`
`
`
`
`
`
`
`
`Case: IPR2018-01592
`Patent No.: 9,320,122
`
`EXHIBIT 1048
`
`PRIME WIRE & CABLE, INC.
`
` Petitioner,
`
`v.
`
`CANTIGNY LIGHTING
`CONTROL, LLC.
`
` Patent owner
`
`JASCO PRODUCTS, INC.
`
` Licensee
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`)
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`

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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addless. COMMISSIONER FOR PATENTS
`PO Box 1450
`Alexandria, Vingia 22313-1450
`wwwusptogov
`
`APPLICATION
`NUMBER
`
`FILING or
`371(0) DATE
`
`GRP ART
`UNIT
`
`
`
`
`
`F
`
`61/884,895
`
`09/30/2013
`
`FEE REC'D
`
`130
`
`47888
`HEDMAN & COSTIGAN, PC.
`1230 AVENUE OF THE AMERICAS
`7th floor
`NEW YORK, NY 10020
`
`ATTY.DOCKET.NO
`
`TOT CLAHVIS IND CLAIMS
`
`182-730A
`
`CONFIRMATION NO. 4751
`
`FILING RECEIPT
`
`lllllllllllllllllIllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllll
`00000006 2 2 07
`
`Date Mailed: 10/11/2013
`
`It will not be examined for patentability and will
`Receipt is acknowledged of this provisional patent application.
`become abandoned not later than twelve months after its filing date. Any correspondence concerning the application
`must include the following identification information: the U.S. APPLICATION NUMBER, FILING DATE, NAME OF
`APPLICANT, and TITLE OF INVENTION. Fees transmitted by check or draft are subject to collection. Please verify
`the accuracy of the data presented on this receipt. If an error is noted on this Filing Receipt, please submit
`a written request for a Filing Receipt Correction. Please provide a copy of this Filing Receipt with the
`changes noted thereon. If you received a "Notice to File Missing Parts" for this application, please submit
`any corrections to this Filing Receipt with your reply to the Notice. When the USPTO processes the reply
`to the Notice, the USPTO will generate another Filing Receipt incorporating the requested corrections
`
`lnventor(s)
`
`Applicant(s)
`
`Michael Stack, Wanaque, NJ;
`Grady Schenck, Walden, NY;
`Eric Chen, Ningbo City, SWITZERLAND;
`
`Michael Stack, Wanaque, NJ;
`Grady Schenck, Walden, NY;
`Eric Chen, Ningbo City, SWITZERLAND;
`
`Power of Attorney:
`Kathleen Costigan--56006
`
`If Required, Foreign Filing License Granted: 10/07/2013
`
`The country code and number of your priority application, to be used for filing abroad under the Paris Convention,
`is US 61/884,895
`
`Projected Publication Date: None, application is not eligible for pre-grant publication
`
`Non-Publication Request: No
`
`Early Publication Request: No
`** SMALL ENTITY **
`Title
`
`TWO-OUTLET DIGITAL TIMER
`
`Statement under 37 CFR 1.55 or 1.78 for AIA (First Inventor to File) Transition Applications: No
`page 1 of 3
`
`

