11861710 (P.T.A.B. Sep. 6, 2016)

Ex Parte Martin

Patent Trial and Appeal BoardSep 6, 2016

11861710 (P.T.A.B. Sep. 6, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/861,710 09/26/2007 Warren Thomas Martin 1505-0198 8818 28078 7590 09/06/2016 MAGINOT, MOORE & BECK, LLP One Indiana Square, Suite 2200 INDIANAPOLIS, IN 46204 EXAMINER MURPHY, JEROLD B ART UNIT PAPER NUMBER 2687 MAIL DATE DELIVERY MODE 09/06/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WARREN THOMAS MARTIN ____________________ Appeal 2014-007055 Application 11/861,710 Technology Center 2600 ____________________ Before JON M. JURGOVAN, JOHN F. HORVATH, and AARON W. MOORE, Administrative Patent Judges. HORVATH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks review, under 35 U.S.C. § 134(a), of the Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2014-007055 Application 11/861,710 2 SUMMARY OF THE INVENTION The invention is directed to a utility meter adapted to communicate with an external device. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A utility meter adapted to communicate with a device external to the utility meter, the device external to the utility meter configured to communicate according to a module protocol, the utility meter comprising: a meter housing; a first port and a second port provided in the utility meter, the first port adapted to receive signals transmitted from outside the meter housing; a communications module connected to the second port, the communications module adapted to communicate with the device external to the utility meter; and a processor connected to the first port and the second port, the processor configured for selective operation in a first mode and a second mode, wherein the processor is configured to communicate with the first port and the second port according to a meter protocol in the first mode, and wherein the processor is configured to pass signals received at the first port to the communications module through the second port according to the module protocol in the second mode, the meter protocol having a baud rate that is different than the module protocol. REFERENCES Oliver Martin Kelley et al. US 5,682,422 US 2004/0004555 A1 US 6,867,707 B1 Oct. 28, 1997 Jan. 8, 2004 Mar. 15, 2005 Appeal 2014-007055 Application 11/861,710 3 REJECTIONS Claims 1–11, 13, 16, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kelley and Oliver. Non-Final Act. 11. Claims 12, 14, 15, 17, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kelley and Martin. Non-Final Act. 5. ANALYSIS Claims 1–11, 16, and 19 Appellant argues claim 1 is patentable over the combination of Kelley and Oliver because Kelley fails to teach or suggest “a processor configured to pass signals received at [a] first port to [a] communications module through [a] second port,” as recited in claim 1. App. Br. 18. The Examiner finds Kelley’s disclosure of sending configuration data to a meter through an optical port, and verifying the meter configuration through communications between an automated meter reading (AMR) server and a communications module attached to the meter’s auxiliary port teaches this limitation. See Non-Final Act. 11–12 (citing Kelley 6:9–17, 6:61–7:20, 7:37–41; Figs. 2–3). Appellant argues the portions of Kelley cited by the Examiner fail to teach a processor passing configuration signals from a first port to a second port, and instead teaches: passing information to the communications module from a network server, and not through the meter, much less a meter processor . . . . In other words, the meter processor of Kelley does not have a “second mode” passing configuration signals to the communication module. App. Br. 9–10. We are not persuaded by Appellant’s arguments. The test for obviousness is “whether the teachings of the prior art, taken as a whole, would have made obvious the claimed invention.” In re Appeal 2014-007055 Application 11/861,710 4 Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991) (emphasis added). The test includes considering “what the combined teachings of the [prior art] would have suggested to one of ordinary skill in the art.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (emphasis added). We agree with the Examiner that the disclosures in Kelley, when taken as a whole and as understood by a person of ordinary skill in the art, teach or suggest “a processor is configured to pass signals received at the first port to the communications module through the second port,” as recited in claim 1. Kelley teaches meter 331c is connected to AMR server 316 over public switched telephone network (PSTN) 341. Kelley 6:9–17; Fig. 3. Meter 331c connects to PSTN 341 through communications module 343a, which is connected to an auxiliary port of meter 331c. Id. To facilitate communications with AMR server 316, meter 331c receives programming instructions and configuration data from laptop 321 through optical port 324b, including the telephone number needed by communication interface 343a to communicate with AMR server 316 over PSTN 341. Id. at 6:61– 7:20; Fig. 3. AMR server 316 subsequently establishes communication with meter 331c, and verifies the meter’s configuration data. Id. at 7:34–41. We agree with the Examiner that these disclosures, when viewed by a person