is connected through a data router 10 with
a control component 12. The control component 12 provides an analog
output voltage between 1 and 10 volts to the control elements 42, 43, 44, and
45 for the instruments I, II, III, and IV, respectively. Col. 5, ll. 59-68.
The control component 12 has two alternative voltage output
arrangements. Control 12 has a digital-to-analog (D/A) converter 70 that
receives a data signal for a selected instrument from control data memory 7
via the data router 10 and outputs a voltage between 1 and 10 volts which is
transmitted to input A of a summing circuit 71. A first voltage supply 16
having a foot operated actuator delivers a voltage of 0 volts in the median
position and -9 volts or +9 volts at the end positions to input A of summing
circuit 71. These voltages from supply 16 serve for correction of the control
data transmitted from the control data memory 7. The output from the
summing circuit 71 represents the actual operating signal for the present
instrument. Col. 4, l. 45 to col. 5, l. 2.
The output of the summing circuit 74 is connected to one input
terminal of a selector switch 74. The output of the switch 74 is connected to
a limit circuit 72 which limits voltage to a range of 1 to 10 volts. Col. 5,
ll. 3-16. The second input of the selector switch 74 is connected to a second
voltage supply 75, which may also have a foot operated actuator. The
actuator may produce a voltage between 1 and 10 volts. Col. 5, ll. 17-47.
Connected to the output of the limit circuit 72 is an analog-to-digital
(A/D) converter 73 which converts analog voltage (between 1 and 10 volts)
into a digital signal which is sent to the data router 10. Col. 5, ll. 48-58. The
digital signals into data router 10 can be stored in the control data memory 7
as operating data signal. Col. 6, ll. 27-34; col. 4, ll. 2-7.
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Beier describes "locked-ratio" encoder circuitry (memory 8,
encoder 27, display 60, decoder 31, locked ratio converters (LRCs) 32-36,
etc.) for setting and displaying value ranges for the different instruments,
col. 4, ll. 8-44, and an optional computer 61, col. 6, ll. 1-20, which are not
relevant to the present rejection.

Murry
Murry describes a device for applying irrigation, aspiration, and
ultrasonic power. Col. 1, ll. 12-21.
The device may be controlled by a wireless remote control switch 86
described as an "R.F. transmitter" (col. 14, ll. 32-33), as shown in Figure 2,
or a wired foot switch, as shown in Figure 3. Col. 14, ll. 13-17 and 31-35.
Figures 13 and 14 disclose the wireless transmitter and receiver,
respectively, for the system. The transmitter in Figure 13 comprises an
ultrasonic transducer 288 that emits first, second, and third frequencies
depending on the setting of contact 283 with contacts 285-287. The receiver
in Figure 14 has a ultrasonic transducer 292 which detects the ultrasonic
energy. The frequency is detected by one of three frequency detectors 293,
294, or 295 to control separate devices at outputs 297, 298, or 299. Col. 19,
l. 52 to col. 20, l. 11.
CONTENTIONS
The Examiner position is:
Beier shows all of the claimed structure and function except Beier
uses a wire connection to transmit the signals, and as such, does not
show using an RF signal generator or RF signal receiver unit. Murry
teaches that it is a known alternative to use a foot pedal that is either
wired, Fig. 3, or uses RF signals, Fig. 2 and column 14, lines 19-46. It
would [have] be[en] obvious to one of ordinary skill in the art to
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modify Beier to include a remote controller as shown by Murry in
order to make use of art known alternatives to control medical
equipment without being restricted by wires.

