Ex Parte Lohbeck et al

Patent Trial and Appeal Board

Jun 26, 2013

12107869 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AXEL LOHBECK, WOLFGANG JANTZEN, and
GERD DEWITZ1
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Appeal 2011-003410
Application 12/107,869
Technology Center 2100
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Before JOHN A. JEFFERY, JAMES B. ARPIN, and TRENTON A. WARD,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, and 5. Claims 3 and 6 are cancelled. App. Br. 2.2

1 ABB AG is the real party-in-interest.
2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
August 9, 2010; (2) the Examiner’s Answer (Ans.) mailed September 3,
2010; and (3) the Reply Brief (Reply Br.) filed November 3, 2010.
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We have jurisdiction under 35 U.S.C. § 6(b), and we heard the appeal on
June 11, 2013. We affirm.
INVENTION
Appellants’ invention relates to methods and systems for
communication between modular devices for measurement, closed-loop and
open-loop control. See generally Abstract. Claim 1 is illustrative and is
reproduced below with a disputed limitation emphasized:
1. A method for communication between modular devices for
measurement, closed-loop and open-loop control,
comprising:

providing communication-carrying bus and USB protocol
for point-to-point data transmission; and

connecting each of the modular devices to a coupling
element via a two wire USB connection.

The Examiner relies on the following as evidence of unpatentability:
Niemann
Wolfe
Yeap

Niemann (hereinafter,
“Niemann DE”)3
US 5,799,205
US 2006/0015666 A1
US 7,242,590 B1

DE 4 238 957 A1
Aug. 25, 1998
Jan. 19, 2006
July 10, 2007; filed
Mar. 15, 2006
May 19, 1994

THE REJECTIONS
1. The Examiner rejected claims 1, 2, 4, and 5 under 35 U.S.C. § 112,
¶ 1, as failing to satisfy the enablement requirement. Ans. 3-4.

3 Because Niemann is an English-language counterpart of Niemann DE, we
discuss the obviousness rejections with citations only to Niemann.
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2. The Examiner rejected claims 1, 2, 4, and 5 under 35 U.S.C. §§ 102(a)
or (e) as anticipated by Yeap. Id. at 5-6.
3. The Examiner rejected claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a)
as unpatentable over Niemann DE, Niemann, and Wolfe. Id. at 6-9.

LACK OF ENABLEMENT REJECTION
Regarding representative claim 1, the Examiner finds that claim 1
fails to comply with the enablement requirement of § 112, ¶ 1. Ans. 4. In
particular, the Examiner finds that, although the term “USB connection” was
understood at the time of the invention to describe a connection including
four wires (id. (citing Responsive Amendment (dated Dec. 17, 2009) 9)),
Appellants describe a two wire “USB connection” in claim 1. Thus, the
Examiner contends that Appellants’ use of “USB connection” in claim 1 is
contrary to the ordinary meaning of that term. Ans. 4. Therefore, the
Examiner concludes that, because the claimed limitation is contrary to the
ordinary meaning of a USB connection, the claim, as written, cannot be
enabled. Id.; see Process Control Corp. v. HydReclaim Corp., 190 F.3d
1350, 1358-59 (Fed. Cir. 1999) (quoting Raytheon Co. v. Roper Corp., 724
F.2d 951, 956 (Fed. Cir. 1983) (“Because it is for the invention as claimed
that enablement must clearly exist, and because the impossible cannot be
enabled, a claim containing a limitation impossible to meet may be held
invalid under § 112.”)).
Appellants argue that “the USB protocol can be implemented via
‘two-wire’ USB connection.” App. Br. 5.4 More specifically, Appellants

4 The Specification does not define the term “USB protocol,” but simply
refers to “Version 2.0 of the USB specification.” Spec. ¶ [0012]. We find
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argue that their “disclosure is directed to using only two communication
wires of the known USB connection.” Reply Br. 2 (emphasis added).
Consequently, Appellants argue that, in claim 1, a connection between each
of the modular devices to a coupling element is via a “two wire USB
connection,” rather than the known four wire USB connection. App. Br. 6.
ISSUE
Under § 112, ¶ 1, has the Examiner erred in determining that the
Specification lacks an enabling disclosure of the invention described in
claim 1?
ANALYSIS
1. Claim Construction
We begin by construing the disputed limitation of claim 1 which calls
for, in pertinent part, “connecting each of the modular devices to a coupling
element via a two wire USB connection” (emphasis added). In construing
this limitation, we apply the broadest reasonable interpretation of the words
in their ordinary usage, as those words would be understood by one of
ordinary skill in the art, taking into account any definitions supplied by
Appellants’ Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Appellant argues that the term “a two wire USB connection,” means a
USB connection having only two wires. We disagree. Initially, we note that
the method of claim 1 is described as comprising this “connecting” step.
“‘Comprising’ is a term of art used in claim language which means that the

