Ex Parte Mariella

Board of Patent Appeals and Interferences

Jun 30, 2008

10394911 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM L. BLACK and STEVEN J. MARIAN
____________

Appeal 2008-0891
Application 10/679,180
Technology Center 2800
____________

Decided: June 30, 2008
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and R. EUGENE
VARNDELL, JR., Administrative Patent Judges.

VARNDELL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1-19 and 21. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
Appeal 2008-0891
Application 10/679,180

STATUS OF CLAIMS
Claims 1-19 and 21 are on appeal. The Office Action Summary of the
Final Rejection mailed on August 3, 2006 included claim 20 in the rejected
claims. However, claim 20 is not included in any rejection in the Final
Rejection. Appellants note the lack of any detailed rejection of claim 20 and
assume that claim 20 includes allowable subject matter in the Status of
Claims section of the Brief (Br. 2). The Examiner’s Answer does not
comment specifically on the status of claim 20. However, the Examiner’s
Answer states that Appellants’ statement of the Status of Claims in the
Appeal Brief is correct (Ans. 2). For the purposes of this opinion, we
assume that claim 20 is not included in any rejection in the Final Rejection,
and, therefore, not on appeal.

RELATED APPLICATION
The Examiner relies on copending Application 10/649,074 filed on
August 26, 2003 in a provisional double patenting rejection under § 101 of
the claims 1-11, 13-19, and 21 on appeal. The copending application is also
on appeal (Appeal No. 2008-0652).

STATEMENT OF THE CASE
Appellants’ invention relates to an interconnect for a location
dependent device, such as deployed on an automobile. The interconnect
comprises a bus adapted to provide a bus signal to the location dependent
device and a plurality of electrical contacts external to the location
dependent device. The plurality of contacts is capable of providing a signal
2
Appeal 2008-0891
Application 10/679,180

indicative of a physical location of the location dependent device when the
location dependent device is installed.1
The Examiner relies on the following prior art references to show
unpatentability:
Card US 5,576,698 Nov. 19, 1996
Takagi US 6,441,748 B1 Aug. 27, 2002
Rafert US 6,497,659 B1 Dec. 24, 2002
The issues raised on appeal are:
1. Did the Examiner err in provisionally rejecting claims 1-11, 13-19,
and 21 under 35 U.S.C § 101 as claiming the same invention as
that of claims 1-14 and 18-25 of copending Application
10/649,074? This issue turns on the interpretation of the
expressions “location dependent device” in the claims on appeal
and the “attitude control device” in the claims of the copending
Application, and whether these expressions define identical subject
matter within the meaning of 35 U.S.C § 101.
2. Did the Examiner err in rejecting claims 1 and 8-12 under 35
U.S.C. § 102(e) as being anticipated by Rafert? This issue turns on
whether Rafert teaches all structural elements recited in the claims
on appeal within the meaning of 35 U.S.C. § 102(e).
3. Did the Examiner err in rejecting claims 1, 13, and 21 under 35
U.S.C. § 102(b) as being anticipated by Takagi? This issue turns
on whether Takagi teaches all structural elements recited in the
claims on appeal within the meaning of 35 U.S.C. § 102(b).

1 See generally Spec. 1-4.
3
Appeal 2008-0891
Application 10/679,180

4. Did the Examiner err in rejecting claims 1-6, 8, 11, 13, 14, and 17-
19 under 35 U.S.C. § 102(b) as being anticipated by Card? This
issue turns on whether Card teaches all structural elements recited
in the claims on appeal within the meaning of 35 U.S.C. § 102(b).
5. Did the Examiner err in rejecting claims 4 and 5 under 35 U.S.C.
§ 103(a) as being unpatentable over Card? This issue turns on
whether the Examiner has established a prima facie case of
obviousness for the claims on appeal within the meaning of 35
U.S.C. § 103(a) based on the teachings of Card.
For clarity, we reproduce independent claim 1 on appeal and
independent claim 1 of the copending Application as follows. The
differences between the claims are italicized for emphasis.
Application 10/679,180 On Appeal Copending Application 10/649,074
1. An interconnect for a location
dependent device, comprising:
1. An interconnect for an
attitude control device, comprising:
at least one bus adapted to provide
at least one bus signal to the location
dependent device; and
at least one bus adapted to
provide at least one bus signal to the
attitude control device; and
a plurality of electrical contacts
external to the location dependent
device and capable of providing a
signal indicative of a physical
location of the location dependent
device when the location dependent
device is installed.
a plurality of electrical contacts
external to the attitude control
device and capable of providing a
signal indicative of a physical
location of the attitude control
device when the attitude control
device is installed.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Appeal Brief filed on October 23, 2006 and the Examiner’s
Answer mailed on February 2, 2007 for their respective details. In this
decision, we have considered only those arguments actually made by
4
Appeal 2008-0891
Application 10/679,180

