Ex Parte Faust et al

Board of Patent Appeals and Interferences

Dec 19, 2007

09960904 (B.P.A.I. Dec. 19, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL G. FAUST and GLENN E. ELMORE
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Appeal 2007-2165
Application 09/960,904
Technology Center 2600
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Decided: December 19, 2007
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Before JAMES D. THOMAS, JEAN R. HOMERE,
and JOHN A. JEFFERY, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1 through 3, 5 through 13, and 15 through
24. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). This appeal
has only recently been made available to the above-noted panel for decision.
As best representative of the disclosed and claimed invention,
independent claim 1 is reproduced below:
1. A method for viewing measurement data, comprising:
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Application 09/960,904

a) programming a measurement instrument to acquire measurement
data and provide the measurement data to a server;

b) programming the server to transmit the measurement data to a
client; and

c) programming the client to render a real-time three-dimensional
graphical display of the measurement data.

The following references are relied on by the Examiner:
Raj US 5,956,013 Sept. 21, 1999
Alexander US 6,559,868 B2 May 6, 2003
(Filing date March 5, 2001)
Ross US 6,608,628 B1 Aug. 19, 2003
(Filing date November 5, 1999)

All claims on appeal stand rejected under 35 U.S.C. § 103. As
evidence of obviousness as to claims 1, 3, 5 through 11, 13, 15 through 18,
and 20 through 24, the Examiner relies upon Ross in view of Alexander. To
this combination of references, the Examiner adds Raj as to claims 2, 12,
and 19.
Rather than repeat the positions of the Appellants and the Examiner,
reference is made to the Brief and Reply Brief for Appellants’ positions, and
to the Answer for the Examiner’s positions.

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OPINION
For the reasons set forth by the Examiner in the Answer, we sustain
the rejections of all claims on appeal under 35 U.S.C. § 103. The Examiner
has correlated the claimed features to the respective teachings and showings
in the references relied upon beginning at page 3 of the Answer. Moreover,
the Examiner’s responsive arguments to those positions set forth in the
principal Brief on appeal begin at page 15 of the Answer. Significantly,
Appellants’ one page Reply Brief does not challenge any of the Examiner’s
responsive arguments on the merits.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1996). “[T]he Examiner bears
the initial burden on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.3d
1443 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). It appears to us that the Examiner has met the burden set forth by
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this precedent in setting forth the correlations between the claimed invention
and the teachings and showings of the applied prior art.
We now set forth a number of preliminary considerations that bear
upon our agreement with the Examiner’s positions with respect to the
applied prior art and the nature of the claimed subject matter. Consistent
with the teachings and showings of the applied prior art, there is a general
recognition beginning at the background of the invention at the bottom of
Specification page 1 that certain prior art measurement instruments were
well known in the art. It is also recognized at the middle of page 2 of the
Specification that the user’s interaction with these devices permits the users
to manually adjust or interface with the devices to achieve desired types of
displays. Appellants’ alleged contribution in the art of transmitting mere
measurement data in lieu of image data is not positively recited in any
independent claim on appeal. The body of the Specification itself disclosing
Appellants contribution begins with the discussion at the bottom of
Specification page 8 with an extensive recognition that the system
environments of the initial figures associated with this application rely upon
prior art instruments, buses, cables, software libraries, and the use of
remotable Java interfaces. The discussion in the paragraph bridging pages
10 and 11 indicates that the identified server may be within the same client
device 104/204 in the various figures such that a client may be a server. The
client in turn is disclosed to possibly embody a programming application
itself. Consistent with what we observe to be general teachings in the
applied prior, art there is no distinction between the transmitability of
measurement data and image data in the claims on appeal.
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Although not presented as an issue for us for decision, we recognize
in our study of the claims on appeal that there appears to numerous
ambiguities within the second paragraph of 35 U.S.C. § 112. The nature and
the continued use of the word “programming” is such as to indicate the acts
of humans rather than any acts associated with any structural element. The
use of the word “to” such as to acquire or to transmit or to render appears to
relate to future acts that may never occur as recited. Programming a device
to perform a certain function appears to indicate that it is to be merely
capable of being programmed to perform a certain function in contrast to a
positive, definite statement that the instrument or element is programmed to
perform the stated function. The claimed waterfall display in some claims
on appeal can hardly be considered a definite descriptor of a display since it
depends almost entirely on the subjective intent of the viewer. So-called
apparatus claims 20 through 24 do not appear to be apparatus claims at all.
There is no apparatus recited in these claims and there is no displaying
element recited to permit the display of the measurement data. The feature
of the claimed computer readable media does not positively state that the
computer readable media are tangible media. Moreover, and most
significantly, claims 20 through 24 appear to directly recite computer
program code per se to perform various functions. Lastly, with respect to
independent claim 24, the means for programming can only be interpreted to
be performed by a human or a user of a measurement instrument rather than
by any device.