that the term “USB protocol” here describes the set of rules governing the
formatting of data communications over a USB, such as a known, four-wire
USB connection. Ans. 9-10.
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named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (emphasis added). Further, we
note that
“[the Federal Circuit] has repeatedly emphasized that an
indefinite article ‘a’ or ‘an’ in patent parlance carries the
meaning of ‘one or more’ in open-ended claims containing the
transitional phrase ‘comprising.’” . . . That “a” or “an” can
mean “one or more” is best described as a rule, rather than
merely as a presumption or even a convention. The exceptions
to this rule are extremely limited: a patentee must “evince[ ] a
clear intent” to limit “a” or “an” to “one.” . . . The subsequent
use of definite articles “the” or “said” in a claim to refer back to
the same claim term does not change the general plural rule, but
simply reinvokes that non-singular meaning. An exception to
the general rule that “a” or “an” means more than one only
arises where the language of the claims themselves, the
specification, or the prosecution history necessitate a departure
from the rule.

Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342-43
(Fed. Cir. 2008) (emphasis added) (citations omitted); see also Harari v.
Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011). Accordingly, we interpret the
term “a two wire USB connection” broadly to describe a USB connection
having at least two wires or two or more wires.
In the known, four wire USB connection, two wires are used for data
communication and the other two wires are for power supply. App. Br. 4-5;
Reply Br. 2. Appellants further argue that, in the embodiment described in
claim 1, the two wire power supply is eliminated and that, instead, power is
supplied via a common backplane 2. App. Br. 6. Nevertheless, neither the
claims nor the Specification describes the supply of power via backplane 2
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or via any other means. See Spec. ¶¶ [0013], [0015]; Figs. 1, 2.
Consequently, although Appellants argue that the USB connection
comprises only two wires, Appellants failed to identify either in their briefs
or during the hearing any language of claim 1 or the Specification, which
would necessitate a departure from our claim construction, set forth above.
2. Enablement
As the Federal Circuit has explained,
[t]he first paragraph of 35 U.S.C. § 112 requires, inter alia, that
the specification of a patent enable any person skilled in the art
to which it pertains to make and use the claimed invention.
Although the statute does not say so, enablement requires that
the specification teach those in the art to make and use the
invention without “undue experimentation.” In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). That some experimentation
may be required is not fatal; the issue is whether the amount of
experimentation required is “undue.”

In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). According to Wands,
relevant factors in determining whether a disclosure requires undue
experimentation include (1) the quantity of experimentation necessary, (2)
the amount of direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. Wands, 858
F.2d at 737. As noted above, the Examiner contends that Appellants’
description of a two wire USB connection is contrary to the accepted
meaning of the term “USB connection.” Ans. 4. Consequently, the
Examiner concludes that Appellants’ claim term cannot be understood. If a
limitation is impossible to meet, then no amount of experimentation would
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enable a person to make or use the invention. Nevertheless, for the reasons
set forth above, we interpret the term “a two wire USB connection” broadly
to mean a USB connection having at least two wires, which includes the
known, four wire USB connection. Thus, we do not agree that the meaning
of the claim term and that of the term “USB connection” are incompatible
with each other, such that the invention of claim 1 is not enabled.
For the foregoing reasons, Appellants have persuaded us of error in
the lack of enablement rejection of: (1) independent claim 1; (2) independent
claim 4 which recites commensurate limitations to those of independent
claim 1 (App. Br. 3, 7); and (3) dependent claims 2 and 5 for similar reasons
(id. at 7). Therefore, we do not sustain the lack of enablement rejection of
claims 1, 2, 4, and 5.

