Ex Parte Sutton

Board of Patent Appeals and Interferences

Sep 27, 2006

09991020 (B.P.A.I. Sep. 27, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte CHRISTOPHER K. SUTTON
_______________

Appeal No. 2006-2461
Application No. 09/991,020
_______________

ON BRIEF
_______________

Before KRASS, JERRY SMITH, and BLANKENSHIP Administrative Patent
Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-24, which constitute all the claims pending in this
application.
The disclosed invention pertains to an electronic test program for testing a
device. Specifically, the test program allows the user to select a set of
specifications that define a particular test. The selected set of specifications is
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then applied to the test results. As a result, different specifications can be
applied to results of a test without having to execute the test again.

Representative claim 1 is reproduced as follows:

1. A product that provides a test executive program for controlling a test
on a device, said product comprising:

instructions for directing a processing unit to:

receive a selected one of a plurality of previously created
alternative specifications for assessing a datapoint generated by a
test, wherein each of the plurality of alternative specifications is a
different specification for assessing the datapoint, and

apply said selected specification to said datapoint generated by
said test; and

a media readable by said processing unit that stores said instructions.

The examiner relies on the following references:

Akasheh 6,134,674 Oct. 17, 2000

The admitted prior art on Page 1 of the specification.

The following rejections are on appeal before us:
1. Claims 1-19 and 21-24 stand rejected under 35 U.S.C. § 102(e) as
being anticipated over Akasheh.
2. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akasheh in view of appellant’s admitted prior art.
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Rather than repeat the arguments of appellant or the examiner, we make
reference to the briefs1 and the answer for the respective details thereof.

OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of anticipation and obviousness
relied upon by the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision, the appellant's
arguments set forth in the briefs along with the examiner’s rationale in support of
the rejections and arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the
disclosure of Akasheh fully meets the invention as set forth in claims 1-19 and
21-24. We further conclude that the evidence relied upon and the level of skill in
the particular art would have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claim 20. Accordingly, we affirm.
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a
claimed invention as well as disclosing structure which is capable of performing