Appellants. Arguments which Appellants could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
Claim Construction
At the onset, we construe claim 1 based on the Specification and
Appellants’ arguments. We look to the Specification of the present
application to construe the meanings of the terms “location dependent
device” and “attitude control device.” Phillips v. AWH Corp. 415 F.3d
1303, 1315 (Fed. Cir. 2005). Appellants explain that the preamble recitation
of "an interconnect for a location dependent device" in claim 1 on appeal
and the preamble recitation of “an interconnect for an attitude control
device” in claim 1 of the copending Application imply a structural limitation
and therefore must be treated as claim limitations (Br. 6). We agree that
claim 1 on appeal requires a location dependent device. This interpretation
is supported by the fact that the first paragraph of claim 1 refers back to and
repeats the requirement that the interconnect comprises the location
dependent device.
The first paragraph of claim 1 on appeal also requires at least one bus
electrically connected to the location dependent device, so that the at least
one bus signal can be transmitted to the location dependent device. If not so
connected, the at least one bus cannot transmit a signal to the location
dependent device. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950
(Fed. Cir. 2006), citing In re Danly, 263 F.2d 844, 847 (CCPA 1959)
(“limiting claims to require that the claimed device actually be connected to
5
Appeal 2008-0891
Application 10/679,180

an alternating current source because, although the claims ‘do not positively
recite a source of alternating current as an element of the claims,’ any other
interpretation would render certain language in the claims meaningless”).
The second paragraph of claim 1 on appeal requires a plurality of
electrical contacts, which is external to the location dependent device. The
plurality of electrical contacts has a structure capable of providing a signal
indicative of a physical location of the location dependent device when the
location dependent device is installed. Representative structures where the
plurality of electrical contacts is capable of providing a signal indicative of a
physical location of the location dependent device (or attitude control
device) when the location dependent device (or attitude control device) is
installed are discussed on pages 9-11 and shown in Figures 3A to 3C of the
Specification.
One such structure includes an arrangement where a first electrical
contact (305) provides the reference voltage to second electrical contact(s)
(310(1-6)) as illustrated in Figure 3A, while other of the second contacts
have no connection to the first electrical contact (Spec. 9-10). Figure 3B
illustrates an alternative structure, where a plurality of fuses (320) is formed
intermediate the first electrical contact (305) and the second electrical
contacts (310(1-6)) (Spec. 10-11). Figure 3C illustrates another alternative
structure, where a circuit element (325), which includes a resistor, a
capacitor, a voltage reference circuit, and the like, is arranged between a first
electrical contact (330) and a second electrical contact (335) (Spec. 11).
These alternative structures shown in Figures 3B and 3C correspond to
claims 7, 15, and 16 on appeal, which were not rejected over prior art in the
Final Rejection.
6
Appeal 2008-0891
Application 10/679,180

While not limited to the structures shown in Figures 3A to 3C or those
claimed in claims 7, 15, and 16, we construe the claim 1 limitation, a
plurality of contacts capable of providing a signal indicative of the physical
location of the location dependent device when the location dependent
device is installed, to define an arrangement of the plurality of contacts alone
or a plurality of contacts in conjunction with other structures that
collectively have the property of providing a signal indicative of a physical
location of the location dependent device when the location dependent
device is installed into the plurality of electrical contacts.
In conclusion, we construe claim 1 on appeal to define:
an interconnect comprising an location dependent device
connected to a plurality of electrical contacts through a bus,
the plurality of electrical contacts being external to the location
dependent device, and
the plurality of contacts having an arrangement of contacts
alone or an arrangement of contacts with additional structure(s)
capable of providing a signal indicative of a physical location of the
location dependent device when the location dependent device is
installed therein (i.e., into the plurality of contacts).

The § 101 Double Patenting Rejection
Claims 1-11, 13-19, and 21 on appeal stand rejected under 35 U.S.C.
§ 101 as claiming the same invention as that of claims 1-14 and 18-25 of
copending Application 10/679,074 (Ans. 2-3). We reverse this rejection.
As shown in the claim comparison on page 3 of this Decision, the
differences between claim 1 on appeal and claim 1 of the copending
7
Appeal 2008-0891
Application 10/679,180

Application include the words “location dependent” of claim 1 on appeal
being replaced with the words “attitude control” in claim 1 of the copending
Application. The Examiner takes the position that “[t]he sole difference
between the claim sets is the intended use” (Ans. 3). The Examiner argues
that the intended use of the claimed inventions does not result in a structural
difference between the invention claimed on appeal and that in the
copending Application (Ans. 3). Therefore, the claim sets are not patentably
distinct (Ans. 3).
As previously mentioned, we construe claim 1 on appeal to require an
interconnect including a “location dependent device.” In a similar manner,
we construe claim 1 of the copending Application to require an interconnect
including an “attitude controlling device.” The Specification of the present
application describes that location dependent devices include “[m]otors
and/or sensors [that] are typically installed in various positions on a vehicle
to detect location dependent events and/or perform location dependent
actions” (Spec. 2). One example is a plurality of “sensors… deployed at a
corresponding plurality of positions around an automobile in order to detect
impacts at one or more of the plurality of positions” (e.g., sensor for air bags
in an automobile) (Spec. 2). Another example of a location dependent
device is an attitude control device, which deploys “a plurality of attitude
control motors… at a plurality of locations on a guided missile” (e.g.,
“motors… used to change the heading of the guided missile so that the
guided missile travels in a desired direction”) (Spec. 2). While a “location
dependent device” includes both these examples, an “attitude control
device” only includes the second example. Thus, a “location dependent
device” has a meaning broader than an “attitude control device” that
8
Appeal 2008-0891
Application 10/679,180

includes an “attitude control device.” Based on these facts, a “location
dependent device” is not the same as or is not identical to an “attitude
control device.” Therefore, the claims on appeal and those of the copending
Application do not define the "same invention" within the context of 35
U.S.C. § 101. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel,
422 F.2d 438 (CCPA 1970).
Accordingly, we will not sustain the Examiner’s provisional rejection
of independent claim 1 under § 101 nor dependent claims 2-11. Likewise,
we will also not sustain the Examiner’s provisional rejection under § 101 of
claims 13-19 and 21 for similar reasons.

The Anticipation Rejection Over Rafert
Claims 1 and 8-12 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Rafert (Ans. 3). We reverse this rejection.
The Examiner states that the claims on appeal do not positively claim
a “location dependent device” (Ans. 6). In addition, the Examiner equates
the cable (12) of Rafert to the “bus” claimed on appeal and cites a dictionary
of electronics in support of this position (Ans. 6).
As mentioned above, we construe claim 1 on appeal to require
structure including a “location dependent device.” Since the Examiner has
not shown where Rafert teaches a location dependent device, the Examiner
has not established a proper anticipation rejection. 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. App. Dig. Data Sys., Inc., 730
9
Appeal 2008-0891
Application 10/679,180

F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1554 (Fed. Cir. 1983).
With respect to the bus limitation in the claims on appeal, it is
understood by those skilled in the art that a bus includes a conductor or set
of conductors used as a path for conveying information or power from one
or more sources to one or more destinations. We refer to a dictionary
definition of the word "bus." Agfa Corp. v. Creo Products, Inc., 451 F.3d
1366, 1376 (Fed. Cir. 2006) (noting that general purpose dictionaries may be
helpful when claim construction involves “little more than the application of
widely accepted meaning of commonly understood words”) (citation
omitted).
“A bus is required to carry a number of different types of information,
e.g. for data transference, for control and for addressing.”2 Unlike a point-
to-point connection of the cable 12 proposed by Rafert, a bus can logically
connect several peripherals over the same set of wires. Thus, the cable (12)
as taught by Rafert is not a bus, as required in the claims on appeal.
Since the Examiner has not shown where Rafert teaches all structural
elements recited in claim 1 on appeal, the Examiner has not established a
prima facie case of anticipation. Therefore, the anticipation rejection of
claim 1 is reversed. We will also reverse the anticipation rejection of claims
8-12 for similar reasons.

