Ex Parte Eidson et al

Patent Trial and Appeal Board

Jul 26, 2013

11040404 (P.T.A.B. Jul. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN C. EIDSON and RANDY COVERSTONE1
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Appeal 2010-012269
Application 11/040,404
Technology Center 2400
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Before JASON V. MORGAN, LARRY J. HUME, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-19, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Agilent Technologies, Inc. (App. Br. 2.)
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STATEMENT OF THE CASE2
The Invention
Appellants’ invention relates to techniques for network based
triggering in an instrument system that enables instruments to signal events
without hardwired trigger lines. Spec. p. 3, ll. 3-6 (“SUMMARY OF THE
INVENTION”).
Exemplary Claim
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):
1. An instrument system, comprising:
a first instrument coupled to a local area network, the
first instrument configured to measure variables of an object
of interest, or apply a stimulus to the object of interest, or
both, in response to an event; and
a second instrument coupled to the local area network,
the second instrument configured to signal the event to the first
instrument by transferring a trigger message via the local area
network.

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Dec. 24, 2009); Reply Brief (“Reply Br.,” filed Jul. 14, 2010); Suppl.
Examiner’s Answer (“Ans.,” mailed May 14, 2010); Final Office Action
(“FOA,” mailed Apr. 17, 2009); and the original Specification (“Spec.,”
filed Jan. 21, 2005).
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Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Auer US 6,067,637 May 23, 2000
Seidensticker US 6,182,012 Oct. 3, 2000
McCabe US 2002/0016827 A1 Feb. 7, 2002
Olsson US 2002/0103664 A1 Aug. 1, 2002
Bruckner US 2005/0015796 A1 Jan. 20, 2005
Andra US 6,883,025 B2 Apr. 19, 2005
Jain US 7,089,265 B1 Aug. 8, 2006
Rejections on Appeal
1. Claims 1-2, 6, 9-10,12-13,17 and 19 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Jain and
Olsson. Ans. 3.
2. Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Jain, Olsson, and Bruckner.
Ans. 7.
3. Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Jain, Olsson, and Seidensticker.
Ans. 8.
4. Claims 5 and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Jain, Olsson, and McCabe.
Ans. 9.
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5. Claims 7-8 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Jain, Olsson, and Andra. Ans.
10.
6. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Jain, Olsson, McCabe, and Auer. Ans.
12.
ISSUE
Appellants argue (App. Br. 5-9; Reply Br. 2-6) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Jain and Olsson is in error. Appellants further indicate that
claims 2-19 stand or fall with claim 1. App. Br. 10. These contentions
present us with the following issue:
Did the Examiner err in finding that the combination of Jain and
Olsson teaches or suggests Appellants’ claimed instrument system including,
inter alia, “a first instrument coupled to a local area network, the first
instrument configured to measure variables of an object of interest . . . in
response to an event,” as recited in claim 1?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 1, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
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the Examiner’s Answer in response to Appellants’ arguments. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
Appellants contend that Jain provides no disclosure of an instrument
configured to measure any variables, no disclosure of applying a stimulus to
an object of interest and, while Jain discloses events of interest and event
monitors, Appellants assert that Jain is silent on any disclosure of making
measurements. App. Br. 6. Further in this vein, Appellants contend, “there
is no disclosure of an object of interest, no disclosure that the server is
configured to apply a stimulus, and there can be no disclosure of applying a
stimulus to an object of interest because no such object is disclosed.” App.
Br. 7.
Appellants also state that the sequence described in Jain
relates to determination if a transaction is a triggering
transaction, through the determination of whether the
transaction will cause an event of interest to occur . . . and if the
determination is made [of] an event of interest, a notification is
sent . . . [but] there is no disclosure of an object of interest.
There is no disclosure (nor can there be) of applying a stimulus
to an object of interest, but rather only the notification of an
event of interest to a client.”
App. Br. 8 (emphasis omitted) (citing Jain col. 8:47-64).
In the Reply, Appellants contend that no fair interpretation of “object
of interest” would lead one of ordinary skill in the art to interpret a data
entry requiring database resources as an object of interest because an object
of interest is “any device, system or environment of interest.” That is, an
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object of interest is generally a tangible object, and data do not represent
such objects. Reply Br. 2. Appellants further contend that the Examiner’s
interpretation of “object of interest” as being “a data entry requiring database
resources” is therefore unreasonable. Reply Br. 3.