Final Rej. 2-3.
Appellant argues that the Examiner has not identified any proper
motivation for the proposed combination of references. It is noted that an
objective of Beier is to supply a variable voltage level to the control
elements for variable control of the devices. Br. 5.3 It is noted that Murry
transmits ultrasonic energy at different frequencies, but that no information
values are transmitted in the ultrasonic energy. Id. at 6. Appellant argues
that if the transmitter and receiver of Murry were somehow combined with
Beier, the combination would destroy the functionality of the switching
arrangement in Beier because the Murry transmitter does not include any
information for variably controlling operation of the instruments in Beier
and the instruments could not be variably controlled. Id.; Reply Br. 4.
Appellant argues that "one skilled in the art would not be motivated to
replace the single electrical line in Beier with both an RF signal generator
and an RF receiver because the cost of doing so would dramatically
outweigh the cost of the single electrical line." Br. 6.
Appellant argues the Beier and Murry do not provide explicit teaching
of a radio frequency (RF) receiver unit as recited in independent claims 21,
31, and 39. Br. 7, 8-9, 10; Reply Br. 5. It is argued that it is not clear that
"R.F. transmitter" in Murry refers to a radio frequency transmitter, but even

3 We refer to the Substitute Appeal Brief filed November 13, 2006
(Br.), the Examiner's Answer entered August 17, 2007 (Ans.), and the Reply
Brief filed April 26, 2007 (Reply Br.).

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if it does, there is no explicit teaching of an RF receiver and Murry only
describes an ultrasonic receiver. Br. 7-8.
Appellants argue that Beier and Murry do not provide any teaching of
a first RF signal having a first address value associated with a first device
and a second RF signal having an address value associated with a second
device. Br. 8; Reply Br. 5. It is argued that the described ultrasonic signal
at a certain frequency in Murry is not an "address value." Br. 8.
Appellants argue that Beier and Murry do not provide any teaching of
an RF receiver unit configured to receive the first RF signal and to actuate
the first device in response to the first address value. Br. 9.

ISSUE
Based on the contentions, the issue is broadly stated as: Has Appellant
shown that the Examiner erred in concluding that the combination of Beier
and Murry would have made obvious the claimed subject matter?

CLAIM INTERPRETATION
We interpret claim 21 to require: (1) an RF signal generator capable of
transmitting a first RF signal having a first address and a second RF signal
having a second address; and (2) a first RF receiver unit to receive the first
RF signal actuating a first device when the first RF signal has the first
address value. In particular, the "foot-operated pedal" and structure to detect
when the pedal is activated are not part of claim 21, but are recited in
claim 24. Also, the structure for selecting the first and second devices is not
part of claim 21, but it recited in claim 25. Nevertheless, the RF signal
generator must be capable of responding to these signals.

