Ex Parte Leach

Board of Patent Appeals and Interferences

Mar 30, 2012

11748318 (B.P.A.I. Mar. 30, 2012)

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.
11/748,318 05/14/2007 Mark Leach 088245-4484 6222
23524 7590 04/02/2012
FOLEY & LARDNER LLP
150 EAST GILMAN STREET
P.O. BOX 1497
MADISON, WI 53701-1497
EXAMINER
VU, TRISHA U
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
04/02/2012 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 MARK LEACH
____________

Appeal 2010-001618
Application 11/748,318
Technology Center 2100
____________

Before SCOTT R. BOALICK, JOHN A. JEFFERY, and GLENN J. PERRY,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 28-35. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to automated meter reading (AMR)
wherein data is collected and communicated with a remote site. See
generally Spec. ¶¶ 0002, 0006-08. Claim 28 is illustrative with key disputed
limitations emphasized:
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Application 11/748,318

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28. A method for transmitting a status message containing a current
status of an [sic] utility meter, comprising:
receiving an input signal from the utility meter;

determining whether the input signal reaches a preset value;

in response to determining that the input signal has reached a preset
value, initiating a status message;

determining a type of output device in communication with a universal
communications interface;

in response to determining the type of output device in
communication with the universal communications interface, formatting the
status message to match a signal format associated with the type of output
device in communication with a universal communications interface; and

transmitting the status message to an output device.

The Examiner relies on the following as evidence of unpatentability:
Thornborough US 5,031,209 July 9, 1991
Clayton US 5,875,234 Feb. 23, 1999
Shuey US 5,923,269 July 13, 1999
(filed Aug. 7, 1997)
Turino US 5,994,892 Nov. 30, 1999
(filed July 31, 1996)
Reed US 6,304,231 B1 Oct. 16, 2001
(filed Oct. 7, 1998)

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Application 11/748,318

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THE REJECTIONS
1. The Examiner rejected claims 28 and 31 under 35 U.S.C. § 102(b)
as anticipated by Thornborough. Ans. 3-4.
1

2. The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Thornborough and Shuey. Ans. 4-6.
3. The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Thornborough and Reed. Ans. 6.
4. The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Thornborough and Clayton. Ans. 6-8.
5. The Examiner rejected claims 33-35 under 35 U.S.C. § 103(a) as
unpatentable over Thornborough, Clayton, and Turino. Ans. 8-12.
2

THE ANTICIPATION REJECTION
The Examiner finds that Thornborough discloses every recited feature
of representative claim 1 including a microcomputer 22 that, via a control
signal, is said to determine a type of output device (Bell or CCITT FSK
transmitter 53 or 54) connected to a “universal communications interface”
(telephone interface circuit 42). Ans. 3-4, 12-14.
Appellant argues that Thornborough does not determine an output
device’s type, let alone disclose that the output device communicates with a
universal communications interface as claimed. App. Br. 8-10; Reply Br.

1
Throughout this opinion, we refer to (1) the Appeal Brief filed July 14,
2009; (2) the Examiner’s Answer mailed October 23, 2009; and (3) the
Reply Brief filed November 13, 2009.
2
Although the Examiner presents two separate rejections for these claims
(compare Ans. 8 with Ans. 9), we nonetheless consolidate the rejections here
for clarity and brevity.
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Application 11/748,318

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10-13. According to Appellant, Thornborough’s hardwired configuration
precludes the need to determine the output device’s type since it is already
known. App. Br. 9-10; Reply Br. 11-12. Appellant adds that neither
Thornborough’s FSK transmitters nor telephone interface circuit is a
“universal communications interface” when interpreted in light of the
Specification. App. Br. 11-14; Reply Br. 14-19. The issue before us, then,
is as follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claim 28 by finding
that Thornborough determines a type of output device in communication
with a universal communications interface?