2 Newnes Dictionary of Electronics (4 Ed. 1999).th Retrieved June 12, 2008,
from http://www.credoreference.com/entry/753961.
10
Appeal 2008-0891
Application 10/679,180

The Anticipation Rejection Over Takagi
Claims 1, 13, and 21 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Takagi (Ans. 4). We reverse this rejection.
The Examiner explains that Takagi comprises at least one bus (15,
16), as claimed in claim 1 on appeal, “adapted to provide at least one bus
signal to the location dependent device” (Final Rej. 3-4). Appellants do not
challenge this position.
Concerning the other limitations in claim 1 on appeal, we refer to
Figures 7 and 8 of Takagi. These figures show container (22) containing
sensor units (1) (Takagi, col. 4, ll. 27-32). Each sensor unit (1) contains a
sensor (2) (Takagi, col. 2, ll. 40-42). The sensor (2) measures one or more
physical values of the road surface condition (Takagi, col. 2, ll. 40-42). A
differential GPS unit (20) may replace one sensor unit (1) (Takagi, col. 4, ll.
27-32 and 47-49). The differential GPS unit (20) “provides wireless
transmission of global positioning data and signals related to the road
surface condition as sensed by the sensor units” (1) (Takagi, col. 4, ll. 49-
52).
The Examiner states that Takagi discloses “a plurality of electrical
contacts (contacts of 20) external to the location dependent device” (1) “and
capable of providing a signal indicative of a physical location of the location
dependent device when the location dependent device is installed” (Ans. 4).
The Examiner further explains that "it is inherently [sic] that GPS units to
properly function should have contacts capable of providing a signal (23)
indicative of a physical location [of the] location dependent device when the
location dependent device is installed (Fig. 8 of Takagi et al)" (Ans. 6). We
cannot agree.
11
Appeal 2008-0891
Application 10/679,180

An arrangement or structure of the plurality of electrical contacts of
GPS unit (20) of Takagi, either alone or with additional structure, is not
described or shown by Takagi. We cannot find within the teachings of
Takagi nor does the Examiner explain how or why the plurality of electrical
contacts of GPS unit (20) have any arrangement or structure capable of
providing a signal, allegedly via the wireless signal (23), indicative of the
physical location of the location dependent device (1) when the location
dependent device (1) is installed into the plurality of electrical contacts, as
required in claim 1 on appeal. "In relying upon the theory of inherency, the
examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art."
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (emphasis in original).
See also In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). The Examiner
provides no factual and/or technical reason associating the alleged plurality
of electrical contacts of GPS unit (20) taught by Takagi with the location
dependent device (1) and/or the wireless signal (23) as taught therein.
Accordingly, we find that Takagi fails to teach or suggest (either explicitly
or inherently) a plurality of contacts having an arrangement of contacts alone
or an arrangement of contacts with additional structure(s) that is capable of
providing a signal indicative of a physical location of the location dependent
device when the location dependent device is installed therein, as required in
claim 1 on appeal.
Furthermore, the Examiner’s argument associating the contacts of
GPS unit (20) with the location dependent device (1) of Takagi (Ans. 4)
misconstrues claim 1 on appeal. As explained in the Claim Construction
12
Appeal 2008-0891
Application 10/679,180

section on page 7 of this Decision, claim 1 on appeal requires, among other
things, that the location dependent device is connected to and installed in the
plurality of electrical contacts. In other words, the location dependent
device is connected to and installed in the plurality of electrical contacts for
the location dependent device, not connected to and installed in contacts for
another device, such as the contacts for GPS unit (20) as discussed in
Takagi. Accordingly, the contacts of GPS unit (20) of Takagi cannot teach
or be equated to the plurality of electrical contacts as required in the claims
on appeal.
Since the Examiner has not shown where Takagi teaches all structural
elements recited in claim 1 on appeal, the Examiner has not established a
prima facie case of anticipation. Therefore, the anticipation rejection of
claim 1 is reversed. We will also reverse the anticipation rejection of claims
13 and 21 for similar reasons.

