Ex Parte Xu et al

Patent Trial and Appeal Board

Mar 5, 2013

11696772 (P.T.A.B. Mar. 5, 2013)

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.
11/696,772 04/05/2007 Jian Xu 075017-0277 5106
48329 7590 03/05/2013
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
MAI, TIEN HUNG
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
03/05/2013 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 JIAN XU and JEFFREY IOTT
____________

Appeal 2010-006979
Application 11/696,772
Technology Center 2800
____________

Before BRUCE R. WINSOR, BARBARA A. BENOIT, and
JAMES B. ARPIN, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1 and 3-24, which constitute all the claims pending in the application.
Claim 2 has been canceled. App. Br. 2. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

Appeal 2010-006979
Application 11/696,772

2
STATEMENT OF THE CASE
Appellants’ invention stops dimming of the power to an electrical
outlet when an inductive load is sensed. See generally Abstract. This
prevents damage to the load. Id. Claim 11 is illustrative and reads as
follows with key disputed limitations emphasized:
11. A method of operating a lighting control circuit comprising
the steps of:
providing a dimmer circuit, and dimming the power provided to
an electrical outlet; and
sensing the presence of an inductive load in the electrical outlet
by identifying a voltage spike and stopping dimming power when an
inductive load is sensed.
The Rejections
1. The Examiner rejected claims 1, 9-11, 22, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Schanin (US 5,239,255; issued Aug. 24, 1993)
and Young (US 5,838,127; issued Nov. 17, 1998). Ans. 3-5.
1

2. The Examiner rejected claims 3-6 and 12 under 35 U.S.C. § 103(a)
as unpatentable over Schanin, Young, and Kadwell (US 5,365,146; issued
Nov. 15, 1994). Ans. 5-7.
3. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Schanin, Young, Kadwell, and Hudson (US 6,940,416 B2;
issued Sept. 6, 2005). Ans. 7.
4. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Schanin, Young, Kadwell, and Kimura (US 5,189,638;
issued Feb. 23, 1993). Ans. 7-8.

1
Throughout this opinion, we refer to the Appeal Brief filed October 8, 2009
(App. Br.), the Examiner’s Answer mailed January 7, 2010 (Ans.), and the
Reply Brief filed March 5, 2010 (Reply Br.).
Appeal 2010-006979
Application 11/696,772

3
5. The Examiner rejected claims 13, 14, 21, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Schanin, Young, and Sid (US 7,355,523 B2;
filed Apr. 15, 2004). Ans. 8-9.
6. The Examiner rejected claims 15-18 under 35 U.S.C. § 103(a) as
unpatentable over Schanin, Young, Sid, and Kadwell. Ans. 10.
7. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Schanin, Young, Sid, Kadwell, and Hudson. Ans. 10-11.
8. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Schanin, Young, Sid, Kadwell, and Kimura. Ans. 11-12.
OBVIOUSNESS REJECTION OVER SCHANIN AND YOUNG
Claims 1, 10, 11, 22, and 23
Regarding illustrative independent claim 11, which Appellants argue
with claim 1 (App. Br. 5-6), the Examiner concludes Schanin and Young
collectively teach or suggest stopping dimming power when an inductive
load is sensed. Ans. 4-5. The Examiner relies on Schanin for sensing the
presence of an inductive load in the electrical outlet by identifying a voltage
spike. Ans. 4-5. The Examiner relies on Young’s control circuit configured
to compare an output voltage with an under-voltage limit, and, if the output
voltage is below the limit, the control circuit disables a motor, thus stopping
dimming an electrical output in an undervoltage condition. Ans. 5. Further,
the Examiner concludes that it would have been obvious to employ Young’s
under-voltage detection circuit in Schanin’s power modulation system
“because it is well known in the art that the motor could heat up or catch fire
if the power supply is in an under-voltage condition.” Ans. 5.
Appeal 2010-006979
Application 11/696,772

4
Appellants do not challenge the Examiner’s findings regarding the
recited components taught by Schanin or Young’s teaching of an under-
voltage detection circuit. See generally App. Br. 5-6; Reply Br. 1-2.
Instead, Appellants raise the following issues:
1. Under § 103, has the Examiner erred in rejecting claim 11
by finding that Schanin and Young collectively would have taught or
suggested “stopping dimming power when an inductive load is
sensed”?
2. Under § 103, is the Examiner’s reason to combine the
teachings of Schanin and Young supported by articulated reasoning
with some rational underpinning to justify the Examiner’s
obviousness conclusion?
Schanin describes a power modulation system that, when an inductive
load sensor detects the presence of an inductive load, switches modes to
protect the system and avert the necessity of a shutdown. See Schanin,
Abstract. Schanin’s “switch protector detects circuit-threatening conditions
and provides for a protective response thereto, which can include
shutdown.” Schanin, col. 4, ll. 3-5. Young discloses a control circuit 122
that disables a motor in response to a detected undervoltage condition.
Young, col. 8, ll. 63-67; Fig. 1. According to the Examiner, the combination
of Schanin’s system with Young’s control circuit would yield: “a dimming
circuit that uses [two modes] to avoid shut down when possible (e.g.
dimming a fluorescent lamp, [Schanin,] column 4, lines 65-66), but also
provides the ability to shut down based upon circuit threatening conditions
where avoiding shut down is not possible.” Ans. 12-13.
On the record before us, we are not persuaded of error in the
Examiner’s rejection of illustrative independent claim 11. Appellants argue
that the proposed combination would not stop dimming power when an
Appeal 2010-006979
Application 11/696,772

