Ex Parte Rodi

Board of Patent Appeals and Interferences

Mar 18, 2009

10819324 (B.P.A.I. Mar. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTON RODI
____________

Appeal 2009-0109
Application 10/819,324
Technology Center 2800
____________

Decided1: March 18, 2009
____________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT, and KARL
D. EASTHOM, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3 and 6-15. Claims 4 and 5 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0109
Application 10/819,324

2
We affirm.
STATEMENT OF THE CASE
Appellant’s invention relates to a measuring system for processing
angular and linear measured values to carry out adjustment processes
required by a controller using only serial transfer of the absolute measured
data (Spec. 3). Claim 1, which is representative of the claims on appeal,
reads as follows:
1. A measuring system, comprising:

at least one controller;

at least one encoder for recording absolute measured values;

a receiver unit not being part of said encoder and said
controller, said receiver unit being connected directly to said
controller or indirectly to said controller through a bus system;

a serial interface connected between said encoder and said
receiver unit, said receiver unit continuously requesting the measured
values from said encoder, the measured values being transferred from
said encoder permanently through said serial interface to said receiver
unit and being stored temporarily in said receiver unit and from said
receiver unit the measured values being consistently transferred
directly to said controller or indirectly to said controller through the
bus system.

The Examiner relies on the following prior art reference:
Rodi US 2002/0167420 A1 Nov. 14, 2002

The rejections as presented by the Examiner are as follows:
Claims 1-3, 6, and 10-15 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Rodi.
Appeal 2009-0109
Application 10/819,324

3
Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rodi.
We make reference to the Brief (filed Nov. 18, 2006) and the Answer
(mailed Apr. 17, 2007) for the arguments provided by Appellant and the
Examiner and their respective details. Only those arguments actually made
by Appellant have been considered in this decision. Arguments which
Appellant could have made but did not make in the Brief have not been
considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
1. Under 35 U.S.C. § 102(e), with respect to the appealed claims 1-3, 6,
and 10-15, does Rodi anticipate the claimed subject matter by
teaching all of the claimed limitations?
2. Under 35 U.S.C. § 103(a), with respect to the appealed claims 7-9,
would the ordinarily skilled artisan have found it obvious to modify
Rodi to render the claimed invention unpatentable?

PRINCIPLES OF LAW
1. Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)). See also In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).
“Anticipation of a patent claim requires a finding that the claim at issue
Appeal 2009-0109
Application 10/819,324

4
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO Inc., 190 F.3d
1342, 1346 (Fed. Cir. 1999) (quoting Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 781 (Fed. Cir. 1985)).
2. Obviousness
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991), and In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Examiner can satisfy this burden by showing some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007)
(quoting In re Kahn, 441 F.3d at 988).

ANALYSIS
1. 35 U.S.C. § 102(e) Rejection
Appellant argues that Rodi does not anticipate the claims since the
evaluation circuitry 3 in Rodi does not have a separate “receiver unit” which
is “continuously requesting the measured values,” as recited in independent
claims 1 and 14 (Br. 6). Appellant further asserts that the depiction of the
evaluation circuitry only shows a solid boundary which means a receiver is
within the evaluation circuitry and receives data by itself (id.). With respect
to the evaluation circuitry of Rodi, Appellant contends that carrying out its
priority control assignments prevents the evaluation circuitry from
continuously requesting the measured values by itself (id.).
The Examiner responds that the receiver is shown in Figure 1 of Rodi
as a box separate from and within the evaluation circuitry 3, receiving data
Appeal 2009-0109
Application 10/819,324

5
via bus 4, which is not part of encoder 1 (Ans. 6-7). The Examiner further
asserts that the claims define the relationship between the receiver unit and
the controller in alternative as directly or indirectly connected (Ans. 7). The
Examiner concludes that the disclosed receiver unit in Figure 1 of Rodi
meets one of the recited alternatives in the form of a receiver directly
connected to the controller (id.). The Examiner further takes the position
that the term “continuously” merely means that the data requests are
“ongoing” and asserts that such feature is also taught by Rodi (Ans. 9).
Similarly, the Examiner equates the term “permanent transfer” in its
broadest reasonable interpretation, with non-reversible transfer of data from
the encoder in Rodi which also occurs in one direction (Ans. 10).
Based on the recited language in claim 1, we agree with the Examiner
and find that the receiver unit of Rodi is a unit separate from the encoder 1
and is directly connected to the controller shown as evaluation circuitry 3
(Rodi Fig. 1, ¶ [0007]). We also find that data is received serially via data
bus 4 in the receiver from the encoder unit 1 (Rodi Fig. 1, ¶ [0057]). In an
alternate embodiment, Rodi also shows the data is transferred from encoder
1 to the receiver via line 4’ in Figure 2, which performs the interrogation via
line 2’ (Rodi ¶ [0059]). Additionally, as pointed out by the Examiner (Ans.
8), Appellant’s own disclosure in Figure 1 shows the receiver unit 4 placed
within the box representing controller 3. Therefore, to the extent disclosed,
the receiver unit of Rodi, while within evaluation circuitry 3, performs the
functions of requesting the measured values from the encoder (Rodi ¶¶
[0057]-[0059]).
Additionally, we agree with the Examiner’s interpretation of the
claimed “continuously” describing the request by the receiver unit for the
Appeal 2009-0109
Application 10/819,324

6
measured values from the encoder as merely ongoing requests in Rodi. As
shown in Figures 1 and 2, Rodi describes the transfer of interrogated values
by a pulse signal via data line 4 or 4’, which occurs continuously or on an
ongoing basis (Rodi ¶¶ [0057]-[0059]). In the same paragraphs, Rodi
further limits the transfer of data in one direction, from the encoder to the
receiver, as the receiver interrogates the encoder via line 2 or 2’ (id.).
Therefore, as argued by the Examiner (Ans. 10), the measured values are
transferred permanently from the encoder to the receiver, as claimed, since
the transferred values are not sent back and remain in the evaluation
circuitry for further processing by amending or refining the data (Rodi ¶
[0058]).
We also find unpersuasive Appellant’s argument (Br. 7) that the cycle
time disclosed in Rodi limits the transfer of data only during specific time
intervals since, as discussed above, those intervals are still continuous or
ongoing. As argued by the Examiner (Ans. 11), the external signals or clock
signals on line 2 or 2’ in Rodi provide the pulse for ongoing requests for the
measured values from the encoder (Rodi ¶¶ [0057]-[0059]).
Appellant presents no additional arguments with respect to the
remaining dependent claims, allowing them to fall with their base claims.
Based on the reasons discussed above, we sustain the 35 U.S.C. § 102(e)
rejection of claims 1 and 14, as well as claims 2, 3, 6, 10-13, and 15, as
being anticipated by Rodi.
2. 35 U.S.C. § 103(a) Rejection
Appellant argues patentability of claims 7-9 by relying on their
dependency upon claim 1. Therefore, for the same reasons discussed above
Appeal 2009-0109
Application 10/819,324

7
with respect to claim 1, we sustain the 35 U.S.C. § 103(a) rejection of claims
7-9 over Rodi.

CONCLUSION
On the record before us, Appellant has failed to show that the
Examiner has erred in rejecting claims 1-3, 6, and 10-15 under 35 U.S.C.
§ 102(e) and claims 7-9 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner rejecting claims 1-3 and 6-15 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

babc

LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480