ANTICIPATION REJECTION BY YEAP
The Examiner finds that Yeap discloses each and every element of
claim 1. Ans. 5-6. Appellants argue that Yeap describes “four USB pin
connections (one of which is grounded) electrically connected to four
backplane communication lines 607 used for transmitting USB protocol data
between instrument modules,” instead of a “two wire USB connection,” as
recited in claim 1. App. Br. 8 (quoting Yeap, col. 5, ll. 29-35 (emphasis
added)).
ISSUE
Under §§ 102 (a) or (e), has the Examiner erred in rejecting claim 1
by finding that Yeap discloses “connecting each of the modular devices to a
coupling element via a two wire USB connection” (emphasis added), as
recited in claim 1?
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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of representative claim 1. As the Federal Circuit has explained,
“[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. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
As noted above, Appellants argue that Yeap’s disclosure of a four
wire USB connection does not disclose their step of “connecting . . . via a
two wire USB connection” (emphasis added). App. Br. 8. Consistent with
our interpretation of the disputed limitation of claim 1, the Examiner notes
that claim 1 “require[s] connecting the modular devices to the coupling
element via ‘two wire USB connection’ and do[es] not prohibit or preclude
a USB connection so long as the connection between the modular devices
and the coupling element have a ‘two wire USB connection’.” Ans. 10
(emphasis added). Because Yeap discloses such a “two wire” USB
connection, e.g., a differential signal pair D+/D- (Yeap, Fig. 7), we agree
with the Examiner that Yeap discloses this element of claim 1. Id.
For the foregoing reasons, Appellants have not persuaded us of error
in the anticipation rejection of independent claim 1 and of claims 2, 4, and 5
not separately argued with particularity. App. Br. 8. Therefore, we sustain
the anticipation rejection of claims 1, 2, 4, and 5.

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OBVIOUSNESS REJECTION OVER NIEMANN DE, NIEMANN, AND
WOLFE
Regarding representative claim 1, the Examiner finds that Appellants’
admitted prior art, as evidenced by Appellants’ reference to Niemann DE in
the Specification (Spec. ¶ [0003]), discloses that modular devices for open-
loop and closed loop control may be connected using Controller Area
Network (CAN) buses. Ans. 6-7 (citing Niemann, col. 3, l. 24-col. 4, l. 65;
col. 6, ll. 59-65; Fig. 9). Although Niemann discloses the use of CAN
buses, instead of USBs or the USB protocol (Ans. 7); the Examiner finds
that Wolfe teaches that a variety of point-to-point connection means may be
used to connect modules, including USB connections (id. (citing Wolfe,
[0029])). Appellants argue that Wolfe discloses a four wire USB connection,
rather than a two wire USB connection. App. Br. 8-10.
ISSUE
Under § 103(a), has the Examiner erred in rejecting claim 1 by
finding that Niemann DE, Niemann, and Wolfe, collectively, teach or
suggest “connecting each of the modular devices to a coupling element via a
two wire USB connection” (emphasis added), as recited in claim 1?
ANALYSIS
Based on the record before us, we again find no error in the
Examiner’s rejection of representative claim 1. Appellants acknowledge
that,
[i]n Wolfe, even though the data is transmitted across the
differential signal pairs D+/D-, the connection between the
modules is via a standard four-wire USB connection as it comes
out of the box. In other words, the connection between the
modules in Wolfe requires four wires: two wires for [power]
supply and two wires for communication.
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App. Br. 9 (emphasis added). Appellants argue that, given Wolfe’s
disclosure of a four wire USB connection, there is no reason to implement a
two wire connection. Id. As noted above, however, the Examiner finds, and
we agree, that the language of claim 1 does not “prohibit or preclude” a four
wire USB connection, e.g., a USB connection having at least two wires or
two or more wires. Ans. 11. Because Wolfe, like Yeap, discloses such a
“two wire” USB connection, e.g., a differential signal pair D+/D- (Wolfe,
[0029]), we agree with the Examiner that Wolfe teaches the limitation of
claim 1 that is missing from Niemann DE. Id.
For the foregoing reasons, Appellants have not persuaded us of error
in the obviousness rejection of independent claim 1 and of claims 2, 4, and 5
not separately argued with particularity. App. Br. 9-10. Therefore, we
sustain the obviousness rejection of claims 1, 2, 4, and 5.

CONCLUSION
The Examiner erred in rejecting claims 1, 2, 4, and 5 under § 112, ¶ 1.
The Examiner did not err in rejecting claims 1, 3, 4, and 5 under §§ 102(a)
or (e) or under § 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 2, 4, and 5 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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