Ex Parte Stratton et al

Patent Trial and Appeal Board

Feb 24, 2014

11219248 (P.T.A.B. Feb. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte JOHN BRUCE STRATTON and LEON KENNETH WERENKA 7
___________ 8
9
Appeal 2011-009716 10
Application 11/219,248 11
Technology Center 2400 12
___________ 13
14
15
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and THOMAS F. 16
SMEGAL, Administrative Patent Judges. 17
18
SMEGAL, Administrative Patent Judge. 19
20
21
DECISION ON APPEAL22
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STATEMENT OF THE CASE1 1
John Bruce Stratton and Leon Kenneth Werenka (Appellants) seek 2
review under 35 U.S.C. § 134 of a final rejection of claims 3-7, 9, and 10 3
under 35 U.S.C. § 102(e) as being anticipated by Stratton (US 7,561,598 B2, 4
iss. Jul. 14, 2009). We have jurisdiction over the appeal under 35 U.S.C. § 5
6(b). 6
We AFFIRM. 7
CLAIMED SUBJECT MATTER 8
The Appellants’ claimed subject matter relates to circuitry for 9
adapting a legacy instrument to an instrument system without modifying the 10
legacy instrument. (Spec. 3, ll. 5-9). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 3, which is reproduced below. 13
3. A legacy interface module that adapts a legacy 14
instrument to an instrument system based on synchronized time, 15
the legacy interface module comprising: 16
a first interface circuit that communicates with the legacy 17
instrument via a legacy interface; 18
a second interface circuit that communicates with the 19
instrument system via a communication network; and 20
circuitry that adapts the legacy interface to the instrument 21
system, wherein the circuitry that adapts the legacy interface 22
includes 23
a synchronized clock, and 24

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 13, 2010) and Reply Brief (“Reply Br.,” filed May 16,
2011), and the Examiner’s Answer (“Ans.,” mailed March 14, 2011).
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a circuit for generating a trigger signal on the legacy 1
interface module in response to a message received via the 2
communication network and a time-of-day in the synchronized 3
clock. 4
FINDINGS OF FACTS 5
We find that the findings of fact (FF), which appear in the Analysis 6
below, are supported by at least a preponderance of the evidence. Ethicon, 7
Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 8
evidentiary standard for proceedings before the U.S. Patent and Trademark 9
Office (“PTO”). Additional facts may appear in the Analysis. 10
Facts Related to the Prior Art 11
Stratton 12
FF1. Stratton states that 13
[v]arious embodiments are disclosed herein 14
that provide an add-on module that can be 15
interfaced with a pre-existing, legacy (or 16
"vintage") device to add synchronization 17
functionality to the legacy device. In certain 18
embodiments, the add-on module supports 19
synchronization with another device (e.g., another 20
instrument or another add-on module coupled to an 21
instrument) via synchronized local clocks (e.g., 22
IEEE 1588) and messaging over a communication 23
network. 24
Stratton, col. 5, ll. 45-52. 25
FF2. Stratton states that 26
[e]mbodiments of the add-on module 27
described herein enable legacy test equipment to 28
be updated with such modules, thereby enabling 29
the legacy test equipment to synchronize its 30
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operations with newer equipment that includes 1
support for the synchronization techniques 2
described herein. Thus, embodiments of the add-on 3
module described herein enable legacy instruments 4
to be upgraded to support the synchronization 5
operations described herein. 6
Id. at col. 5, l. 67-col. 6, l. 7. 7
FF3. Stratton states that 8
[t]hus, even though a legacy device does not 9
support using event messages and/or time bombs 10
for synchronizing its operation with other devices 11
on a communication network, interfacing the add-12
on module to such legacy device effectively adds 13
this synchronization capability to the legacy 14
device. In certain embodiments, the legacy device 15
need not even have a network interface or a local 16
clock, as the add-on module provides these 17
features to transform the legacy device into a 18
networked device that can have its operations 19
synchronized with operation of other devices on 20
the network. 21
Id. at col. 6, ll. 23-33. 22
FF4. Stratton states that 23
[t]urning to FIG. 1, an example system 10 is 24
shown according to one embodiment for 25
synchronizing operations of a plurality of 26