1 An appeal brief was initially filed on Apr. 25, 2005. In response to a Notice of Non-Compliant
Appeal Brief, appellant filed a corrected appeal brief on Jul. 15, 2005. An examiner’s answer was
then filed on Sept. 29, 2005, and a reply brief was filed on Dec. 1, 2005. The Board, however,
returned the case to the examiner on Apr. 11, 2006 for consideration of an Information Disclosure
Statement and revision of the answer to correct certain formalities. In response, the examiner
submitted a revised examiner’s answer on Apr. 19, 2006. Appellant then filed a supplemental
reply brief on Jun. 13, 2006. Throughout this opinion, we refer to (1) the corrected appeal brief
filed Jul. 15, 2005 (hereafter “brief”), (2) the revised examiner’s answer filed Apr. 19, 2006
(hereafter “answer”), and (3) the supplemental reply brief filed Jun. 13, 2006 (hereafter “reply
brief”).
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the recited functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.
Cir. 1983). Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could have made but
chose not to make in the briefs have not been considered and are deemed to be
waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
The examiner has indicated how the claimed invention is deemed to be
fully met by the disclosure of Akasheh [answer, pages 3-10]. Regarding
independent claims 1, 8, and 21, appellant argues that Akasheh does not
disclose receiving a selected one of a plurality of previously created alternative
specifications for assessing a datapoint generated by a test, wherein each of the
plurality of alternative specifications is a different specification for assessing the
datapoint as claimed [brief, page 7; reply brief, page 2]. Specifically, appellant
argues that Akasheh does not indicate alternative specifications, but rather
indicates only one associated specification for each of multiple parameters [brief,
page 8; reply brief, page 3]. In this regard, appellant notes that the user employs
the tolerance manager to set the tolerance condition for a given parameter of
interest, and then applies that condition to the test to be conducted [answer,
pages 7 and 8; reply brief, pages 2 and 3].
The examiner responds that multiple previously created alternative
specifications are provided when the user sets the voltage parameter in
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Akasheh’s Instrument Interface Module (IIM) setup window in Fig. 3c [answer,
page 12]. The examiner further contends, among other things, that the voltage
value that the user sets constitutes a selected one of a plurality of created
alternative specifications as claimed [id.].
Appellant responds that the term “specification” as used in the present
application means “the acceptable limits or tolerance against which the result of a
measurement is to be judged” [reply brief, page 4]. With this construction,
appellant argues that Akasheh does not disclose a specification of limits of
acceptability of a measurement result. Rather, Akasheh discloses that the script
transmitted to the instrument contains the voltage to which the instrument output
is to be set [reply brief, page 5].
We will sustain the examiner’s anticipation rejection of independent claims
1, 8, 16, and 21. Although we find the examiner’s reliance on the IIM setup
window in Fig. 3c problematic essentially for the reasons noted by appellant, we
nevertheless conclude that Akasheh fully meets all claimed limitations.
Akasheh discloses a computer based test operating system that tests a
unit under test (UUT) 114 with a number of different test instruments 112. An
advantage of Akasheh’s system is that it obviates the need to rewrite the test
program each time a test instrument is replaced. To this end, IIM acts as a layer
between the test program and instruments by translating inputs to the
instruments from the language used by the test program into a language or script
understandable by the new instrument [Akasheh, col. 2, lines 22-40].
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The system further comprises tolerance manager 107 that defines
tolerance data and checks the measurement with the predefined tolerance data
[Akasheh, col. 3, lines 39-41]. Specifically, the tolerance manager allows the
user to select tolerance criteria to be used to test UUTs with various instruments
[Akasheh, col. 7, lines 18-21].
The setup mode of the tolerance manager includes a set tolerance
window 800 that enables the user to specify the desired tolerance parameters
[Akasheh, Fig. 8; col. 13, lines 52-57]. As shown in Fig. 8, the user can enter a
desired nominal value (e.g., “3.00”) for a given parameter (e.g., volts).
Significantly, the user can also select a desired operator (“<”, “<=”, “>”, “>=”, “==”,
or “|=”) from a menu of operators that specifies the type of comparison between
the returned reading and the nominal value [Akasheh, col. 13, lines 58-67; Fig.
8]. For example, the checkmark adjacent the “<” (less than) symbol indicates
that the user selected that option for the comparison [see Akasheh, col. 13, lines
65-67; Fig. 8].
We find this user-selectable operator in the tolerance manager fully meets
the limitation calling for “a selected one of a plurality of previously created
alternative specifications for assessing a datapoint generated by a test” as
claimed. That is, each respective operator (“<”, “<=”, “>”, “>=”, “==”, or “|=”)
dictates the type of comparison that constitutes a “previously created alternative
specification.” The user selects one such “specification” to specify the type of
comparison -- and ultimately the pass or fail criteria -- for a particular test. Even
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with the same nominal value, selecting a different operator (e.g., selecting “>”
instead of “<”) could drastically change the assessment of the acquired data
generated by the test. Moreover, our interpretation fully comports with
appellant’s definition of “specification”: the respective operators dictate “the
acceptable limits or tolerance against which the result of a measurement is to be
judged.”2
Because Akasheh discloses all claimed limitations of independent claims
1, 8, 16, and 21, the examiner’s anticipation rejection of those claims is therefore
sustained.
Akasheh anticipates the dependent claims as well. Regarding claims 2, 3,
9, 10, 15, and 22, selecting and activating the menu of operators from the
tolerance manager screen in Fig. 8 of Akasheh fully meets receiving a request for
a display of the plurality of available specifications wherein the request comprises
the selection of an option of a displayed menu as claimed. Regarding claims 4,
5, 11, 12, and 17-19, the menu of operators corresponds to the plurality of
specifications displayed on a menu as discussed previously. Claims 7, 14, and
24 are also fully met by Akasheh since the instructions for determining the
plurality of specifications available (i.e., the available operators in the tolerance
manager in Fig. 8) comprises instructions for directing the processing unit to
determine the test applied to the device since each operator ultimately
represents a different test. Even with user intervention, the processing unit will

