FLUKE CORPORATION

Patent Trials and Appeals Board

Dec 2, 2020

2019004941 (P.T.A.B. Dec. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/837,888 03/15/2013 Robert C. Crepps 370174.485 5274
10794 7590 12/02/2020
Seed IP Law Group LLP/Fluke-All Except Maint. Fees
701 Fifth Avenue
Suite 5400
SEATTLE, WA 98104
EXAMINER
OLSHANNIKOV, ALEX
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
12/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT C. CREPPS, DAVID C. DYCK, and
NIKOLA MRVALJEVIC

Appeal 2019-004941
Application 13/837,888
Technology Center 2100
____________

Before JEREMY J. CURCURI, JUSTIN BUSCH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 2, 4–6, 8, 10–12, 14–17, 19–29, and
31–33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Fluke
Corporation. Appeal Br. 1.
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Application 13/837,888

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ILLUSTRATIVE CLAIM
1. A digital checklist system, comprising:
(a) an electronic calibration and measurement device
configured to measure and calibrate a piece of equipment;
(b) a computer-readable medium having computer-
executable instructions stored thereon that, in response to
execution by one or more processors of a computing device,
cause the computing device to perform actions for managing a
digital checklist, the actions comprising:
(i) creating a digital checklist having first, second,
and third unique prompts, wherein the first unique
prompt corresponds to the measurement and calibration
of the piece of equipment;
(ii) configuring the digital checklist such that,
when uploaded onto the electronic calibration and
measurement device, the digital checklist causes the
electronic calibration and measurement device to display:
first and second responses to the first unique
prompt; and
one of either:
the second unique prompt without
displaying the third unique prompt when a
user selects the first response; and
the third unique prompt without
displaying the second unique prompt when a
user selects the second response;
(iii) selecting the digital checklist for uploading
onto the electronic calibration and measurement device;
and
(iv) downloading data into the electronic
calibration and measurement device; and
(c) a network interface for facilitating communication
between the electronic calibration and measurement device and
the computing device.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gurne et al.
(“Gurne”)
US 6,181,992 B1 Jan. 30, 2001
Clarridge et al.
(“Clarridge”)
US 6,584,421 B1 June 24, 2003
Manning et al.
(“Manning”)
US 2006/0087402 A1 Apr. 27, 2006
Russell et al.
(“Russell”)
US 2008/0091376 A1 Apr. 17, 2008
Shibi US 2010/0023203 A1 Jan. 28, 2010

