Ex parte Wardle

Board of Patent Appeals and Interferences

Sep 24, 1999

08348625 (B.P.A.I. Sep. 24, 1999)

Application for patent filed December 2, 1994. 1
According to the appellant, the application is a division of
Application 08/013,882, February 5, 1993, now U.S. Patent No.
5,399,976, issued March 21, 1995.
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not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAY M. WARDLE
__________
Appeal No. 1996-2986
Application 08/348,6251
___________
ON BRIEF
___________
Before HAIRSTON, FLEMING, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-11 and 21-29. Claims 12-20 have been canceled.
The disclosed invention relates to a method and apparatus
Appeal No. 1996-2986
Application 08/348,625
2
for obtaining a group delay measurement of an electrical
network. More particularly, Appellant indicates at pages 3
and 4 of the specification that an estimate of the group delay
is determined by performing a linear regression analysis on
samples of a phase response measured at frequencies within an
aperture centered on the group delay frequency. A trace of
the group delay of the network is determined by repeating the
process across a range of frequencies.
Claim 1 is illustrative of the invention and reads as
follows:
1. In an electronic measurement instrument, a method for
estimating a trace of second measurements related to the
derivative of a trace of first measurements of an electrical
property of a network, the method comprising:
obtaining a plurality of uniformly spaced samples of a
first measurement to form the first trace; and
performing a least mean squares fit to samples in the
first trace within each of a plurality of apertures to
determine a plurality of estimates of a second measurement for
forming the second trace.
The Examiner relies on the following prior art:
Rietsch 4,065,665 Dec. 27,
1977
Potter 4,658,367 Apr. 14,
1987
Appeal No. 1996-2986
Application 08/348,625
The Examiner’s statement of the grounds of rejection2
refers to the application of the teachings of Rietsch and
Potter to measurements of transfer functions in accordance
with “well-known practices.” Particular mention is made to a
previously known interpolation technique known as “the splines
interpolation.”
3
Claims 1, 2, 5, 25, 26, and 29 stand finally rejected
under 35 U.S.C. § 101 as being directed to non-statutory
subject matter. Claims 1-11 and 21-29 stand finally rejected
under 35
U.S.C. § 103 as being unpatentable over either one of Rietsch
or Potter in view of “well known practices in the art.”2
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief and Answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
reasons relied upon by the Examiner as support for the
rejections. We have, likewise, reviewed and taken into
Appeal No. 1996-2986
Application 08/348,625
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consideration, in reaching our decision, Appellant’s arguments
set forth in the Brief 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 claims 1, 2, 5, 25, 26, and 29 are directed to
statutory subject matter within the meaning of 35 U.S.C. §
101. We are also of the view that the collective evidence
relied upon and the
level of skill in the particular art would not have suggested
to one of ordinary skill in the art the obviousness of the
invention as set forth in claims 1-11 and 21-29. Accordingly,
we reverse.
We consider first the rejection of claims 1, 2, 5, 25,
26, and 29 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter in the form of a mathematical
algorithm. With respect to the mathematical algorithm
exception, the Federal Circuit in State Street Bank & Trust
Appeal No. 1996-2986
Application 08/348,625
5
Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373,
47 USPQ2d 1596, 1600 (Fed. Cir. 1998) first identified the
judicially created three categories that are not patentable
(laws of nature, natural phenomena and abstract ideas) citing
Diamond v. Diehr, 450 U.S. 175, 209 USPO 1 (1981). The
opinion went on to note "the mathematical algorithm is
unpatentable only to the extent that it represents an abstract
idea" and is thus not "useful." State Street Bank 149 F.3d at
1373 & n.4, 47 USPQ2d at 1600-01 & n.4. Later in its opinion,
the court returned to this issue: "[T]he mere fact that a
claimed invention involves inputting numbers, calculating
numbers, outputting numbers, and storing numbers, in and of
itself, would not render it nonstatutory subject matter,
unless, of course, its operation does not produce a ‘useful,
concrete and tangible result.’" State Street Bank 149 F.3d at
1374, 47 USPQ2d at 1602. In this case, the court stated that
"the transformation of data, representing discrete dollar
amounts, by a machine through a series of mathematical
calculations into a final share price, constitutes a practical
application of a mathematical algorithm . . . because it
Appeal No. 1996-2986
Application 08/348,625
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produces a useful, concrete and tangible result’ . . . ."
State Street Bank 149 F.3d at 1373, 47 USPQ2d at 1601.
Significantly, the court concluded its analysis of the
mathematical algorithm issue as follows: "The question of
whether a claim encompasses statutory subject matter should
not
focus on which of the four categories of subject matter a
claim
is directed to . . . but rather on the essential
characteristics
of the subject matter, in particular, its practical utility."
State Street Bank 149 F.3d at 1375, 47 USPQ2d at 1602.
Appellant’s claim 1 recites an electronic measurement
instrument in which a method of relating measurement traces of
an electrical property of a network is performed. We are of
the view that the claim language recites a practical
application of applying a least squares fit to obtained
measurement samples to determine an electrical characteristic
of a network such as group delay. Since claims 1, 2, 5, 25,
26, and 29 recite a practical application for the reason just