2 See reply brief, page 4.
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ultimately determine the test once the user selects the desired operator.
Therefore, because Akasheh discloses all claimed limitations of dependent
claims 2, 3, 9, 10, 12, 15, and 22, the examiner’s anticipation rejection of those
claims is likewise sustained.
Regarding claims 6, 13, and 23, the examiner indicates that Akasheh
discloses a process or instructions invoked by the test procedure editor (TPE)
that direct the processing unit to determine the UUT being tested [answer, pages
6 and 15]. The examiner notes that if multiple UUTs exist, the user is instructed
to select a UUT. However, if there is only one UUT, it is automatically selected
[answer, pages 6 and 16]. Appellant responds that Akasheh refers to a user
making a selection – not directing a processing unit to determine the device
being tested.
We will sustain the examiner’s rejection of claims 6, 13, and 23. The
scope and breadth of the claim language fully reads on Akasheh’s automatic
selection of the UUT when only one UUT is defined [see Akasheh, col. 16, lines
38-40]. Although the user is prompted to select a UUT from multiple UUTs, the
system’s automatic selection of a single UUT nonetheless constitutes instructions
for directing the processing unit to determine the device being tested (i.e., the
single device) as claimed.
Moreover, even the act of prompting the user to select a UUT reasonably
constitutes instructions for directing the processing unit to determine the device
being tested. Even with user intervention, the processing unit will ultimately
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determine the device being tested (i.e., the user-selected device). Because
Akasheh discloses all claimed limitations, the examiner’s anticipation rejection of
claims 6, 13, and 23 is therefore sustained.
We next consider the rejection of claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Akasheh in view of appellant’s admitted prior art. In
rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See In
re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). The
examiner must articulate reasons for the examiner’s decision. In re Lee, 277
F.3d 1338, 1342, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002). In particular, the
examiner must show that there is a teaching, motivation, or suggestion of a
motivation to combine references relied on as evidence of obviousness. Id. at
277 F.3d at 1343, 61 USPQ2d at 1433-34. The examiner cannot simply reach
conclusions based on the examiner’s own understanding or experience - or on
his or her assessment of what would be basic knowledge or common sense.
Rather, the examiner must point to some concrete evidence in the record in
support of these findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
1697 (Fed. Cir. 2001). Thus the examiner must not only assure that the requisite
findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the examiner’s
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conclusion. However, a suggestion, teaching, or motivation to combine the
relevant prior art teachings does not have to be found explicitly in the prior art, as
the teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. The test for an implicit
showing is what the combined teachings, knowledge of one of ordinary skill in the
art, and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art. In re Kahn, 441 F.3d 977, 987-88, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re Kotzab, 217 F.3d 1365, 1370,
55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). See also In re Thrift, 298 F. 3d
1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002). These showings by the
examiner are an essential part of complying with the burden of presenting a
prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden then
shifts to the applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See Id.; In re Hedges,
783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531
F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner’s rejection essentially finds that Akasheh discloses all of the
claimed subject matter except for an environmental test [answer, page 11]. The
examiner then refers to appellant’s own specification that admits that such
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environmental tests that expose devices under test to various temperature,
pressure, and humidity conditions are known in the art [id.]. The examiner then
concludes that it would have been obvious to one of ordinary skill in the art at the
time of the invention to include an environmental test to determine whether the
device met or exceeded certain environmental tolerances in addition to
operational tolerances [id.].
We will sustain the examiner's rejection of claim 20. We find that (1) the
examiner has established at least a prima facie case of obviousness, and (2)
appellant has not persuasively rebutted the examiner's prima facie case. In this
regard, appellant merely notes that the addition of the admitted prior art fails to
cure the deficiencies of Akasheh in connection with independent claim 16 [brief,
page 16; reply brief, page 15]. Appellant adds that the alleged admitted prior art
fails to disclose or imply an environmental test [id.]. But such a mere conclusory
statement without supporting analysis or evidence hardly rebuts the examiner’s
prima facie case – a position that we find reasonable. The rejection of claim 20
is therefore sustained.
In summary, we have sustained the examiner's rejection with respect to all
claims on appeal. Therefore, the decision of the examiner rejecting claims 1-24
is affirmed.
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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

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )

JS/jaj/kis
Appeal No. 2006-2461
Application No. 09/991,020

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AGILENT TECHNOLOGIES, INC.
LEGAL DEPARTMENT, DL429
INTELLECTUAL PROPERTY ADMINISTRATION
P. O. BOX 7599
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