Ex Parte Fischer et alDownload PDFPatent Trial and Appeal BoardMay 18, 201612895063 (P.T.A.B. May. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/895,063 09/30/2010 27799 7590 05/20/2016 Cozen O'Connor 277 Park A venue, 20th floor NEW YORK, NY 10172 FIRST NAMED INVENTOR Richard FISCHER 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5029-708-307233.000 7092 EXAMINER SIV ANESAN, SIV ALINGAM ART UNIT PAPER NUMBER 2126 NOTIFICATION DATE DELIVERY MODE 05/20/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patentsecretary@cozen.com patentdocket@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD FISCHER and STEP AN SCHAAN Appeal2014-009765 Application 12/895,063 Technology Center 2100 Before JASON V. MORGAN, MELISSA A. HAAPALA, and NABEEL U. KHAN, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection (Final Act., Aug. 19, 2013) of claims 1, 2, 4, 6, 8, and 9. We have jurisdiction under 35 U.S.C. § 6(b). We have reviewed Appellants' contentions in the Briefs, the Examiner's rejections, and the Examiner's response to Appellants' contentions. We AFFIRM because Appellants' arguments do not address: (i) the rejection of claim 8 under 35 U.S.C. § 112, ,-i 2 for indefiniteness; and (ii) the combination of prior art teachings applied by the rejection of claims 1, 2, 4, 6, 8, and 9, under 35 U.S.C. § 103(a), as obvious over Behringer Appeal2014-009765 Application 12/895,063 (DE10332793; Feb. 17, 2005) and Tohdo (US 2004/0181781 Al; Sept. 16, 2004). ANALYSIS § 112, second paragraph, Rejection Because Appellants do not address the rejection under 35 U.S.C. § 112, second paragraph, we summarily sustain the rejection. § 103(a) Rejection As to the rejection under 35 U.S.C. § 103(a), Appellants argue the Examiner fails to establish a prior art teaching or suggestion of the claimed invention's comparison-based loading. App. Br. 4-6; Reply Br. 1-3. Independent claim 1 recites the comparison-based loading as follows: a comparison device which compares the first output signals [of a first control program] with second output signals [of a second control program] and provides a comparison result ... ; wherein the apparatus loads the second control program into the controller based on the comparison result. Independent claim 6 recites commensurate subject matter. All other claims depend from claim 1 or 6. Our analysis is directed to claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2013) (representative claims). Appellants particularly argue that although the Examiner cites Tohdo as teaching the claim 1 comparison-based loading, Tohdo does not teach a plurality of control programs, much less a comparison of control programs and subsequent loading of one program based on the comparison. App. Br. 5-6; Reply Br. 2. For example, Appellants state: 2 Appeal2014-009765 Application 12/895,063 Tohdo (paragraph [0025]; Fig. 3) explains that "[s]tep 103 simulates the control model and executes the control program thereby to test the presence or absence of abnormality in the control model or control program[."] ... Paragraph [0025] of Tohdo merely teaches that the same control program is modified upon completion of a debugging process. There is no teaching in Tohdo that an apparatus loads a second program into a controller based on a comparison result. Reply Br. 2 (original emphasis). 1 Appellants' arguments fail to address the Examiner's application of Behringer and Tohdo against claim l's comparison-based loading. The Examiner finds Behringer compares two control programs to debug one of the programs, but does not explicitly teach generating a comparison result and loading the debugged program based on the result. Ans. 4 (citing Behringer iii! 14-17); see also Final Act. 3-4, 6-7 (claim 1 ), 9 (claim 5). 2 Bridging this determined deficiency, the Examiner finds Tohdo suggests such a comparison and loading for Behringer' s control programs insofar as comparing results of the control model and control program to determine abnormalities of the program, accordingly debugging the program, and loading the program upon completion of the debugging. Ans. 4-6 (citing Tohdo iii! 24-25); Final Act. 3-4, 7-9 (claims 1 and 5); see also Tohdo iJ 42-44 (further explaining the "processes of control program testing and 1 We note the section of Tohdo cited by Appellants appears in paragraph 24, and not paragraph 25. 2 The Examiner's findings are presented in the Final Action's discussion of both claim 1 and canceled claim 5; particularly because claim 1 's "wherein ... "limitation was added, from claim 5, via an Amendment under 37 C.F.R. § 1.116 (after Final Office Action). Advis. Act. (Nov. 6, 2013); Adv. Act. (Oct. 23, 2013). 3 Appeal2014-009765 Application 12/895,063 debugging"). Appellants' arguments fail to address the specific combination made by the Examiner. Because the Examiner presents a reasonable and unrebutted finding of obviousness for claim l's comparison-based loading, the rejection under 35 U.S.C. § 103(a) is sustained. DECISION The Examiner's decision rejecting claims 1, 2, 4, 6, 8, and 9 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 4 Copy with citationCopy as parenthetical citation