Ex Parte Levine

Board of Patent Appeals and Interferences

Feb 16, 2006

09968085 (B.P.A.I. Feb. 16, 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not written for publication and is not binding precedent of the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
_______________
Ex parte MATTHEW LEVINE
_______________

Appeal No. 2006-0432
Application No. 09/968,085
_______________
ON BRIEF
_______________
Before KRASS, BARRETT, and NAPPI, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-14.
The invention relates to a programming interface for chart
recorders and other instruments. The invention is best
understood from a review of representative independent claim 1,
reproduced as follows:
1. A method of programming an instrument of the type wherein
a marking implement is used to mark a surface, comprising the
steps of:
providing a surface including printed alphanumeric options
relating to the programming of the instrument;
storing information relating to the location of the printed
options on the surface;
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Application No. 09/968,085
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moving the marking implement and/or surface relative to one
another so that the marking implement is aligned with one of the
options;
selecting the option if desired and programming the
instrument in accordance with the selected option.
The examiner relies on the following references:
Watanabe 4,025,838 May 24, 1977
Ishiguro et al. 4,836,742 Jun. 6, 1989
(Ishiguro)
Levine 5,978,000 Nov. 2, 1999
Claims 1-14 stand rejected under obviousness-type double
patenting over claims 1 and 14-16 of co-pending application
Serial No. 09/900787.
Claims 1-7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Levine.
Claims 8 and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Levine, Ishiguro and Watanabe.
Reference is made to the brief and answer for the respective
positions of appellant and the examiner.
OPINION
At the outset, we note, with displeasure, paragraph II of
appellant’s corrected brief, filed January 24, 2005, wherein
appellant states that “[t]here are no appeals or interferences
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Application No. 09/968,085
3
which will directly affect or be directly affected by or have a
bearing on the Board’s decision in the pending appeal.” It
appears to us that appellant knew or should have known about the
appeal taken in Application Serial No. 09/900,787, Appeal No.
2004-0609 (oral hearing of April 27, 2005, decision mailed May
18, 2005), the decision therein directly affecting and/or having
a bearing on the Board’s decision in the pending appeal.
Turning, first, to the rejection under 35 U.S.C. § 102(b), a
rejection for anticipation requires that the four corners of a
single prior art document describe every element of the claimed
invention, either expressly or inherently, such that a person of
ordinary skill in the art could practice the invention without
undue experimentation. In re Paulsen, 30 F.3d 1475, 1478-79, 31
USPQ2d 1671, 1673 (Fed. Cir. 1994).
It is the examiner’s view that the subject matter of claims
1-7 and 9-13 are anticipated by Levine as follows:
With regard to instant claim 1, the examiner indicates that
Levine discloses the claimed “providing a surface...” at Figure
1, element 102, 106, 110 and column 2, lines 33-53; the claimed
“storing information...” at Figure 2, elements 202, 204, 216, and
column 3, lines 41-65; the claimed “moving the marking
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Application No. 09/968,085
4
implement...” at Figure 1, element 106, 108, 110 and column 2,
lines 60-67; and the claimed “selecting the option...” at column
1, lines 55-67.
Appellant argues that the examiner is erroneously
interpreting Levine as though the instrument therein is
programmed by marking on a chart surface when, in fact, the
surface is marked to reflect previously made programming commands
entered in a different way (brief-page 3).
The examiner counters with an observation that appellant
argues that the chart in Levine is simply used for
visualization/indication purposes and not for programming
purposes and that such an argument is based on the notion that
the act of providing visual indication of data on the chart is
separate from the act of using that data to program the
instrument (answer-pages 10-11). The examiner accuses appellant
of trying to separate the programming and recording steps into
two separate entities, whereas Levine clearly discloses an
integrated recorder/controller.
The examiner cites the claim language “‘selecting the option
if desired and programming the instrument in accordance with the
selected option.’” The examiner alleges that appellant is
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reading this as an option being selected and the instrument being
programmed as a result of the selected option, but the claimed
limitation of programming the instrument “in accordance with” the
selected option is not so limiting (answer-page 11).
Moreover, while appellant argues that the indication of set
points in Levine cannot be considered as “selecting the option”
because it is isolated from the function of programming, the
examiner contends that “it is reasonable to interpret the visual
