Ex Parte Dittrich

Patent Trial and Appeal Board

Mar 18, 2013

10866106 (P.T.A.B. Mar. 18, 2013)

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.
10/866,106 06/14/2004 INV001Gerhard Dittrich DITT3002/FJD 7970
23364 7590 03/19/2013
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
POPE, DARYL C
ART UNIT PAPER NUMBER
2687
MAIL DATE DELIVERY MODE
03/19/2013 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 PATENT TRIAL AND APPEAL BOARD

____________

Ex parte GERHARD DITTRICH
____________

Appeal 2010-011244
Application 10/866,106
Technology Center 2600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III,
and CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-7, and 10-14. Claims 4 and 8-10 have been canceled. (App.
Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2010-011244
Application 10/866,106

2
STATEMENT OF THE CASE
Appellant’s claimed invention is a method for indicating the
functioning of a process automation field device. (Spec. 1).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for performing a function check of a process
automation field device having a display which is connected to a data bus by
a data bus interface, comprising the steps of:

providing the field device with a LCD-display which serves
essentially from measured value display and for guiding the user through the
operating menu of the field device;

transmitting a radio signal from a transmitting unit (HS) to the field
device, which triggers a query of the field device status in the field device;
and

producing a perceivable signal at the LCD-display of the field device
corresponding to the result of the device status query, whereby blinking of
the LCD-display signals to a service technician the faultless functioning of
the field device.

REFERENCES and REJECTIONS
The Examiner rejected claims 1-3, 5-7, and 10-14 under 35 U.S.C.
§ 103(a) based upon the teachings of Bellavia (US 4,827,244) and Kail IV
(US 6,225,901 B1).

ANALYSIS
With respect to claims 1-3, 5-7, and 10-14, Appellant argues the
claims as two groups, we select independent claim 1 as the representative of
claims 1-3, 5-7, and 10-13 and will address Appellant’s arguments thereto.
We address dependent claim 14 separately.
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With respect to representative independent claim 1, Appellant
contends that:
Claim 1 at least requires, (1) transmitting a radio signal from a
transmitting unit (HS) which triggers a query of the field device
status in the field device and (2) producing a perceivable signal
at the LCD-display of the field device corresponding to the
result of the device status query, whereby blinking of the LCD-
display signals to a service technician the faultless functioning
of the field device.

(App. Br. 12). Appellant further contends that "Bellavia's teaching is in
complete contrast to transmitting a radio signal from a transmitting unit (HS)
which triggers a query of the field device status in the field device."
(App. Br. 12). We agree with Appellant that column 6 of the Bellavia
reference discloses an embodiment which "simulate[s] the presence of
combustion products, raising the voltage of electrode 15 above the external
reference to produce an output from the smoke compartment 22." (Bellavia
col. 6, ll. 39-42). We further note that the Bellavia reference discloses
various alternative embodiments.

FIG. 6 illustrates an alternate system 90. In the system 90 the
flashlight 8 is used for remotely initiating a test function of a
battery-powered emergency light module 92 mounted adjacent
the ceiling C. Modules such as the module 92 continuously
sense applied electrical power. In the absence of electrical
power, the battery powered emergency lights 92a and 92b
immediately turn on to provide illumination.
Battery-powered emergency light modules, such as the
module 92 often include a manually operable test function for
the purpose of testing the charge of the storage battery along
with the operation of the associated emergency lights. A photo
sensor such as the phototransistor 20a can be incorporated into
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Application 10/866,106

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the battery-powered emergency light module 92 to initiate the
test function at a distance in response to the presence of an
incident beam of radiant energy 8a.
It will be understood that while embodiments of the
present invention have been illustrated in combination with a
portable electric unit, such as a flashlight which generates a
beam of radiant energy, that the invention is not limited to such
an implementation. A block diagram is illustrated in FIG. 7 of a
generalized unit 96.
The unit 96 includes circuitry 98a for the purpose of
carrying out a predetermined function. For example, and
without limitation, the exemplary functions could include
detection of flame, combustible products, or failure of applied
power.
The unit 96 also includes a control sensor 98b. The
control sensor can detect an incoming control beam 100 from a
remote source. The control beam or signal 100 can be a beam of
sonic energy, or a beam of electromagnetic energy of a selected
frequency such as infrared or radio frequency energy.

