Ex Parte Goldberg et al

Patent Trial and Appeal Board

Aug 14, 2014

12240859 (P.T.A.B. Aug. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALLAN MORRIS GOLDBERG, LARRY KENT HOPKINS,
RANDALL PEARSON, LARRY HAWKES, and
MICHAEL JAMES GRUNDY
____________

Appeal 2012-003756
Application 12/240,859
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 19–22 and 25–38, which are all the claims pending in the
application. Claims 1–18, 23, and 24 were canceled during prosecution.
The amendment to claim 26 was entered by the Advisory Action dated
March 29, 2011 for the purposes of this appeal. (App. Br. 2). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2012-003756
Application 12/240,859

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Invention
The claimed invention on appeal “relates to irrigation control systems,
and more particularly to a system using a free-standing field controller
programmed by a conventional personal computer with the aid of a novel
interactive graphic interface.” (Spec. 1, ll. 8–11).
Illustrative Claim
19. A method of operating an irrigation system comprising:
providing a wireless transceiver directly connectable via a USB port
of a computer at a first location;

providing an irrigation software executable on said computer, said
irrigation software displaying a graphical user interface on said
computer;

providing an irrigation controller at a second location; said irrigation
controller connectable to at least one water valve for controlling
passage of water to at least one sprinkler; said irrigation controller
further configured to wirelessly

receive, store and execute an irrigation schedule transmitted from said
wireless transceiver; said irrigation controller further configured to
execute said irrigation schedule regardless of whether said irrigation
controller is linked to said computer;

wherein said irrigation software is further programmed for:

wirelessly transmitting a polling message directly from said
wireless transceiver connected to said computer to said irrigation
controller without repetition by an intervening wireless transceiver;

wirelessly transmitting a status message in response to said
polling message directly from said irrigation controller to said
computer without repetition by an intervening wireless transceiver;
and,
determining a status of said irrigation controller;

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Rejections
A. Claims 19–22 and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Clark (U.S. Patent Application Publication
No. 2004/0039813 A1) in view of Kreikemeier (U.S. Patent No.
7,003,357 B1).
B. Claims 26–32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Clark, Scott (PCT
Publication No. WO 99/39567), and Kreikemeier.
C. Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Clark, Scott, Kreikemeier,
and Hopkins (U.S. Patent No. 5,097,861).
D. Claims 34–38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Clark, Kreikemeier, and
Scott.
E. Claims 19–22 and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Conkright (U.S. Patent
No. 6,236,332 B1) and Kreikemeier.
F. Claims 26–32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Conkright and Scott.
G. Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Conkright, Scott, and
Hopkins.
H. Claims 34–38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Conkright, Kreikemeier, and
Scott.

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GROUPING OF CLAIMS
Appellants state, “Claims 19-22 stand or fall together; claims 25;
26-33 stand or fall together and claims 34-38 stand or fall together.” App.
Br. 2.
Based on Appellants’ arguments, we decide the appeal of on the basis
of representative claims 19, 26, and 34. See 37 C.F.R. § 41.37(c)
(1)(vii)(2004).1
ISSUE
Under § 103, did the Examiner err in combining the references relied
on in rejections A–H?
ANALYSIS
With respect to rejections A–D on appeal, Appellants contend the
Examiner did not provide a proper motivation to combine Clark and
Kreikemeier. (App. Br. 15). In particular, regarding claim 19, Appellants
aver:
In other words, why would a system intended for remote
operations be combined with an interface intended for local
operations? The Examiner’s vague user-friendly rationale fails
to address this logical inconsistency and therefore amounts to
conclusory platitude.
(App. Br. 10).

1 Appellants filed a Notice of Appeal on March 7, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th
ed., Rev. 8, July 2010.
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The Examiner supports the proffered motivation, as follows:

Examiner further notes that the combination of Clark []
and Kreikemeier [] discloses the claimed invention except for
the limitation of a direct connection, with no intervening
transceivers (claim 19). It would have been obvious, to one
having ordinary skill in the art at the time the invention was
made, to omit such intervening transceivers, since it has been
held that omission of an element and its function in a
combination where the remaining elements perform the same
functions as before involves only routine skill in the art. In re
Karlson, 136 USPQ 184. Alternatively, since Clark [] show[s]
direct wireless and/or wired connections between each of the
intervening transceivers, between the controller and one of the
intervening transceivers and between the wireless transceiver
and an intervening transceiver, one of ordinary skill in the art
would have known that both direct wireless and wired
connections are known, and would have been motivated to
modify the Clark [] system, for the well-known advantages of
simplifying the system and/or reducing costs, by eliminating the
need for the extra devices.
(Ans. 5–6, emphasis added).
We agree with the Examiner’s proffered rationales. Moreover, to the
extent Appellants may be inferring that direct connections were not known
at the time of the invention, we find Appellants’ cited support in the
Specification (App. Br. 3: for the negative limitation “without repetition by
an intervening wireless transceiver;” claims 19, 26, 34; see Spec. p. 6, lines
1–14) does not identify any “descri[ption of] a reason to exclude the relevant
limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012). (“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
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is possible for the patentee to support both the inclusion and exclusion of the
same material.”).
To the extent the contested negative limitation recited in independent
claims 19, 26, and 34 may be given patentable weight by our reviewing
court, and even if the Clark connection architecture requires commands to be
received and retransmitted across multiple nodes on the network (see App.
Br. 10), we agree with the Examiner’s proffered rationales. (Ans. 5–6). e.g.:
Alternatively, since Clark [] show[s] direct wireless and/or
wired connections between each of the intervening transceivers,
between the controller and one of the intervening transceivers
and between the wireless transceiver and an intervening
transceiver, one of ordinary skill in the art would have known
that both direct wireless and wired connections are known, and
would have been motivated to modify the Clark [] system, for
the well-known advantages of simplifying the system and/or
reducing costs, by eliminating the need for the extra devices.
(Ans. 5–6, emphasis added).
Therefore, we find the Examiner has provided “some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006).
Thus, even if even if the preferred embodiment of the Clark
architecture requires commands to be received and retransmitted across
multiple nodes on the network , our reviewing court guides: to be
nonobvious, an improvement must be “more than the predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at
401. We are further mindful the skilled artisan would have been “able to fit
the teachings of multiple patents together like pieces of a puzzle” since the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR,
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550 U.S. at 420–21. Moreover, we are not persuaded the Examiner’s
proffered combination of would have been “uniquely challenging or difficult
for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher–
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418).
To the extent Appellants urge the claimed direct connection “without
repetition by an intervening wireless transceiver” (claim 19) solves a
purported previously “unknown problem” (App. Br. 12), we are not
persuaded. Appellants’ evidence appendix in support indicates “None.”
(App. Br. 34). We agree with the Examiner that a direct connection would
have provided the “well-known advantages of simplifying the system and/or
reducing costs, by eliminating the need for the extra devices.” (Ans. 5–6).
Moreover, for a prima facie case of obviousness to be established, the
reference(s) need not recognize the same problem solved by Appellants. See
In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat.
App. & Int. 1985) (“The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious.”) (citations omitted).
This reasoning is applicable here. Regarding the Clark reference,
Appellants additionally advance a “teaching away” argument:
The Clark et al. Publication teaches away from combination
with The Kreikemeier et al. Patent or even a modification to a
"direct" connection style architecture. For example, paragraph
0005 of The Clark et al. Publication argues for a system in
which many additional devices may be easily added to the
system without having to replicate the entire remote portion of
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the system at each remote site for an additional device. In other
words, The Clark et al. Publication teaches that "direct"
connection style architecture is not capable of adding additional
device at different locations without providing an entire remote
control portion. Hence, The Clark et al. Publication teaches
away from modification to the direct style architecture as used
by the examiner to reject the claims.
(App. Br. 20).

We reproduce paragraph 5 of Clark below :

[0005] A need exists for a system for remotely controlling and
monitoring apparatus in which many additional devices may be
easily and inexpensively added to the system without having to
replicate the entire remote portion of the system at each remote
site for each additionally added device.
We note paragraph 5 of Clark: (1) is found in the “Background of the
Invention” section of Clark, and (2), is silent regarding direct or indirect
connections. Our reviewing court guides that a reference does not teach
away if it merely expresses a general preference for an alternative invention
from amongst options available to the ordinarily skilled artisan, and the
reference does not discredit or discourage investigation into the invention
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Regarding the
method claims on appeal, the CCPA guides that a reference teaching an
alternative or equivalent method does not “teach away” from the use of a
claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
Because we find Clark merely teaches alternative or equivalent
methods, and does not discredit or discourage investigation into the
invention claimed, we are not persuaded by Appellants’ “teaching away”
argument.
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Rejections E–H
We note rejections E–H rely on Conkright as a primary reference,
instead of Clark (see rejections A–D). Appellants expressly state: “The
Conkright system is very similar to that of the Clark system . . . Therefore, it
submitted that the arguments presented earlier in this Appeal Brief with
regard to the rejection of claims 19-22 and 25 with The Clark et al.
Publication are equally applicable with regard to the present rejection
[relying on Conkright].” (App. Br. 26).
Therefore, we are not persuaded the Examiner erred in combining
Conkright with the other references cited in rejections E–H, for the similar
reasons discussed above regarding Clark, as Appellants’ admit “The
Conkright system is very similar to that of the Clark system.” (Id.).
Appellants restate essentially the same arguments addressed above
regarding independent claims 26 and 34. (App. Br. 14–27).
Based on this record, we find Appellants’ arguments unpersuasive that
the Examiner erred in combining the cited references for all rejections A–H
on appeal. Therefore, by the preponderance of evidence, Appellants have
not persuaded us of error regarding the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness. Accordingly, we
agree with and adopt the Examiner’s responsive arguments (Ans. 15–17) and
we affirm the Examiner’s § 103 rejections of representative claims 19, 26
and 34, and each associated dependent claim which falls therewith.

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DECISION
We affirm the Examiner’s decision rejecting claims 19–22 and 25–38
under § 103.
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) (2011).
See 37 C.F.R. § 41.50(f).

AFFIRMED

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