Ex Parte Frick et alDownload PDFPatent Trial and Appeal BoardOct 10, 201813284491 (P.T.A.B. Oct. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/284,491 10/28/2011 139353 7590 10/12/2018 CHOATE I TERADYNE TWO INTERNATIONAL PLACE BOSTON, MA 02110 FIRST NAMED INVENTOR Lloyd K. Frick 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 ATTORNEY DOCKET NO. 18523-0134001 / 2255-US/A CONFIRMATION NO. 9895 EXAMINER YUN,CARINA ART UNIT PAPER NUMBER 2194 NOTIFICATION DATE DELIVERY MODE 10/12/2018 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): patentdocket@choate.com jnease@choate.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LLOYD K. FRICK and DAVID JOHN LIND Appeal 2016-008448 Application 13/284,491 1 Technology Center 2100 Before ROBERT E. NAPPI, KARA L. SZPONDOWSKI, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-20, which constitute all of the claims pending in this application. Oral arguments were heard on September 27, 2018. A transcript of the hearing will be added to the record in due course. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM and institute a new ground of rejection under the provisions of 37 C.F.R. § 41.50(b) .. 1 Appellants identify Teradyne, Inc. as the real party in interest. App. Br. 3. Appeal2016-008448 Application 13/284,491 THE INVENTION The disclosed and claimed invention is directed to a programmable test instrument. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A test instrument comprising: a first processing system comprising one or more processing devices, the first processing system being programmable to coordinate with a second processing system to test a device under test interfaced to the test instrument, and being programmed to perform control functions, the first processing system being to perform testing and tasks other than testing; and the second processing system comprising one or more processing devices, the second processing system being dedicated to device testing, the second processing system being programmable to run one or more test programs to test the device under test, the first processing system and the second processing system being a tiered processing system, with the second processing system being at a lower tier than the first processing system, and thus being dedicated to a more specialized task than the first processing system, and receiving a test program for testing the device under test from the first processing system; wherein the first processing system has a first application programming interface (API) and the second processing system has a second API, the first API and the second API being different APis, the first API and the second API having at least some duplicate functions; and wherein the first processing system comprises a function library for developing the test program at the first processing system, and a translation engine to modify the test program developed on the first processing system so that the test program is operable on the second processing system, the translation engine for modifying the test program by altering 2 Appeal2016-008448 Application 13/284,491 the test program to produce an altered test program that is operable on the second processing system with the second APL REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Mukai Jones Blancha N agashima O'Connell Kocyan Schroeder US 2005/0262412 Al US 2006/0156288 Al US 2008/0040641 Al US 2009/0119542 Al US 7,536,679 Bl US 2009/0217311 Al US 2012/0198279 Al REJECTIONS Nov. 24, 2005 July 13, 2006 Feb. 14,2008 May 7, 2009 May 19, 2009 Aug. 27, 2009 Aug.2,2012 Claims 1 and 12 stand rejected under pre-AIA 35 U.S.C. § 112, second paragraph as being indefinite. Final Act. 3 Claims 1, 2, 6-11, and 20 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Blancha in view of O'Connell, Schroeder, and Jones. Final Act. 4--10. Claims 3-5 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Blancha in view of O'Connell, Schroeder, Jones, and Kocyan. Final Act. 10-11. Claims 12, 17, and 18 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Blancha in view of Schroeder and Jones. Final Act. 11-14. Claims 13-15 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Blancha in view of Schroeder, Jones, and O'Connell. Final Act. 14--15. 3 Appeal2016-008448 Application 13/284,491 Claim 16 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Blancha in view of Schroeder, Jones, O'Connell, and Kocyan. Final Act. 15-16. Claim 19 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Blancha in view of O'Connell, Schroeder, Jones, and Nagashima. Final Act. 16. ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellants. We are not persuaded by Appellants' arguments regarding the indefiniteness rejection of claims 1 and 12. Indefiniteness Rejections The Examiner rejected claims 1 and 12 as indefinite because "[t]he terms 'lower tier' and 'more specialized task' is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention." Final Act. 3. The Examiner concludes that "it is not clear what standard of measuring degree 'lower tier' or 'more specialized task' encompasses." Id.; see also Ans. 17. Appellants argue the claims are not indefinite. See App. Br. 14--15; Reply Br. 3-5. First, Appellants argue that a person of ordinary skill in the art would understand that lower tier refers to being lower than an upper tier with respect to the device under testing ("DUT"): 4 Appeal2016-008448 Application 13/284,491 As an initial matter, the application describes a "tier" as follows: "[ d]escribed herein is a test instrument that may include multiple processing layers ( sometimes referred to as 'tiers')". The application also describes that "[ t ]he different tiers of test instrument 100 reflect the relative relationship of the tiers to the DUT", with a lower tiers being closer to the DUT, as shown in Fig. 1 below (e.g., the second tier is lower than the first tier, and the third tier is lower than the first tier and the second tier). Consequently, one of ordinary skill in the art, armed with the subject specification, would understand the terms "tier" and "lower tier."' App. Br. 14 (footnote omitted); see also Reply Br. 4. Appellants further argue that, the Specification (page 15, line 21 through page 16, line 6), recites "examples of general computing tasks and specialized tasks." App. Br. 15. Appellants contend, in light of that disclosure, a person of ordinary skill in the art would understand the term "specialized task." Id.; see also Reply Br. 4--5, "[W]e apply the approach for assessing indefiniteness approved by the Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains words or phrases whose meaning is unclear."' Ex parte McAward, No. 2015-006416, 2017 WL 3669566, *5 (PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). "Put differently, 'claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite-terms."' Id. (quoting Packard, 751 F.3d at 1313); see also MPEP § 2173.02(!). "At the same time, this requirement is not a demand for unreasonable precision." Packard, 751 F.3d at 1313. We are persuaded by Appellants' argument that the Examiner erred in concluding that "lower tier" is indefinite. As the Specification makes sufficiently clear, as shown in Figure 1, reproduced below, the various tiers 5 Appeal2016-008448 Application 13/284,491 ( also referred to as layers) refer to various layers of the test instrument relative to the DUT. r-------------------------------- 1 tnt I .. I SYSTEM FlRSTTJER PRtX:ESSlNG DEViCE I '--------------+---------! I I 104 I SECO.i'iD r!ER TJllRDTJl:R ! EMBEDDED f'ROCESSlNG I f'RtX:ESSlNG I DEVICE I I :JEl"('E DEViCE I i(il, I I L 10/ _l_ll_S I -........--,~-----I I I I I I . 1 1 . 1 1 . I I PROGRAMMAB I I PROGRAMMAB I I PROGRAMMAB I I LE LOCilC I I LE LOGIC I I LE LOC,IC I I ill 1 1 .LU 11 113 I ---,....---1,___ I.___ I tt5 Figure 1 "is a block diagram of an example test instrument." Spec. 5. As described in the Specification, "[ t ]he different tiers of test instrument 100 reflect the relative relationship of the tiers to the DUT." Id. at 6. As shown in Figure 1, that relative relationship refers to relative relationship between the layers/tiers and the DUT: the second tier (lower tier) is closer to the DUT than the first tier (upper tier). Moreover, this is consistent with the ordinary understanding of the relative placement of an upper item and a lower item: the upper is item is physically located above the lower item. However, we are not persuaded by Appellants' arguments that the Examiner erred in concluding that "more specialized task" is indefinite. Although Appellants contend that a person of ordinary skill in the art would know the meaning of "more specialized task" based on the Specification, 6 Appeal2016-008448 Application 13/284,491 Appellants do not provide any evidence supporting that contention. It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Moreover, Appellants do not provide a definition. Although the section of the Specification Appellants point to identifies device testing as an example of a more specialized task, it is not clear what else is or is not a specialized task. See Spec. 16 ("The testing layer 204 includes an embedded processing device 208 that is dedicated to one or more specialized tasks, such as device testing."). For example, it is unclear from the section of the Specification Appellants rely on (see Reply