REJECTIONS
I. Claims 1, 2, 5, 8, 10–12, 15, 17, 19–21, 23, 24, 26, 27, and 29
are rejected under 35 U.S.C. § 103(a) as unpatentable over Manning and
Shibi.
II. Claims 4, 14, and 31–33 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Manning, Shibi, and Clarridge.
III. Claims 6 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Manning, Shibi, and Russell.
IV. Claims 22, 25, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Manning, Shibi, and Gurne.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Disputing the rejection of independent claim 1, the Appellant presents
several arguments.
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The Appellant argues that the Examiner erred in rejecting claim 1,
because Manning fails to teach or suggest “an electronic calibration and
measurement device configured to measure and calibrate a piece of
equipment.” Appeal Br. 8–10. According to the Appellant, paragraph 10 of
Manning “merely refers to entering, storing or modifying data in [a] portable
computer,” but “fails to teach or suggest that the portable computer is an
electronic calibration and measurement device configured to calibrate or
measure the equipment.” Id. at 9. Further, in regard to paragraph 124 of
Manning, the Appellant argues that Manning “teaches that a user may enter,
modify, and store calibration data” in the portable computer, rather than the
claimed “electronic calibration and measurement device configured to
measure and calibrate a piece of equipment.” Id.
The Appellant’s argument does not persuade us of error in the
Examiner’s reliance on Manning to teach or suggest the claimed “electronic
calibration and measurement device configured to measure and calibrate a
piece of equipment.” Manning does not teach only the collection and
handling of data relating to sites in a process plant, as the Appellant
contends. See id. at 8–10. Manning states:
[T]he quality control technique and solution may involve, for
example, inspection of installation work such as
instrumentation mounting, electrical equipment code
compliance, or rotating equipment operability. . . . Other
exemplary initiatives include such typical commissioning
activities as performing loop checks (e.g., using electronic
equipment to ensure wiring is correct and the a loop performs
as designed), inspection (e.g., performing visual checks on field
equipment and documenting conformity to installation
standards), documentation (e.g., filing of all test results,
including as-built drawings, check lists, specification sheets,
etc., for each device into a loop folder), and startup (e.g.,
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livening up process systems by introducing the products that
will affect the flow, temperature, pressure and level
measurements involved in the control systems).
Manning ¶ 50. See also id. ¶¶ 10, 11, 27, 91, 92, 99. Manning further
elaborates on its use of the phrase “quality control”:
As used herein, the term “quality control” should be
understood to broadly refer to any work, procedure, or action
directed to, involving, or related to, controlling quality in
connection with a process plant, including without limitation
checking, calibrating, inspecting and verifying that field
equipment is installed and working to a level to which it was
designed or intended. Quality control may also include a
number of related measures, including without limitation the
documentation or reporting of such work, procedures, or
actions, or the results of such work, procedures, or actions.
Id. ¶ 124. Accordingly, rather than only teaching the handling of data
relating to the “tasks that a technician [would] perform” (Reply Br. 2),
Manning teaches the installation, performance testing, calibration, and
measurement of equipment. See Manning ¶¶ 10, 11, 27, 50, 91, 92, 99, 124.
Accordingly, we find Manning teaches or suggests claim 1’s recited
“electronic calibration and measurement device configured to measure and
calibrate a piece of equipment.” See Final Act. 3–4; Answer 3–6.
With regard to the Shibi reference, the Appellant alleges error in the
rejection of claim 1, because: “Shibi fails to teach or suggest the diagnostic
data is calibration data or measured by the computing device”; and, “even if
the diagnostic system of Shibi is an electronic calibration and measurement
device that is configured to measure and calibrate a piece of equipment,
Shibi fails to teach or suggest selecting a digital checklist for uploading onto
the diagnostic system.” Appeal Br. 10.
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Yet, as the Examiner points out, the rejection does not rely upon Shibi
in the manner the Appellant alleges; rather, “Shibi only provides the
additional functionality of branching a checklist depending on the user
input.” Answer 6.
The Appellant’s final argument, regarding the rejection of claim 1,
concerns whether Shibi constitutes “analogous art,” such that it may be used
as a reference for determining the obviousness of the claimed subject matter.
See Appeal Br. 11–13.
“Prior art is analogous if it is from the same field of endeavor or if it is
reasonably pertinent to the particular problem the inventor is trying to
solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir.
2015). A reference is analogous if either of these two tests is met. Scientific
Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).
The Appellant argues that Shibi is not from the same field of endeavor
as the claimed subject matter, because claim 1 is directed to “a digital
checklist system for calibrating and measuring a piece of equipment,”
whereas Shibi is directed to “a diagnostic system for facilitating a user in
diagnosing a fault in a vehicle and providing a set of instructions that assist
the user in correcting the fault.” Appeal Br. 11. The Appellant stresses that
Shibi’s sensors “are not part of the diagnostic system,” but communicate
