Ex Parte Griech

Board of Patent Appeals and Interferences

May 10, 2004

09230720 (B.P.A.I. May. 10, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WOLFGANG GRIECH
____________
Appeal No. 2004-0129
Application No. 09/230,720
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HEARD: April 13, 2004
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Before GROSS, BARRY, and SAADAT, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 26 through 52, which are all of the claims
pending in this application.
Appellant's invention relates to a control system of a
machine for making a fibrous web. The system includes a
plurality of actuators which are intelligent participants in a
decentralized communications hardware structure in which the
actuators are coupled to one another via a closed pipeline ring
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or a local area network. Claim 26 is illustrative of the claimed
invention, and it reads as follows:
26. A control system of a machine for making a fibrous web,
comprising:
a plurality of actuators, each assigned to one final control
element to vary certain properties of said fibrous web; and
said actuators forming intelligent participants in a
decentralized communications hardware structure, in which said
actuators are coupled to one another through at least one of a
closed pipeline ring and a local area network.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Spinner et al. (Spinner) 5,771,174 Jun. 23, 1998
Flamm et al. (Flamm) 5,988,846 Nov. 23, 1999
(filed Jun. 05, 1997)
Claim 51 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Spinner.
Claims 26 through 50 and 52 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Spinner in view of Flamm.
Reference is made to the Examiner's Answer (Paper No. 17,
mailed April 8, 2003) for the examiner's complete reasoning in
support of the rejections, and to appellant's Brief (Paper
No. 16, filed January 27, 2003) and Reply Brief (Paper No. 19,
filed June 9, 2003) for appellant's arguments thereagainst.
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OPINION
As a preliminary matter, we note that appellant indicates on
page 6 of the Brief that each of claims 26 through 52 is
separately patentable. 37 C.F.R. § 1.192(c)(7) states:
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from the
group and shall decide the appeal as to the ground of
rejection on the basis of that claim alone unless a
statement is included that the claims of the group do
not stand or fall together and, in the argument under
paragraph (c)(8) of this section, appellant explains
why the claims of the group are believed to be
separately patentable. Merely pointing out differences
in what the claims cover is not an argument as to why
the claims are separately patentable. (Emphasis ours)
Although appellant provides separate arguments for claims 26, 51,
and 52, for claims 27 through 50 appellant merely points out the
differences in what the claims cover by repeating the limitations
therein. Arguments that could have been made but that were not
included in the brief are waived. Accordingly, we will treat the
claims as falling into three groups, claims 26 through 50, claim
51, and claim 52, with claims 26, 51, and 52 as representative.
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
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Application No. 09/230,720
4
appellant and the examiner. As a consequence of our review, we
will reverse the obviousness rejections of claims 26 through 52.
Regarding claims 26 through 50, appellant argues (Brief,
pages 8-9) that although Spinner discloses that actuator
controllers are coupled together in a local area network (LAN)
and have peer-to-peer communication, a host controller system 20
is required to transmit setpoints to the actuator controllers and
thereby operates as a master for the controllers. As such,
Spinner's actuator controllers are not part of a decentralized
communications hardware structure. We agree.
The examiner asserts (Answer, pages 6) that "SPINNER et al.
specifically teach peer-to-peer communication between the
actuator controllers, exclusive of the host controller system" in
addition to the centralized control in which the host transmits
information to the controllers. The examiner contends (Answer,
page 6) that "[t]his decentralized communication accomplishes
controlling the operation of the actuators, by calculating new
setpoints dependent upon the statuses of adjacent actuators,
using algorithms which are resident within the actuator
controllers, NOT in the host controller system."
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Spinner discloses (column 4, lines 23-30 and 43-51, column
7, lines 33-44, and column 8, lines 15-34 and 54-59) that based
on information sent to the host 20 from the actuator controllers,
the host calculates and transmits to the actuator controllers
desired setpoints. Then, based on status information from
adjacent controllers, the controllers calculate those target
setpoints and determine whether the new setpoints can be
processed. Thus, as indicated by the examiner, there is peer-to-
peer communication. However, the actuators are still slaves with
the host as the master, since the actuators do not act until and
unless the host sends a target setpoint. As long as the host
plays that role in the determination of actuator setpoints, the
actuators are not part of a decentralized communications hardware
structure.
We note that although the examiner included Flamm in the
rejection of claims 26 through 50, the examiner admits (Answer,
page 3) that Flamm was only relied upon for a pipeline ring,
which is claimed in the alternative in claim 26. Flamm adds
nothing with regard to the decentralized communications hardware
structure. Therefore, we cannot sustain the obviousness
rejection of claims 26 through 50 over Spinner in view of Flamm.
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Claim 51 is similar to claim 26 except that only a local
area network (LAN) rather than a LAN or a pipeline ring is
recited and each actuator includes a processor. Since no
pipeline ring is recited, the examiner relies solely on Spinner.
However, as explained supra, Spinner fails to disclose that the
actuators are participants in a decentralized communications
hardware structure. Accordingly, we cannot sustain the
obviousness rejection of claim 51.
Claim 52 is identical to claim 51 except that it recites a
pipeline ring instead of the LAN. Thus, the examiner turns to
Flamm for a substitution of a pipeline ring for the LAN of
Spinner. The examiner asserts (Answer, pages 4-5) that the
substitution would be "a matter of obvious design choice."
"Design choice" is inappropriate in this situation. “Design
choice” has limited applications. See In re Chu, 66 F.3d 292, 36
USPQ2d 1089 (Fed. Cir. 1995) and In re Gal,980 F.2d 717, 25
USPQ2d 1076 (Fed. Cir. 1992).
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In addition, as discussed supra, Spinner fails to disclose
that the actuators are participants in a decentralized
communications hardware structure. Further, although Flamm
states (column 5, line 66-column 6, line 1) that a "disadvantage
of a central drive control means is that all the desired value
data has to be led to the individual drives via the central drive
control means," Figure 1 shows that drive controllers 6 are
connected to drive control means 3 in a master-slave type of
configuration, and drive control means 3 are connected to control
unit 9 in a master-slave type of configuration. Therefore, Flamm
fails to cure the deficiencies of Spinner, and we cannot sustain
the rejection of claim 52.
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CONCLUSION
The decision of the examiner rejecting claims 26 through 52 under
35 U.S.C. § 103 is reversed.
REVERSED
ANITA PELLMAN GROSS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
APG/dpv
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GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191