indications of Levine as options, and that the programming of the
chart recorder is done in accordance with those options” (answer-
pages 11-12). The examiner also applies this argument to
“programming the recorder by correlating the position of the pen
relative to the chart during the selection of the parameters,” as
in independent claim 9.
We have considered the evidence before us, including, inter
alia, the Levine reference and the arguments of appellant and the
examiner, and we conclude therefrom that the examiner has
established a prima facie case of anticipation, with regard to
the instant claimed subject matter, which has not been
successfully rebutted by appellant.
Our review of the instant claims finds that the claims do,
in fact, require the programming of the instrument, or chart
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recorder, by providing the storage of information relating to the
location of printed options on the surface of the instrument and
actually programming the instrument by selecting an option, since
one selects the option and “programming the instrument in
accordance with the selected option” (claim 1) ensues (there is
similar language in claim 9 related to programming by correlating
the position of the pen relative to the chart during selection of
the parameters).
Having made the finding that the instant claims do require
programming of the instrument, we look to the Levine reference.
We find therein that Levine recites an “ability to program” a
plurality of set points (e.g., abstract, column 1, line 59).
Apparently, marking pen 108 is used to mark the surface of
recording paper 102 with printed alphanumeric options, or printed
parameters related to the programming of the chart recorder, in
the form of set points 124 and 126 that relate to the programming
of the instrument. Note column 1, lines 57-62:
...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.
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Lines 62-67 of that column recite 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.
The set points 124 and 126 were made by 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 during
operation of the chart recorder. Column 3, lines 48-50, of Levine
makes it clear that a non-volatile memory stores information
relating to the set point surface positions, and marking pen 108
is moved relative to the set point visible options 124 and 126
for selection purposes. As we stated in our decision of May 18,
2005, in Appeal No. 2004-0609, “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 regard to the last step of claim 9, Levine teaches
programming the chart recorder by correlating the position of the
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marking pen 108 relative to the chart recorder paper 102 during
the selection of the parameters, the “printed parameters” in
Levine being the two set points 124 and 126. Accordingly, Levine
anticipates the instant claimed subject matter and we will
sustain the rejection of independent claims 1 and 9 under 35
U.S.C. § 102(b).
With regard to claim 2, appellant argues that element 108 in
Levine is simply a marking pen for drawing, for example, a short
arc to provide a visual representation of a set point, but the
set point has been previously programmed and the machine draws a
visual representation thereof, rather than the other way around,
as in the claimed invention.
We are not convinced that Levine discloses “the exact
opposite” (brief-page 4) of what is being claimed. It is not
entirely clear, from the disclosure of Levine, that the set point
has been “previously programmed,” as argued by appellant. In
describing the short arc 126 as being “automatically drawn by the
machine to provide a visual representation of this set point”
(column 3, lines 1-2), Levine appears to indicate that the
implement marks the surface in selecting the desired option, as
broadly claimed.
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Thus, we will sustain the rejection of claim 2 under 35
U.S.C. § 102(b).
Appellant’s arguments as to claims 3 and 12, at page 5 of
the brief, appear to rely on their dependency from claims 2 and
9, respectively, rather than on the specific limitations of
claims 3 and 12. Accordingly, for the reasons supra, we will
sustain the rejection of claims 3 and 12 under 35 U.S.C.
§ 102(b).
Similarly, the arguments regarding claims 4, 5, and 11, at
page 5 of the brief, appear to rely on the arguments set forth
anent the claims from which these claims depend. Accordingly, we
will sustain the rejection of claims 4, 5, and 11 for the reasons
supra, regarding the independent claims.
With regard to claims 6 and 12, appellant stresses that the
claims contain certain “options,” such as probe type, chart
speed, chart type, etc. The examiner pointed to column 1, lines
64-67, of Levine, wherein the recorder may be used to “directly
control equipment in accordance with the set points...” in order
to show visible options/printed parameters and how they relate to
external control.
Appellant argues that what are disclosed in Levine are not
options, but rather control equipment that may be driven by the
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chart recorder once programmed. We disagree. As broadly
claimed, the “options” merely “relate” to one or more of the
