Ex Parte 5659680 et al

Patent Trial and Appeal Board

Jun 17, 2014

90012410 (P.T.A.B. Jun. 17, 2014)

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.
90/012,410 07/30/2012 5659680 5012-CIAN-RX410 4854
27571 7590 06/17/2014
Ascenda Law Group, PC
84 W. Santa Clara St.
Suite 550
San Jose, CA 95113
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/17/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CIAN IP LLC
Patent Owner
____________

Appeal 2014-004395
Reexamination Control 90/012,410
Patent US 5,659,680
Technology Center 3900
____________

Before ROBERT E. NAPPI, THU A. DANG, and
JASON V. MORGAN, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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Cian IP LLC, the owner (hereinafter “Owner”) of the Patent under
reexamination (hereinafter the “’680 Patent”), appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 1-3, 8, and 12-14. We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306. Oral Arguments were
heard on May 14, 2014.
We affirm.

I. STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Dean M. Munyon and Anthony M. Petro
(Request for Ex Parte Reexamination filed July 30, 2012, hereinafter
“Request”) for Requester, National Instruments Corporation. The ’680
Patent issued to Glen B. Cunningham, Andrew R. Reading, and Michael F.
Kapolka on August 19, 1997, from Application 491,341 filed on June 30,
1995. According to the Request, “numerous references” were not
considered during the prosecution of the ’680 Patent but “raise substantial
new questions of patentability” with respect to claims 1-3, 8, and 12-18 of
the ’680 Patent (Request 5). In particular, the Request points to references
that “describe VXIbus PC-based test systems that are adaptable to test a
variety of systems” wherein “the VXIbus standard described . . . is a
forerunner of the technology accused of infringement by Patent Owner” in
co-pending litigation filed against Requestor (id., emphases omitted).
Owner appeals from the Examiner’s rejection of claims 1-3, 8, and 12-18 of
the ’680 Patent over several of the VXIbus references submitted by the
Request during reexamination.
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We are also informed that the ’680 Patent is the subject of pending
litigations Cian IP LLC v. Pickering Interfaces Ltd., et al., Case No. 3:33-
cv-3354-M (N.D. Tex.); Cian IP LLC v. Agilent Technologies, Inc., Case
No. 3:11-cv-3351-M (N.D. Tex.); Cian IP LLC v. Aeroflex Incorporated,
Case No. 3:11-cv-3349-M (N.D. Tex.); Cian IP LLC v. Spirent
Communications, Inc., Case No. 3:11-cv-3356-M (N.D. Tex.); and Cian IP
LLC v. National Instruments Corporation, Case No. 1:12-cv-365-M (W.D.
Tex.). (Id. at 6).

A. CLAIMS
Claims 1-3, 8, and 12-14 are subject to reexamination and have been
rejected. Claims 1-14 are original patent claims. Claims 4-7, and 9-11 are
not subject to reexamination. Claims 1, 8, and 12 are independent.
Claim 1 is illustrative.
1. A PC-based diagnostic system for diagnosing a unit
under test, comprising:
a motherboard housed on a first circuit board;
a backplane housed on a second circuit board and
coupled to said motherboard through a first bus, control lines
and power lines, said second circuit board including a first and
a second I/O module connection port;
a connection circuit housed on a third circuit board and
connected to said backplane through a second bus; and
a keyboard adapter circuit housed on a fourth circuit
board and connected to said motherboard through a data and
control bus, said keyboard adapter circuit providing for
connection of a keyboard to said motherboard, said keyboard
providing for operator-entered data to be sent to said
motherboard;
wherein said backplane board provides data and
instruction transfer between a processor housed on said
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motherboard and one of a first I/O module connected to said
first I/O module connection port on said backplane board, a
second I/O module connected to said second I/O module
connection port, and a third module connected to said
connection circuit, at least one of said first and second I/O
modules being coupled to said unit under test to enable transfer
of data between said PC-based diagnostic system and said unit
under test, said data being used by said PC-based diagnostic
system to diagnose said unit under test,
and wherein said first and second buses are coupled to
each other via said backplane board to provide for transfer of
information between said first, second and third I/O modules
and said motherboard.

B. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Whittaker US 4,677,566 June 30, 1987
Kuzawinski US 5,251,320 Oct. 5, 1993
English US 5,329,079 July 12, 1994
Lawrence A. DesJardin, VXIbus: A Standard for Test and
Measurement System Architecture, Hewlett-Packard Journal, (1992). (“The
1992 HP Journal”).
IEEE-488 and VXIbus Control, Data Acquisition and Analysis,
National Instruments, (1991). (“The 1991 NI Catalog”).
Hewlett Packard Company, C-SIZE VXIbus Active Adapter Module
HP E1403A, Installation Manual, (1991). (“The E1403A Installation
Manual”).
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National Instruments Corporation, Getting Started with Your VXIpc-
386 and the NI-VXI Software for MS-DOS, (1991). (“The VXIpc-386
Manual”).
Que Corporation, Upgrading and Repairing PCs, 3rd Edition, 18,
(1993). (“Mueller”).
K25C81 A Versatile PC/XT/AT/PS2 Compatible Keyboard Encoder
KeyCoder™ USAR Systems, (1992). (“The KC25C81 Datasheet”).
Radisys Announces PCMCIA Carrier Module and Four New I/O
Moddules For Its Embedded PC Lines, PR Newswire, (1993). (“The
RadiSys Announcement”).
VX5260 Waveform Digitizer Instruction Manuel, Artisan Scientific,
(1991). (“The VX5260 Manual”).
National Instruments Corporation, VMEbus Extensions for
Instrumentation, Revision 1.3, (1989). (“The VXIbus System
Specification”).

Claims 1, 2, and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the 1992 HP Journal, the 1991 NI Catalog, the E1403A
Installation Manual, the VXIpc-386 Manual, Mueller, the KC25C81
Datasheet and English.
Claims 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the 1992 HP Journal, the 1991 NI Catalog, the E1403A
Installation Manual, the VXIpc-386 Manual, Mueller, the KC25C81
Datasheet, English, and the RadiSys Announcement.
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Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the 1992 HP Journal, the 1991 NI Catalog, the VX5260
Manual, the VXIbus System Specification, Kuzawinski, and Whittaker.

II. ISSUE
The main issue before us is whether the Examiner has erred in finding
the combination of the 1992 HP Journal, the 1991 NI Catalog, the E1403A
Installation Manual, the VXIpc-386 Manual, Mueller, the KC25C81
Datasheet and English teaches or would have suggested a “PC-based
diagnostic system,” as recited in claim 1 (emphases added)?