ANALYSIS
Claims 28 and 31
This appeal turns on one fundamental question: What is a “universal
communications interface”? Since the Examiner and Appellant disagree on
the answer to this question (App. Br. 11-14; Reply Br. 13-19), we begin by
construing this term.
Appellant’s AMR system 100 connects to output devices (e.g., radio
frequency transmitters, coaxial cables, etc.) via a universal communications
interface 228 that transfers data to a device plugged into associated ports or
slots 230, 232. Spec. ¶¶ 0007, 0012, 0020-21; Fig. 2. The interface’s “plug
and play” technology enables it to (1) recognize a connected output device,
and (2) relay signals between that device and a microprocessor in the proper
data format. Spec. ¶¶ 0007, 0012.
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Although this description informs our construction of the recited
“universal communications interface,” it is hardly limiting. Accord Ans. 13
(noting that Appellant does not define the term “universal communications
interface”). Rather, a “universal communications interface” broadly
encompasses any communications interface capable of interfacing different
devices, including those with different data formats or protocols.
With this construction, we see no error in the Examiner’s position
that Thornborough’s telephone interface circuit 42 constitutes a “universal
communications interface” as claimed. Ans. 14. Not only does it interface
communications between Thornborough’s utility control center and the
microcomputer 22 as the Examiner indicates (id.), but it does so with respect
to two frequency-shift keying (FSK) transmitters 53, 54 (“output devices”)
with different transmission formats, namely Bell and CCITT respectively.
Thornborough, col. 6, ll. 55-68; Figs. 1, 3; see also id. col. 11, ll. 7-42; Fig.
4 (detailing telephone interface circuit 42). In short, the scope and breadth
of the term “universal communications interface” does not preclude this
functionality. Appellant’s arguments to the contrary (App. Br. 11-14; Reply
Br. 13-19) are therefore not commensurate with the scope of the limitation.
Nor are we persuaded of error in the Examiner’s position (Ans. 12)
that Thornborough’s microcomputer determines the type of “output device”
(i.e., FSK transmitter 53 or 54) communicating with the “universal
communications interface” (i.e., telephone interface circuit) via the
CCITT/BELL signal. Notably, the microcomputer sends this signal to
multiplexer 55 (via line 61 and buffer 62) to select a transmitter connected to
the multiplexer based on the CCITT/BELL control signal. Thornborough,
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Application 11/748,318

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col. 6, ll. 62-68; Figs. 1, 3. This transmitter selection via multiplexer 55 is
shown in the enlarged detail view of Thornborough’s Figure 3 below:

Enlarged Detail View of Thornborough’s Figure 3 Showing FSK
Transmitter Selection Via Multiplexer 55

Although Appellant acknowledges that this control signal selects or
chooses which transmitter to use, Appellant nonetheless contends that this
selection does not determine the output device’s type “in the sense of a
query” in view of Thornborough’s hardwired arrangement. App. Br. 9-10;
Reply Br. 10-13 (emphases added). This argument, however, is not
commensurate with the scope of the limitation. First, claim 28 does not
specify how or what determines the output device’s type. Second, the term
“determine” is defined, in pertinent part, as “to settle or decide by choice of
alternatives or possibilities.”
3
Thornborough’s multiplexer-based transmitter
selection certainly determines a particular transmitter from the two
alternatives and therefore fully meets this definition.

3
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 315 (10th ed. 1993).
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We are therefore not persuaded that the Examiner erred in rejecting
representative claim 28, and claim 31 not separately argued with
particularity.

THE OBVIOUSNESS REJECTION OVER THORNBOROUGH AND SHUEY
The Examiner finds that Thornborough discloses every recited feature
of claim 29 except for a second output device, but cites Shuey’s UART
4
-
based local area network (LAN) transceiver as teaching this feature in
concluding that the claim would have been obvious. Ans. 4-6, 14-15.
Appellant argues that Shuey’s supporting different communication
protocols does not teach or suggest determining that a second output device
exists as claimed. App. Br. 15-16; Reply Br. 20-21. The issue before us,
then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 29 by finding
that Thornborough and Shuey collectively would have taught or suggested
determining that a second output device exists?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 29. First, unlike claim 28, claim 29 does not
require determining the second output device’s type, but rather more broadly
its existence.

