Ex Parte Fitzgibbon

Board of Patent Appeals and Interferences

Nov 22, 2010

10195802 (B.P.A.I. Nov. 22, 2010)

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.
10/195,802 07/15/2002 James Fitzgibbon 5569/73858 (00-28) 5380
22242 7590 11/23/2010
FITCH EVEN TABIN & FLANNERY
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
STRIMBU, GREGORY J
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
11/23/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES FITZGIBBON
____________

Appeal 2009-008249
Application 10/195,802
Technology Center 3600
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
James Fitzgibbon (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 18-29, 35-41, 48-50, and 54-56 under
35 U.S.C. § 102(b) as anticipated by Richmond (US 4,429,264, issued Jan.
31, 1984) or Kasmer (US 3,414,786, issued Dec. 3, 1968) and claims 51-53
under 35 U.S.C. § 103(a) as unpatentable over Richmond and Figure 2 of
Appellant’s Admitted Prior Art (hereafter “APA”).2 Claims 1-17, 30-34,
and 42-47 have been withdrawn by the Examiner. We have jurisdiction over
this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a movable barrier operator for moving
a movable barrier such as garage doors, swinging and sliding gates, rolling
shutters, etc., including a mechanical memory having corresponding
physical aspects that constitute programming data for the movable barrier
operator. Spec. 1, ll. 5-12 and Spec. 4, ll. 6-12.
Claim 18 is representative of the claimed invention and reads as
follows:
18. An apparatus comprising:
a movable barrier operator;
a mechanical memory that is operably coupled to the
movable barrier operator, wherein the mechanical memory
includes movable barrier operator programming data.

2 The rejection of claims 40 and 48-56 under 35 U.S.C. § 112, second
paragraph, has been withdrawn by the Examiner. Ans. 3.
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THE ISSUES
Appellant argues that, “neither Richmond’s disc nor his apertures
comprise any form of memory or an aspect of a memory” and furthermore,
“these elements do not comprise … ‘programming data’ for a movable
barrier operator.” App. Br. 9. At most, according to Appellant, these
elements constitute “operating parameter information that can be used by a
properly programmed operator.” Id. Appellant further specifies that:
[A] person skilled in the art will understand
“programming data” to be “data” that comprises
“programming.” “Programming,” in turn, will be
clearly understood to comprise the instructions that
are executed by a processor.
Reply Br. 3. Emphasis added.
In other words, Appellant appears to argue that the apertures of
Richmond’s disc do not constitute programming data because the device of
Richmond uses the resulting 1’s and 0’s as mere values, that is, as sensor
data that is further processed by a processor and as such does not constitute
processor instructions.
For similar reasons, with respect to the teachings of Kasmer,
Appellant argues that the encoder disc 71 does not constitute a mechanical
memory and the data resulting from apertures 73 is not programming data.
App. Br. 12; Reply Br. 4.
Accordingly, the first issue presented for our consideration in the
instant appeal is whether the discs of Richmond and Kasmer constitute a
mechanical memory having programming data.
Appellant further argues that neither Richmond nor Kasmer teaches a
way to identify a parameter of a movable barrier operator, as called for by
claim 48. Specifically, Appellant argues that although Richmond’s and
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Kasmer’s discs provide information regarding rotation of a motor shaft in
general, and Kasmer provides additional information regarding an angular
position of the shaft, “such information does not constitute information that
will identify a parameter of a movable barrier operator.” App. Br. 11 and 13.
As such, the second issue presented for our consideration is whether
each of Richmond and Kasmer teaches a mode to identify a parameter of a
movable barrier operator, as called for by independent claim 48.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
Appellant argues the rejections under 35 U.S.C. §102(b) of claims 18-
29 and 35-41 together as a group. App. Br. 10 and 14. Therefore, in
accordance with 37 C.F.R. 41.37(c)(1)(vii), we have selected claim 18 as the
representative claim to decide the appeal, with claims 19-29 and 35-41
standing or falling with claim 18. In view of Appellant’s arguments, we will
address the rejection of claim 48 separately.

Claim Construction
We begin our analysis by construing the phrase “programming data.”
At the outset, we find Appellant’s interpretation of the phrase “programming
data” to mean programming instructions to be overly narrow. See Reply Br.
2-3. Appellant’s Specification does not expressly define the terms
“programming” and “data” or otherwise indicate that these terms are used in
a manner other than their ordinary and customary meaning. We find that an
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ordinary and customary meaning of the term “programming” is “the
planning, scheduling, or performing of a program.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (10th Ed. 1997). An ordinary and customary
meaning of the term “data” is “information in numerical form that can be
digitally transmitted or processed.” Id. Hence, an ordinary and customary
meaning of the phrase “programming data” is information in numerical form
that can be transmitted or processed by a program. Moreover, on page 7,
lines 3-5 of the Specification, Appellant appears to indicate that
“programming data” includes both “executable instructions” and “operating
parameters.” In conclusion, because claims are to be given their broadest
reasonable interpretation consistent with the specification, we agree with the
Examiner “that programming data can be interpreted to mean data which is
used by a program.” Ans. 7. See In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).