The Anticipation Rejection Over Card
Claims 1-6, 8, 11, 13, 14, and 17-19 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Card (Ans. 4). We reverse this rejection.
The Examiner argues that the teachings of Card disclose an
interconnect comprising a bus (aL) with a plurality of contacts connecting it
to a device MC’ (Ans. 4), apparently referring to Figure 2 of Card. The
Examiner dismisses the preamble and expressions in claim 1 on appeal
including the words "capable of" and "adapted to," as being functional in
nature and not positively reciting structural limitations (Ans. 7).
The Examiner incorrectly interprets claim 1 on appeal. As discussed
in the above Claim Construction, we construe claim 1 to require an
13
Appeal 2008-0891
Application 10/679,180

interconnect comprising a location dependent device connected to a plurality
of electrical contacts through a bus, the plurality of electrical contacts being
external to the location dependent device, and the plurality of electrical
contacts having an arrangement of contacts alone or an arrangement of
contacts with additional structure(s) capable of providing a signal indicative
of a physical location of the location dependent device when the location
dependent device is installed therein.
Since the Examiner has not shown where Card teaches all structural
elements recited in claim 1 on appeal, the Examiner has not established a
prima facie case of anticipation. Therefore, the anticipation rejection of
claim 1 is reversed. We will also reverse the anticipation rejection of claims
1-6, 8, 11, 13, 14, and 17-19 for similar reasons.

The Obviousness Rejection Over Card
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Card (Ans. 4). We reverse this rejection.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Previously, we explained that the teachings of Card do not teach an
interconnect comprising an location dependent device connected to a
plurality of electrical contacts through a bus, the plurality of electrical
contacts being external to the location dependent device, and the plurality of
contacts having an arrangement of contacts alone or an arrangement of
14
Appeal 2008-0891
Application 10/679,180

contacts with additional structure(s) that is capable of providing a signal
indicative of a physical location of the location dependent device when the
location dependent device is installed therein, as required in claim 1 on
appeal. In addition, the teachings of Card do not suggest these claimed
structures. Due to these deficiencies in the teachings of Card, we cannot
sustain the obviousness rejection.
Furthermore, on page 11 of the Appeal Brief, Appellants argue that:
Card is completely silent with regard to the physical location of the
modules coupled to the bus. To the contrary, the device described by
Card is only concerned with the logical address of the module and the
physical location of the module is irrelevant. Card therefore fails to
teach or suggest a plurality of contacts capable of providing a signal
indicative of a physical location of the location dependent device
when the location dependent device is installed, as set forth in claims
1 and 13. (Emphasis Appellants’)
The Examiner concedes that the address described by Card may not indicate
a physical address (Ans. 7) and does not explain how or why the aforesaid
limitations would have been obvious in view of the teachings of Card.
Without a factual basis in the record showing the obviousness of the
limitations, the Examiner has failed to establish a prima facie case of
obviousness. Accordingly, we cannot sustain the § 103(a) rejection of
appealed claims 4 and 5 and any dependent claims based thereon. See
Graham, 383 U.S. at 17.

CONCLUSION
1. The Examiner’s decision provisionally rejecting claims 1-11, 13-
19, and 21 under 35 U.S.C § 101 as claiming the same invention as
that of claims 1-14 and 18-25 of copending Application
10/679,074 is reversed.
15
Appeal 2008-0891
Application 10/679,180

2. The Examiner’s decision rejecting claims 1 and 8-12 under 35
U.S.C. § 102(e) as being anticipated by Rafert is reversed.
3. The Examiner’s decision rejecting claims 1, 13, and 21 under 35
U.S.C. § 102(b) as being anticipated by Takagi is reversed.
4. The Examiner’s decision rejecting claims 1-6, 8, 11, 13, 14, and
17-19 under 35 U.S.C. § 102(b) as being anticipated by Card is
reversed.
5. The Examiner’s decision rejecting claims 4 and 5 under 35 U.S.C.
§ 103(a) as being unpatentable over Card is reversed.

16
Appeal 2008-0891
Application 10/679,180

REVERSED

eld

WILLIAMS, MORGAN & AMERSON
10333 RICHMOND, SUITE 1100
HOUSTON TX 77042
17