`

`PROTECTING YOUR INVENTION OUTSIDE THE UNITED STATES
`
`Since the rights granted by a US. patent extend only throughout the territory of the United States and have no
`effect in a foreign country, an inventor who wishes patent protection in another country must apply for a patent
`in a specific country or in regional patent offices. Applicants may wish to consider the filing of an international
`application under the Patent Cooperation Treaty (PCT). An international (PCT) application generally has the same
`effect as a regular national patent application in each PCT-member country. The PCT process simplifies the filing
`of patent applications on the same invention in member countries, but does not result in a grant of "an international
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`
`Almost every country has its own patent law, and a person desiring a patent in a particular country must make an
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`
`LICENSE FOR FOREIGN FILING UNDER
`
`Title 35, United States Code, Section 184
`
`Title 37, Code of Federal Regulations, 5.11 & 5.15
`
`GRANTED
`
`if the phrase "IF REQUIRED, FOREIGN FILING
`The applicant has been granted a license under 35 U.S.C. 184,
`LICENSE GRANTED" followed by a date appears on this form. Such licenses are issued in all applications where
`the conditions for issuance of a license have been met, regardless of whether or not a license may be required as
`set forth in 37 CFR 5.15. The scope and limitations of this license are set forth in 37 CFR 5.15(a) unless an earlier
`license has been issued under 37 CFR 5.15(b). The license is subject to revocation upon written notification. The
`date indicated is the effective date of the license, unless an earlier license of similar scope has been granted under
`37 CFR 5.13 or 5.14.
`
`page 2 of 3
`
`

`

`This license is to be retained by the licensee and may be used at any time on or after the effective date thereof unless
`it is revoked. This license is automatically transferred to any related applications(s) filed under 37 CFR 1.53(d). This
`license is not retroactive.
`
`The grant of a license does not in any way lessen the responsibility of a licensee for the security of the subject matter
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`security or the export of technical data. Licensees should apprise themselves of current regulations especially with
`respect to certain countries, of other agencies, particularly the Office of Defense Trade Controls, Department of
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`Treasury (31 CFR Parts 500+) and the Department of Energy.
`
`NOT GRANTED
`
`No license under 35 U.S.C. 184 has been granted at this time, if the phrase "IF REQUIRED, FOREIGN FILING
`LICENSE GRANTED" DOES NOT appear on this form. Applicant may still petition for a license under 37 CFR 5.12,
`if a license is desired before the expiration of 6 months from the filing date of the application. If 6 months has lapsed
`from the filing date of this application and the licensee has not received any indication of a secrecy order under 35
`U.S.C. 181, the licensee may foreign file the application pursuant to 37 CFR 5.15(b).
`
`
`SelectUSA
`
`The United States represents the largest, most dynamic marketplace in the world and is an unparalleled location for
`business investment, innovation, and commercialization of new technologies. The US. offers tremendous resources
`and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation works to
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`
`page 3 of 3
`
`

`

`Doc Code: TR.PROV
`
`Document Description: Provisional Cover Sheet (5816)
`
`PTOISBI16 (11—08)
`Approved for use through 05/312015. OMB 0551 —0032
`US. Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number
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`Provisional Application for Patent Cover Sheet
`This is a request for filing a PROVISIONAL APPLICATION FOR PATENT under 37 CFR 1.53(c)
`
`lnventor(s)
`
`Inventor I
`
`
`
`
`Middle Name Family NameGiven Name City
`
`
`
`
`
`WANAQU E
`STACK
`MICHAEL
`
`
`Inventor 2
`
`Inventor 3
`
`
`
`
`
`
`Middle Name Family NameGiven Name City
`
`
`
`
`
`ERIC
`
`CHEN
`
`NINGBO CITY
`
`All Inventors Must Be Listed — Additional Inventor Information blocks may be
`generated within this form by selecting the Add button.
`
`Title of Invention
`
`TWO-OUTLET DIGITAL TIMER
`
`Attorney Docket Number (if applicable)
`
`182-730A
`
`Correspondence Address
`
`Direct all correspondence to (select one):
`
`® The address corresponding to Customer Number O Firm or Individual Name
`
`
`
`Customer Number 47888
`
`
`
`The invention was made by an agency of the United States Government or under a contract with an agency of the United
`States Government.
`
`
`
`(9 No.
`O Yes, the invention was made by an agency of the United States Government. The US. Government agency name is:
`
`0 Yes, the invention was under a contract with an agency of the United States Government. The name of the US.
`Government agency and Government contract number are:
`
`EFS - Web 1.0.1
`
`