faults to the control unit, which (in turn) communicate the faults to a
computing device. Id. at 11–12. According to the Appellant, these
circumstances establish that “Shibi is not from the same field of endeavor as
a digital checklist system comprising an electronic calibration and
measurement device configured to calibrate and measure a piece of
equipment.” Id. at 12.
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However, as the Examiner explains, Shibi teaches “using a computing
device which is able to measure data from equipment and further follow a
digital checklist, i.e. instructions, to correct the faults in the equipment.”
Answer 7. Indeed, Shibi states:
In accordance with one exemplary embodiment, the sets
of predetermined instructions each comprise of a sequence of
diagnostic steps that guides the user to a conclusion to correct
one or more vehicle faults. In other words, each set of
predetermined instructions is in the form of guided diagnostics
that assists the user in reaching a conclusion to one or more
vehicles faults reported by the control unit. In one
embodiment, the sequences of diagnostic steps are each in the
form of a flowchart. Each step comprise[s] one or more
questions, statements, commands or otherwise. For example, a
step may call for the user to locate a particular component of
the vehicle and perform one or more tasks on the component.
In another example, a step may call for the user to determine
the status of one or more components of the vehicle. These sets
of predetermined instructions being communicated to the user
in flowchart form through visuals can improve the proficiency
of the user, reduce unnecessary components replacement and
shorten the time in diagnosing vehicle faults/failures.
Shibi ¶ 32. This stepwise progression through “a sequence of diagnostic
steps that guides the user to a conclusion to correct one or more vehicle
faults” (id.) addresses particular vehicle features to be determined and/or
corrected, much like the progress of the claimed “calibration and
measurement device” interaction with a “digital checklist.” Therefore, we
are not persuaded by the Appellant’s argument that Shibi is not drawn from
the same field of endeavor as the claimed subject matter.
In addition, we are not persuaded by the Appellant’s argument that
Shibi is not reasonably pertinent to the problem faced by the inventors of the
claimed subject matter. The Appellant characterizes this problem as
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“mak[ing] measuring and calibrating equipment easier” — for example, by
“consolidat[ing] test results from a measurement and calibration device with
other measurement and calibration tasks associated with measuring and
calibrating the equipment, so that the operator does not have to transfer data
to a computer or other device at a later time.” Appeal Br. 12. The
distinction that the Appellant draws, in regard to Shibi, is that Shibi “fails to
teach or suggest that the computing device 12 is used to measure and
calibrate the vehicle.” Id. at 12–13.
Under the Appellant’s characterization of the problem facing the
inventors, however, whether measurements or calibrations are performed by
Shibi’s computing device 12 — as opposed to some other element of Shibi’s
technology — does not impair whether Shibi “make[s] measuring and
calibrating equipment easier” (id. at 12). Moreover, Shibi’s “set[s] of
predetermined instructions,” which are employed in the “form of guided
diagnostics that assists the user in reaching a conclusion to one or more
vehicles faults reported by the control unit” (Shibi ¶ 32), would make the
measuring/calibrating process “easier” (Appeal Br. 12), in a sense, because
Shibi’s techniques “can improve the proficiency of the user, reduce
unnecessary components replacement and shorten the time in diagnosing
vehicle faults/failures” (Shibi ¶ 32).
Furthermore, the Examiner articulates a different, but proper, account
of the problem facing the inventors of the claimed subject matter — i.e.,
enhancing the “flexibility of the digital checklist based on [a] user’s
responses during the measuring and calibration process.” Answer 8. In this
regard, the Examiner draws attention to the “branching capability of the
checklist,” as disclosed in the Specification, whereby “the checklist can
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direct the user to a corresponding prompt based on the user’s prior
response.” Id. (citing Spec. 10, l. 30–11, l. 14, Fig. 7). According to the
Examiner, Shibi manifests such flexibility, in “manag[ing] the sequence of
diagnostic steps by iteratively receiving user inputs that indicate the passing
or failing of each step.” Id. at 9. See Shibi ¶ 36. Accordingly, for this
additional reason, the Appellant does not persuade us that Shibi is not
reasonably pertinent to the particular problem the inventors of the claimed
subject matter, of claim 1, were trying to solve.
Therefore, in view of the foregoing, we are not persuaded of error in
the rejection of independent claim 1.
With regard to the other independent claims (claims 11 and 20), the
Appellant relies upon the arguments presented for independent claim 1.
Appeal Br. 13–15. No dependent claim is argued separately.
Accordingly, we sustain the rejections of independent claims 1, 11,
and 20, and dependent claims 2, 4–6, 8, 10, 12, 14–17, 19, 21–29, and 31–33
under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 8,
10–12, 15,
17, 19–21,
23, 24, 26,
27, 29
103(a) Manning, Shibi 1, 2, 5, 8,
10–12, 15,
17, 19–21,
23, 24, 26,
27, 29

4, 14, 31–
33
103(a) Manning, Shibi,
Clarridge
4, 14, 31–
33

6, 16 103(a) Manning, Shibi,
Russell
6, 16
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22, 25, 28 103(a) Manning, Shibi,
Gurne
22, 25, 28
Overall
Outcome
1, 2, 4–6,
8, 10–12,
14–17,
19–29,
31–33

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED