Ex Parte Poulsen

Patent Trial and Appeal Board

Sep 17, 2013

10671924 (P.T.A.B. Sep. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW S. POULSEN
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Appeal 2011-000322
Application 10/671,924
Technology Center 2400
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Before MAHSHID D. SAADAT, ERIC B. CHEN,
and STACEY G. WHITE, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000322
Application 10/671,924

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Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-12 and 14-25, which are all the claims pending in this
application as claim 13 has been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to interchanging electronic instrument
data from an electronic instrument via different connectors for interchanging
voice data and instrument data (see Spec. 3:3-14).
Exemplary Claim
Independent claim 1 is exemplary of the claims under appeal and
reads as follows:
1. An instrument system, comprising:
an electronic test instrument; and
a network interface module having a first connector for
connecting with the electronic test instrument, a second
connector for connecting with a voice module, and a third
connector for connecting with a network, wherein the network
interface module and the electronic test instrument are
configured to interchange instrument data via the first
connector, wherein the network interface module and the voice
module are configured to interchange voice data via the second
connector, wherein the voice data is in the form of an electronic
signal, wherein the network interface module and the network
are configured to interchange combined voice and instrument
data via the third connector, and wherein the network interface
module is configured to effect transposition between combined
voice and instrument data and separated instrument data and
voice data.
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The Examiner’s Rejections
Claims 1-12 and 14-25 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. (See Ans.
3).
Claims 1-12 and 14-24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Loveland (US 6,782,413 B1). (See Ans. 3-9).
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Loveland and Lashley (US 7,003,085 B1). (See Ans. 9).
Issues on Appeal
1. Did the Examiner err in rejecting claims 1-12 and 14-25 as
failing to comply with the enablement requirement of 35 U.S.C. § 112, first
paragraph?
2. Did the Examiner err in rejecting claims 1-12 and 14-25 as
being obvious because the proposed modification to the cited reference fails
to teach or suggest the argued limitations?

PRINCIPLES OF LAW
Enablement
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993). The key word is “undue,” not experimentation. In re Wands,
858 F.2d 731,737 (Fed. Cir. 1988). In determining whether undue
experimentation would have been required to make and use an invention, the
following factors are considered:
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(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.

ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner has taken the position that “the specification does not
contain sufficient information to enable the recitation of ‘an electronic test
instrument’” (Ans. 3). The Examiner further points out that “[t]he
specification does not explain what is the test instrument, what does the test
instrument do, what is being tested, how does the test instrument generate
the instrument data, what is the purpose if [sic] the test instrument and who
will benefit from the tests generated” (id.).
In response, Appellant contends that the Specification, in pages 5-7, 9,
and 10 and Figures 1-5, sufficiently enables the disputed claim language (Br.
9). Appellant further points out that the Examiner failed to address “any of
‘undue experimentation factors’ enumerated by In re Wands” (Br. 9-10).
While admitting that “an electronic test instrument can assume various well
known forms,” Appellant states that “a particular form of electronic test
instrument is not the focus or novelty of claim 1” (Br. 10). The Examiner
further asserts that the specification includes insufficient information “to
enable the broad scope of the claimed invention” as the instrument may refer
to many different types of testing devices (Ans. 10).
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In addressing these arguments based on the Wands undue
experimentation factors, we disagree with the Examiner that the specific
type of the test instrument and the subject of its testing need to be specified
in order to enable the skilled artisan to interchange electronic instrument
data from an electronic test instrument. We also rely on Appellant’s
statement (Br. 10) that “a particular form of electronic test instrument is not
the focus or novelty of claim 1” to conclude that the recited test instrument
is intended to be a broad recitation for any instrument that collects test data.
In other words, the guidance provided in Appellant’s Specification is
adequate to enable a person of ordinary skill in the art to ascertain, without
undue experimentation, how to interchange test data collected by an
electronic test instrument.
In view of the above discussion, it is our opinion that, under the
factual situation presented in the present case, the subject matter of claims 1-
12 and 14-25 is adequately enabled by the description of the invention
provided in the Specification of the present application. Thus, we do not
sustain the rejection of claims 1-12 and 14-25 under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not described in the
specification in such a way as to enable one skilled in the art to make and/or
use the invention.
Rejection under 35 U.S.C. § 103
We have reviewed the Examiner’s § 103 rejection in light of
Appellant’s arguments that the Examiner has erred. We disagree with
Appellant’s conclusion. We adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken and
(2) the rebuttals to arguments expressed by the Examiner in the Examiner’s
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Answer in response to Appellant’s Appeal Brief (see Ans. 10-13). However,
we highlight and address specific findings and arguments for emphasis as
follows.
Appellant does not dispute the teachings of Loveland with respect to
the connector elements and interchanging voice and data, but contends that
the reference does not describe any of the devices in Figure 2 as an
“instrument” (Br. 11-12). However, we agree with the Examiner (Ans. 11),
that the claimed “electronic test instrument” merely requires some type of
instrument that tests a device and generates test data. As such, we are not
persuaded by Appellant’s contention that the Examiner erred in broadly, but
reasonably, interpreting the disputed claim term and concluding that the
computers in Loveland would function as test instruments such that
verification data may be generated when the computers send test packets.
We also note Appellant’s admission that “a particular form of electronic test
instrument is not the focus or novelty of claim 1,” whereas the recited test
instrument is intended to be a broad recitation for any instrument that
collects test data (see Br. 10). Therefore, we agree with the Examiner that
configuring the computers in Loveland’s system to generate test data to be
interchanged via one of the connectors would have been obvious to one of
ordinary skill in the art.
Additionally, we point out that much of Appellant’s argument is
directed to interchanging the information content of the data from the test
instrument (e.g., “instrument data”). We observe that when the prior art
describes all the claimed structural and functional relationships between the
generated data and Loveland’s computers, no new and unobvious functional
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relationship between the data sent by Loveland’s computers and the data
interchanged by the claimed test instrument can be identified.
We also agree with the Examiner’s analysis with respect to the
rejection of claims 5 and 10 (see Ans. 12). Contrary to Appellant’s
contentions (Br. 15), placing the voice module and the transducer in a
chassis represents no more than the predictable use of prior art elements
according to their established functions, and thus would have been obvious
to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007).

CONCLUSIONS
1. On the record before us, we conclude that, since Appellant’s
disclosure complies with the enablement requirement of the statute, the
Examiner erred in rejecting claims 1-12 and 14-25 under 35 U.S.C. § 112,
first paragraph.
2. However, based on the findings of facts and analysis above, we
conclude that the Examiner did not err in rejecting claims 1-12 and 14-24 as
being obvious over Loveland and claim 25 over Loveland and Lashley.

DECISION
The Examiner’s decision rejecting claims 1-12 and 14-25 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).
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AFFIRMED

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