`

`Doc Code: TR.PROV
`
`Document Description: Provisional Cover Sheet (5816)
`
`PTOISBI16 (11—08)
`Approved for use through 05/312015. OMB 0551 —0032
`US. Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number
`
`Entity Status
`Applicant asserts small entity status under 37 CFR 1.27 or applicant certifies micro entity status under 37 CFR 1.29
`
`(9 Applicant asserts small entity status under 37 CFR 1.27
`
`O Applicant certifies micro entity status under 37 CFR 1.29. Applicant must attach form PTO/SB/15A or B or equivalent.
`
`
`O No
`
`Warning
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`
`the provisional application.
`
`Signature
`
`Please see 37 CFR 1.4(d) for the form of the signature.
`
`
`Signature
`
`IKATH LEEN A. COSTIGAN/
`
`Date (YYYY-M M-DD)
`
`2013-09-30
`
`First Name
`
`KATHLEEN
`
`Last Name
`
`COSTIGAN
`
`Registration Number
`(If appropriate)
`
`56006
`
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`

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`

`

`182-730A
`
`TITLE
`
`TWO-OUTLET DIGITAL TIMER
`
`CROSS-REFERENCE TO RELATED APPLICATIONS
`
`Not Applicable
`
`STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR
`
`10
`
`DEVELOPMENT
`
`Not Applicable
`
`INCORPORATION-BY—REFERENCE OF MATERIAL SUBMITTED ON A
`
`15
`
`COMPACT DISK
`
`Not Applicable
`
`REFERENCE TO A MICROFICHE APPENDIX
`
`Not Applicable
`
`BACKGROUND OF THE INVENTION
`
`1) Field of the Invention
`
`This invention relates to a digital timer for controlling two outlets.
`
`2)Description of related art
`
`20
`
`25
`
`US 5,160,853 discloses an electronic timer for turning a single light on and off in
`
`response to programming information stored in a microprocessor.
`1
`
`

`

`SUMMARY OF THE INVENTION
`
`This invention provides a single programmable timer for independently turning two
`
`separate outlets on and off in response to a programmed schedule. The
`
`programmable timer includes an input device, a microprocessor and two switches.
`
`The input device provides programming information, consisting of switching time
`
`and which of the two outlets is to be switched on or off, to the microprocessor which
`
`stores the programming information. The microprocessor employs program logic
`
`that compares the programmed switching times to the current time and generates
`
`control signals to turn one or both outlets on or off as directed by the stored
`
`program. The two timing control signals in turn cause the two switches to turn their
`
`indicator lights on or off
`
`In one embodiment, the micro-processor and the switches are included within a
`
`housing which can be plugged into a grounded 120 volt wall outlet by way of a three
`
`pin plug that is disposed in one face of the housing. Power is received from the
`
`switches through two separate grounded 120 volt receptacles being disposed in
`
`opposite sides of the timer housing. A liquid crystal display is disposed in the
`
`housing face opposite the plug to provide a read out of the programming
`
`information, time of day, and on/off status of the two switches. Two LEDs are
`
`10
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`15
`
`

`

`disposed on the same face to provide an illuminated indication of switch status that
`
`can be viewed in darkness. The input device is disposed on the same face of the
`
`housing and includes a key matrix having a plurality of finger settable key type
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`programming switches. Information is programmed by pressing each key while the
`
`programming logic is in a particular programming mode. The input device, the
`
`status LEDS, and the liquid crystal display may be recessed into the face of the
`
`housing.
`
`DETAILED DESCRIPTION OF THE INVENTION
`
`10
`
`15
`
`20
`
`The invention provides a single programmable electronic timer which may be used
`
`to provide two timing signals for a variety of applications such as controlling power
`
`to two lights or other electrical loads. The timer may be set to independently turn
`
`each timing signal on or off as often as desired over the course the day. In the
`
`preferred embodiment the timer is included in a switching device for independently
`
`turning two separate outlets on and off accurately and precisely in a
`
`programmable sequence over time. There are also two keys that provide an override
`
`to the timer operation and allow independent manual control of the timing signals.
`
`The electronic timer of the invention may be plugged into any grounded 120 volt
`
`receptacle. When two lamps are plugged into the two receptacles in the timer both
`
`lamps can be independently controlled by the timer. The timer will turn each of the
`
`lights on or off automatically a number of times during the day depending on stored
`3
`
`