of ordinary skill in the art, teach or suggest that meter 331c receives the telephone number needed to communicate with AMR server 316 through optical port 324b, and passes the telephone number to communications interface 343a through the meter’s auxiliary port. Id. at Fig. 3. Appellant next argues the Examiner erred in rejecting claim 1 because the combination of Kelley and Oliver fails to teach or suggest a processor “configured to communicate with the first port and the second port Appeal 2014-007055 Application 11/861,710 5 according to a meter protocol . . . and to pass signals received at the first port . . . through the second port according to a module protocol,” as recited in claim 1. Reply Br. 10–11. Appellant argues the passage in Oliver the Examiner cited to teach these limitations refers to the operations of a modem, rather than a processor, and that “[n]othing in Oliver hints that it can use a meter protocol with either port, must less both.” Id. at 11–12. We are not persuaded by Appellant’s arguments. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., Inc. 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds Kelley, not Oliver, teaches a meter processor configured to pass configuration information from a first (optical) port to a second (auxiliary) port. See Kelley 6:9–17, 6:61–7:20, 7:37–41; Figs. 2–3. Kelley further teaches verifying the meter configuration by having the processor pass metering data to both the first and second ports. Id. at 7:34–64; Fig. 4C (verifying meter operation by comparing meter readings sent to AMR server 316 through the second port to meter readings sent to laptop 321 through the first port). The Examiner finds Oliver teaches a processor (e.g., microcontroller U1) that operates in a 300 baud mode to pass communications information, and a 1200 baud mode to pass telemetry data (e.g., meter readings). See Non-Final Act. 12–13 (citing Oliver 11:56– 12:5). Consequently, we agree with the Examiner that the combination of Kelley and Oliver teaches or suggests a processor communicating with the first port and the second port according to a (1200 baud) meter protocol, and Appeal 2014-007055 Application 11/861,710 6 passing signals received at the first port to the second port according to a (300 baud) module protocol.1 See id. at 11–13; Ans. 9–11. Appellant also argues the Examiner erred in rejecting claim 19 because “[t]he modification of Kelley proposed in connection with the rejection of claim 19 does not cure the deficiencies of Kelley with respect to underlying claim 18.” App. Br. 19. We are not persuaded by Appellant’s arguments, because we are not persuaded the Examiner erred in rejecting claim 18 for the reasons explained above with respect to claim 1.2 1 The Specification does not define a “meter protocol” or a “module protocol.” Instead, it discloses the meter can operate in either “normal mode” or “pass-thru mode.” In “normal mode,” metering data is passed using a “meter protocol” having “a predefined baud rate, data word length, stop bits, etc.” Spec. ¶¶ 30, 40. In “pass-thru mode,” configuration data is passed “from the optical port to the meter aux port 114” at a baud rate determined by setting the processor “baud rate to [a] specified pass-thru rate.” Id. ¶¶ 44, 47. Accordingly, we construe a processor configured to communicate with the first and second ports according to a metering protocol in the first mode, and to pass signals received at the first port to the communications module through the second port according to a module protocol in the second mode, to mean a processor configured to pass metering data to the first and second ports at a first baud rate, and to pass configuration data from the first port to the communications module through the second port at a second baud rate. 2 Although the Examiner rejected claim 18 under 35 U.S.C. § 103(a) as obvious over Kelley and Martin, the Examiner did not rely on Martin to disclose any limitation actually recited in claim 18. See Non-Final Act. 5, 8–10. Rather, the Examiner relied on Martin solely for teaching sending configuration signals directly from the optical port to the auxiliary port, which is a limitation not required by claim 18. See id. at 9–10; App. Br. 23– 24 (Claims App’x). Therefore, the Examiner’s failure to cite Martin in the rejection of claim 19, which depends from claim 18, is not fatal to the rejection of claim 19, because Martin is not needed to support the rejection of either claim 18 or claim 19. Appeal 2014-007055 Application 11/861,710 7 For the reasons discussed above, we sustain the Examiner’s rejection of claims 1 and 19. Appellant does not separately argue the patentability of claims 2–11 and 16. App. Br. 18. Accordingly, we sustain the Examiner’s rejection of claims 2–11 and 16 for the same reasons as claim 1. Claims 12, 14, 15, 17, 18, and 20 Appellant argues the Examiner erred in rejecting claims 12 and 18 because the passage of Kelley cited by the Examiner for teaching sending configuration information from the optical port to the auxiliary port pertains to “communications between the communication server 316 and the meter 331c.” App. Br. 10; see also id. at 14–15. We are not persuaded by Appellant’s argument for the reasons discussed above with respect to claim 1. Appellant next argues the Examiner erred in rejecting claim 12 because, although Martin “teaches communicating signals directly with its optical port, and communicating signals directly with its auxiliary port,” doing so “is not the same as passing signals received at one port directly through to another port.” App. Br. 8. We are not persuaded by Appellant’s arguments. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” Merck, 800 F.2d at 1097. The Examiner finds Kelley, not Martin, teaches passing configuration information received at the optical port to the communications module through the auxiliary port. See Non-Final Act. 6–7 (citing Kelley, 6:61–7:20, 7:37–41; Figs. 2–3). As Appellant admits, App. Br. 8–9, the combination of Kelley and Martin teaches that Kelley’s processor can directly communicate with both its Appeal 2014-007055 Application 11/861,710 8 optical port and its communications interface through its auxiliary port. Accordingly, the combination of Kelley and Martin teaches or suggests a processor operating in “a second mode in which the processor passes configuration signals received at the optical port directly to the communications module through the auxiliary port,” as recited in claim 12. App. Br. 22 (Claims App’x). Appellant next argues the Examiner erred in rejecting claim 12 because the Examiner’s rationale for combining Kelley and Martin “does not appear to bear any relation to providing signals received at one port to the other port.” App. Br. 11. Appellant further argues that because Kelley’s optical port “simply provides direct communication with another computer 321 directly coupled via an optical probe 324b,” any advantage of coupling to different networks “would not lead one to modify Kelley to include a processor mode in which it ‘. . . passes configuration signals received at the first optical port directly to the communications module through the auxiliary port.’” Id. We are not persuaded by Appellant’s arguments. As discussed above, Kelley teaches or suggests meter 331c receives the telephone number needed to communicate with AMR server 316 through optical port 324b, and passes the telephone number to communications interface 343a through its auxiliary port. Kelley 6:9–17, 6:61–7:41; Fig. 3; see also Ans. 6. Martin teaches or suggests a meter having a processor, optical port, and auxiliary port, “wherein the processor communicates directly with both the optical and auxiliary ports.” Ans. 6 (citing Martin, Fig. 2). The Examiner, therefore, concludes that the combined teachings of Martin and Kelley would have been obvious to a person of ordinary skill in the art because Martin teaches “a known technique of providing the internal Appeal 2014-007055 Application 11/861,710 9 connections for meters [like Kelley’s] having both optical and auxiliary ports.” Id. We agree with the Examiner’s conclusion, and adopt it as our own. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Claim 14 recites the meter of claim 12, “wherein the processor does not parse the configuration signals from the optical port when passing the configuration signals to the auxiliary port.” App. Br. 23 (Claims App’x). Appellant argues this claim means the “processor has no control over the [configuration] information and does not process or store it,” but acts “merely [as] a conduit.” Id. at 13–14. Appellant argues claim 14 is patentable over the combination of Kelley and Martin because neither reference “contemplate[s] the idea of providing a means for establishing a point-to-point communication link between a device connected to the optical port and a communications module with a meter housing.” Id. at 13. We are not persuaded by Appellant’s arguments. As Appellant admits (App. Br. 8–9), the combination of Kelley and Martin teaches that Kelley’s processor can directly communicate with both its optical port and its communications interface through its auxiliary port. Moreover, Kelley teaches or suggests the processor in meter 331c can receive the telephone number needed to communicate with AMR server 316 through optical port 324b, and pass it to communications interface 343a through its auxiliary port. Kelley 6:9–17, 6:61–7:41; Fig. 3. Accordingly, the combination of Kelley and Martin teaches or suggests “the processor Appeal 2014-007055 Application 11/861,710 10 does not parse the configuration signals from the optical port when passing the configuration signals to the auxiliary port,” as recited in claim 14. For the reasons discussed above, we are not persuaded the Examiner erred in rejecting claims 12, 14, and 18, and sustain the Examiner’s rejections. Appellant does not separately argue the patentability of claims 15, 17, and 20, which depend from claims 12 and 18. App. Br. 12, 15. Accordingly, we sustain the Examiner’s rejection of these claims for the same reasons as claims 12 and 18. Claim 13 The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious over the combination of Kelley and Martin. Non-Final Act. 5–7. The Examiner rejected claim 13, which depends from claim 12, under 35 U.S.C. § 103(a) as obvious over the combination of Kelley and Oliver. Id. at 11, 16–17. Appellant argues the Examiner erred in rejecting claim 13 because the Examiner relied on Martin for