III. ANALYSIS
Claims 1, 2 and 12
Although Owner concedes the cited prior art discloses “a PC-
controlled VXI-based system,” Owner argues that the “primary dispute” in
this Appeal “centers on whether the broadest reasonable construction of the
recited term ‘PC-based diagnostic system’ . . . includes a PC-controlled VXI
system” (App. Br. 9). In particular, Owner provides a Declaration (“the
Notor Declaration”), cites to exhibits including an article entitled
“Evaluating PXI and VXI Platforms for your Measurement and Automation
Needs” (“the white paper”) by the Requester, National Instruments (App. Br.
15), and contends that based on endorsements of “a PC-based diagnostic
system over a PC-controlled VXI system, the Notor Declaration indicates
that one of ordinary skill in the art . . . would understand a PC-based
diagnostic system to exclude PC-controlled VXI system” (id.). Owner
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points out that “the ’680 Patent specification does not mention a VXI system
or a PC-controlled VXI system” (App. Br. 17). Thus, Owner asserts “the
cited references do not suggest or hint that a PC-controlled VXI system may
be interpreted as the claimed PC-based diagnostic system” (App. Br. 18).
However, the Examiner concludes “[t]he plain and ordinary meaning
of a PC-based diagnostic system for diagnosing a unit under test is readily
understood by a person of ordinary skill in the art” wherein “a ‘PC-based
diagnostic system’ does not exclude a PC-controlled VXI system as
disclosed in the prior art” (Ans. 10). Although the Examiner has considered
the Notor Declaration, the Examiner “is not persuaded that there is an
‘apparent endorsement’. . . of a PC-based diagnostic system using PXI
versus VXI” (Ans. 11). Further, the Examiner finds that the white paper
cited in the Notor Declaration “does not state that all PC-based platforms are
necessarily a PXI platform” (id.). Instead, the Examiner finds that the white
paper discloses that “[w]ith MXI-2, you can connect to VXI from a PXI
chassis, as well as directly from a PCI slot in a desktop PC” (Ans. 12). That
is, the Examiner finds the white paper suggests “adapting a VXI system
using PXI and MXI-2 to extend the functionality of a VXI system” (id.) and
“[t]here is no suggestion in the paper for a PC-based diagnostic system to
exclude a PC-controlled VXI system” (Ans. 13).
At the outset, we note that the exhibits relied on in the Notor
Declaration for the ordinary and customary meaning of the claim term “PC-
based” are not prior art showing the meaning of a term to a person of
ordinary skill in the art at the time of the invention. That is, Exhibit 1
(“Harnessing the Power of the PC”), Exhibit 2 (“2006 NI Article”) and
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Exhibit 3 (“VXI Bus Consortium FAQ”) have the effective dates of 1998,
2006, and 2013 respectively. As acknowledged in the Notor Declaration, the
ordinary and customary meaning of a claim term “is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention, i.e., as the effective date of the patent application”
(Declaration 4, emphases added and omitted; citing Phillips v AWH Corp.,
415 F.3d 1303, 1313 (Fed. Cir. 2005)).
Nevertheless, we have considered Owner’s arguments and the Notor
Declaration. However, we find no error with the Examiner’s underlying
factual findings, the Examiner’s construction of the claims, and the
Examiner’s ultimate legal conclusion of obviousness.
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not provide any definition for “PC-based diagnostic
system.” Though the Specification provides exemplary embodiments of the
claimed system, it does not provide any specific definition. Thus, we give
“PC-based” diagnostic system its broadest reasonable interpretation as any
diagnostic system that is designed based on a personal computer (PC) to
work with a PC. Although we have considered the Notor Declaration,
giving the claim its broadest reasonable interpretation, we conclude claim 1
merely requires a diagnostic system that is designed to work with a PC.
As Owner concedes, the cited prior art discloses “a PC-controlled
VXI-based system” (App. Br. 9). That is, the prior art system is designed to
be able to be controlled by a PC. We find no error with the Examiner’s
conclusion that the broadest reasonable interpretation of “a ‘PC-based
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diagnostic system’ does not exclude a PC-controlled VXI system as
disclosed in the prior art” (Ans. 10). In view of our broad but reasonable
interpretation above, we find no error with the Examiner’s finding that the
prior art references at the least suggests a “PC-based” diagnostic system.
We also note that system recited in claim 1 merely comprises a
“motherboard,” a “backplane,” a “connection circuit,” and a “keyboard
adapter circuit.” As the Examiner finds, and as uncontested by Owner, the
prior art testing/diagnostic system is structurally identical to the diagnostic
system of the ’680 Patent, in that the testing/diagnostic system of the cited
prior art and the diagnostic system of the ’680 Patent each include a
motherboard, a backplane, a connection circuit, and a keyboard adapter
circuit (Ans. 4). Accordingly, we agree with the Examiner’s finding that the
prior art’s testing/diagnostic system includes each and every structural
limitation recited in the body of claim 1
Since there is no structural differences between a testing system in a
VXI system and a non-VXI system, we find that the prior art’s testing/
diagnostic system is capable of being implemented in a VXI system as well
as a non-VXI system. Thus, even assuming, arguendo, that our reviewing
