Ex Parte Hall et al

Board of Patent Appeals and Interferences

Nov 16, 2007

09954367 (B.P.A.I. Nov. 16, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENWOOD HENRY HALL, RONALD E. SCHULTZ, and
CHARLES M. RISCHAR
____________

Appeal 2007-2699
Application 09/954,367
Technology Center 2100
____________

Decided: November 16, 2007
____________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 3-29. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
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A. INVENTION
The disclosed invention is generally directed to a system and method
for mitigating memory current requirements with memory backup
configurations in industrial controllers. More particularly, Appellants’
invention provides for a processor system in an industrial controller in which
memory is segmented such that user application programs that change only
infrequently are stored in non-volatile memory while dynamic/rapidly
changing data is stored in volatile high-speed memory. An auxiliary power
source provides power to the volatile high-speed memory but does not
provide power to the non-volatile memory. Such a segmented memory
architecture mitigates battery current requirements while maintaining
dynamic and high-speed operation. (Spec. 3.)

B. ILLUSTRATIVE CLAIMS
Claims 1 and 28, which further illustrate the invention, follow.
1. An industrial controller, comprising:
a first memory portion to provide persistent data storage to
static portions of a user program;
a second memory portion having an auxiliary power source to
provide persistent data storage to dynamic portions associated with
the user program, the first memory portion provides persistent data
storage without employing the auxiliary power source to mitigate
power supplied by the auxiliary power source; and
a volatile execution memory portion to facilitate execution of
the user’s program by the controller.
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28. A signal to facilitate archival and retrieval of an
industrial controller program, comprising:
a data packet to communicate contents of a persistent storage
device that stores and retrieves the program from at least one of a
local and a remote location, the data packet employed to store and
retrieve variable information from an auxiliary-powered device, while
static information is stored in a disparate device that does not utilize
auxiliary power to provide persistent storage, to facilitate archival and
retrieval of the industrial controller program.

C. REJECTION
Claims 1 and 3-29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent No. 5,416,908 (“DiCarlo”), U.S. Patent No.
4,858,101 (“Stewart”) and U.S. Patent No. 5,799,200 (“Brant”).

II. CLAIM GROUPING
“When multiple claims subject to the same ground of rejection are
argued as a group by Appellants, the Board may select a single claim from
the group of claims that are argued together to decide the appeal with respect
to the group of claims as to the ground of rejection on the basis of the
selected claim alone. Notwithstanding any other provision of this paragraph,
the failure of Appellants to separately argue claims which Appellants have
grouped together shall constitute a waiver of any argument that the Board
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must consider the patentability of any grouped claim separately.” 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).1
Here, Appellants argue claims 1 and 3-29, which are subject to the
same ground of rejection, as a group. (App. Br. 4-10). 2 We select claim 1
as the sole claim on which to decide the appeal of the group.

III. ISSUES
A. EXAMINER’S REJECTION
"Rather than reiterate the positions of parties in toto, we focus on the
issue therebetween." Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144,
at *2 (BPAI 2007). The question of obviousness is "based on underlying
factual determinations including . . . what th[e] prior art teaches explicitly
and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citing Graham v. John Deere Co., 383 U.S. 1, 17-18, (1966); In re
Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999); In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995)). "In rejecting claims under 35 U.S.C. § 103, the
examiner bears the initial burden of presenting a prima facie case of
obviousness." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.

