Ex parte Theobald

Board of Patent Appeals and Interferences

Sep 17, 1997

07774757 (B.P.A.I. Sep. 17, 1997)

Application for patent filed October 8, 1991.
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHEN C. THEOBALD
____________
Appeal No. 95-0907
Application 07/774,7571
____________
ON BRIEF
____________
Before JERRY SMITH, FLEMING and LEE, Administrative Patent
Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-20 under 35 U.S.C. § 103
as being unpatentable over prior art. No claim has been allowed.
References in the Stated Ground of Rejection
Rattan et al. U.S. Patent No. 4,698,770 Oct. 6, 1987
(Rattan)
Wang et al. (Wang)
"Protocol Testing Techniques," Computer Communication, Vol. 10,
Appeal No. 95-0907
Application 07/774,757
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No. 2, April 1987, pp. 79-87.
Appellant's Disclosed Prior Art
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The Rejections on Appeal
Claims 1-10 and 12-19 stand rejected under 35 U.S.C. § 103
as being unpatentable over Wang and Rattan.
Claims 11 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wang and Rattan and further in view of
the appellant's disclosed prior art.
The examiner has withdrawn a rejection of claims 1-20 under
35 U.S.C. § 112, first paragraph, as being without adequate
written description in the specification. See advisory Office
action (Paper No. 14). Thus, that rejection is a non-issue.
The Invention
The invention relates to a testing apparatus for verifying
the conformity of a device under test with a standard
communications protocol. It sends a sequence of messages to a
device under test, which messages include a request for the
device to send back messages indicating which functions are
supported by the device under test. The testing apparatus
analyzes the return messages to determine conformity with the
standard application protocol. Claim 1 is representative and
reads as follows:
1. A test apparatus for verifying the conformity
of a device under test with a standard application
protocol defining the format, meaning and applicability
of messages to be received and transmitted by the
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device under test, the apparatus comprising test
sequencing means for generating and supplying to the
device under test a test sequence of messages,
including messages requesting messages to be
transmitted by the device under test in response
indicating whether functions of predetermined
definition are present or absent in the device under
test, and for analyzing messages transmitted by the
device under test in response, to determine conformity
or not with the standard application protocol.
Opinion
We do not sustain the rejection of claims 1-10 and 12-19
under 35 U.S.C. § 103 as being unpatentable over Wang and Rattan.
We also do not sustain the rejection of claims 11 and 20
under 35 U.S.C. § 103 as being unpatentable over Wang, Rattan,
and the appellant's disclosed prior art.
The appellant has argued claims 1 and 4-11 as a first group,
claims 2 and 12 as a second group, and claims 3 and 13-20 as a
third group. Claim 1 is the only independent claim.
At the outset, we reject the appellant's argument that Wang
is nonenabling prior art reference. First, it is noted that Wang
has not been relied on by the examiner to show much at all. With
respect to Wang, the examiner stated (answer at 3-4):
Wang teaches a protocol testing technique which
provides to a device under test a sequence of
operations to drive the protocol implementation through
a set of tests. This will determine whether a product
under test conforms to a protocol standard.
The examiner has relied on Wang to show nothing more
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specific than the general background noted above. It is not
apparent how the generic feature of simply driving the device
under test through a sequence of testing procedures would require
undue experimentation on the part of one with ordinary skill in
the art. Not every implementation detail has to be described in
a prior art reference. Even a patent specification need not
disclose what would be well known in the art. In re Buchner,
(Fed. Cir. March 1991); Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481,
489 (Fed. Cir. 1984).
It is also the appellant's burden to establish that the
prior art is nonenabling. In re Payne, 606 F.2d 303, 314-15, 203
USPQ 245, 255-56 (CCPA 1979). Here, no declaration evidence has
been submitted by the appellant from anyone with an opinion on
whether the background and generic teachings of Wang would have
been nonenabling with respect to one with ordinary skill in the
art. Without such evidence and in light of the general nature of
Wang's teaching, the appellant has not established that Wang is
nonenabling with respect to what it has been relied on to show.
However, we agree with the appellant that it is highly
artificial to regard Rattan's peripheral units as subdevices of a
system or overall device under test. The plurality of
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peripherals in Rattan are simply operational units controlled by
the computer of Rattan and are not reasonably deemed any part of
a device under test, where the test is, as claimed, "for
verifying the conformity of a device under test with a standard
application protocol defining the format, meaning and
applicability of messages to be received and transmitted by the
device under test." The examiner's contrary view is
unreasonable. As is stated by the appellant (Br. at 9):
[T]he plurality of peripherals controlled by the
computer of Rattan et al. are not fairly a device under
test, either individually or in combination. They are
a collection of peripherals to be controlled by the
computer.
Rattan's sensing what type of unit is connected, whether it is
turned on, and what it is doing, in our view, does not reasonably
constitute a test for determining conformity with a communication
protocol defining the format, meaning and applicability of
messages to be received and transmitted by the device under test.
We agree with the appellant that the "control" aspect of Rattan
is not reasonably combinable with the "testing" aspect of Wang
regarding conformity to a standard protocol. The two cannot be