networked devices (or "instruments"). The 27
example system 10 includes a controller 11, source 28
12, and receiver 13. In this example, source 12 and 29
receiver 13 are legacy devices that do not support 30
the synchronization operations described hereafter 31
as being provided by the add-on modules. 32
Accordingly, an add-on module (which is also 33
referred to herein as a "synchronization module") 34
16 is interfaced with source 12. Likewise, 35
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synchronization module 17 is interfaced with 1
receiver 13. In this example, synchronization 2
modules 16 and 17 are communicatively coupled 3
to source 12 and receiver 13 via command 4
interfaces 108A and 108B, respectively. Further, 5
one or more trigger input and/or output lines are 6
coupled between a synchronization module and its 7
associated instrument in this example. For 8
instance, trigger line(s) (e.g., trigger input and/or 9
output lines) 112 are coupled between 10
synchronization module 16 and source 12. 11
Id. at col. 7, ll. 44-61. 12
FF5. Stratton states that 13
[c]ontroller 11 and synchronization modules 16 14
and 17 are all communicatively coupled via a 15
communication network 18, which may be a local 16
area network (LAN), the Internet or other wide 17
area network (WAN), public switched telephony 18
network (PSTN), wireless network, any 19
combination of the foregoing and/or any other 20
network now known or later developed for 21
communicating information from at least one 22
device to at least one other device. Accordingly, in 23
this example, source 12 and receiver 13 need not 24
have an interface to communication network 18, as 25
synchronization modules 16 and 17 provide such 26
interface to communication network 18 for these 27
devices. 28
Id. at col. 7, l. 64-col. 8, l. 8. 29
FF6. Stratton states that 30
[i]n this example, controller 11, synchronization 31
module 16, and synchronization module 17 each 32
include a local clock. Each of controller 11 and 33
synchronization modules 16 and 17 have their 34
clocks synchronized in this example. In this 35
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specific example, IEEE 1588 is used, wherein 1
controller 11 implements IEEE 1588 clock 103A, 2
synchronization module 16 implements IEEE 1588 3
clock 103B, and synchronization module 17 4
implements IEEE 1588 clock 103C. 5
Id. at col. 8, ll. 54-61. 6
FF7. Stratton states that “[c]ontroller 11 and synchronization 7
modules 16 and 17 each have an event manager executing thereon, 8
labeled 101A, 101B, and 101C, respectively. In general, the event 9
manager is software and/or hardware that is designed to allow the 10
various instruments to communicate information about time sensitive 11
events.” Id. at col. 9, ll. 20-25. 12
FF8. Stratton states that 13
[f]or instance, controller 11 may send a 14
programming message to synchronization module 15
16 instructing its event manager 101B to cause its 16
associated source 12 to take a particular action 17
upon detection by the synchronization module 16 18
of a specific event. In certain embodiments, 19
synchronization module 16 may be pre-configured 20
to take the desired action responsive to a given 21
event, rather than being dynamically programmed 22
in this manner. 23
Id. at col. 10, ll. 23-30. 24
FF9. Stratton states that “synchronization module 16 is 25
configured/programmed to trigger source 12 to change its 26
output frequency (e.g. RF frequency) in response to 27
synchronization module 16 detecting ‘Event No. 1’, and once 28
the frequency change has settled, then the synchronization 29
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module 16 is to output an event message identifying ‘Event No. 1
2.’” Id. at col. 10, l. 65-col. 11, l. 4. 2
FF10. Stratton states that 3
[e]vent manager 101B of synchronization module 4
16 would detect the Event No.1 and, in accordance 5
with the corresponding programmed action 6
identified in the programmed event information 7
102B for this Event No.1, would trigger source 12, 8
via trigger line(s) 112, to change its frequency, and 9
thereafter synchronization module 16 would send 10
an event message that identifies Event No. 2 to 11
synchronization module 17. 12
Id. at col. 11, ll. 13-20. 13
FF11. Stratton states that 14
[c]ommand interfaces 108A and 108B may 15
each be any suitable interface for communicatively 16
coupling the synchronization module to its 17
respective instrument. As examples, command 18
interfaces 108A and 108B may be General Purpose 19
