Ex Parte Fender et al

Board of Patent Appeals and Interferences

Nov 29, 2006

10606897 (B.P.A.I. Nov. 29, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte Michael R. Fender and Warren S. Tustin
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Appeal No. 2006-3283
Application No. 10/606,897
Technology Center 2800
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ON BRIEF
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Before KRASS, DIXON, and SAADAT, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 21-39, which are all of the claims pending in this application. Claims
1-20 have been canceled. The rejection of claims 25 and 34 has been withdrawn by the
examiner.

We REVERSE.
Appeal No. 2006-3283 Page 2
Application No. 10/606,897

BACKGROUND

Appellants’ invention relates to systems and methods for performing multi-source
measurements. An understanding of the invention can be derived from a reading of
exemplary claim 21, which is reproduced below.
21. A method comprising:
displaying a first waveform and a second waveform;
displaying a plurality of icons, each icon corresponding to a
measurement to be performed of a parameter defining a relationship
between the first waveform and the second waveform;

enabling a user to select one of the plurality of icons;

enabling the user to mark a first point on the first waveform;

enabling the user to mark a second point on the second waveform;

performing a measurement based on the selected icon, the first point
on the first waveform, and the second point on the second waveform.

PRIOR ART
The prior art reference of record relied upon by the Examiner in rejecting the
appealed claims is:
Taraki et al. (Taraki) 5,898,307 Apr. 27, 1999
REJECTIONS
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
Appellants regarding the above-noted rejections, we make reference to the Examiner's
Answer (mailed May 5, 2006) for the reasoning in support of the rejection, and to
Appellants’ Brief (filed Nov. 18, 2005) and Reply Brief (filed Jun. 29, 2006) for the
arguments thereagainst.
Appeal No. 2006-3283 Page 3
Application No. 10/606,897

OPINION
In reaching our decision in this appeal, we have given careful consideration to
Appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by Appellants and the Examiner. As a consequence of our
review, we make the following determinations.
35 U.S.C. § 102
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference. Verdegaal
Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
The inquiry as to whether a reference anticipates a claim must focus on what subject
matter is encompassed by the claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218
USPQ 781, 789 (Fed. Cir. 1983), it is only necessary for the claims to "'read on'
something disclosed in the reference, i.e., all limitations of the claim are found in the
reference, or 'fully met' by it." While all elements of the claimed invention must appear
in a single reference, additional references may be used to interpret the anticipating
reference and to shed light on its meaning, particularly to those skilled in the art at the
relevant time. See Studiengesellschaft Kohle m.b.H. v. Dart Indus., Inc., 726 F.2d 724,
726-727, 220 USPQ 841, 842-843 (Fed. Cir. 1984).

To support a rejection of a claim under 35 U.S.C. § 102(b), it must be shown that
each element of the claim is found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983).

Initially, we note that anticipation by a prior art reference does not require either
the inventive concept of the claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference. See Verdegaal Bros. Inc. v.
Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987). A prior art
reference anticipates the subject of a claim when the reference discloses every feature of
the claimed invention, either explicitly or inherently (see Hazani v. U.S. Int'l Trade
Appeal No. 2006-3283 Page 4
Application No. 10/606,897

Com'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984)); however, the law of anticipation does not require that the reference teach what
the appellants are claiming, but only that the claims on appeal "read on" something
disclosed in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218
USPQ 781, 789 (Fed. Cir. 1983).

We must point out, however, that anticipation under 35 U.S.C. § 102 is
established only when a single prior art reference discloses, either expressly or under the
principles of inherency, each and every element of a claimed invention. See RCA Corp.
V. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984). Here, we find that Taraki does not teach all of the limitations as recited in
independent claim 21.
Appellants argue that Taraki fails to measure any parameter between two
different waveforms and that all of the measurements are based upon an
individual waveform (Brief p. 4). Appellants maintains that Taraki fails to
disclose a parameter defining a relationship between the icon and first and second
waveforms and that the icons in Taraki relate to display modes rather than to a
measurement to be performed (Brief p. 5 and Reply Brief pp. 4-5). We agree with
Appellants and further find that Taraki does not disclose “performing a
measurement based on the selected icon, the first point on the first waveform, and
the second point on the second waveform,” as recited in independent claim 21.
Therefore, we will not sustain the rejections of independent claim 21 and
dependent claims 22-24, 26, and 27.
With respect to independent claim 28, we agree with Appellants and further
find that Taraki does not disclose “means for measuring a parameter based on the
selected icon, the first point, and the second point” as recited in independent claim
28. (Brief p. 7 and Reply Brief p. 6). Therefore, we will not sustain the rejections
of independent claim 28 and dependent claims 29-33 and 35.
Appeal No. 2006-3283 Page 5
Application No. 10/606,897

Appellants maintain that Taraki fails to disclose a parameter defining a
relationship between and first and second waveforms and that the icons in Taraki
relate to display modes rather than to a measurement to be performed (Brief p. 9
and Reply Brief p. 6). We agree with Appellants and further find that Taraki does
not disclose “displaying a plurality of icons, each icon corresponding to a
measurement to be performed of a parameter defining a relationship between the
first waveform and the second waveform,” as recited in independent claim 36.
Therefore, we will not sustain the rejections of independent claim 36 and
dependent claims 37-39

CONCLUSION
To summarize, the rejection of claims 21-24, 26-33, and 35-39 under 35 U.S.C.
§ 102 has been reversed.

Appeal No. 2006-3283 Page 6
Application No. 10/606,897

REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )

JLD/eld

Appeal No. 2006-3283 Page 7
Application No. 10/606,897

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