`

`programming information. The programmable timer also includes 2 keys that
`
`provide manual control of the lamps and a liquid crystal display which functions as
`
`a program read out, as a clock, and as an output switch indicator.
`
`The invention is programmed by depressing button-like programming keys which
`
`set mode, program, hour, minute, day, on time, off time, lamp to be controlled and
`
`reset conditions. The programmable switch also comes with a rechargeable battery
`
`which permits programming before plugging in. The rechargeable battery also
`
`powers the programmable timer during power outages. The programmable timer
`
`may be plugged into the wall using the grounded plug disposed in on surface of the
`
`invention that is opposite to the surface containing the display, illuminated LEDs
`
`and programming keys.
`
`FIG 1 is a front view of a programmable electronic timer according to the one
`
`embodiment of the invention. As shown in FIG.1, the timer 1 includes a front
`
`housing 2. The front housing 2 has a face 3 on which is mounted several other
`
`components of the timer including a programming input device 4, a display 5, an
`
`indicator for switch A function 6, and an indicator for switch B function 7. In the
`
`preferred embodiment the programming input device 4 consists of a plurality of
`
`depressible key type switches, referred to hereafter as the key matrix.
`
`10
`
`15
`
`

`

`The display 5 is a liquid crystal display in the preferred embodiment. The A switch
`
`indicator 6 and a B switch indicator 7 turn on to provide visual indication that the
`
`corresponding output is on.
`
`FIG. 2 is a side view of the electronic timer according to the invention. The
`
`programmable timer 1 includes a front housing 2 and a rear housing 8. The rear
`
`housing has disposed therein a three pin plug 9 for insertion into a standard 120
`
`volt receptacle. FIG. 1 shows the controlled output receptacle B10 which is
`
`disposed between the front housing 2 and the rear housing 8. FIG. 1 shows the
`
`controlled output receptacle All which is disposed on the opposite side from
`
`controlled output receptacle B10 . The receptacle for switch A11 is also disposed
`
`between the front housing 2 and the rear housing 8.
`
`The display 5 is recessed into the front housing 2 and the key matrix (enclosed
`
`within the broken lines) is disposed so that the keys protrude through the front
`
`housing 2 . An A switch indicator 6 is located in close proximity to the location of
`
`the A switch manual selection key 12 and a B switch indicator 7 is disposed near the
`
`location of the B switch manual selection key 13. Both indicator 6 and indicator 7
`
`are disposed so they protrude through the front housing 2.
`
`Front housing 2 and rear housing 8 contain control and switching circuits referred
`
`to hereinafter collectively as a timer control circuit 14. One embodiment of a timer
`
`control circuit according to the invention is shown in FIG. 3. The timer control
`5
`
`10
`
`15
`
`20
`
`

`

`circuit 14 in FIG. 3 receives 120 V AC power and independently provides 120V AC
`
`power to two separate outputs on a controlled basis.
`
`The structure and operation of circuit 14 includes voltage control circuitry, a
`
`microprocessor, a programmable input device and related circuitry, and two
`
`switching circuits.
`
`The microprocessor and programming circuits are used to selectively control the 2
`
`switching circuits, the programming input device provides time, daylight savings
`
`time, mode, switching device, Manual override and other programming control
`
`information to the microprocessor.
`
`10
`
`15
`
`The microprocessor provides 2 independent timer control output signals to the
`
`switch control circuits to turn two switches and their indicator lights on and off
`
`depending on the programming information stored in the microprocessor or
`
`manual override interrupts. Thus the circuit 14 can turn two independent lights on
`
`and off according to desired lighting objectives.
`
`Discussing FIG. 3 in more detail, it can be seen that a 120V 60 Hz input enters the
`
`timer through AC input plug 9 to lines 15 and 16. Line 15 is coupled to the input of
`
`a voltage drop circuit 21. Line 15 is tapped and coupled directly by line 17 to an
`
`input side of control switch A 19. An output side of control switch A 19 is connected
`
`by line 23 to the switched side of controlled receptacle All. A line 25 is tapped and
`
`

`

`coupled directly from line 16 to the non switched side of output receptacle A 11 and
`
`to the non switched side of output receptacle B 10. Line 15 is also tapped and
`
`coupled directly by line 22 to an input side of control switch B 20. An output side of
`
`control switch B 20 is connected by line 24 to the switched side of controlled
`
`receptacle B 10. Line 26 directly connects the ground pins of plug 9 and controlled
`
`outlet A 11 and controlled outlet B 10.
`
`Switch A 19 is controlled by switch A control circuit A27 which also controls
`
`indicator A6 turning the indicator on when the switch is closed. Switch control
`
`circuit A27 is in turn controlled by Timer A Control Signal from the microprocessor
`
`29. In the same manner, switch B20 is controlled by switch B control circuit 28
`
`which also controls indicator B 7 turning the indicator on when the switch is closed.
`
`Switch control circuit B 28 is, in turn, controlled by Timer B Control Signal from
`
`the microprocessor 29.
`
`Switch A control circuit A27 and switch B control circuit B28 can thus be
`
`independently controlled by timer control output A and timer control output B from
`
`microprocessor 29. Microprocessor 29 is controlled by programming inputs from
`
`key matrix 38 which corresponds to Key matrix 4 in Fig.1 and by its programming
`
`logic.
`
`The switch A control circuit A27, switch control circuit B28 and the microprocessor
`
`29 will require regulated voltage inputs. Therefore voltage control circuits are
`7
`
`10
`
`15
`
`20
`
`

