Ex parte PARKER

Board of Patent Appeals and Interferences

May 27, 1998

08105244 (B.P.A.I. May. 27, 1998)

Application for patent filed August 12, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TERRY L. PARKER
__________
Appeal No. 95-3888
Application 08/105,2441
__________
ON BRIEF
__________
Before URYNOWICZ, KRASS, and BARRETT, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 3, constituting all the claims remaining in
the application.
Appeal No. 95-3888
Application No. 08/l05,244
2
The invention pertains to microprocessors configured to
reduce electromagnetic emissions in various applications.
More particularly, this reduction is achieved by causing the
output of the microprocessor driver to be at or near an
optimum voltage level for the particular load being driven.
Independent claim 1 is reproduced as follows:
1. Electronic apparatus comprising mechanical mechanism,
a microprocessor to control said mechanical mechanism, said
microprocessor being on a single substrate and having an
output driver on said substrate to apply control signals
generated by said microprocessor to an electrical line
connected to control said mechanism, said output driver having
at least one circuit which is selectable from an electrical
signal to said one circuit on an enable line to select a first
output voltage level of said output driver when said one
circuit is selected and to select a second output voltage
level lower in voltage level than said first output voltage
level when said one circuit is not selected, said enable line
being connected to a signal originating in said electronic
apparatus to select only one of said first output voltage
level or said second output voltage level during all normal
operations of said apparatus.
The examiner relies on the following references:
Pilarcik, Jr. 4,581,725 Apr. 8, 1986
McMahan et al. 5,162,672 Nov. 10, 1992
(McMahan)
Claims 1 through 3 stand rejected under 35 U.S.C. § 112
first and second paragraphs as, respectively, relying on a
Appeal No. 95-3888
Application No. 08/l05,244
We note that the answer never explicitly recites2
claims 1 through 3 as standing rejected under 35 U.S.C. § 112,
second paragraph, but it is clear from the final rejection,
from appellant’s brief, and from statements in the answer,
including the response to appellant’s arguments, that this
rejection has been applied and is before us on appeal.
3
nonenabling disclosure and being vague and indefinite. 2
Claims 1 through 3 stand further rejected under 35 U.S.C. §
102(e) as being anticipated, with McMahan being applied
against claims 1 and 2 and Pilarcik being applied against
claims 1 and 3.
Reference is made to the brief and answer for the
respective positions of appellant and the examiner.
OPINION
We turn first to the rejection of claims 1 through 3
under 35 U.S.C. § 112, first paragraph, as relying on a
nonenabling disclosure.
The examiner contends that a skilled artisan would not be
enabled, from the instant specification, and without undue
experimentation, to make and use the claimed invention.
Specifically, the examiner states that the drawings show blank
boxes with little or no disclosure of how each of these means
might be constructed.
Appeal No. 95-3888
Application No. 08/l05,244
4
We find that the examiner had no reasonable basis for
challenging the sufficiency of the disclosure and,
accordingly, we will not sustain this rejection. Clearly,
from the instant disclosure, the blank boxes of the drawing
constitute conventional microprocessors, printing mechanisms
and drivers. The examiner contends that the printer must be
something more than conventional because the output of
conventional printers is the printing on a medium. Therefore,
concludes the examiner, it was not conventional for a printing
mechanism to provide control signals as disclosed and claimed.
We disagree.
Conventional printing mechanisms include microprocessors
which, of course, output control signals. More importantly,
however, the control signals output by the printing mechanism
here are simply signals for choosing the correct driver based
on the voltage level needed. It is our view that it is
unreasonable for the examiner to hold that skilled artisans
would not have been able to cause a control signal from a
microprocessor in a printing mechanism to be generated so as
to cause the selection of a particular driver based on a
required voltage level.
Appeal No. 95-3888
Application No. 08/l05,244
5
With regard to the examiner’s complaint that driver
circuits are known to have an input and an output and that the
drivers 20a-20c are not shown with such inputs and outputs in
the drawing, we cannot agree. Figure 1, for example, clearly
shows inputs on lines 22a-22c to, respectively, drivers 20a-
20c while the outputs are joined to electrical line 11 on
