Ex Parte Levine

Board of Patent Appeals and Interferences

May 18, 2005

09900787 (B.P.A.I. May. 18, 2005)

1 Claim 16 depends from objected to claim 9.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MATTHEW LEVINE
____________
Appeal No. 2004-0609
Application No. 09/900,787
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING, and BARRETT, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 through 8, 10 through 14 and
16. Claims 91 and 15 are objected to as being dependent upon rejected base claims, but
would be allowable if rewritten in independent form including all of the limitations of the
base claims and any intervening claims.
Appeal No. 2004-0609
Application No. 09/900,787
2
The disclosed invention relates to a method of programming a chart recorder. A
marking pen in the chart recorder moves relative to visible options on the surface of the
chart that relate to the programming of the chart recorder. Information relating to the
locations of surface positions (e.g., the visible options) is stored in the chart recorder. The
chart recorder is programmed by correlating the position of the marking pen relative to the
chart during the selection of an option.
Claim 1 is illustrative of the claimed invention, and it reads as follows:
1. A method of programming an instrument of the type wherein a marking
implement is used to mark a surface, the method comprising the steps of:
providing a surface including visible options relating to the programming of the
instrument;
storing information relating to the location of surface positions accessible by the
marking implement;
moving at least the marking implement relative to the visible options for selection
purposes; and
programming the instrument by correlating the position of the implement during the
movement thereof to determine the options selected.
The references relied on by the examiner are:
Watanabe 4,025,838 May 24, 1977
Ishiguro et al. (Ishiguro) 4,836,742 June 6, 1989
Levine 5,978,000 Nov. 2, 1999
Claims 1 through 8 and 11 through 14 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Levine.
Appeal No. 2004-0609
Application No. 09/900,787
3
Claims 10 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Levine in view of Ishiguro and Watanabe.
Reference is made to the final rejection (paper number 6), the brief (paper number
10) and the answer (paper number 12) for the respective positions of the appellant and the
examiner.
OPINION
We have carefully considered the entire record before us, and we will sustain the
anticipation rejection of claims 1 through 8 and 11 through 14, and sustain the
obviousness rejection of claims 10 and 16.
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of performing the recited
functional limitations. RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore
and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
Appellant argues (brief, pages 3 and 4) that Levine does not disclose any of the
method steps of claim 1.
We disagree. Levine discloses a method of programming a chart recorder (Figure
1). A marking pen 108 is used to mark the surface of recording paper 102 with visible
Appeal No. 2004-0609
Application No. 09/900,787
4
options in the form of set points 124 and 126 that relate to the programming of the
instrument. As stated by Levine (column 1, lines 57 through 62), “the invention takes the
form of a circular chart recorder, and includes the ability to program into the chart recorder
apparatus proper a plurality of set points which are advantageously made visually
apparent on the chart recorder paper” (emphasis added). Levine additionally states
(column 1, lines 62 through 67) that “[t]he combined controller/recorder of the invention
further includes driver electronics responsive to the program set points, which may be
used to directly control equipment in accordance with the set points, or, alternatively, to
provide other control functions, such as the activation of higher power switches, and so
forth” (emphasis added). The set points 124 and 126 were made by the marking pen 108
during a setup phase (column 2, line 60 through column 3, line 2), and the set points are
accessible by the marking pen 108 during the operation of the chart recorder. A non-
volatile memory (e.g., EEPROM) stores information relating to the set point surface
positions (column 3, lines 48 through 50). In an operational mode, the marking pen 108 is
moved relative to the set point visible options 124 and 126 for selection purposes. Stated
differently, if the marking pen 108 moves beyond either set point 124 or 126, the chart
recorder is programmed to generate a control signal to perform a specific function (e.g.,
turn indicator lights “on and off in accordance with the reaching of each set point”) (column
3, lines 19 through 34). With respect to the last step in claim 1, Levine teaches
Appeal No. 2004-0609
Application No. 09/900,787
5
programming the chart recorder by correlating the position of the marking pen 108 relative
to the chart recorder paper 102 during the selection of an optional set point.
Thus, the anticipation rejection of claim 1 is sustained because Levine teaches all of
the method steps of this claim. The anticipation rejection of claims 2 through 8 is
sustained because appellant has chosen to let these claims stand or fall with claim 1 (brief,
page 3).
The anticipation rejection of claim 11 is sustained because the “printed parameters”
in Levine are the two set points 124 and 126. The anticipation rejection of claims 12
through 14 is sustained because appellant has chosen to let these claims stand or fall with
claim 11 (brief, page 3).
The obviousness rejection of claims 10 and 16 is sustained because appellant has
not presented any patentability arguments for these claims.
DECISION
The decision of the examiner rejecting claims 1 through 8 and 11 through 14 under
35 U.S.C. § 102(b) is affirmed, and the decision of the examiner rejecting claims 10 and 16
under 35 U.S.C. § 103(a) is affirmed.
Appeal No. 2004-0609
Application No. 09/900,787
6
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARETT )
Administrative Patent Judge )
KWH/lp
Appeal No. 2004-0609
Application No. 09/900,787
7
JOHN G. POSA
GIFFORD, KRASS, GROH
SUITE 400
280 N. OLD WOODWARD AVE.
BIRMINGHAM, MI 48009