Ex Parte WarnerDownload PDFBoard of Patent Appeals and InterferencesSep 24, 200910464369 (B.P.A.I. Sep. 24, 2009) Copy Citation 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 ____________ Decided: September 25, 2009 ____________ 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. Appeal 2008-005168 Application 10/464,369 2 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. Appeal 2008-005168 Application 10/464,369 3 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. Appeal 2008-005168 Application 10/464,369 4 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. Appeal 2008-005168 Application 10/464,369 5 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. Appeal 2008-005168 Application 10/464,369 6 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 Appeal 2008-005168 Application 10/464,369 7 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.). Appeal 2008-005168 Application 10/464,369 8 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. Appeal 2008-005168 Application 10/464,369 9 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 Appeal 2008-005168 Application 10/464,369 10 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 Appeal 2008-005168 Application 10/464,369 11 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 Appeal 2008-005168 Application 10/464,369 12 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 Appeal 2008-005168 Application 10/464,369 13 erc John Buckert 36612 Tulane Drive Sterling Heights MI, 48312 Copy with citationCopy as parenthetical citation