Ex Parte Brandt et al

Patent Trial and Appeal Board

Apr 29, 2014

11185709 (P.T.A.B. Apr. 29, 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.
11/185,709 07/21/2005 Wayne D. Brandt 08350.5354-00000 4132
58982 7590 04/29/2014
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON, DC 20001-4413
EXAMINER
RAMPURIA, SATISH
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
04/29/2014 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 WAYNE D. BRANDT, VERNON R. SMITH,
WALT E. EARLESON, MICHAEL E. ROTH, DALE B. HERGET,
STEVEN C. BRAY, WAYNE J. WULFERT,
and JEFFREY S. MORRIS
____________

Appeal 2011-012553
Application 11/185,709
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, JOHN A. EVANS, and
LINZY T. McCARTNEY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review2 under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1-183 as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).

1 The Real Party in Interest is Caterpillar, Inc.
2 We have considered in this decision only those arguments Appellants
actually raised in the Briefs. Any other arguments which Appellants could
have made but chose not to make in the Briefs are deemed to be waived. See
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2
We AFFIRM.4
STATEMENT OF THE CASE
The claims relate to a software system development apparatus
configured to develop and package real-time embedded control software
systems together with compatibility information. Spec. ¶ [01].
Claims 1, 6, and 13 are independent.5 The claims have not been
argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(iv). An understanding of the invention can be derived from a
reading of exemplary Claim 1, which is reproduced below with disputed
limitations italicized:
1. A software system development apparatus configured to
develop control software for an embedded control system of a
machine, comprising:
a processor;
a computer-readable medium operatively coupled to the
processor; and
a system design tool program stored on the computer-
readable medium that, when executed by the processor, is
operable to:

37 C.F.R. § 41.37(c)(1)(vii).
3 App. Br. 12.
4 Our decision refers to Appellants’ Appeal Brief filed January 3, 2011
(“App. Br.”); Reply Brief filed June 13, 2011 (“Reply Br.”); Examiner’s
Answer mailed April 13, 2011 (“Ans.”); Final Office Action mailed August
13, 2010 (“Final Rej.”); and the original Specification filed July 21, 2005
(“Spec.”).
5 A substitute Claims Appendix was filed February 4, 2011.
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generate the control software by selecting from a
collection of reusable software components stored in a
catalog;
establish compatibility information about the
compatibility of the control software with the embedded
control system of the machine;
package the compatibility information together
with the control software onto a computer-readable
medium as an installation package, the installation
package being configured to be installed in an electronic
control unit of the machine.

REFERENCES
The Examiner relies upon the prior art as follows:
Hogan et al. U.S. 5,778,368 Pub. Jul. 7, 1998
Ferguson et al. U.S. 2003/0110482 A1 Pub. Jun. 12, 2003
The claims stand rejected as follows6:
1. Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hogan and Ferguson. Ans. 3-13.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 13-19)
and Reply Brief (Reply Br. 1-2), the issue presented on appeal is:

6 Based on Appellants’ arguments in the Appeal Brief, we will decide the
appeal on the basis of claims as set forth below. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Application 11/185,709

4
Whether the Examiner erred in finding the computer system of
Ferguson establishes compatibility information about the compatibility of
the control software with the embedded control system of the machine, and
packages the compatibility information together with the control software
onto a computer-readable medium as an installation package, the installation
package being configured to be installed in an electronic control unit of the
machine.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions.
Appellants argue that Ferguson does not disclose establishing
compatibility information and packaging the compatibility information
together with the control software as an installation package. App. Br. 16.
Appellants contend the remote system 102 of Ferguson first determines if a
software update is compatible with the version of software stored in the
machine 100, and then the remote system delivers the update to the machine
processor. Id. Appellants argue that Ferguson teaches away from the
claimed packaging step, because Ferguson teaches checking the
compatibility of the software update before the update is delivered to the
machine. Id. Further, Appellants contend the Examiner’s rejection lacks the
required articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness. App. Br. 18.
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The Examiner finds that Hogan teaches a “Real-Time Embedded
Software (RTES) Repository Apparatus” that provides a user with the ability
to re-use real-time embedded software components. Hogan does not
explicitly teach a catalog from which a user may select from a collection of
re-usable software components. The Examiner finds that such selection is
implicit in Hogan’s Repository. Ans. 4. The Examiner finds Ferguson to
disclose a system of updating and installing software of control modules
(i.e., multiple electronic control units) of a remotely located work machine.
Ans. 14. The software stored on each module contains its own identifying
information, such as file serial number, version number and enabled feature
information. Id. The Examiner finds the compatibility of the software
update with other software on the machine is determined utilizing the
software’s identifying information. Ans. 15. The Examiner contends the
software update, along with its identifying information, that is stored on the
remote data storage system 114 is the “installation package,” which is then
relayed to and installed on the remote machine 100. Id. The Examiner finds
the motivation to combine Ferguson with Hogan is found in Ferguson,
wherein the system of Ferguson provides an efficient method of updating
software on a remotely located machine. Ans. 15-16.
Appellants reply that Ferguson does not teach “packag[ing] the
compatibility information together with the control software ... as an
installation package.” Reply Br. 1 (emphasis omitted). Appellants contend
that the update of Ferguson that is delivered to the machine does not have
the compatibility information included therein. Reply Br. 2. Appellants
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argue that, since Ferguson remotely checks for compatibility before the
update is delivered to the machine, it would be redundant and unnecessary
for Ferguson to package the compatibility information with the update and
deliver the package to the machine. Id.
We disagree with the Appellants’ contentions. Appellants have
broadly defined “compatibility information” as information that “may
indicate which real-time embedded control systems and system components
are compatible with the newly developed software system.” Spec. ¶ [05].
Ferguson determines the compatibility of the software update with other
software on the machine using the software’s identifying information, such
as file serial number, version number and enabled feature information.
Ferguson, ¶ [0030], [0032]. Thus, the identifying information “indicates”
which other control systems (via their associated software) are compatible
with the newly installed software, and the software identifying information
is considered “compatibility information.” The software update and its
compatibility (i.e., identifying) information are considered the “installation
package,” which is stored on the remote data storage system 114 (i.e.,
computer-readable medium). This installation package is configured to be
installed in an electronic control unit of the machine, as the machine
processor 104 of Ferguson flashes the update 120 into the appropriate
control module. Ferguson, ¶ [0037].
Therefore, we find the Examiner did not err in rejecting Claims 1-18
under 35 U.S.C. § 103(a) over Hogan in view of Ferguson.

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Application 11/185,709

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DECISION
The rejection of Claims 1-18 under 35 U.S.C. § 103(a) 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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