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ANALYSIS
This appeal may be decided on the basis of the common limitations in
independent claims 21, 31, and 39.
The Examiner's motivation to combine is unclear because it is not
clear how the Examiner proposes to modify Beier to arrive at the claimed
invention. In particular, the rejection does not explain where the RF
transmitter of Murry is proposed to be located in Brier or how it is intended
to operate. The fact that Beier has multiple instruments, each with its own
2-bit address, and has foot operated controls is of course, very relevant, but
alone does not explain the rejection. In addition, the rejection does not
address the limitation of "address values."
Murry describes that the wireless remote control switch 86 may be a
"R.F. transmitter." Col. 14, ll. 32-33. We agree with the Examiner's
findings (e.g., Ans. 6-7) that this teaches a radio frequency (RF) transmitter,
and that an RF transmitter inherently require an RF receiver to receive the
signals to be operable. Appellant's arguments (Br. 7-8, 10) that the term
"R.F." does not necessarily stand for radio frequency, and that even if it
does, Murry would not be functional because there is no teaching of an RF
receiver, which fails to account for the level of knowledge in the art. One of
ordinary skill in the art would have understood "R.F." to indicate the type of
wireless transmitter, i.e., radio frequency, as opposed to ultrasonic or
infrared or sound, and would have known (as did any ordinary person who
ever used a TV or garage door remote control) that remote control cannot
work without a transmitter and a complementary receiver. Murry later
describes a transmitter and receiver using ultrasonic signals. Col. 19, l. 52 to
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col. 20, l. 12. We find that Murry suggests that the RF signals would operate
at different frequencies, as explained with respect to the ultrasonic signals.
The first problem is that Examiner does not explain how the discrete
frequencies in Murry constitute "address values." Appellant argues that the
frequencies do not have "address values." Br. 8, 10. The Specification
describes that the "receiver unit 42 can hold 256 different addresses,"
¶ [0044], which implies an 8-bit digital address. The Specification also
describes using "X10" communication, which was a well-known home
automation standard for controlling devices by transmitting information by
radio frequency bursts representing digital data which consists of an address
and a command sent from a controller to a controlled device. We do not
know if the Examiner assumes that the discrete frequencies in Murry are
"addresses" or if the Examiner assumes (without expressly stating so) that
the transmitter/receiver in Murry could be modified to transmit/receive the
digital addresses in Beier. Thus, the first problem is that it has not been
shown that Murry transmits "addresses."
The switches 1-4 in Beier indicate which instrument is picked up and
best correspond to Appellant's disclosed selector switch 38. The encoder 5
produces a 2-bit address, which is applied to the control data memory 7, and
the encoder 5 seems to best correspond to Appellant's disclosed signal
generator 40 because it produces a signal with an address of a selected
instrument. After this point, the analysis becomes problematic because the
Examiner has not explained how Beier should be modified. The
independent claims recite that the RF signal generator transmits one of a first
or second RF signal when a "foot-operated pedal is activated" and the first or
second device is selected. If the encoder 5 and wire 6 in Beier were replaced
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by an RF transmitter and receiver as taught in Murry, this RF transmitter
would transmit whether or not the foot-operated pedal for voltage supplies
16 and 75 are activated, not only when the pedal is activated.
Part of the difficulty in the analysis is that all of the control elements
(CEs) 42-45 for devices I-IV in Beier are actuated by a single analog voltage
line 100 from the limit circuit 72 in the control component 12. That is, Beier
does not selectively actuate the devices I-IV individually by wires that could
be replaced by RF transmitter/receiver actuation. When one of the
switches 1-4 is opened, the 2-bit address generated does not actuate a control
element, but is only used to access operating data in a register of control data
memory 7 to be sent to the D/A converter 62 to generate a selected operating
voltage for that device. To meet the claim limitation that the RF signal
generator transmits one of a first or second RF signal when a "foot-operated
pedal is activated," there needs to be some connection between the
transmitter and the foot pedal. Appellant argues that:
a single electrical line extends from the foot actuated supply 75 to the
control component 12. Applicant submits that one skilled in the art
would not be motivated to replace the single electrical line with both
an RF signal generator and an RF receiver because the cost of doing
so would dramatically outweigh the cost of the single electrical line.

Br. 6. The Examiner replies that cost versus advantages is a matter of
opinion and one skilled in the art would be motivated to use remote control
for its known advantages. Ans. 5. This still does not explain how the
Examiner proposes to modify Beier.
It seems that the simplest way to modify Beier to meet the claim
limitations is to provide: (1) an actuating circuit associated with at least one
of the control elements which would be actuated when a first RF receiver
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receives a first address value (or on two control elements for claim 39);
(2) an RF transmitter at the instrument encoder 5 that transmits the 2-bit
address to an RF receiver for actuating an actuating circuit (an RF
transmitter capable of transmitting two addresses and two RF receivers for
claim 39); and (3) some connection between one of the foot actuated power
supplies 16, 75 that activates the RF transmitter when the foot pedal is
activated. There is no explanation of how or why this should be done in the
rejection. Vague assertions about replacing wires with an RF transmitter
and receiver are not sufficient to meet the specific claim limitations. Thus,
we agree with Appellant that the rejection is deficient because it does not
provide specific motivation to modify the references to arrive at the claimed
invention, and because the Examiner has not stated how the combination of
references teaches transmitting "address values."

CONCLUSION
Appellant has shown that the Examiner erred in concluding that the
combination of Beier and Murry would have made obvious the claimed
subject matter. The rejection of independent claims 21, 31, and 39, and
dependent claims 23-25, 27, 28, 32-35, 40, 42, and 43, under 35 U.S.C.
§ 103(a) is reversed. Brant is not applied to teach any of the missing
limitations of Beier and Murry and accordingly, the rejection of dependent
claims 26, 38, and 41 under 35 U.S.C. § 103(a) is reversed.

REVERSED

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erc

John Buckert
36612 Tulane Drive
Sterling Heights MI, 48312