Appeal No. 1996-2986
Application 08/348,625
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discussed, the 35 U.S.C. § 101 rejection of these claims is
not sustained.
We now consider the 35 U.S.C. § 103 rejection of claims
1-11 and 21-29 as being unpatentable over either one of
Rietsch or Potter in view of “well known practices in the
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), and to provide a reason why one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
Appeal No. 1996-2986
Application 08/348,625
8
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed.
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
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Application 08/348,625
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obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
As indicated by the cases just cited, the Examiner has at
least two responsibilities in setting forth a rejection under
35 U.S.C. § 103. First, the Examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the Examiner must explain why the
identified differences would have been the result of an
obvious modification of the prior art. In our view, the
Examiner has not properly addressed his first responsibility
so that it is impossible that he has successfully fulfilled
his second responsibility.
With respect to the obviousness rejection of independent
claims 1, 6, and 25 based on Rietsch and “known practices in
the art”, the Examiner has never attempted to show how each of
the claimed limitations is suggested by the prior art.
Instead, in our view, the Examiner has attempted to combine
the general phase difference determination features of Rietsch
with unspecified “well known practices” (Answer, page 3) in
Appeal No. 1996-2986
Application 08/348,625
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some vague manner without specifically describing such
features or how and why they are to be combined. This does
not persuade us that skilled artisans, using their own
knowledge of the art, would have been put in possession of the
claimed subject matter. For example, as pointed out by
Appellants at pages 16 and 17 of the Brief, in contrast to the
claimed trace development limitations, the system of Rietsch
develops single values of start time difference and overall
phase shift between two signals developed from an entire phase
relationship plot. The Examiner has never provided any
indication of which general knowledge teaching would be
combined with this teaching of Rietsch, nor any rationale for
making such combination, that would arrive at the claimed
invention.
We note that, in prior Office actions (paper numbers 3
and 5) referenced in the Answer, the Examiner briefly
discusses the “splines” interpolation technique. To the
extent that such a mathematical interpolation technique has
any relevance to the Examiner’s proposed modification of
Rietsch, we agree with Appellant’s assertions expressed at
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Application 08/348,625
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pages 17 and 18 of the Answer. In our opinion, the use of a
more detailed approximation technique (such as “splines”) on
the phase plot of Rietsch would perhaps lead to a segmented
approximation of such plot but would not lead in and of itself
to a development of a derivative trace as claimed.
Since, for all of the reasons discussed above, we are of
the view that the Examiner has not established a prima facie
of obviousness based on Rietsch. Accordingly, we do not
sustain this 35 U.S.C. § 103 rejection of independent claims
1, 6, and 25, nor of claims 2-5, 7-11, 21-24 and 26-29
dependent thereon.
The Examiner has made a separate obviousness rejection of
claims 1-11 and 21-29 based on Potter and “known practices in
the art.” It is our view that this rejection suffers from the
same deficiencies as the one based on Rietsch as discussed
previously. Potter is directed to the measurement of a system
transfer function waveform, the fitting of an equation to this
measured waveform to determine an estimated transfer function,
and the subsequent development of an indication of the poles
and zeros of the system. As Appellant points out at pages 13-
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Application 08/348,625
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16 of the Brief, this is contrasted with the claim limitations
which require the development of a derivative trace of a first
measurement. Faced with this distinction, the Examiner seeks
to modify Potter by looking to some unspecified “general
knowledge” in the art. As with the rejection based on
Rietsch, the Examiner has not identified what aspect of this
“general knowledge” is being relied on, let alone provided any
rationale for making the modification. The mere fact that
the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification. In
re Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1781-82 (Fed.
Cir. 1992). We are left to speculate why the skilled artisan
would modify the pole and zero analyzer of Potter to provide
for development of a derivative trace as claimed. The only
reason we can discern is improper hindsight reconstruction of
appellant’s claimed invention. Accordingly, since the
Examiner has not established a prima facie case of
obviousness, the 35 U.S.C. § 103 rejection of claims 1-11 and
21-29 based on Potter cannot be sustained.
Appeal No. 1996-2986
Application 08/348,625
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In summary, we have not sustained any of the Examiner’s
rejections of the claims on appeal. Therefore, the Examiner’s
decision rejecting claims 1-11 and 21-29 is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR/pgg
Records Manager
Legal Department 20BO
Hewlett Packard Company
P.O. Box 10301
Palo Alto, CA 94303-0890
Appeal No. 1996-2986
Application 08/348,625
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