teaching “the processor passes configuration signals received at the optical port directly to the communications module through the auxiliary port,” as recited in claim 12, but failed to allege that this limitation, which appears in claim 13 by way of its dependency from claim 12, is taught by Oliver. App. Br. 18–19. Although it is apparent that the Examiner meant to reject claim 13 as obvious over Kelley, Martin, and Oliver, because Appellant’s argument is technically correct, we reverse the Examiner’s rejection of claim 13. Appeal 2014-007055 Application 11/861,710 11 New Grounds of Rejection Claim 13 Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 13 under 35 U.S.C. § 103(a) as unpatentable over the combination of Kelley, Martin, and Oliver. Kelley teaches a utility meter 331c adapted to communicate with a device (AMR server 316) that is external to the meter. Kelley, Fig. 3. Kelley teaches utility meter 331c includes an optical port for receiving optical signals from laptop 321 outside the utility meter, and converting the optical signals to electrical signals to program a processor in the utility meter with computer executable instructions. Id. at 2:30–37, 6:61–7:7; Fig. 3. Kelley teaches the processor is connected to an auxiliary port because it teaches the meter is connected to and transmits data to a communications interface 343. Id. at 6:16–18; Fig. 3. Kelley teaches the processor is configured to operate in a first mode in which it delivers metrology data to the communications module through the auxiliary port, and to laptop 321 through the optical port. Id. at 7:34–64; Fig. 3, 4C (steps 423–425). The combination of Kelley and Martin teaches or suggests the processor is configured to operate in a second mode in which it directly passes configuration signals received at the optical port to the communications module through the auxiliary port. See Kelley 2:32–37, 6:3–18, 6:61–7:41; Fig. 3; Martin, Fig. 2. In particular, Kelley teaches receiving a telephone number (configuration signal) via an optical port on meter 331c, and using the telephone number to communicate with AMR server 316 over PSTN 341. See Kelley 2:32–37, 6:3–18, 6:61–7:41; Fig. 3. It would have been obvious to a person of ordinary skill in the art that to Appeal 2014-007055 Application 11/861,710 12 communicate with server 316 over PSTN 341, Kelley’s communications interface 343a needs a modem programmed with the received telephone number. Martin teaches a known meter architecture in which information received at optical port 36 can be directly passed by processor 28 to modem 38 through an auxiliary port. Thus, a person of ordinary skill in the art would have found it obvious to modify Kelley, based on the teachings of Martin, to directly pass the telephone number received at Kelley’s optical port to the modem needed by Kelley’s communications interface 343a to enable communication with AMR server 316 over PSTN 341. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. The combination of Kelley and Martin does not teach or suggest the processor communicates in the first mode using a meter protocol, and in the second mode using a module protocol. As explained supra, the broadest reasonable interpretation of a processor configured to communicate with the first and second ports according to a metering protocol in the first mode and to pass signals received at the first port to the second port according to a module protocol in the second mode, is a processor that is configured to pass metering data to the first and second ports at a first baud rate, and to pass configuration data from the first port to the second port at a second baud rate. Oliver teaches a processor (microcontroller U1) configured to send metering data at a first baud rate (1200 baud), and to send configuration data at a second baud rate (300 baud). Oliver 11:65–12:3; Fig. 3. It would have Appeal 2014-007055 Application 11/861,710 13 been obvious to a person of ordinary skill in the art at the time of the invention to further modify/configure the Kelley/Martin processor to transfer metering and configuration data at different baud rates, because doing so would enable the processor to communicate with devices having different communications capabilities. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field [of endeavor] or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. KSR, 550 U.S. at 417. DECISION The rejection of claims 1–11, 16, and 19 as obvious under 35 U.S.C. § 103(a) over Kelley and Oliver is affirmed. The rejection of claims 12, 14, 15, 17, 18, and 20 as obvious under 35 U.S.C. § 103(a) over Kelley and Martin is affirmed. The rejection of claim 13 as obvious under 35 U.S.C. § 103(a) over Kelley and Oliver is reversed. Pursuant to our authority under 37 C.F.R. § 41.50(b), claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kelley, Martin, and Oliver. Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Rather, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, Appellant must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the newly rejected claims: Appeal 2014-007055 Application 11/861,710 14 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 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-IN-PART 37 C.F.R. § 41.50(b)