Ex Parte Kresse et al

Board of Patent Appeals and Interferences

Aug 27, 2012

11520157 (B.P.A.I. Aug. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/520,157 09/13/2006 Heiko Kresse 05-632US 7415
7590 08/27/2012
ABB Inc.
Legal Department - 4U6
29801 Euclid Avenue
Wickliffe, OH 44092-1832
EXAMINER
HUYNH, KIM T
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
08/27/2012 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 HEIKO KRESSE, ANDREAS STELTER,
and RALF SCHAEFFER
____________

Appeal 2009-015311
Application 11/520,157
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015311
Application 11/520,157

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse. We also enter a new ground of rejection for claims 1 and 2
under § 112, second paragraph.

Invention
Appellants’ invention relates to an automation device with multiple
physically distributed functional units communicating with each other using
a common transmission protocol. See Abstract. Claim 1 reads as follows
with the key disputed limitations emphasized:
1. An automation device, with which a multiplicity of physically
distributed functional units communicate with each other by means of
a common transmission protocol, having a microcontroller, which is
assigned at least one clock generator and one memory unit, and which
is connected at least to one data sink, which is designed to accept a
received data bit-stream, characterized in that a cascade circuit
reconstructs the received data bit-stream from an input signal, said
cascade circuit comprising[:]
a monoflop (181) receives said input signal and outputs a
monoflop output;
a sampling device (182) periodically samples said monoflop output
and outputs a sample output;
a low-pass filter (183) filters said sample output and outputs a
filtered output;
a comparator (184), receives said filtered output and outputs said
data bitstream.

The Examiner relies on the following as evidence of unpatentability:
Harzer US 4,075,558 Feb. 21, 1978
Doornenbal US 4,749,962 June 7, 1988
Carey US 5,652,755 July 29, 1997

Appeal 2009-015311
Application 11/520,157

3
The Rejection
The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over Carey, Doornenbal, and Harzer. Ans. 3-5.1

New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Before addressing the contentions presented by Appellants concerning
the obviousness rejection, we enter a new ground of rejection under
35 U.S.C. § 112, second paragraph for claims 1 and 2. Claim 1 recites two
statutory classes – namely an apparatus and active method steps – rendering
the claim indefinite. See Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d
1331, 1339 (Fed. Cir. 2011).
In particular, claim 1 begins by reciting “[a]n automation device . . .
having a microcontroller, which is assigned at least one clock generator and
one memory unit, and which is connected at least to one data sink” and then
later recites
characterized in that a cascade circuit reconstructs the received data
bit-stream from an input signal, the cascade circuit comprising[:]
a monoflop (181) receives said input signal and outputs a
monoflop output;
a sampling device (182) periodically samples said monoflop
output and outputs a sample output;
a low-pass filter (183) filters said sample output and outputs a
filtered output;
a comparator (184), receives said filtered output and outputs
said data bitstream.

Claim 1 (emphases added). Claim 1 thus includes both apparatus
components (e.g., a microcontroller, a clock generator, a memory unit, a data

1 Throughout this opinion, we refer to the Appeal Brief filed March 13, 2009
and the Examiner’s Answer mailed June 11, 2009.
Appeal 2009-015311
Application 11/520,157

4
sink, and a cascade circuit) as well as active method steps (e.g., a cascade
unit reconstructing the received data bit-stream, a sampling device
periodically samples, and a low-pass filter filters).
Appellants have argued that these limitations simply recite how the
cascade circuit is arranged. Br. 3. While that may be true for some of the
recitations in claim 1 (e.g., monoflop receives the input signal, a comparator
receives the filtered output), other limitations (e.g., a sampling device
periodically samples the monoflop output, a low-pass filter filters the sample
output) are not directed to how the circuit is arranged or connected. As
such, the current claim language is infringed only when the automation
device actively performs the recited steps (e.g., periodically sampling the
monoflop output, filtering the sample output), and is not infringed when the
device is not performing these steps. Because the claims recite both a device
and a process for using the cascade circuit, claim 1 does not properly apprise
an ordinarily skilled artisan of the claim’s scope and fails to distinctly claim
the subject matter Appellants regard as their invention. See IPXL Holdings,
L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005) (citing
Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990)).
While Appellants may have intended for these active method steps to
be functional recitations (e.g., a sampling device for periodically sampling),
claim 1 in its current form is not recited in such a manner. Therefore, claim
1 is ambiguous under 35 U.S.C. § 112, second paragraph. Also, due to its
dependency, claim 2 is rejected since the claim includes the same limitations
discussed above in claim 1.
For the above reasons, we newly reject claims 1 and 2 under 35U.S.C.
§ 112, second paragraph as being indefinite.
Appeal 2009-015311
Application 11/520,157