(Bellavia, col. 8, ll. 32-65; emphasis added). Therefore, we find the Bellavia
reference teaches and fairly suggests the use of a radio signal which
triggers/initiates a test function. While the Bellavia reference does not detail
the output or result of the test beyond use of a horn (Bellavia, col. 5), those
skilled in the art would appreciate that some perceivable indication would be
required and would vary depending on the specific field of endeavor. The
Examiner relies upon the Kail reference for the output indication and use of
the LCD display.
The Examiner additionally identifies that the Kail reference teaches
the well-known use of "an LCD display (34) which allows a user to view
information pertaining to sensor data as well, reprogramming instructions
(see: column 4, lines 21-45)." (Ans. 5). We agree with the Examiner and
note that the Kail reference additionally identifies the use of a "flashing
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light." (Kail, col. 4, line 50). Appellant contends that the constant impinging
of a beam of energy onto the field device would be impractical and would
only further complicate the checking process which would likely make it
more cumbersome and less efficient. (App. Br. 12). We disagree with
Appellant's contention and find the constant beam of energy is not required,
as discussed above.
Appellant contends the Examiner's combination fails to teach or
suggest "producing a perceivable signal …" and "applicant is not just
claiming a blinking display." (App. Br. 13). Appellant contends the
Examiner has not considered all the claim limitations and the combination
fails to teach or suggest the above-noted limitations. (App. Br. 13). We
disagree with Appellant, as discussed above.
We find the combination of the Bellavia reference and the Kail
reference would have taught or fairly suggested the claimed step of
"producing a perceivable signal at the LCD-display of the field device
corresponding to the result of the device status query, whereby blinking of
the LCD-display signals to a service technician the faultless functioning of
the field device" in the context of the entire claim.
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art. Graham, 383 U.S. at 17. See also KSR, 550 U.S. at 407
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(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasizes “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and states that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415, 416. The operative question is
thus “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 417.
Appellant contends the combination of the Bellavia reference and the
Kail reference are directed to fundamentally different problems than the
claimed invention. (App. Br. 13). Appellant contends that "the blinking of
the whole display is perceivable from a further distance rather than the sole
indication of data on the display." (App. Br. 13). We note that Appellant's
contention is based upon limitations not expressly found in the language of
independent claim 1. Therefore, Appellant's argument is not persuasive of
error in the Examiner's legal conclusion of obviousness.
Appellant contends that "[t]he purpose of the present invention…is to
provide a method for function display of a field device for process
automation, especially, enabling a simple and rapid function check on a field
device, performable at favorable cost in cases where the field devices are
often difficult to get to." (App. Br. 14). We find Appellant's argument to be
directed to the preamble and intended field of use rather than addressing the
proffered combination of teachings set forth by the Examiner. Therefore,
Appellant's argument is not persuasive of error in the Examiner's legal
conclusion of obviousness.
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Appellant contends the Examiner has not considered the invention as
a whole. (App. Br. 14-15). We disagree with Appellant and find the
Examiner has considered the claimed invention as a whole. Since Appellant
has not shown error in the Examiner's legal conclusion of obviousness, we
will sustain the rejection of representative claim 1.
With respect to dependent claims 2, 3, 5-7, and 10-13, Appellant
relies upon the arguments advanced with respect to independent claim 1.
Since we found no error in the Examiner's conclusion of obviousness of
independent claim 1, we similarly find no error with respect to these
dependent claims.
With respect to dependent claim 14, Appellant contends that the
Bellavia reference already has control circuitry, and it is not clear why one
of ordinary skill in the art would want to further include a microcontroller in
the Bellavia reference where it would likely increase cost and complexity.
(App. Br. 15). The Examiner maintains Appellant only addresses a negative
aspect with respect to the use of a microcontroller, but not the positive
aspects of the use of a microcontroller. We agree with the Examiner.
Additionally, we note the Kail reference clearly teaches and fairly suggests
the use of a microprocessor and computer based system that provides
additional flexibility and reprogrammability, which would teach positive
aspects of the use of a microcontroller. (Kail, Figure 1). Therefore, we find
Appellant’s general argument to be unpersuasive of error in the Examiner's
legal conclusion of obviousness of dependent claim 14.

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Application 10/866,106

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CONCLUSION
The Examiner did not err in rejecting claims 1-3, 5-7, and 10-14 under
35 U.S.C. §103.

DECISION
The Examiner’s decision rejecting claims 1-3, 5-7, and 10-14 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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