which line the output from the appropriately selected driver
is produced.
We now turn to the rejection of claims 1 through 3 under
35 U.S.C. § 112, second paragraph. We also will not sustain
this rejection.
In claim 1, the examiner does not understand how an
“electronic apparatus” can comprise a “mechanical mechanism.”
There are many electronic machines that have mechanical
components therein such as typewriters, refrigerators, washers
and dryers, toasters and microwave ovens, sewing machines,
etc. Therefore, it is inconceivable that the examiner would
question how an electronic apparatus could comprise a
mechanical mechanism. Moreover, the claim’s recitation of
“comprising” leaves the claim open-ended. Therefore, the
Appeal No. 95-3888
Application No. 08/l05,244
6
“electronic apparatus” may comprise a “mechanical mechanism”
along with other components, including electronic components.
The examiner also contends that the phrase reciting that
the enable line is connected to “a signal originating in said
electronic apparatus” is vague and confusing because this
recitation “provides no understanding as to how the signal is
generated” [answer-page 4]. The examiner appears to be
confusing the breadth of the claim with vagueness. Appellant
is under no obligation to limit the claim to the specifics of
how the signal is generated unless necessary to circumvent the
prior art. The “signal originating...” is clearly that signal
originating from the printing mechanism which enables
selection of a first or second output voltage level.
The examiner further questions whether the “electrical
signal” and the “signal originating in said electronic
apparatus” are intended to be the same. It is clear from the
disclosure and the claims that the “electrical signal” is that
signal which appears on the enable line which is connected to
the “signal originating in said electronic apparatus.”
With regard to the examiner’s contention that claim 2 is
misdescriptive because it recites that “two different
Appeal No. 95-3888
Application No. 08/l05,244
7
circuits” are “connected in parallel,” [answer-page 4], we
find nothing misdescriptive as instant Figure 1 clearly shows
the circuits “connected in parallel.”
We turn, finally, to the prior art rejections.
We will not sustain the rejections of claims 1 through 3
under 35 U.S.C. § 102(e) because it is clear that McMahan does
not anticipate the subject matter of claims 1 and 2 and it is
clear that Pilarcik does not anticipate the subject matter of
claims 1 and 3.
With regard to McMahan, this reference is directed to
selecting buffers to match impedances with the different
requirements of different transmission lines. It neither has
any mechanical mechanism which is controlled nor does it
disclose the selection of different drive voltage levels, both
of which are requirements of instant claims 1 and 2.
Therefore, McMahan cannot anticipate the instant claims
subject matter.
The examiner explicitly states that no weight is being
given to the claim limitation of a “mechanical mechanism”
[answer-page 10]. This, of course, is clear error and cause,
Appeal No. 95-3888
Application No. 08/l05,244
8
alone, for reversal of the rejection of claims 1 and 2 under
35 U.S.C.
§ 102(e) over McMahan.
With regard to Pilarcik, this reference is concerned with
sampling voltage levels in order to select a level of
amplification. Again, there appears to be no mechanical
mechanism nor a control thereof, as required by claims 1 and
3. Further, there is no selection of a first or second
voltage level, as claimed. Element 20 of Pilarcik, identified
by the examiner as the “first driver circuit,” is a
preamplifier and elements 43 and 44, identified by the
examiner as the “second driver,” are, respectively, an analog
switch and a bank of amplifiers. As explained by appellant,
at page 8 of the brief, the “drivers as applied in the
rejection do not even drive the switch 43, much less drive it
at a selectable voltage level as claimed.” The examiner
states [answer-page 10] that these arguments “are not related
to a claimed limitations [sic] and thus are not persuasive.”
We disagree. The claims are clearly directed to selecting
voltage levels for output drivers.
CONCLUSION
Appeal No. 95-3888
Application No. 08/l05,244
9
We have not sustained either the rejection of claims 1
through 3 under 35 U.S.C. 112, first or second paragraphs, or
the rejection of claims 1 through 3 under 35 U.S.C. § 102(e).
Accordingly, the decision of the examiner is reversed.
REVERSED
Stanley M. Urynowicz, Jr. )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lee E. Barrett )
Administrative Patent Judge )
John A. Brady
Lexmark International, Inc.
Intellectual Property Law
740 New Circle Rd., N.W.
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