5
inductive load is sensed because “an inductive load does not correspond to
an overvoltage/undervoltage condition.” Reply Br. 2; see also App. Br. 5-6.
Appellants’ argument focuses unduly on the specific structures present in the
prior art, and Appellants seem to argue that the combination would require a
physical substitution of Schanin’s inductive load for Young’s undervoltage
condition. This is not persuasive because a determination of obviousness
based on teachings from multiple references does not require an actual,
physical substitution of elements from one reference into another reference.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . .”). Rather, the
test for obviousness is “what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Keller, 642 F.2d at 425.
We are not persuaded by Appellants’ arguments that the proposed
combination is improper because (i) the Examiner’s proposed combination
of Schanin and Young predictably uses prior art elements according to their
established functions—an obvious improvement and (ii) the Examiner has
articulated a reason with some rational underpinning for combining the
references (Ans. 9) to support a conclusion of obviousness. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants’ arguments regarding the proposed combination do not
squarely address – much less persuasively rebut – the Examiner’s position
(Ans. 12-13) that the combination would use two modes when possible to
avert a shutdown but would shut down when necessary to protect the circuit.
Contrary to Appellants’ contentions, the proposed modification would not
destroy Schanin’s functionality that provides power in two modes (App. Br.
Appeal 2010-006979
Application 11/696,772

6
5) or would yield a dimming circuit unable to dim a fluorescent lamp (App.
Br. 6; Reply Br. 2). We agree with the Examiner’s explanation of how the
teachings of Schanin and Young may be combined. Thus, we are not
persuaded by Appellants’ contention that the “disable” approach of Young is
not compatible with the continued operation approach of Schanin. App. Br.
6.
Nor are we persuaded that the disclosure of Schanin teaches away
from a shutdown in response to detection of an inductive load, as Appellants
contend (App. Br. 6; Reply Br. 2). The Examiner’s proposed modification
would not defeat Schanin’s objective of providing a protective response to
circuit-threatening conditions. Appellants have not provided adequate
evidence concerning Schanin that discredits the combination or would have
discouraged an ordinarily skilled artisan from combining stopping dimming
when an undervoltage condition is sensed (as taught by Young) with
Schanin’s teaching, to stop dimming when an inductive load is sensed.
We therefore sustain the rejection of (1) independent claim 11,
(2) independent claim 1 argued with claim 11, and (3) dependent claims 10,
22, and 23, which were not argued separately with particularity.
Claim 9
Claim 9, which depends from claim 1, recites that “the electrical
output is an electrical outlet.” The Examiner relies on Schanin’s disclosure
of a load 114 as inherently disclosing an electrical outlet to connect to the
load. Ans. 4. In response to Appellants’ challenge, the Examiner explains
that Schanin’s disclosure of an embodiment of a fluorescent lamp as a load
inherently discloses an electrical outlet because “some type of electrical
outlet would be necessarily present.” Ans. 13. Appellants assert, without
Appeal 2010-006979
Application 11/696,772

7
providing any evidence, that fluorescent lamps do not necessarily have an
outlet according to “[t]he commonly understood meaning of an electrical
outlet [as] a receptacle that receives the prongs that extend from a power
cord” because fluorescent lamps “are often hardwired into an AC circuit in a
home.” Reply Br. 3.
We are not persuaded. First, mere speculation unsupported by factual
evidence is entitled to little probative weight. Cf. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997). Moreover, Appellants’ unsupported assertion
contradicts a technical dictionary definition of an outlet as “[a] point on the
wiring system at which current is taken to supply utilization equipment.”
IEEE 100 THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS
778 (7th ed. 2000). Further, this IEEE definition of “outlet” supports the
Examiner’s conclusion that Schanin’s load (i.e., a fluorescent lamp)
necessarily discloses an electrical outlet.
Moreover, Appellants do not provide a definition in their
Specification that would otherwise limit the scope of the claim term
“electrical outlet” to a receptacle that receives the prongs that extend from a
power cord. Thus, the weight of the evidence on this record favors the
Examiner’s position that some type of electrical outlet would be necessarily
present in Schanin’s disclosure of a fluorescent lamp as an embodiment of a
load.
We therefore sustain the rejection of dependent claim 9.
Appeal 2010-006979
Application 11/696,772

8
OBVIOUSNESS REJECTION OVER SCHANIN,
YOUNG, AND KADWELL
Claim 3, which depends from claim 1, additionally recites that “a line
is provided parallel to the electrical output,” among other additional
limitations. The Examiner finds that Schanin teaches this feature in the line
having resistors R13 and R14 in Figure 6.