Br. 4--5) whether or not "non-test functions like test instrument control and network communication" are more specialized tasks. See id. According to the Specification: The testing layer 204 includes an embedded processing device 208 that is dedicated to one or more specialized tasks, such as device testing. While the testing layer 204 may include more than one embedded processing device ( e.g., as shown in the second tier 104 of the test instrument 100 (Fig. 1) ), only one embedded processing device is shown for the sake of simplicity. In some examples, the embedded processing device 208 does not perform non-test functions like test instrument control and network communication. The test instrument may also include one or more additional layers, such as the third tier 110 shown in Fig. 1, which may in tum communicate with one or more DUTs. Id. Although the Specification section quoted above discusses how "[i]n some examples" the testing device performs device testing but not "non-test functions like test instrument control and network communication," the use 7 Appeal2016-008448 Application 13/284,491 of "in some examples" to start the paragraph implies that in other examples, the opposite is true and test instrument control and network communication can be a more specialized task. Accordingly, we agree with the Examiner that the meaning of the term "more specialized task" is vague and unclear. Although more specialized task includes device testing, it is unclear what else it encompasses and, more importantly, what it excludes. We therefore sustain the Examiner's rejection. In the Final Action, the Examiner stated that "[t]he terms 'lower tier' and 'more specialized task' in claims 1 and 12 are relative terms which renders the claim indefinite." Final Act. 3. Although dependent claims 2- 11 and 13-20 also recite those limitations, it is unclear whether the Examiner intended the rejection under 35 U.S.C. § 112, second paragraph to be limited to claims 1 and 12 or include all the claims containing those limitations. Although we see no prejudice in interpreting the rejection as a rejection of all claims, in the interest of justice we will treat the rejection as directed solely to claims 1 and 12. Because claims 2-11, 19, and 20 depend, directly or indirectly from claim 1 and claims 13-18 depend, directly or indirectly, from claim 12, all of the dependent claims also require a "more specialized task." For the same reason discussed above for claims 1 and 12, we reject claim 2-11 and 13-20 under 35 U.S.C. § 112, second paragraph, for indefiniteness. We are mindful that, in rejecting claims 2-11 and 13-20, the Examiner did not rely on§ 112, second paragraph. Accordingly, although we affirm the Examiner's decision rejecting claims 2-11 and 13-20, we designate the affirmance as a new ground of rejection under 37 C.F.R. § 4I.50(b). 8 Appeal2016-008448 Application 13/284,491 Prior Art Rejections Appellants argue, inter alia, that the Examiner erred finding Blancha teaches the "first processing system and the second processing system [are] a tiered processing system, with the second processing system being at a lower tier than the first processing system, and thus being dedicated to a more specialized task than the first processing system", as recited in claim 1. See App. Br. 17. However, as discussed in the preceding section, it is unclear what the scope of a "more specialized task" is and, accordingly, we are unable to determine whether or not Blancha teaches it. Where a claim is so indefinite that "considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims" is needed, it would be imprudent for us to pass judgment on such a rejection (under§ 103(a)). See In re Steele, 305 F.2d 859, 862 (CCPA 1962). With regard to the pending claims, we are unable to determine whether the Examiner's obviousness rejection is proper because discerning the proper scope of the claim requires undue and improper speculation, as discussed above. We, therefore, reverse proforma the prior art rejections of claims 1- 20 under 35 U.S.C. § 103. We emphasize that this is a technical reversal of the rejections under 35 U.S.C. § 103, and not a reversal based upon the merits of the rejection. DECISION For the above reasons, we affirm the Examiner's decisions rejecting claims 1-20. 9 Appeal2016-008448 Application 13/284,491 We enter a new ground of rejection for claims 2-11 and 13-20 under pre-AIA 35 U.S.C. § 112, second paragraph. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. 10 Appeal2016-008448 Application 13/284,491 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 37 C.F.R. § 4I.50(b) 11 Copy with citationCopy as parenthetical citation