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It also appears to us that the subject matter presented in all claims on
appeal relates to feature that may differ from the prior art solely on the basis
of “non-functional descriptive material,” which is generally not given
patentable weight when determining patentability of an invention over the
prior art. In re Gulack, 703 F.2d 1381, 1385, (Fed. Cir. 1983). The PTO
may not disregard claim limitations comprised of printed matter. See
Gulack 703 F.2d at 1384; see also Diamond v. Diehr, 450 U.S. 175, 191 209
USPQ 1, 10 (1981). However, the Examiner need not give patentable
weight to descriptive material absent a new and unobvious functional
relationship between the descriptive material and the substrate. See in re
Lowry, 32 F.3d 1579, 1583-84, (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336,
1338, (Fed. Cir. 2004). We conclude that when the prior art describes all the
claimed structural and functional relationships between the descriptive
material and the substrate, but the prior art describes a different descriptive
material than the claim, then the descriptive material is non-functional and
will not be given any patentable weight. That is, we conclude that such a
scenario presents no new and unobvious functional relationship between the
descriptive material and the substrate.
In the instant case on appeal, we find that the invention recited in the
claims on appeal recites non-functional descriptive material which does not
provide a patentable distinction to the data or to the process of the claimed
methods. In other words, as to the meaning relating to the type or category
of display, whether it be a generic statement of a 3-dimensional graphical
display or a waterfall display or a spectrogram display, as well as additional
future, refined features in some dependent claims, the label attached to the
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picture of the display is a non-functional descriptive feature which has no
positive statement of unique process dependences. Plainly, the Examiner’s
approach to the applied prior art is strong evidence that the respective
references acquire measurement data and provide this measurement data to
other elements for rendering in real time display formats. Patentability can
not be predicated on the basis of the label or characterization of the type of
display, which has already been recognized by Appellants to be in the prior
art anyway in addition to the teachings and showings in the applied prior art.
Additionally, with these considerations in mind, it is also apparent to
us, even though we recognize that there is no stated issue before us, that the
nature of the subject matter of the claims on appeal directly relates to
nonpatentable subject matter since they recite abstract concepts relating to
characterizations of data itself or display types or to the acts of programming
or the direct claiming of computer program codes as well as the requirement
of direct human action.
As to the merits of the stated rejections before us, the Examiner has
characterized the teachings of Ross as indicating that certain elements may
be considered to be both a server and a client in the same manner as
Appellants intended the disclosed and claimed invention to be interpreted.
The Examiner also appears to take the approach that the functionalities of
the respective references are derived from programmed features of them.
Rather than indicating that the Ross patent does not teach any distinction
between measurement data and real-time image data, the claims on appeal

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do not recite any distinction, which must be recited in the claims beyond
mere labels to cause us to consider any patentable distinction between the
claimed measurement data and the mere broadly recited “rendering” of real-
time 3-dimenisional graphical data or the like.
Although we recognize that Ross pertains extensively to the rendering
of 3-dimenisional data, this data is derived as measurement data and stored
in database 23 in figure 2, which is characterized as medical image data used
to generate or “render” high resolution stereoscopic 3-D images which have
been derived from CT scans, MRI data or any other types of medical data.
Thus, even in Ross alone, in the context of the subject matter of
representative independent claim 1 on appeal, Ross teaches the measurement
or acquisition of medical measurement data, the transmission of this
measurement data to and storage in a storage device, and the rending of real-
time 3-dimenisional image characterizations of the original acquired
measurement data. We therefore do not agree with the bulk of Appellants’
arguments presented in the Brief as to the teachings and showings in Ross.
It does appear as well that the teachings and showings in Alexander merely
buttress what the artisan would have understood from the teachings and
showings in Ross alone.
Separately, we emphasize here that Appellants have not contested the
combinability of Ross and Alexander within 35 U.S.C. § 103 and the
addition of Raj to this initial combination of references. Therefore, any
arguments that could have been made before us that the references are not
properly combinable with 35 U.S.C. § 103 have been waived.
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Lastly, we turn to the merits of the second stated rejection. According
to the remarks at pages 21 and 22 of the principal Brief, Appellants rely for
patentability of independent claims 12 and 19 upon those arguments
previously submitted with respect to independent claim 1, which has been
rejected based only upon Ross and Alexander. Therefore, it is clear to us
that Appellants have not contested the teachings and showings as well as the
combinability of Raj to Ross and Alexander. Moreover, according to the
remarks at page 21 with respect to the waterfall display of dependent claim
2, Appellants appear to accept the Examiner’s characterization that Raj’s
continuous moving ECG waveform is properly labeled as a waterfall-type
display. The statement that “the fact the Raj’s waveform display looks a
little like a waterfall does not make it one” acknowledges the propriety of
the Examiner’s characterization of Raj’s waveform as a waterfall display.
In view of the foregoing, the decision of the Examiner rejection all
claims on appeal under 35 U.S.C. § 103 is affirmed.
AFFIRMED

pgc

AGILENT TECHNOLOGIES, INC.
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Intellectual Property Administration
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