Figure 6 of Schanin above shows a line having resistors R13 and R14.
Appellants argue that, although the line in Figure 6 connects to a node
(N6) above load 114, the line is not connected to a node below load 114;
therefore, this line is not parallel to the electrical output from load 114.
Rather, Appellants assert that the line is connected to ground. In response,
the Examiner maintains that the line is in parallel to the electrical output
because the load is also connected to ground, while acknowledging that this
is not shown in Figure 6. Because the line having resistors R13 and R14 is
Appeal 2010-006979
Application 11/696,772

9
not shown to be connected to a node below load 114, and because Figure 6
does not show the load being connected to ground, we agree with Appellants
that the Examiner has not established that the line having resistors R13 and
R14 in Schanin’s Figure 6 is parallel to the electrical output from load 114.
We therefore do not sustain the rejection of (1) claim 3, (2) claims 4-6
which depend directly or indirectly from claim 3, and (3) claim 12, which
depends from independent claim 11 and also recites “a line is provided
parallel to the electrical output,” for similar reasons.
OBVIOUSNESS REJECTION OVER SCHANIN, YOUNG, AND SID
Regarding independent claim 13, Appellants repeat their arguments
regarding why Schanin and Young are not combinable. App. Br. 10. For
the reasons explained with regard to claim 11, we are not persuaded of error
in the Examiner’s combination of the teachings of Schanin and Young.
Appellants also argue that Sid, which is cited as disclosing plural
input members for directing a user control signal to a controller (Ans. 9), is
improperly combined with Schanin and Young because the Examiner (i)
does not provide support for the Examiner’s assertion that it is well known
that a remote control provides convenience, (ii) does not explain why one
would adapt the combination of Schanin and Young to include such a
feature, and (iii) does not explain how such a modification would be
accomplished. App. Br. 10.
We are not persuaded of Examiner error. Sid’s disclosure is directed
to a remote controlled lighting system. See Sid, Abstract, Title; see also
Ans. 9 (citing Sid, Figs. 3-5). The Examiner relied on Sid merely for the
limited purpose of teaching that input members of a remote control for
Appeal 2010-006979
Application 11/696,772

10
directing a user control signal to a controller were known to ordinarily
skilled artisans. Ans. 9. The Examiner’s proposed combination of Schanin,
Young, and Sid predictably uses prior art elements according to their
established functions—an obvious improvement, and the Examiner has
articulated a reason with some rational underpinning for combining the
references (Ans. 9) to support the conclusion of obviousness. See KSR, 550
U.S. at 418. Moreover, the Examiner correctly notes that a reason for
combining references need not be explicit in a reference. Ans. 15.
We therefore sustain the rejection of independent claim 13, and its
dependent claims 21, and 24, which were not separately argued with
particularity.
Regarding dependent claim 14, Appellants rely on their arguments
made with regard to claim 13. Appellants also repeat their arguments
discussed previously with respect to claim 9 concerning the recited
limitation “the electrical output is an electrical outlet.” For the reasons
discussed above with respect to claims 9 and 13, we find Appellants’
arguments unpersuasive. We therefore sustain the rejection of claim 14.
THE REMAINING OBVIOUSNESS REJECTIONS
Regarding the rejection of claim 7 as unpatentable over Schanin,
Young, Kadwell, and Hudson and the rejection of claim 8 as unpatentable
over Schanin, Young, Kadwell, and Kimura, the Examiner has not shown
that Hudson, Kadwell, or Kimura would remedy the deficiencies noted
above regarding claim 3, from which each of claims 7 and 8 indirectly
depend. Accordingly, we do not sustain the obviousness rejections of claims
7 and 8 for similar reasons.
Appeal 2010-006979
Application 11/696,772

11
Claims 15-18 have been rejected as unpatentable over Schanin,
Young, Sid, and Kadwell. Claim 15 requires providing a line parallel to the
electrical outlet, and claims 16-18 depend directly or indirectly from claim
15. For the reasons discussed above with respect to claim 3, we are
persuaded of Examiner error. Because the Examiner has not shown that Sid
or Kadwell would remedy the deficiencies of Schanin and Young noted
above with regard to claim 3, we do not sustain the rejection of claims 15-18
for similar reasons.
Claims 19 and 20 also depend indirectly from claim 15. Because the
Examiner has not shown that Hudson or Kimura would remedy the
deficiencies of Schanin, Young, Sid, or Kadwell noted above with regard to
claim 15, we do not sustain the rejection of claims 19 and 20 for similar
reasons.
CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1, 9-11, 13,
14, and 21-24 but did err in rejecting claims 3-8, 12, and 15-20.
ORDER
The Examiner’s decision rejecting claims 1, 9-11, 13, 14, and 21-24 is
affirmed. The Examiner’s decision rejecting claims 3-8, 12, and 15-20 is
reversed.

Appeal 2010-006979
Application 11/696,772

12
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-IN-PART

kis