Ex Parte Dute et al

Board of Patent Appeals and Interferences

Oct 29, 2010

09915188 (B.P.A.I. Oct. 29, 2010)

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.
09/915,188 07/25/2001 John C. Dute A-70825/RMA 5259
1678 7590 10/29/2010
MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO, OH 43604
EXAMINER
CHANG, JUNGWON
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
10/29/2010 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 JOHN C. DUTE, LAURENCE A. BOYD II,
and DONALD P. WOOLWORTH
________________

Appeal 2009-006101
Application 09/915,188
Technology Center 2400
________________

Before KENNETH W. HAIRSTON, ST. JOHN COURTENAY III, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 or for filing a request for rehearing as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006101
Application 09/915,188

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 86-90. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellants’ claimed invention is directed to “interfacing a process or
machine controller with a sensor monitoring a condition within the process
or machine or an actuator acting to modify the process or machine with a
controller receiving inputs from the sensor or sending commands to the
actuator.” See Spec. 4:4-7.
Claim 86, reproduced below, is representative of the subject matter on
appeal:
86. A comprehensive interface circuit for simultaneously sensing input
devices and output devices, comprising:
a first physical circuit package having a first electrical terminal, a
second electrical terminal and a plurality of mode circuits disposed thereon,
wherein said plurality [of] mode circuits can accomplish digital input, digital
output, analog input, and analog output, said first physical circuit package
being electrically connected directly, exclusively, and physically to a single
sensor or a single actuator, but not both simultaneously, via only said first
electrical terminal and said second electrical terminal of said first physical
circuit package, and said first electrical terminal and said second electrical
terminal being capable of electrical communication with each of said
plurality of mode circuits;
a second physical circuit package having a first electrical terminal, a
second electrical terminal and a plurality of mode circuits disposed thereon,
wherein said plurality [of] mode circuits can accomplish digital input, digital
output, analog input, and analog output, said second physical circuit package
being electrically connected directly, exclusively, and physically to another
single sensor or another single actuator, but not both simultaneously, via
only said first electrical terminal and said second electrical terminal of said
Appeal 2009-006101
Application 09/915,188

3
second physical circuit package, and said first electrical terminal and said
second electrical terminal being capable of electrical communication with
each of said plurality of mode circuits; and
a controller that is external to said first physical circuit package and
said second physical circuit package, said controller being capable of
simultaneously receiving a condition from each sensor and being capable of
simultaneously sending commands to each actuator.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
McLeish US 5,014,238 May 7, 1991
Sitte US 5,469,150 Nov. 21, 1995
The following rejections are before us for review:2
1. The Examiner rejected claims 86-90 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter which Appellants regard as their invention.
2. The Examiner rejected claims 86-90 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
3. The Examiner rejected claims 86-90 under 35 U.S.C. § 103(a) as
being unpatentable over McLeish in view of Sitte.

ISSUES
The pivotal issues are:

2 The objections to the drawings and the Specification (Ans. 5) are
directed to petitionable rather than appealable matter. See Manual of Patent
Examining Procedure (MPEP) § 1002 and 1201. Accordingly, we will not
review these issues.

Appeal 2009-006101
Application 09/915,188

4
(1) whether claims 86-90 fail to particularly point out and distinctly
claim the subject matter which Appellants regard as their invention;
(2) whether claims 86-90 comply with the written description
requirement; and
(3) whether the combination of McLeish in view of Sitte teaches the
limitation of “simultaneously receiving a condition from each sensor and
being capable of simultaneously sending commands to each actuator” as
recited in claim 86.

PRINCIPLES OF LAW
The claims, of course, do not stand alone. Rather, they
are part of “a fully integrated written instrument” consisting
principally of a specification that concludes with the claims.
For that reason, claims “must be read in view of the
specification, of which they are a part.” . . . [T]he specification
“is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citations
omitted).

ANALYSIS
Analysis regarding the rejection of claims 86-90 under
35 U.S.C. § 112, second paragraph.
Appellants argue (App. Br. 15-16) that the claimed invention of
claims 86-90, contrary to the Examiner’s assertions (Ans. 12), particularly
points out and distinctly claims a controller capable of “simultaneously”
receiving a condition from each sensor and “simultaneously” sending
commands to each actuator (citing Spec. 2:4-6). The Examiner asserts (Ans.
Appeal 2009-006101
Application 09/915,188

