Ex Parte Krampitz et al

Patent Trial and Appeal Board

Jun 19, 2014

11454877 (P.T.A.B. Jun. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SCOTT KRAMPITZ
and KURT RAICHLE
____________________

Appeal 2012-001633
Application 11/454,877
Technology Center 2600
____________________

Before JOSEPH F. RUGGIERO, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-15 and 17.1 Claim 16 has been canceled and claims 18-20 have
been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The rejection of claims 10 and 17 under 35 U.S.C. § 112, second paragraph
has been withdrawn by the Examiner after Appellants filed an amendment
on March 22, 2011. Br. 2.
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STATEMENT OF CASE
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (“Br.”) filed June 14, 2011, and the Answer
(“Ans.”) mailed July 27, 2011, for the respective details. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments that Appellants could have made but
chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellants’ Invention
The present invention relates to a user interface device in a system to
control a remote test device, the interface comprising a switch to select
between a plurality of discrete positions (Spec. ¶ 28, Fig. 1, 16, Fig. 2, 34); a
database having a plurality of database entries, each entry comprising either
a function for execution on the remote test device or a null entry and at least
two entries comprising functions for execution on the remote test device (id.
¶ 24, Fig. 1, 18); and a software correlation module including a processor
and configured to correlate said plurality of discrete positions with said
database entries (id. ¶ 25, Fig. 1, 20).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows with disputed
language in italics:
1. A user interface device in a system to control a remote
test device, the interface comprising:
a switch to select between a plurality of discrete
positions;
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a database having a plurality of database entries, each
entry comprising either a function for execution on the remote
test device or a null entry and at least two entries comprising
functions for execution on the remote test device; and
a software correlation module including a processor and
configured to correlate said plurality of discrete positions with
said database entries.

Rejections on Appeal2
The Examiner rejected claims 1-5, 9, and 11-15 under 35 U.S.C.
§ 103(a) as being unpatentable over Bailey (US 2007/0063995 A1, Mar. 22,
2007) and Official Notice. Ans. 5-8.
The Examiner rejected claims 6-8 under 35 U.S.C. § 103(a) as being
unpatentable over Bailey and Raichle (US 2004/0000913 A1, Jan. 1, 2004).
Ans. 8-9.
ISSUE AND ANALYSIS
Based on Appellants’ arguments in the Appeal Brief (Br. 5-10), the
principal and dispositive issue of whether the Examiner erred in rejecting
claims 1-9 and 11-15 turns on whether the combination of Bailey and
Official Notice teaches or suggests “a null entry,” as recited in independent
claim 1, and similarly recited in independent claims 15.
The Examiner has provided a comprehensive response to each
argument presented by the Appellants on pages 9 through 14 of the Answer.
We have reviewed this response and concur with the Examiner’s findings
and conclusions. We observe that no Reply Brief is of record to rebut such

2 Separate patentability is not argued for dependent claims 2-9 and 11-15.
Except for our ultimate decision, these claims are not discussed further
herein.
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findings including the Examiner’s responses to Appellants’ arguments.
Therefore, 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. Ans. 5-14.
The Examiner cited Bailey for all the claim elements except for the
“null entry” feature. The Examiner relied upon Official Notice for the “null
entry” feature missing in Bailey. Ans. 5, 12-13.
Initially, we are not persuaded with Appellants’ argument that the
Examiner’s reliance upon Official Notice was improper (Br. 6-7). The
Examiner identified the finding—that a null entry is well-known in the art—
in the Final Office Action dated February 10, 2011, and provided the Smith3
reference for support. Ans. 10.
Appellants argue that in view of the combination of Bailey and
Official Notice, “one of ordinary skill in the relevant art would not be
motivated to incorporate a null entry into Bailey. . . . Bailey also addresses
the opposite situation instead.” Br. 7.
The Examiner finds that because “a null entry and a corresponding
non-function of a device is well known in the art, it would be obvious that
one of ordinary skill in the art can incorporate known functionalities of
databases into other databases (such as the one taught by Bailey) to provide
predictable results.” Ans. 11.
We agree with the Examiner’s findings because all of the features of
the structure in the secondary reference need not be bodily incorporated into

3 U.S. Patent Application Pub. No. 2004/0216070 A1 (Oct. 28, 2004).
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the primary reference, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In that regard, the Supreme Court has indicated that:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common
sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted).
Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984). As such, Bailey would be adjusted to
accommodate teachings from the Official Notice for providing the null
function by one of ordinary skill in the art. See Ans. 10-12.
It follows that the Examiner has not erred in concluding that the
combination of Bailey and Official Notice renders claim 1 unpatentable.

CONCLUSIONS
The Examiner did not err in rejecting claims 1-5, 9, and 11-15 under
35 U.S.C. § 103(a) as being unpatentable over Bailey and Official Notice.
The Examiner did not err in rejecting claims 6-8 under 35 U.S.C.
§ 103(a) as being unpatentable over Bailey and Raichle.

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DECISION
The Examiner’s rejections of claims 1-9 and 11-15 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

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