First, the Examiner finds that the alternative language of claim 1 (i.e.,
use of “or”) only requires that the first instrument be configured to either
measure variables of the object of interest, or to apply a stimulus to the
object of interest, but not both. Ans. 14. Further, the Examiner interprets an
object of interest to be a data entry requiring a large amount of database
resources, and that the result of such a large data entry may be considered to
be a calculated or measured value determined after the user indicated the
need for an amount of database resources above a threshold value. The
Examiner considers that this result is derived from a calculation or
measurement process. Ans. 15. The Examiner also finds, and we agree, that
Jain’s disclosure of “the server (i.e. the database management system 100)
configured to send the notification is considered as applying a stimulus to
the object of interest (i.e. the large number of requiring database resources)
in response to the event.” Ans. 18 (citing Jain col. 8:59-66).
We agree with the Examiner since Appellants’ Specification merely
states alternative definitions of “object of interest,” i.e., “[t]he object of
interest 30 may be any device, system or environment of interest . . . [e.g.,]
the object of interest 30 may be a device under test in a test and
measurement system.” Spec. p. 5, ll. 17-20 (emphases added).
Accordingly, we agree with the Examiner’s finding that Jain’s “data entry
requiring database resources is considered as an object of interest” (Ans. 15,
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17), and find that such an interpretation is not unreasonable given
Appellants’ open-ended and alternative definitions in the Specification for
the recited “object of interest.”
We also agree with the Examiner’s findings that Jain determines
whether an attempt to use database resources has been made (i.e., an event)
and in response, determines an amount of resources needed (i.e., measures
variables associated with the object of interest, the data entry), in order to
determine whether the attempted use of database resources exceeds a certain
threshold. Ans. 15-17 (citing Jain col. 6:1-7; col. 8:47-55 and 59-64).
In the Reply, Appellants contend that “according to the Examiner's
Answer, it is not the variables of the proffered object of interest (‘a data
entry requiring database resources’) that are measured, but rather the
resources of the database itself that are measured.” Reply Br. 4 (emphasis
in original).
Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appellants’ Specification states:
Another example of an event that may cause the
instrument 20 to generate the trigger message 60 is the crossing
of a threshold on a variable that is measured or monitored by
the instrument 20. This variable may be internal to the
instrument 20, such as line voltage, or may be external to the
instrument 20, such as a property of the object of interest 30.
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Spec. 8, ll. 15-21.
We disagree with Appellants’ contentions regarding Jain’s purported
lack of teaching of measurement of variables, since database resources that a
data entry would use may, under the definition provided in the Specification,
be construed as a variable, i.e., “a property of the object of interest.”
We therefore agree with the Examiner’s findings cited above that the
combination of Jain and Olsson teaches or suggests Appellants’ claimed
method including, “a first instrument coupled to a local area network, the
first instrument configured to measure variables of an object of interest . . .
in response to an event,” as recited in claim 1.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s obviousness rejection of independent claim 1.
Further, we sustain the Examiner’s obviousness rejection of
independent claim 12 which, according to Appellants, “includes features
similar to those of claim 1 discussed above . . . [such] that these features are
not found in Jain, et al. for at least the same reasons as set forth above [with
respect to claim 1].” App. Br. 10.
Although Appellants nominally argue the rejections of dependent
claims 2-11 and 13-19 separately (App. Br. 10), the arguments presented do
not point out with particularity or explain why the limitations of the
dependent claims are separately patentable. Instead, Appellants summarily
allege that these claims are allowable “for at least the same reasons as claims
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1 and 12 set forth above.” Id. Therefore, Appellants have not presented any
substantive arguments with respect to these claims. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”). Appellants’ arguments are
unpersuasive for the reasons discussed above with respect to claim 1, from
which claims 2-11 depend, and the commensurate limitations in claims 13-
19, depending from independent claim 12. Accordingly, we sustain the
various unpatentability rejections of claims 1-19.
CONCLUSION
The Examiner did not err with respect to the various unpatentability
rejections of claims 1-19 under 35 U.S.C. § 103(a) over the combinations of
prior art cited by the Examiner, and the rejections are sustained.
DECISION
The decision of the Examiner to reject claims 1-19 is affirmed.
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) (2011).
AFFIRMED

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