The anticipation rejection by Richmond
The Examiner found, and we agree, that Richmond’s disk 34 and
apertures 36 constitute the claimed mechanical memory and physical
aspects, respectively. Ans. 3. We further agree with the Examiner that
because the rotation of the disc 34 with apertures 36 results in a pulse train,
i.e., a data set of 1’s and 0’s, that is subsequently transmitted to processor 56
and used to control the operation of gate 10, the data resulting from disc 34
constitutes programming data, as defined above. Ans. 5. See also,
Richmond, col. 4, l. 50 through col. 5, l. 3; col. 9, ll. 3-22; and fig. 2. Hence,
the disc of Richmond constitutes a mechanical memory having programming
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data. Accordingly, the rejection of claim 18, and claims 19-29 and 35-41
standing or falling with claim 18, is sustained.
With respect to claim 48, we agree with the Examiner that in
Richmond, “[t]he movable barrier operator comprises the motor [48] and the
parameter of the movable barrier operator comprises the amount the shaft 32
rotates as the motor is operated.” Ans. 6. We further find that because each
pulse of pulse train 42 is in response to the rotation of the disc 34, which is
connected to shaft 32, that each pulse represents motion of the gate over an
incremental distance depending on the distance between apertures 36.
Richmond, col. 5, ll. 37-42 and figs. 1 and 2. Since Richmond teaches that
the processor 56 counts the number of pulses and compares it to a stored
number in order to stop the gate 10 in a full open or full closed position, we
agree with the Examiner that Kasmer teaches a mode to identify a parameter
of a movable barrier operator, as called for by independent claim 48. Ans. 6.
See also, Richmond, col. 9, ll. 3-14. In conclusion, the rejection of claim 48
under 35 U.S.C. § 102(b) as anticipated by Richmond is likewise sustained.
Regarding the rejection of claims 49, 50, and 54-56, Appellant does
not present any additional arguments. App. Br. 14. As such, we also shall
sustain the rejection of claims 49, 50, and 54-56 under 35 U.S.C. § 102(b) as
anticipated by Richmond.

The anticipation rejection by Kasmer
We agree with the Examiner that Kasmer’s disc 71 and apertures 73,
81 constitute the claimed mechanical memory and physical aspects,
respectively. Ans. 3-4. It is our finding that because the rotation of disc 71
results in a pulse train that represents the actual step position of step motor
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61, that is subsequently transmitted to subtractor 89 (of control unit 87)
where it is compared to the desired step position from buffer 85 (of control
unit 87), the data resulting from disc 71 constitutes programming data, as
defined above. Kasmer, col. 4, ll. 61-64; col. 5, ll. 36-55; and figs. 2, 4, and
5. Hence, we agree with the Examiner that because the motion of disc 71
with apertures 73, 81 uniquely identifies the angular position of the motor,
“the disc 71 clearly includes mechanical memory” and “the data from the
mechanical memory disc 71 is programming data.” Ans. 6.
Lastly, we find Appellant’s argument that Kasmer’s motor does not
constitute a movable barrier operator unpersuasive. See App. Br. 13. As
noted by the Examiner, claims 18 and 35 merely require that the motor of
Kasmer be capable of operating a “movable barrier” and we agree with the
Examiner that the motor of Kasmer is capable of such. Ans. 7.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990).
Accordingly, for the foregoing reasons, the rejection of claim 18, and
claims 19-29 and 35-41 standing or falling with claim 18, under 35 U.S.C.
§ 102(b) as anticipated by Kasmer is sustained.
Regarding claim 48, the Examiner found that Kasmer’s motor 61
constitutes the claimed movable barrier operator and the resulting angular
(step) position of the motor constitutes the claimed parameter of the movable
barrier operator. Ans. 3 and 7. Since the actual step position (angular
position) of step motor 61 is determined from light received by
phototransistors 77 when passed through apertures 81 of disc 71 as it rotates,
we find that Kasmer teaches a mode to identify a parameter of a movable
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barrier operator, namely, angular position of motor 61, as called for by
independent claim 48. See Kasmer, col. 3, l. 74 through col. 4, l. 43. In
conclusion, the rejection of claim 48 under 35 U.S.C. § 102(b) as anticipated
by Kasmer is likewise sustained.
Regarding the rejection of claims 49, 50, and 54-56, Appellant does
not present any additional arguments. App. Br. 14. As such, we also shall
sustain the rejection of claims 49, 50, and 54-56 under 35 U.S.C. § 102(b) as
anticipated by Kasmer.

The obviousness rejection over Richmond and APA
Appellant does not contest the Examiner’s conclusion of obviousness
and does not present any additional arguments than the arguments presented
with respect to the rejection of claim 48 under 35 U.S.C. § 102(b) as
anticipated by Richmond. App. Br. 14. Accordingly, the rejection of claims
51-53 under 35 U.S.C. § 103(a) as unpatentable over Richmond and APA, is
likewise sustained.

CONCLUSIONS
The discs of Richmond and Kasmer constitute a mechanical memory
having programming data.
Each of Richmond and Kasmer teaches a mode to identify a parameter
of a movable barrier operator.

SUMMARY
The decision of the Examiner to reject claims 18-29, 35-41, and 48-56
is affirmed.
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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) (2007).

AFFIRMED

mls

FITCH EVEN TABIN & FLANNERY
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406