Interface Bus (GPIB), Universal Serial Bus (USB), 20
RS-232, a LAN port, or other communication 21
interface now known or later developed. 22
Command interfaces 108A and 108B may be same 23
type of interface, or they may be different types of 24
interfaces, depending on the interface available for 25
coupling each synchronization module to its 26
respective instrument. 27
Id. at col. 12, ll. 14-23. 28
FF12. Stratton states that 29
[i]n this case, the synchronization module may 30
send a command via command interface 108A to 31
cause source 12 to go into its external trigger 32
mode, and thus the hardware trigger line(s) 112 33
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coupled from synchronization module 16 to source 1
12 can be used to trigger actions on source 12 2
responsive to event messages received by event 3
manager 101B of synchronization module 16. 4
Id. at col. 13, ll. 28-35. 5
FF13. Stratton states that 6
[i]n the example of FIG. 2, a "time bomb" is 7
implemented on each of synchronization modules 8
16A and 17A. Specifically, time bomb 109A is 9
implemented on synchronization module 16A 10
associated with source 12, and time bomb 109B is 11
implemented on synchronization module 17A 12
associated with receiver 13. The time bombs allow 13
the synchronization modules to be programmed to 14
take an action(s) (e.g., execute instructions) at pre-15
defined times, which are referred to as detonation 16
times. The detonation times may be absolute times, 17
such as 1:00:00, or the detonation times may be 18
defined as relative times, such as 10 seconds after 19
the occurrence of a particular event. As an 20
example, time bomb 109A may be programmed on 21
synchronization module 16A, via controller 11, to 22
detonate at 1:00:00 and trigger source 12, via 23
trigger line(s) 112, to change its frequency. 24
Id. at col. 14, ll. 51-65. 25
FF14. Stratton states that 26
[i]n this example, the detonation of time 27
bomb 109A on synchronization module 16A 28
generates an interrupt 110A to CPU 201A of 29
synchronization module 16A to cause an 30
appropriate external hardware trigger line 112 to 31
activate (e.g., go high), thereby causing the source 32
12 to perform the corresponding action (such as 33
change the frequency in the above example). 34
Similarly, the detonation of time bomb 109B on 35
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synchronization module 17A generates an interrupt 1
110B to CPU 201B of synchronization module 2
17A to cause an appropriate external hardware 3
trigger line 113 to activate (e.g., go high), thereby 4
causing the receiver 13 to perform the 5
corresponding action (such as taking a 6
measurement in the above example). In certain 7
embodiments, the detonation times and the 8
corresponding actions to be taken is 9
programmable. 10
Id. at col 15, ll. 13-27. 11
ANALYSIS 12
Claims 3-7, 9 and 10 rejected under 35 U.S.C. § 102(e) as anticipated by 13
Stratton. 14
Appellants argue claims 3-7, 9 and 10 as a group (App. Br. 6). We 15
select claim 3 as the representative claim for this group and the remaining 16
claims stand or fall with claim 3. 37 C.F.R. § 41.37(c)(1)(vii) (2011). 17
Appellants initially argued that 18
the Final Office Action apparently identifies the same element 19
of Stratton et al., e.g., add-on/synchronization module 16 (or 20
17) in FIG. 1, as assertedly disclosing four features of claim 3: 21
‘legacy interface module,’ ‘first interface circuit,’ ‘second 22
interface device,’ and ‘circuitry that adapts the legacy interface 23
to the instrument system.’ Clearly, one element cannot serve for 24
the disclosure of four features of a claim, and thus, the rejection 25
is improper for at least this reason.” 26
(App. Br. 8). 27
After the Examiner clarified that the rejection was based on event 28
manager 101B being both the “second interface circuit” and the “circuitry 29
that adapts the legacy interface to the instrument system" (Ans. 8), 30
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Appellants responded that Figure 2 of the filed application showed an 1
embodiment with two separate and distinct elements-command line interface 2
circuit 62 as the second interface circuit and processor 52, local clock 56 and 3
trigger timing circuits 70, 72 as the “circuitry that adapts the legacy interface 4
to the instrument system,” and asserted that “[c]learly, one element cannot 5
serve for the disclosure of two features of a claim” (Reply Br. 3). 6
However we agree with the Examiner that “[t]he ‘circuitry that adapts 7