court interprets VXI systems as not being “PC-based” systems, Appellants
do not provide convincing arguments or evidence to show that (1) the
testing/diagnostic system of the subject invention differs structurally from
that of the prior art; or (2) the prior art’s testing/diagnostic system is not
capable of being implemented in a non-VXI system as well as a VXI system.
We also note that by arguing that “the ’680 Patent specification does
not mention a VXI system or a PC-controlled VXI system” (App. Br. 17),
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Owner appears to be arguing that the system of the ’680 Patent, which is
structurally the same as that of the prior art, is intended to be used in a non-
VXI system only. However, “[i]t is well settled that the recitation of [an]
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted). That is, even if the system of the ’680 Patent is intended to be
used only with non-VXI systems, such different intended use of a system
having prior art structures does not make that system patentable.
Furthermore, because the Examiner rejects the claims as obvious over
the applied references, the test for obviousness is not what each cited
reference must disclose but what the reference when combined would have
suggested to one of ordinary skill in the art. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
The Supreme Court guides that the conclusion of obviousness can be
based on the background knowledge possessed by a person having ordinary
skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Thus, even assuming, arguendo, the prior art does not disclose a “PC-based”
system, Owner has presented no evidence that providing the testing/
diagnostic system of the prior art comprising all of the claimed structures in
a “PC-based” system would have been “uniquely challenging or difficult for
one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR 550 U.S. at 418). The
skilled artisan is “[a] person of ordinary creativity, not an automaton.” KSR,
550 U.S. at 421. That is, even if arguendo, a PC-controlled system is not a
PC-based system, we find such implementation of a testing/diagnostic
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system in a PC-based system instead of a PC-controlled system would have
been both routine and predictable to a person of ordinary skill in the art.
Thus, we find no error with the Examiner’s ultimate legal conclusion
that the prior art at least suggests a testing/diagnostic system provided in a
“PC-based” system. Accordingly, we find Owner has not shown the
Examiner erred in rejecting independent claim 1 over the 1992 HP Journal,
the 1991 NI Catalog, the E1403A Installation Manual, the VXIpc-386
Manual, Mueller, the KC25C81 Datasheet and English. Owner does not
provide separate arguments for dependent claims 2 depending from claim 1
and independent claim 12, which also recites a “PC-based diagnostic
system” (App. Br. 19). Accordingly, claims 2 and 12 fall with claim 1.
Claims 3, 13, and 14
As for claims 3, 13, and 14, Owner merely contends “the RadiSys
Announcement fails to cure the above-mentioned deficiencies” of the
references cited in the rejection of claims 1, 2, and 12 (id.). However, as
discussed above with respect to claims 1 and 12 from which claims 3, 13 and
14 depend, we find no deficiency with the Examiner’s reliance on cited
references. Accordingly, we also affirm the Examiner’s rejection of claims
3, 13, and 14 over the 1992 HP Journal, the 1991 NI Catalog, the E1403A
Installation Manual, the VXIpc-386 Manual, Mueller, the KC25C81
Datasheet and English, in further view of the RadiSys Announcement.
Claim 8
Owner contends “[a] dual-port RAM being located in the GPIB-VXI
[as disclosed in 1991 NI Catalog] does not, per se, support the rejection of
claim 8 [which recites I/O modules including a dual-port RAM]” (App. Br.
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20-21). However, as the Examiner points out, “[t]he efficiencies of dual
ported RAM were known in the art, as evidenced by the teachings found in
the 1991 NI Catalog . . . . ” (Ans. 30). Thus, we agree with the Examiner’s
finding that it would have been obvious “to rely on the 1991 Catalog
disclosure of on-board dual-ported RAM” and “apply the concept of dual
ported RAM to facilitate ‘high-speed shared-memory communication with
other VXI devices’” (id.).
As discussed above, the test for obviousness is what the reference
when combined would have suggested to one of ordinary skill in the art.
Merck, 800 F.2d at 1097 (Fed. Cir. 1986). Owner has presented no evidence
that including the well-known teaching of providing a dual-port RAM for
communicating with VXI modules as taught by 1991 Catalog in an I/O
module for communicating with VXI modules would have been “uniquely
challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters,
485 F.3d at 1162. We find such use of a dual-port RAM in an I/O module
would have been both routine and predictable to a person of ordinary skill in
the art.
Thus, we find Owner has not shown the Examiner erred in rejecting
claim 8 over the 1992 HP Journal, the 1991 NI Catalog, the E1403A
Installation Manual, the VXIpc-386 Manual, Mueller, the KC25C81
Datasheet and English.

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IV. SUMMARY/CONCLUSION
We sustain the Examiner’s rejection of claims 1-3, 8, and 12-14.

V. DECISION
The Examiner’s decision rejecting claims 1-3, 8 and 12-14 is
affirmed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f) .

AFFIRMED
kme

Patent Owner:
ASCENDA LAW GROUP, PC
84 W. SANTA CLARA ST.
SUITE 550
SAN JOSE, CA 95113

Third Party Requester:
MEYERTONS, HOOD, KIVLIN
KOWERT & GOETZEL, PC
POBOX 398
AUSTIN, TX 78767-0398