5
THE CONTENTIONS
Even though the scope in claims 1 and 2 is uncertain, we will address
the obviousness rejection in this particular case and as best understood. As
the Examiner indicates (see Ans. 5), claim 1 reasonably describes a cascade
circuit having a monoflop, a sampling device, a low-pass filter, and a
comparator arranged in series. Among other things, Appellants argue that
none of the prior art teaches using a monoflop, a sampling device, a low pass
filter, and a comparator arranged in a single series cascade circuit the recited
cascade circuit arrangement in independent claim 1. Br. 3.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Carey, Doornenbal, and Harzer collectively would have taught or
suggested a cascade circuit having monoflop, a sampling device, a low-pass
filter, and a comparator arranged in a series as recited?

ANALYSIS
Based on the record before us, we find error in the Examiner’s
rejection of claim 1. The Examiner finds that Carey teaches every recited
feature but the disputed cascade circuit (Ans. 3) and relies on Doornenbal
and Harzer to cure this deficiency (Ans. 4). Specifically, the Examiner cites
(1) Doornenbal to teach a comparator and filter and (2) Harzer to teach a
monoflop and a sampling device. Ans. 4. Nonetheless, the Examiner has
not demonstrated how these elements in Doornenbal and Harzer are
combined to result in the cascade circuit arranged in series as recited. See
Ans. 4-6.
Appeal 2009-015311
Application 11/520,157

6
For example, as the Examiner notes (Ans. 4), Doornenbal teaches a
clock-regenerator having a phase locked loop that includes a cascade circuit
with a phase comparator 4 and a low-pass filter 6. Title, col. 3, ll. 3-6;
Fig. 1. However, as shown in Figure 1, the comparator is located prior to the
filter and thus would not be arranged in series, such that the comparator
“receives said filtered output” as recited. Additionally, as the Examiner
indicates (see Ans. 4-5), Harzer teaches a monoflop (e.g., 7) and a
subsequent sampling device (e.g., switch 8 and integrator 9) in series. Col.
2, ll. 48-63; Fig. 1. Even so, the Examiner has not adequately explained how
the teachings in Doornenbal and Harzer would be combined to result in a
cascade circuit arranged in series as recited. See Ans. 4-6.
In fact, in response to Appellants’ contentions that the references fail
to show “specific signal flow connection[s]” (Ans. 5), the Examiner only
discusses the monoflop and sampling device arrangement in Harzer (see
Ans. 5-6). The Response to Argument section also focuses on the reasons to
combine the cited references and attempts to demonstrate that the references
are analogous, but fails to address sufficiently how Doornenbal and Harzer
are combined with Carey to arrive at the cascade circuit with a monoflop, a
sampling device, a low-pass filter, and a comparator arranged in series as
recited. See Ans. 6-7. The Examiner thus has not established a factual basis
to support the legal conclusion of obviousness for claim 1. See In re Fine,
837 F.2d 1071, 1073-74 (Fed. Cir. 1988).
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of independent claim 1 and dependent claim 2.

Appeal 2009-015311
Application 11/520,157

7
CONCLUSION
The Examiner erred in rejecting claims 1 and 2 under § 103.
We newly reject claims 1 and 2 under 35 U.S.C. § 112, second
paragraph.

DECISION
The Examiner’s decision rejecting claims 1 and 2 is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) for claims 1 and 2. This section provides that “[a] new
ground of rejection… shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

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