the legacy interface to the instrument system’ is also the event manager 8
101B of Figure 1 as it would be inherent that there is circuitry involved in 9
the connection to the communication network” (Ans. 8). See FF7. "An 10
anticipatory reference . . . need not duplicate word for word what is in the 11
claims. Anticipation can occur when a claimed limitation is 'inherent' or 12
otherwise implicit in the relevant reference." Standard Havens Prods. v. 13
Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991) (citing Tyler 14
Refrigeration v. Kysor Indus. Corp., 777 F.2d 687, 689 (Fed. Cir. 1985)). 15
Furthermore, Stratton teaches that source 12 (the legacy device) need 16
not have an interface to the communication network as synchronization 17
module 16 (the legacy interface module) provides such an interface to the 18
communication network for the other devices. FF1-3, 5. Thus one of 19
ordinary skill the art would recognize that Stratton provides the interface 20
required to perform the disclosed function. 21
Appellants next argue that 22
there is no disclosure that the command interface (e.g., 23
command interface 108A) is a circuit that communicates with 24
the legacy instrument via a legacy interface, as recited in claim 25
3, but rather the command interface is the interface itself. In 26
other words, at best, the commend interface of Stratton et al. 27
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may disclose the ‘legacy interface’ between a first interface 1
circuit and a legacy instrument, but not the first interface circuit 2
itself 3
(App. Br. 9). However the Examiner found that 4
[c]olumn 12, Lines 14-20 of Stratton state that the command 5
interface 108A can be any suitable interface for 6
communicatively coupling the synchronization module to its 7
respective instrument. This includes General Purpose Interface 8
Bus (GPIB), Universal Serial Bus (USB), RS-232, or a LAN 9
port. Being that the interface 108A can be any of the above 10
interfaces, it is inherent that interface 108A has circuitry 11
involved. 12
(Ans. 9-10). FF11. 13
Appellants also argue “that trigger line 112 for triggering the source 14
12 in Stratton et al. bypasses the command interface 108A to connect with 15
the source 12, which is inconsistent with the circuitry that adapts the legacy 16
interface to the instrument system, as recited in claim 3.” App. Br. 9. 17
However the Examiner finds the Stratton discloses that “[t]he command 18
interface 108A is not bypassed” (Ans. 10). FF4, 12. 19
Furthermore this argument is not commensurate with claim 3 which 20
does not prohibit the trigger line 112 from bypassing the command interface 21
108A, but merely recites “a circuit for generating a trigger signal on the 22
legacy interface module.” Furthermore, limitations appearing in the 23
specification but not recited in the claim are not read into the claim. E-Pass 24
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). 25
Appellants continue by arguing that “[t]here is, however, no 26
disclosure of a second interface circuit in the synchronization module 16 that 27
communicates with the instrument system via the communication network 28
18” (App. Br. 9-10). We agree with the Examiner that “event manager 101B 29
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connects the synchronization module 16 to the communication network 14. 1
Therefore, it is inherent that event manager 101B include circuitry in order 2
to perform this task as there must be underlying hardware” (Ans. 11). 3
Furthermore, Stratton teaches that event manager 101B includes circuitry. 4
FF7, 8. 5
Appellants final argument is that “that there is no disclosure to the 6
effect that the synchronization module 16 generates a trigger signal in 7
response to a message received via communications network 18 and a time-8
of day in the synchronized clock” and that “outputting a synchronized time 9
does not disclose generating a trigger signal in response to a synchronized 10
time” (App. Br. 10). We disagree and adopt the Examiner’s Findings of Fact 11
set forth on page 10 of the Answer. FF6, 9, 10, and 12-14. 12
For the foregoing reasons, we sustain the rejection of claims 3-7, 9, 13
and 10 as being anticipated by Stratton. 14
DECISION 15
The rejection of claims 3-7, 9, and 10 is AFFIRMED. 16
No time period for taking any subsequent action in connection with this 17
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18
§ 1.136(a)(1)(iv) (2011). 19
AFFIRMED 20
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hh 23