equated as being the same or equivalent to each other.
Even assuming that Rattan's controlling is a form of testing
for communications protocol defining the format, meaning and
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applicability of messages to be received and transmitted by the
device under test, a combination of Rattan and Wang still would
not satisfy a central feature of the appellant's claimed
invention. Note that claim 1 requires a test sequencing means
for generating and supplying to the device under test a test
sequence of messages, "including messages requesting messages to
be transmitted by the device under test in response indicating
whether functions of predetermined definition are present or
absent in the device under test."
Evidently, the examiner presumed or speculated that Rattan's
system does generate and supply to its peripheral units (device
under test) such a sequence of messages, and did not explain
where in Rattan or Rattan in combination with Wang is such
disclosure or suggestion. In that regard, we do not find in
Rattan, Wang, or a combination thereof a suggestion for sending
messages which request return messages to be sent from the device
under test. Claim 1 further requires that the testing apparatus
analyze the return messages from the device under test for
determining conformity with the standard protocol. The examiner
has not shown where in Rattan arises a suggestion for messages
which are returned "in response" to requesting messages sent from
the testing apparatus.
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The cable or control lines described in Rattan's column 6,
lines 17-27 and column 16, lines 10-48, provide Rattan's
intelligent interface the ability to sense whether something is
connected to it through which lines. For instance, if a type 1
VCR is connected, then line 64E would be connected to ground
through the VCR, and if a type 2 VCR is connected, then line 64F
would be connected to ground through the VCR. (Column 16, lines
22-33). However, such "sensing" of whether a particular control
or sense line is connected to ground through an external device
cannot be reasonably regarded as sending messages from the
testing apparatus, which messages request return messages to be
transmitted by the device under test and in response to which the
device under test sends return messages. Insofar as the examiner
has apparently considered them to be the same, that is erroneous.
The examiner stated (answer at 4):
Rattan teaches in column 4, lines 5-20 that ". . .
error messages are sent to the computer 14 in response
to commands with invalid communication protocol or
format, commands that select a peripheral of a category
or device type that is not connected etc. . .".
(Emphasis in original.)
The foregoing text would not have reasonably suggested the
sending of a sequence of messages including messages requesting
return messages to be transmitted by the device under test. To
go from that disclosure to the appellant's claimed feature
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amounts to either improper speculation or hindsight in light of
the appellant's own disclosure. The examiner may not, of course,
because he or she may doubt the invention is patentable, resort
to "speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in [the] factual basis."
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
Claim 2 depends from claim 1 and claim 3 depends from
claim 2. Thus, both claims 2 and 3 include all limitations and
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features of independent claim 1. Because Wang and Rattan cannot
support the examiner's rejection of claim 1, the rejection of
claims 2 and 3 based also on Wang and Rattan also cannot stand.
In discussing claim 2, the examiner made reference (answer
at 5) to U.S. Patent No. 4,937,825 (Ballard et al.) and U.S.
Patent No. 5,157,782 (Tuttle et al.). However, neither Ballard
et al. nor Tuttle et al. has been included in the examiner's
stated ground of rejection. The appellant is correct that it is
inappropriate for the examiner to rely on references which have
not been included in the examiner's stated ground of rejection to
supply features missing from the applied prior art. Indeed, all
references on which the examiner relies should be positively
recited in the rejection. See, e.g., In re Hoch, 428 F.2d 1341,
1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970); Ex parte Movva,
31 USPQ2d 1027, 1028 n.1 (Bd. Pat. App. & Int. 1993); Ex parte
Hiyamazu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Int. 1988).
Thus, Ballard et al. and Tuttle et al. cannot be properly relied
on by the examiner to meet the features added by claim 2.
Moreover, because the examiner has not relied on or discussed
Ballard et al. or Tuttle et al. in the context of the rejection
of claim 1, whether the features of claim 1 would have been
suggested by Wang and Rattan in combination with Ballard et al.
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and/or Tuttle et al. is not an issue before us in this appeal.
Claims 11 and 20 each depend directly or indirectly from
claim 1. The examiner has applied the appellant's own disclosed
prior art to satisfy the features added by claims 11 and 20.
However, as applied by the examiner, the disclosed or admitted
prior art does not make up for the deficiencies of Wang and
Rattan insofar as the features of claim 1 are concerned.
Accordingly, the rejection of claims 1-10 and 12-19 under
35 U.S.C. § 103 as being unpatentable over Wang and Rattan cannot
be sustained.
The rejection of claims 11 and 20 under 35 U.S.C. § 103 as
being unpatentable over Wang, Rattan, and the appellant's
disclosed prior art cannot be sustained.
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Conclusion
The rejection of claims 1-10 and 12-19 under 35 U.S.C. § 103
as being unpatentable over Wang and Rattan is reversed.
The rejection of claims 11 and 20 under 35 U.S.C. § 103 as
being unpatentable over Wang, Rattan, and the appellant's
disclosed prior art is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-0907
Application 07/774,757
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Corporate Patent Counsel
U.S. Philips Corp.
580 White Plains Road
Tarrytown, NY 10591