`

`included between the 120 VAC input and inputs to switch A control circuit A27,
`
`switch B control circuit B28 and microprocessor 29. Consequently line 15 from AC
`
`input plug 9 is connected through voltage drop circuit 21 to one input of rectifier 30.
`
`Line 16 directly connects the AC input to the other input to rectifier 30. Rectifier
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`circuit 30 converts the AC input to DC. The output of rectifier 30 is coupled to a low
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`voltage regulator 31.
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`Low voltage regulator 31 maintains the DC voltage at a constant voltage. One power
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`output of the low voltage regulator 31 is coupled to inputs to switch A control
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`circuit A27 and to switch B control circuit B28 to provide power for operating
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`10
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`switch A control circuit A27 and switch B control circuit B28.
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`Another output of low voltage regulator 31 is coupled to additional circuitry which
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`provides more regulation to the voltage before it is supplied to the microprocessor
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`29.
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`A second power output from low voltage regulator 31 is provided to microcontroller
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`15
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`supply voltage regulator 32. Microcontroller supply voltage regulator 32 maintains
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`the input voltage to microprocessor 29 within a very narrow range. An output of
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`microcontroller supply voltage regulator 32 is coupled to a rechargeable power
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`supply/storage device 33. This rechargeable supply could be a battery or other large
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`capacity device.
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`The output of the rechargeable power supply/storage device 33 is coupled to the
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`input of a filter circuit 34. A first line output from the filter circuit 34 is coupled to
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`an input to the Microprocessor 29. A second line output from the filter circuit 34 is
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`coupled to an input of microprocessor 29 and to an input to reset key 35. Reset key
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`35 is bypassed by a capacitor 37 the second side of the reset key is coupled to an
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`input of microprocessor 29.
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`A liquid crystal display device 36 which corresponds to the display 10 in FIG.1 is
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`coupled to outputs from microprocessor 29.
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`10
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`15
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`Microprocessor 29 is controlled by programming inputs from Key matrix 38 which
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`corresponds to key matrix 4 in FIG. 1 and reset key 35. Microprocessor 29 includes
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`a memory (not shown). It should be understood that the rest key 35 may be
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`physically located in close proximity with the other switches in the key matrix 38.
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`The Key matrix 38 includes a plurality of finger settable programming switches. In
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`one embodiment of the invention each switch consists of a dome type button which
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`completes an electrical circuit when depressed. An input side of each switch is
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`connected to an output from the microprocessor 29 and an output side of each
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`switch is connected to an input to the microprocessor 29. Thus microprocessor 29
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`senses a complete circuit (ie a voltage change) when a particular switch is depressed.
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`Microprocessor 29 also has a first output that provides a timer A control signal to
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`switch A control circuit A27 and a second output that provides a timer B control
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`signal to switch B control circuit B28. The time A control signals cause the switch A
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`control circuit A27 to open switch A19 and turn off switch A indicator 6 or close
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`switch A19 and turn on switch indicator 6. The time B control signals cause the
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`switch B control circuit B28 to open switch B20 and turn off switch B indicator 7 or
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`close switch A20 and turn on switch indicator 7. This enables to processor to
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`selectively provide power to controlled AC outlet A11 and controlled AC outlet
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`B10.
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`The timer may be operated aeeording tn tire ioiiewing prneednre:
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`6* SET/TiME: tn set tire enrrent time
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`a [ + ] or [— ]: increase er iieerease time setting
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`’8 RNii: i’ress Random (tit/(iii? setting to aetivate randem
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`deiay for start or finish oi 8N periods.
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`a RESET: in this instanee tn reset, prese reset key with pointed objeet,
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`i.e. peneii. (Reset Timer before pregramming iirst time.)
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`t CTB: Cenntdewn indicates time ieit beiere appiianee is
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`tnrned oi’i’.
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`r MOBE: Mariam/Ante override
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`10
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`15
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`20
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`ii programming is interrnpted fer mere than 3% seeonds White setting ’i‘imer. nnit
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`wiii atttomatieaiiy revert to deianit mode. Preset time wiii be preserved.
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`10
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`Setting 'i‘ime:
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`if dismay does
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`not appear, ping unit into waii receptacie and charge battery
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`for 1 hour.
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`1. The user May remove the unit from the wall to begin programming.
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`11
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`2. To select 12 or 24 hour clock press and hold TIME key for around 3 seconds.
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`Release the time key when AM is in lower right corner to select 12 hour
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`clock. No AM in the corner indicates 24 hour clock.
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`3. Press and hold SET key for around 3 seconds until “Mo” display begins
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`flashing. Press [ + ] or [— ] keys to select current day and press the SET key
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`to confirm the Day selection.
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`4. The hour display will begin flashing. Press the [ + ] or [— ] key to select hour.
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`(Note AM or PM for twelve hour clock) Press the SET key to confirm the
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`selection.
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`5. The minute display will start flashing. Press [ + ] or [ —] keys to select
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`minutes and press SET key to confirm minute selection.
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`6. Time is now set.
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`10
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`15
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`1) For example .tlle below display is Wednesday 3le AM
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`12
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`ngmmmihg (in/Off Settings (maximum Zhevehts)
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`i. Cieeh time must he set hefere pmgmmming {EN/GEE?“ times.
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`2. After eieeh has been get, press [ + ] hey Bispitty wiii ihtth as Siitini heiewo “
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`PRGG ’9 “ i ’9 “’ A 0N 9’ “ (3N B 9’ this ES the tiethuit setting i'hr hhtiet A and B
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`in Fragrant i. if yhh want the tiei‘attit setting greats SET hey hi mhfirm
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`Seieetihh amt gt} ttt step 4.
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`if 37m} want is Seiect the desire