Ex Parte Jefferson et al

Patent Trial and Appeal Board

Mar 7, 2016

11762767 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111762,767 06/13/2007 Stanley Ted JEFFERSON
126149 7590 03/09/2016
Keysight Technologies, Inc,
C/O CPA Global
P.O. Box 52050
Minneapolis, MN 55402
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. CONFIRMATION NO.
10060688-01-us 2375
EXAMINER
BARBEE, MANUELL
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
keysightdocketing@cpaglobal.com
notice.legal@keysight.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STANLEY TED JEFFERSON and JAMES ADAM CATALD01
Appeal2014-002645
Application 11/762,767
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 13-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
BACKGROUND
The subject matter on appeal relates to a device and system for
determining a reference time for the execution of at least one task.
1 According to the Appellants, the real party in interest is Agilent
Technologies, Inc. App. Br. 3.
Appeal2014-002645
Application 11/762,767
Spec. if 4; Claim 13 is reproduced below from page 13 (Appendix of Claims
on Appeal) of the Appeal Brief:
13. A device that cooperates with at least another device to obtain a
reference time for execution of at least one task on one of the
devices, the device comprising:
means that provides a respective desired reference time;
means that receives a respective desired reference time from each
of the at least another device; and
means that determines an actual reference time based on its
desired reference time and any desired reference times received.
REJECTIONS ON APPEAL
1. Claims 13-16 and 18-20 are rejected under 35 U.S.C. § 102(b)
as anticipated by Conway (US 2004/0064750 Al, published April 1, 2004).
2. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Conway in view of Giral (US 7,099,792 B2, issued Aug. 29, 2006).
ANALYSIS
Relying on a dictionary definition of the word "time" (i.e., "the
measure of the duration of an event"), the Examiner finds, inter alia, that
Conway's teaching of "a delay between two signals" constitutes a "reference
time" that falls within the scope of claim 13. See Ans. 3 (citing Conway
ir 80).
For essentially the reasons set forth by the Appellants, see App. Br. 6-
9; Reply Br. 5---6, we disagree with the Examiner. A claim must be given its
broadest reasonable interpretation consistent with the specification as it
would be interpreted by one of ordinary skill in the art. In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989). The Specification describes "reference time" in a
2
Appeal2014-002645
Application 11/762,767
particular way, making clear that the "reference time" is the time "for the
execution of at least one task." E.g., Spec. i-f 4. Consistent with those
teachings, the embodiments in the Specification describe "reference time[ s ]"
as specific time points rather than as durations of time. E.g., Spec. i-fi-1 14, 15
& Figs. 4---6. The Examiner identifies no teaching in the Specification in
which "reference time" could be construed as a duration of time. Moreover,
claim 13 expressly recites "a reference time for execution of at least one
task." In the context of the Specification and the rest of claim 13, it is clear
that the term "reference time" does not simply encompass any concept that
may constitute a "time," such as the "delay between two signals" relied upon
by the Examiner. See Ans. 3; Spec. i-f 4; Claim 13. Rather, it refers to the
time determined by the device "for [the] execution of at least one task."
Claim 13.
The foregoing analysis applies equally to the terms "desired reference
time" and "actual reference time" recited by claim 13. Although those terms
are not followed by the phrase "for execution of at least one task," the
Specification and the context of claim 13 suggest that the meaning of
"reference time" is nevertheless the same; i.e., it refers to the time for the
execution of at least one task. E.g., Spec. i-fi-14, 9-15; Claim 13. As
described above, the Examiner has not identified any portion of the
Specification that uses the term "reference time" in any other context, such
as a duration of time rather than a specific time point, nor has the Examiner
provided any basis to interpret the preamble's recitation of "reference time"
differently from the body's recitation of the term "reference time." On the
contrary, the preamble's recitation of "reference time for the execution of at
least one task" provides context and meaning to subsequent recitations of the
3
Appeal2014-002645
Application 11/762,767
term "reference time" and appears to be somewhat analogous to an
antecedent basis for the terms "desired reference time" and "actual reference
time."
The Examiner's analysis relies on an overly broad interpretation of the
term "reference time" that is inconsistent with the Specification, and it fails
to establish by a preponderance of the evidence that Conway's teaching of
"a delay between two signals" constitutes a "reference time," as properly
construed. Accordingly, we cannot sustain the rejection of claim 13. The
remaining claims on appeal include the same limitation, and the Examiner's
analysis of those claims does not remedy the error identified above.
Therefore, we cannot sustain the Examiner's rejection of claims 14--20.
Additionally, we note that claim 13 recites several elements that begin
with the language "means that .... " We interpret those elements as
"means-plus-function" limitations. When claim terms are written in
"means-plus-function" format, they must be interpreted as limited to the
corresponding structures described in the Specification or equivalents
thereof consistent with 35 U.S.C. § 112, i-f 6 (pre-AIA). In re Donaldson
Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en bane). "An element of a claim
described as a means for performing a function, if read literally, would
encompass any means for performing the function. But section 112 i-f 6
operates to cut back on the types of means which could literally satisfy the
claim language." Johnston v. IVAC Corp., 885 F.2d 1574, 1580 (Fed. Cir.
1989) (emphasis and citations omitted). Moreover, for a computer-
implemented claim limitation interpreted under § 112, i-f 6, the corresponding
structure must include the algorithm needed to transform the general purpose
computer or processor disclosed in the specification into the special purpose
4
Appeal2014-002645
Application 11/762,767
computer programmed to perform the disclosed algorithm. Aristocrat Techs.
Australia Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1333 (Fed. Cir.
2008). In the event of further examination of the application on appeal, we
leave to the Examiner to consider, pursuant to MPEP § 2181, ( 1) whether
any relied-upon prior art falls within the scope of the means-plus-function
limitations recited by claim 13, and (2) whether the Specification of the
application on appeal recites sufficient structure for the means-plus-function
limitations so as to comply with § 112, i-f 2.
CONCLUSION
We REVERSE the Examiner's rejection of claims 13-20.
REVERSED
5