Ex Parte McKim et al

Patent Trial and Appeal Board

Mar 19, 2014

11873429 (P.T.A.B. Mar. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES P. MCKIM JR., JOHN W. HYDE, MARKO VULOVIC,
BUCK H. CHAN, JOHN F. KENNY, and RICHARD A. CARLSON
____________

Appeal 2011-012180
Application 11/873,429
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-4, 11-14, and 21-32.
Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
INVENTION
This invention relates to "a modular instrumentation system with
modules that are galvanically isolated from each other while still having
intermodule synchronization capability." (Spec. [0004]). Claim 1,
reproduced below is illustrative of the claimed subject matter:
1. A method for synchronous triggering of events in a plurality
of modules, the method comprising:
[a] providing each module with a corresponding
communications link to a common controller, each
communication link comprising a corresponding data out line
and a corresponding clock line carrying a corresponding clock
signal, wherein all of the clock signals are derived from a
single, common, clock source;
[b] independently selectively enabling and disabling each of the
clock signals at the controller;
[c] transmitting from the controller to a first one of the modules
over the corresponding clock line for the first module the
corresponding clock signal, and
[d] transmitting from the controller to the first module over the
corresponding data outline for the first module a first send
packet synchronous with the clock source, wherein the first
send packet contains at least one bit position defined as a
trigger bit for the first module;
[e] transmitting from the controller to a second one of the
modules over the corresponding clock line for the second
module the corresponding clock signal, and transmitting from
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the controller to the second module over the corresponding data
out line for the second module a second send packet
synchronous with the clock source, wherein the second send
packet contains at least one bit position defined as a trigger bit
for the second module;
[f] triggering an event in the first module upon receipt by the
first module of the trigger bit in the first send packet; and
[g] triggering an event in the second module upon receipt by the
second module of the trigger bit in the second send packet.
(Contested limitations emphasized; limitations lettered).
REJECTIONS
R1. Claims 1, 4, 11, 14, 23, 28 and 29 stand rejected under 35 U.S.C.
§ 102 as being anticipated over U.S. Patent 4,661,914 ("Mulokey").
R2. Claims 2 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of U.S. Patent 4,661,914
("Mulokey") and U.S. Patent 6,499,067 B1 ("Honda").
R3. Claims 3 and 30 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of U.S. Patent 4,661,914
("Mulokey") and U.S. Patent Application Publication 2003/0123046 A1
("Heaton").
R4. Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of U.S. Patent 4,661,914
("Mulokey") and Applicant's Admitted Prior Art ("AAPA").
R5. Claims 21, 24 and 31 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combined teachings of U.S. Patent 4,661,914
("Mulokey") and U.S. Patent 4,165,850 ("Dubreucq").
R6. Claims 22, 25, 27 and 32 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combined teachings of U.S. Patent 4,661,914
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("Mulokey") and U.S. Patent Application Publication 2002/0087278 A1
("Odaohhara").
R7. Claim 26 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of U.S. Patent 4,661,914
("Mulokey") and U.S. Patent 6,233,045 B1 ("Suni").

GROUPING OF CLAIMS
We decide the appeal of rejections of claims 28, 29, 30, 31 and 32
separately infra.
ANALYSIS
I. INDEPENDENT CLAIMS 1 AND 11
Issue: Regarding independent claims 1 and 11, did the
Examiner err in finding that the combination of references
taught or suggested "independently selectively enabling and
disabling each of the clock signals at the controller" within the
meaning of these claims?

We have reviewed the Examiner's rejection in light of Appellants’
arguments that the Examiner has erred regarding the disputed limitation (see
App. Br. 8- 9; Reply Br. 3-4). We agree with Appellants' contention that the
Examiner erred in finding Mulokey anticipates the limitation "independently
selectively enabling and disabling each of the clock signals at the controller"
of claim 1 and the corresponding limitation of claim 11. (Id.).
Specifically, we are persuaded the Examiner's interpretation of
"independently selectively" as a temporal limitation is overly broad and
inconsistent with the Specification. (See Ans. 19 “Apparently, Mulokey
discloses the step of disabling each of the clock signals by causing no
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transitions or edges for 10 seconds, and the step of enabling each of the
clock signals with the 192 series of edges after 10 seconds of no transitions
or edges.”; cf. with Spec. ¶[0071], Fig. 14). We decline to adopt the
Examiner's overly broad interpretation of this contested limitation. (Id.).
As pointed out by Appellants:
the Examiner himself explicitly admits that "the clk signal on
clk line 1" and "the clk signal on clk line 3" have the same
waveform! So it is not possible for controller 20 to
independently selectively enable and disable these clock
"signals" as they have been defined by the Examiner.
(Reply Br. 3). We agree with Appellants. (Id.)