4
UART stands for universal asynchronous receiver transmitter. Shuey, col.
2, ll. 15-16.
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Given the breadth of this limitation, we see no error in the Examiner’s
position (Ans. 4-6, 14-15) that Shuey at least suggests determining the
existence of the LAN transceiver, for it is an essential component enabling
the meter to communicate with CEBus LAN 10. See Shuey, col. 3, ll. 20-36;
Fig. 2. That the transceiver is connected to the meter’s communication
processor to facilitate LAN communications means that some system-based
determination is made that the transceiver exists: otherwise, it would not be
included in Shuey’s system, let alone function as an essential component for
LAN-based communication. See id. We reach this conclusion emphasizing
that nothing in the claim specifies how or what determines the second output
device’s existence.
We are therefore not persuaded that the Examiner erred in rejecting
claim 29.

THE OBVIOUSNESS REJECTION OVER THORNBOROUGH AND REED
We also sustain the Examiner’s obviousness rejection of claim 30.
Ans. 6. Despite nominally arguing this claim separately, Appellant reiterates
similar arguments made in connection with claim 28, and alleges that Reed
fails to cure those purported deficiencies. App. Br. 16; Reply Br. 21. We
are not persuaded by these arguments, however, for the reasons previously
discussed.

THE OBVIOUSNESS REJECTION OVER THORNBOROUGH AND CLAYTON
The Examiner finds that Thornborough discloses every recited feature
of claim 32 except for the recited slot, but cites Clayton as teaching this
feature in concluding that the claim would have been obvious. Ans. 6-8, 15.
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Unlike claim 28, however, the Examiner maps the recited “universal
communications interface” to Thornborough’s (1) FSK transmitters 53, 54;
(2) line 61; (3) buffer 62; and (4) multiplexer 55 in Figure 3. Ans. 7.
Appellant argues that these components are not a “universal
communications interface” that determines a type of output device as
claimed. App. Br. 16-17; Reply Br. 21-23. The issue before us, then, is as
follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 32 by finding
that Thornborough and Clayton collectively would have taught or suggested
a universal communications interface that can determine a type of output
device?

ANALYSIS
On this record, we sustain the Examiner’s rejection of independent
claim 32. As noted above, unlike claim 28, the Examiner maps the recited
“universal communications interface” to Thornborough’s (1) FSK
transmitters 53, 54; (2) line 61; (3) buffer 62; and (4) multiplexer 55 in
Figure 3. Ans. 7.
Apart from summarily asserting that these components fail to disclose
the recited feature (App. Br. 17; Reply Br. 22), Appellant does not explain
why this is the case, let alone particularly show error in the Examiner’s
position. See 37 C.F.R. § 41.37(c)(1)(vii) (noting that an argument that
merely points out what a claim recites is unpersuasive). Accord In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted
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Application 11/748,318

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Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).
In any event, we find the Examiner’s position (Ans. 7) reasonable, for
Thornborough’s multiplexer-based transmitter selection based on at least
some of the components mapped to the recited interface determine the
transmitter’s (“output device”) type (i.e., CCITT or BELL) from the two
alternatives as noted above.
We are therefore not persuaded that the Examiner erred in rejecting
claim 32.

THE OBVIOUSNESS REJECTION OVER THORNBOROUGH, CLAYTON, AND
TURINO

We reach a similar conclusion regarding the Examiner’s rejection of
claims 33-35 over Thornborough, Clayton, and Turino. Independent claim
35 recites, in pertinent part, that the universal communications interface can
determine the signal format of an output device upon a slot’s receiving the
device.
The Examiner (1) maps the recited “universal communications
interface” to components in Thornborough similar to those for claim 32
(compare Ans. 10 with Ans. 7), and (2) finds that the interface can determine
the output device’s signal format, namely BELL or CCITT. Ans. 10.
We see no error in this position since, like claim 32, Appellant merely
summarily asserts that these components fail to disclose the recited feature,
(i.e., the interface can determine the output device’s signal format) (App. Br.
17; Reply Br. 22), but does not explain why this is the case, let alone
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particularly show error in the Examiner’s position. See Lovin, 652 F.3d at
1357. Accordingly, we sustain the Examiner’s rejection of representative
claim 35, and claims 33 and 34 not separately argued with particularity.

CONCLUSION
The Examiner did not err in rejecting (1) claims 28 and 31 under
§ 102, and (2) claims 29, 30, and 32-35 under § 103.

ORDER
The Examiner’s decision rejecting claims 28-35 is 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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