listed elements in claim 6. Since the recorder in Levine may be
used to control various types of equipment in accordance with the
set points, this appears to be a fair disclosure of “options”
relating to at least “external control,” one of the options
listed in claim 6.
Thus, we will sustain the rejection of claims 6 and 12 under
35 U.S.C. § 102(b).
With regard to claim 7, the examiner points to column 3,
lines 6-11, of Levine for a teaching of indexing the surface
relative to a start position in conjunction with the step of
storing information relating to the location of the visible
options. Appellant argues that this disclosure of Levine “has
nothing to do with indexing a surface to a start position in
conjunction with storing information relating to the location of
visible options, which are used for programming purposes, not the
other way around” (brief-page 6).
We are unpersuaded by appellant’s arguments since the
referenced portion of Levine does appear to be a disclosure of
“indexing the surface...” as claimed, and appellant has not
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11
indicated why he believes that this disclosure “has nothing to do
with indexing a surface to a start position in conjunction with
storing information relating to the location of visible options,
which are used for programming purposes.” To whatever extent
appellant is basing this argument on the one made supra with
regard to claims 1 and 9, in terms of Levine disclosing the
opposite of what is claimed, we will sustain the rejection of
this claim for the reasons supra, with regard to claims 1 and 9.
It is certainly not clear from the Levine disclosure that Levine
is programming his chart recorder in an opposite manner as the
broadly claimed instant invention.
We will sustain the rejection of claim 7 under 35 U.S.C.
§ 102(b).
With regard to claim 9, appellant argues that Levine does
not disclose the pen moving over alphanumeric parameters for the
purpose of programming the instrument. Rather, asserts
appellant, the printed alphanumeric characters in Levine are
“simply there so that once the chart is recorded, one can look at
the curve made by the pen, to see what the temperature, humidity,
or other characteristics changed over time” (brief-page 6).
Appellant asserts that these printed alphanumeric characters in
Levine have nothing to do with programming the instrument.
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Again, for the reasons supra, we will sustain the rejection
of claim 9 under 35 U.S.C. § 102(b) because we find that Levine
does provide for the broadly claimed “programming” in the
programming of the set points.
With regard to claim 10, appellant argues that the arcs 124
and 126 in Levine have been placed on the paper by an operator
using a keypad and “are not moved over alphanumeric terms for
programming purposes” (brief-page 7). We are unpersuaded as
there is nothing in the claim precluding the use of a keypad.
Moreover, we have treated the “programming” aspect of the claim
supra, with regard to the set points of Levine.
Accordingly, we will sustain the rejection of claim 10 under
35 U.S.C. § 102(b).
In considering appellant’s arguments and finding none to be
persuasive of patentability, we will sustain the rejection of
claims 1-7 and 9-13 under 35 U.S.C. § 102(b).
Turning to the rejection of claims 8 and 14 under 35 U.S.C.
§ 103, appellant merely asserts, generally, at page 7 of the
brief, that the rejection is improper because the examiner has
not provided a reason to combine the references. However, the
examiner has clearly provided such a reason at page 10 of the
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answer, viz., “so that there would be a step of marking a new
surface in response to a user command subsequent to the
programming of the instrument to obtain a record of currently
selected options” and “to gain the benefit of being able to
reproduce a record of currently selected options without manually
repeating the instrument programming operation continuously”
(referring to Watanabe, column 1, lines 6-15).
Accordingly, since the examiner has established a reason for
making the combination and appellant has not offered any argument
or evidence showing error in the examiner’s rationale, we will
sustain the rejection of claims 8 and 14 under 35 U.S.C. § 103.
Turning to the rejection of claims 1-14 under obviousness-
type double patenting, we will summarily sustain this rejection
because the examiner has finally rejected the claims on this
ground and appellant offers no response to refute the rejection
or show any error in the examiner’s reasoning.
We have sustained the rejection of claims 1-14 under
obviousness-type double patenting and we have sustained the
rejection of claims 1-7 and 9-13 under 35 U.S.C. § 102(b) and the
rejection of claims 8 and 14 under 35 U.S.C. § 103.
Accordingly, the examiner’s decision is affirmed.
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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
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND INTERFERENCES
)
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

EAK/kis
Appeal No. 2006-0432
Application No. 09/968,085
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GIFFORD, KRASS, GROH,
SPRINKLE & CITKOWSKI, P.C.
P. O. BOX 7021
TROY, MI 48007-7021