Accordingly, we reverse the rejection of independent claims 1 and 11,
and the rejections of associated claims 2-4, 12-14, and 21-27, which each
depend directly or indirectly from claims 1 and 11. For these dependent
claims rejected under §103, the Examiner has not shown the cited secondary
reference(s) overcomes the aforementioned deficiencies of Mulokey.
II. CLAIM 28
Issue: Regarding independent claim 28, did the Examiner err
in finding that the combination of references taught or
suggested "each communication link comprising . . . a
corresponding clock line carrying a corresponding clock signal,
[b] wherein all of the clock signals are synchronized to a single,
common, clock source" within the meaning of claim 28?
Having decided the Examiner erred, in the rejection of claims 1 and
11 supra, we now address the rejections of claims 28 and 30-32 separately
because these claims are silent regarding the contested "independently
selectively enabling…" limitation discussed in the previous section,
regarding claims 1 and 11.
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In the Reply Brief, Appellants contend:
Mulokey et al. repeatedly and consistently state that they
provide a (singular) clock line pair 22 with a (singular) clock
signal 106 to all of their stations. . . . So Applicant respectfully
submits that the Examiner is attempting to reinterpret
Mulokey's patent in a way that is contrary to Mulokey's clear
and consistent teachings.
(Reply Br. 2) (emphasis omitted).
Regarding claim 28, we are not persuaded that Examiner erred in
finding the contested claim limitation, "a corresponding clock line carrying a
corresponding clock signal, wherein all of the clock signals are synchronized
to a single, common, clock source” (claim 28) is disclosed by the branched
vertical clock lines, shown electrically connected to clock source line 22,
which is depicted as an output of controller 20 in Figure 1 of Mulokey.
(Ans. 18-19).
Under a broad but reasonable construction, we conclude claim 28
does not require the clock signals carried by the clock lines to be different
clock signals. Because “applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (citation omitted).
Here, we agree with the Examiner that Mulokey discloses “wherein
all of the clock signals are synchronized to a single, common, clock source”
(claim 1), because the branched vertical clock lines depicted in Figure 1
(shown connecting to Station Controls 1-1, 1-2, . . . , and 1-16 respectively)
are the same clock signal as clock signal 22. Because these vertical
connected branch clock lines are at the same electrical potential as clock
signal 22, we find they are inherently (necessarily) synchronized to clock
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signal 22, within the meaning of independent claim 28. (See Mulokey, Fig.
1).
For these reasons, on this record, we are not persuaded the Examiner
erred in rejecting independent claim 28 as being anticipated by Mulokey.

III. CLAIMS 30-32
Regarding the rejections of dependent claims 30-32, Appellants
contend these claims are patentable by virtue of their dependency from
parent claim 28. (App. Br. 11-12). Appellants further argue that the
additionally cited references do not cure the deficiencies of the rejection of
claim 28. (Id.). However, we find no deficiencies regarding the Examiner’s
rejection of claim 28 for the reasons discussed above. Accordingly, we
sustain the Examiner's rejections of claims 30-32.

IV. CLAIM 29
Regarding dependent claim 29 "[t]he method of claim 28, further
comprising independently selectively enabling and disabling each of the
clock signals at the controller," which contains commensurate language as
the claim 1 limitation [b], we reverse the rejection of claim 29 for the
reasons stated above in the reversal the rejection of claim 1.

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DECISION
We reverse the Examiner's rejection of claims 1, 4, 11, 14, 23, and 29
under §102.
We reverse the Examiner's rejections of claims 2, 3, 12, 13, 21, 22,
and 24-27 under §103.
We affirm the Examiner's rejection of claim 28 under §102.
We affirm the Examiner's rejections of claims 30-32 under §103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a) (1). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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