Ex Parte Henderson et al

Patent Trial and Appeal Board

Apr 10, 2014

11864235 (P.T.A.B. Apr. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID HENDERSON,
SEAN P. CORTRIGHT, CALVIN KRUG, and RYAN KELLEY
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Appeal 2012-001857
Application 11/864,235
Technology Center 2800
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Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001857
Application 11/864,235
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On September 3, 2010, the Examiner finally rejected claims 1-5, 7,
13-17, and 23-27 of Application 11/864,235 under 35 U.S.C. § 103(a) as
obvious. The Examiner also rejected claims 23-27 under 35 U.S.C. § 112
for failing to comply with the written description requirement and as
indefinite. Appellants1 seek reversal of these rejections pursuant to 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’235 application describes devices for use in systems that test
electronic circuits. Spec. ¶ 0002. Claim 1 is the only independent claim in
the ’235 application and is reproduced below:
1. A module for use in a test system, said module
comprising:
a first portion for allowing electrical connection with a
particular device to be tested (DUT), said electrical connection
using electrical terminals specific to said particular DUT;
a second portion for allowing for electrical connection to a test
station having universal electrical terminals for use with a
plurality of DUTs each having a different corresponding
connector configuration; and
a third portion for maintaining a personality of said particular
DUT, said personality comprising conditioning information for
controlling parameters used by said test station for testing said
particular DUT.
(App. Br. 22 (Claims App’x).)

1 Agilent Technologies, Inc. is identified as the real party in interest. (App.
Br. 1.)
Appeal 2012-001857
Application 11/864,235
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 23-27 are rejected under 35 U.S.C. § 112, ¶ 1 for failing to
comply with the written description requirement. (Ans. 3.)
2. Claims 23-27 are rejected under 35 U.S.C. § 112, ¶ 2 as indefinite.
(Ans. 4.)
3. Claims 1-5, 13-17, and 23-27 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Akar2 and McConnell.3
(Ans. 4.)
4. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Akar, McConnell, and Mallory.4 (Ans. 7.)
DISCUSSION
Rejection 1. The Examiner rejected claims 23-27 under 35 U.S.C.
§ 112, ¶ 1 because “[t]he newly introduced term ‘connectorized’ in claims
23-37 does not occur anywhere in the specification originally submitted with
the application and therefore constitutes new matter.” (Ans. 3.)
We reverse this rejection largely for the reasons set forth in
Appellants’ Appeal Brief and add the following for emphasis.
Appearance of a claim in the specification in ipsis verbis does not
guarantee that the written description requirement is satisfied, see, e.g., Enzo
Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002), nor

