Ex Parte Gharsalli et al

Board of Patent Appeals and Interferences

Jan 17, 2012

10092333 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte IMED GHARSHALLI and DANIEL E. SHEARER
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Appeal 2009-012500
Application 10/092,333
Technology Center 2600
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Before ALLEN R. MacDONALD, KRISTEN L. DROESCH and
GREGORY J. GONSALVES, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012500
Application 10/092,333

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
Claim 1. A method for controlling a parameter of at least one
signal, including the steps of:
receiving a desired command signal from at least one control
input;
determining a potential condition for receiving an undesired
command signal from at least one other control input;
adjusting a parameter of an undesired command signal received
from the at least one other control input in response to the potential
condition; and
delivering the desired command signal and the undesired
command signal to at least one output.

Rejections
1. The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. The Examiner rejected claims 1-4, 8-12, 14, 15, 17, and 18
under 35 U.S.C. § 102(e) as being anticipated by Brandt (US 6,854,554 B2).
3. The Examiner rejected dependent claim 16 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Brandt and
Kim (US 2003/0060906 A1).

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Application 10/092,333

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Appellants’ Contentions
35 U.S.C. § 101 Rejection
1. At page 12 of the Appeal Brief, Appellants contend that the
Examiner erred in rejecting claims 1-20 as being directed to non-statutory
subject matter because:
In the Office Action dated April 4, 2007 ("the April 2007
Office Action"), the Examiner, for the first time during
prosecution, rejected claims 1-20 under 35 U.S.C. §101
alleging that the "signal" of claims 1, 4-8, and 14-20 is an
abstract idea. Office Action at lines 9-12, page 2. Seemingly,
the Examiner is asserting that (i) a "signal" is not a physical
object and (ii) the claimed subject matter is not a practical
application thereof. The Examiner, however, has not provided
any legal or factual basis to support this allegation.

35 U.S.C. § 102(e) Rejection
2. Appellants repeatedly contend that the Examiner erred in
rejecting claims 1-4, 8-12, 14, 15, 17, and 18 under 35 U.S.C. § 102(e)
because Brandt does not disclose changing a parameter after it has been set.
See for example:
Brandt does not disclose changing a parameter after it has been set.
(App. Br. 15).
Applicant submits that column 5, lines 52-67 of Brandt
discloses setting parameters, including deadband, prior to use
and, after the parameters are set, they are not subsequently
changed.
(App. Br. 17).
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Application 10/092,333

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Brandt does not disclose "adjusting" a parameter merely by
mentioning that parameters can be set by a user prior to use by
changing software.
(App. Br. 17).
Brandt does not disclose "modifying" a parameter merely by
mentioning that parameters can be set by a user prior to use by
changing software. As set forth above, changing software replaces
one parameter with another and does not change a parameter.
(App. Br. 18).
3. Also, Appellants contend that the Examiner erred in rejecting
claims under 35 U.S.C. § 102(e) because “[t]he Examiner unreasonably
construes at least independent claims 1, 8, and 18 by alleging that Brandt's
setting of parameters prior to use is the same as the steps and elements
recited in claims 1, 8, and 18. (App. Br. 20). Further, Appellants contend
The Examiner incorrectly asserts that the settable
parameters disclosed by Brandt are equivalent to adjusting a
parameter of an undesired command signal, as recited in claim
1. This assertion is not consistent with the interpretation of the
phrase in context of Appellant's specification and in view of the
plain meaning of the phrase in light of the other phrases in the
method of claim 1 (e.g., receiving and determining steps). The
same problem resonates to other independent claims 8 and 18
and the Examiner's application of the cited art. The Examiner
ignores reasonable interpretations of Appellant's claim terms,
such as adjusting a parameter of an undesired command signal
received from the at least one other control input in response to
the potential condition, as recited in claim 1, in the context of
not only the specification, but the known meaning in the art.
(App. Br. 20-21).

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Application 10/092,333

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35 U.S.C. § 103(a) Rejection
4. Additionally, Appellants contend that the Examiner erred in
rejecting claim 16 under 35 U.S.C. § 103(a). (App. Br. 21-23).

Issue on Appeal
Whether the Examiner has erred in rejecting claims 1-20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter?
Whether the Examiner has erred in rejecting claims 1-4, 8-12, 14, 15,
17, and 18 as being anticipated and claim 16 as being obvious because
Brandt and Kim fail to teach or suggest the disputed limitations?

ANALYSIS
We have reviewed the Examiners’ rejections in light of Appellants’
contentions that the Examiner has erred.
As to Appellants’ above contention 1, we agree. The Examiner’s
rejection provides no explanation as to why a claim which recites process
steps and non-abstract physical elements (i.e., “control input”, e.g., joystick
or lever) is directed to non-statutory subject matter on the sole basis that the
claim also recites an abstraction (i.e., “signal”) as a portion of the claim.
As to Appellants’ other contentions, we disagree with Appellants’
conclusions. 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 set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner.
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Further as to above contentions 2 and 3, we note that Appellants’
claimed “adjusting” and “modifying” were added by an amendment on
December 12, 2005 when the terms were substituted for the term
“controlling” in the originally filed claims. We do not find these added
terms in Appellants’ application as filed. Therefore these new terms are
mere substitutes for the claim term they replace and rely on the same support
in Appellants’ Specification. Appellants’ Specification discloses that
equations or look-up tables can be used to determine how to control the
parameters. (Spec. ¶¶ [16] and [21]). An artisan would recognize that the
use of such equations or look-up tables means that while parameter settings
are different for different control inputs, parameter settings are fixed for a
given input and that given input will always produce the same parameter
according to the equation or look-up table. That is, just as Appellants argue
for Brandt, for a given input Appellants’ claimed parameter is set prior to
use and is not subsequently changed. Further, just as the Examiner found in
Brandt, as Appellants given inputs are different over time, the parameter
produced by the equation is different for each different input. However,
Appellants’ parameter will be “set prior to use” just as in Brandt.
Further as to above contention 4, we note that Brandt, at column 4,
lines 56-59, explicitly suggests using the same time lapse limitation found in
Appellants’ claim 16.
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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 101.
(2) The Examiner has not erred in rejecting claims 1-4, 8-12, 14, 15,
17, and 18 as being anticipated under 35 U.S.C. § 102(e).
(3) The Examiner has not erred in rejecting claim 16 as being
unpatentable under 35 U.S.C. § 103(a).

DECISION
The Examiner’s §101 rejection of claims 1-20 is reversed.
The Examiner’s §102 and §103 rejections of claims 1-4, 8-12, and
14-18 are 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).

AFFIRMED-IN-PART

ELD