5
5) that the Specification recites “sequentially” (citing Spec. 14:25-27) and
thus, the term “simultaneously” is a relative term that renders the claim
indefinite.
At the outset, we note that claim 86 recites “a controller . . . external
to said first physical circuit package” which is “capable of simultaneously
receiving a condition from each sensor and . . . sending commands to each
actuator” (emphasis added). We turn to the Specification to determine the
meaning of the terms “controller” and “simultaneously” as it is the single
best guide to the meaning of disputed terms. See Phillips, 415 F.3d at 1315.
Appellants’ Figure 1 shows an external controller 14 to the physical
package 15 and an internal point controller 12 (Fig. 1). Appellants re-affirm
(App. Br. 15-16) that the claims correspond to their disclosure of a controller
(i.e., external controller 14) which is in electrical communication with
individual electronic interfaces for each sensor 70 and each actuator 72
(citing Spec. 2:4-6), and which simultaneously senses inputs and actuates
outputs (citing Spec. 3:14-15; Fig. 1).
Thus, we agree with Appellants that the claims are definite and
distinctly claim Appellants’ invention because Appellants’ claim 86 refers to
the external controller 14, rather than the internal controller 12, for
simultaneously receiving conditions and sending commands.
Appellants further clarify (App. Br. 16) that the term “sequentially” as
it appears in the Specification (Spec. 14:25-27) refers to the internal control
of the mode circuit 16. Appellants’ Specification refers to the internal point
controller 12 for the sequential control of Modes 1-7 (Spec. 14:13-27).
Accordingly, we will reverse the Examiner’s rejection of claims 86-90
for failure to particularly point out and distinctly claim a controller capable
Appeal 2009-006101
Application 09/915,188

6
of “simultaneously” receiving a condition from each sensor and
“simultaneously” sending commands to each actuator under 35 U.S.C.
§ 112, second paragraph.
Analysis regarding the rejection of claims 86-90 under
35 U.S.C. § 112, first paragraph.
Appellants argue (App. Br. 11-12, 7-8) that, contrary to the
Examiner’s assertions (Ans. 11), the Specification does disclose two
physical circuit packages in simultaneous communication with a single
controller and simultaneous sensing of inputs and outputs.
More particularly, Appellants’ Specification describes “only two
terminals for the connection of sensor or actuator” (Spec. 4:16-17 (emphasis
added)); “a . . . controller with a sensor monitoring . . . or an actuator acting”
(Spec. 4:4-6); and “an interface that permits simultaneous sensing [of] inputs
and outputs” (Spec. 3:14-15). Thus, we agree with Appellants (App. Br. 8-
12) that there would have to be multiple individual physical circuit packages
15 for simultaneous sensing of inputs and outputs. In other words, there
would have to be at least two individual circuit packages 15 because each
package would be connected through terminals T1/T2 (Fig. 1) to either a
sensor or an actuator. By doing so the external controller 14 would
simultaneously sense the input from the sensor of one package and an output
from the actuator of another package. Thus, necessarily controller 14 is
connected to multiple packages 15 to simultaneously connect each sensor 70
or each actuator of each package to the external controller 14. We further
note that this reasoning based on Appellants’ Specification is in agreement
with the claimed language of each physical package being “electrically
connected directly, exclusively, and physically to a single sensor or a single
actuator, but not both simultaneously” as recited in claim 86.
Appeal 2009-006101
Application 09/915,188

7
Accordingly, we will also reverse the Examiner’s rejection of claims
86-90 under § 112, first paragraph.
Analysis regarding the rejection of claims 86-90 under
35 U.S.C. § 103(a).
We will reverse the Examiner’s rejection of claims 86-90 pro forma
because the Examiner’s rejection (Ans. 14) is based on the contention that
the term “simultaneously” is indefinite and thereby includes the term
“sequentially” upon which the art rejection is based.
Accordingly, we will also reverse the Examiner’s rejection of claims
86-90 under 35 U.S.C. § 103(a) because we found that the term
“simultaneously” is definite.

CONCLUSIONS
(1) Claims 86-90 particularly point out and distinctly claim the subject
matter which Appellants regard as their invention;
(2) claims 86-90 comply with the written description requirement; and
(3) the combination of McLeish in view of Sitte does not teach the
limitation of “simultaneously receiving a condition from each sensor and
being capable of simultaneously sending commands to each actuator” as
recited in claim 86 because the rejection is based on the contention that the
term “simultaneously” includes the term “sequentially.”

ORDER
The decision of the Examiner rejecting claims 86-90 under 35 U.S.C.
§ 112, first and second paragraphs, and under 35 U.S.C. § 103(a) is reversed.

REVERSED
Appeal 2009-006101
Application 09/915,188

8

babc

MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO, OH 43604