2 U.S. Patent No. 5,216,361, issued June 1, 1993.
3 U.S. Patent No. 6,608,399 B2, issued Aug. 19, 2003.
4 U.S. Patent No. 4,964,018, issued Oct. 16, 1990.
Appeal 2012-001857
Application 11/864,235
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does a failure to meet that standard require a finding that a claim does not
comply with the written description requirement, In re Edwards, 568 F.2d
1349, 1351-52 (Fed. Cir. 1978). All that is required is that the specification
demonstrate to a person of ordinary skill in the art that the inventor was in
possession of the invention. Carnegie Mellon Univ. v. Hoffmann-La Roche
Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008).
In this case, the ’235 application’s Specification demonstrates that
Appellants possessed a module for use in a test system comprising a
connectorized cable. As Appellants point out (App. Br. 4-5), the
Specification describes and Figure 6 depicts a connectorized cable, Spec.
¶ 0032, Fig. 6. We, therefore, reverse the rejection of claims 23-27 under 35
U.S.C. § 112, ¶ 1.
Rejection 2. The Examiner rejected claims 23-27 as indefinite. (Ans.
4.) The Examiner concluded that the claim term “connectorized” is unclear.
(Id.) The Examiner points to two possible meanings of the term in the ’235
application’s Specification and also asserts that the term cannot be found in
any available dictionary. (Id.) The Examiner concluded that “[f]or
examination purposes, the term ‘connectorized’ is treated as an arbitrary
adverb [sic, adjective] without any specific definition.” (Id.)
During prosecution, a claim is examined for compliance with 35
U.S.C. § 112, ¶ 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting M.P.E.P. § 2173.02). A claim is not indefinite
merely because more suitable language or modes of expression are available.
Id. In determining whether a particular claim is definite, the claim’s
language must be analyzed in light of the content of the particular
application, the prior art’s teaching, and the interpretation that would be
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Application 11/864,235
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given to the claim’s language by a person of ordinary skill in the art at the
time the invention was made. Id.
We cannot sustain the Examiner’s rejection of claims 23-27 as
indefinite. Our review of the ’235 application’s Specification convinces us
that a person of ordinary skill in the art would understand the term
“connectorized cable” to mean a cable that has been provided with a
connector.5
Rejection 3. The Examiner rejected claims 1-5, 13-17, and 23-27 as
obvious over the combination of Akar and McConnell. (Ans. 4.) We begin
by addressing the Examiner’s rejection of claim 1, the ’235 application’s
sole independent claim.
Appellants argue that the Examiner erred in finding that the cited prior
art describes a portion of a module that maintains the personality of the
device being tested, where the personality comprises conditioning
information for controlling parameters used by the test station for testing that
device. (App. Br. 11-15.)
The Examiner concedes that Akar does not describe this element of
the claimed invention and relies upon McConnell’s description. (Ans. 5
(citing McConnell Fig. 1; col. 4, ll. 10-25; col. 6, ll. 1-15; col. 8, ll. 15-30;
col. 9, ll. 40-60; col. 11, ll. 15-60).) In particular, the Examiner states:
McConnell from the same field of endeavor teaches a common
personality module (17, Fig. 1 and col. 6, line 1-15, and col. 4,
line 10-25) comprising conditioning information for controlling
parameters including device identification (col. 9, line 40-60)

5 We note that Appellants have adopted this definition. (App. Br. 8.)
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and signal level setting (col. 8, line 15-30) and power supply
data (col. 11, line 15-60) as in claims 2, 14.
(Id. at 5-6.)
We agree with Appellants that McConnell does not describe the
personality portion of the claimed module. McConnell describes a
personality module comprising a portable rack and one or more feature
modules. Col. 4, ll. 7-12. This arrangement “allows an entire personality
module to be removed from a vehicle for security reasons, as well as to be
easily moved . . . from one vehicle to another, to provide immediate
customization of a particular vehicle’s available features.” Id. at col. 4,
ll. 23-28. McConnell does not describe the interaction of its personality
module with test equipment and therefore does not describe the use of its
personality module to control parameters used by a test station for testing a
device. Furthermore, the Examiner has not provided an explanation
supported by a rational underpinning as to why the combination of Akar and
McConnell would have suggested the claimed invention to a person of
ordinary skill in the art. We, therefore, reverse the Examiner’s rejection of
claim 1 as obvious over the combination of Akar and McConnell.
In addition to arguing for the reversal of this rejection based upon the
limitations of independent claim 1, Appellants also present separate
arguments for the patentability of dependent claims 3,6 17, and 23-27. (App.

6 We note that claims 3, 4, and 7 depend directly or indirectly from claim 2,
which has been cancelled and is not included in the Claims Appendix.
Claims 8-12, which the Examiner has indicated contain allowable subject
matter (Ans. 8), also depend directly or indirectly from cancelled claim 2. If
prosecution of the ’235 application continues, these errors should be
corrected.
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Application 11/864,235
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Br. 19-20.) Because we have reversed the rejection of claim 1 as obvious,
we need not address these arguments.
The Examiner’s rejection of claims 1-5, 13-17, and 23-27 as obvious
is reversed.
Rejection 4. The Examiner rejected claim 7 as obvious over the
combination of Akar, McConnell, and Mallory. (Ans. 7.)
Appellants argue for the reversal of this rejection based upon the
arguments advanced in support of the patentability of claim 1. (App. Br. 20-
21.) Because we have reversed the rejection of claim 1, we also reverse this
rejection.
CONCLUSION
For the reasons set forth above, we have reversed the Examiner’s
rejections of claims 23-27 under 35 U.S.C. § 112, ¶¶ 1, 2. We also reverse
the § 103 rejections of claims 1-5, 7, 13-17, and 23-27 of the ’235
application.
REVERSED

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