2 We rely on and refer to the appeal brief dated September 29, 2006, in lieu
of the originally filed appeal briefs, because the latter were defective. We
will not consider the originally filed appeal briefs in deciding this appeal.
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re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). "'A prima facie case of
obviousness is established when the teachings from the prior art itself would
appear to have suggested the claimed subject matter to a person of ordinary
skill in the art.'" In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In
re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)).
Here, the Examiner finds that DiCarlo teaches every claimed feature
of independent claim 1 but for “an auxiliary power source to mitigate power
supplied by the auxiliary power source” (Ans. 4) or “a volatile execution
memory portion to facilitate execution of the user’s program by the
controller” (Id. 5). The Examiner further finds that Stewart discloses the
claimed auxiliary power source, Brant discloses the claimed volatile
execution memory portions, and that it would have been obvious to one of
ordinary skill in the art to combine the teachings of DiCarlo, Stewart, and
Brant to arrive at the claimed invention. (Id.)
Appellants dispute the Examiner’s position that the combination of
DiCarlo, Stewart, and Brant would have provided all limitations of
independent claim 1, namely, a first memory portion, a second memory
portion, a volatile execution memory, and an auxiliary power source as
recited in claim 1. (App. Br. 4-6). In addition, Appellants contend that there
would have been insufficient motivation or suggestion to combine the
references as suggested by the Examiner. (Id. 7.)
The Examiner finds that DiCarlo discloses an EPROM 26 (DiCarlo,
col. 4, ll. 5-7) and a RAM 36 (Id. col. 4, ll. 55-56, Fig. 2) corresponding to
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the claimed first memory portion and second memory portion, respectively.
(Ans. 23). Claim 1 requires the second memory portion to have an auxiliary
power source that the first memory portion does not employ. The Examiner
further finds that Stewart discloses an industrial controller containing a
system controller, program execution processor modules, and remote I/O
scanner modules, each having a removable daughter board and each
containing a battery to sustain memory when power is removed from the
controller (DiCarlo, col. 5, ll. 37-43).
In addition, Stewart discloses that the system controller module 16
contains system memory 69 that stores dynamic data such as “integers,
floating point numbers, ASCII characters, and various control structures”
(Stewart, col. 8, ll. 63-64) that are used by other modules including the
program execution processor modules 18 (Id. col. 9, ll. 35-39) and that the
program execution processor modules 18 “store and execute specific user
control programs” (Id. col. 13, ll. 65-66). Hence, Stewart discloses that the
system controller module 16 has a memory portion for storing dynamic data
of a program, program execution processor modules 18 each have a memory
portion for storing static data of the program, and batteries sustain memory
on each of the daughter boards of each of the modules or controllers (i.e.,
each daughter board having its own battery).
Stewart further discloses a volatile execution memory portion that
facilitates execution of the program. For example, Stewart discloses main
RAM 134 of an I/O scanner module 20 that “contains data regarding the
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status of the communication adapter . . . [t]his data is used during the
transfer of information over the I/O links 15 with those remote I/O racks.”
(Id. col. 18, ll. 11-15). As the Examiner indicates, the use of such a volatile
execution memory portion is further emphasized by Brant. (Ans. 5).
We agree with the Examiner that the combination of cited references
discloses each feature of claim 1. As set forth above, Stewart’s industrial
controller, for example, includes a first memory portion (system memory 69
of system controller module 16) that stores dynamic data of program and a
second memory portion (on any number of program execution processor
modules 18) that stores static portions of the program. Each module in
Stewart’s disclosure contains a battery. Hence, a battery supplying power to
a program execution processor module 18 is not employed by the system
controller module 16 which would mitigate power supplied by the battery in
connection with the program execution processor module 18.
Appellants further argue that there would have been insufficient
motivation for one of ordinary skill in the art to combine the cited
references. (App. Br. 7-9). However, we apply a less rigid, functional
approach to determine obviousness. KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1739 (2007)(“our cases have set forth an expansive and flexible
approach . . . the principles laid down in Graham reaffirmed the ‘functional
approach’.”) Specifically, when known elements are arranged in
combination to perform known functions to achieve an expected result, the
combination is obvious. Id. at 1740 (citing Sakraida v. Ag Pro, Inc., 425
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U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976) (finding that “when a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.”)).
We agree with the Examiner that each feature of claim 1 is disclosed
by the combination of the cited references and each component performs its
known function in expected ways. For example, Stewart discloses any
number of modules performing known functions in an industrial controller
and each having a battery. Each of the batteries also performs known
functions of providing power to a corresponding module. Furthermore,
DiCarlo also discloses an industrial controller in which processor modules
and segmented memory (e.g., System RAM 36) perform known functions in
known ways. Combining auxiliary power of Stewart with DiCarlo’s
industrial controller would have resulted in expected, predictable results,
e.g., power backup to components in the industrial controller. In fact, the
battery backup in Stewart’s industrial controller is used for that same
purpose – to provide power backup in the event of a power outage. “When
there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill
has good reason to pursue the known options within his or her grasp. If this
leads to the anticipated success, it is likely the product not of innovation but
of ordinary skill and common sense.” KSR, 127 S. Ct. at 1742.
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Appellants further argue that the Examiner has improperly “employed
20/20 hindsight with Appellants’ Specification as a roadmap to make the
purported combination.” We disagree. As set forth above, each of the cited
references provides known components that perform in known ways to
achieve an expected result. Such a combination of teachings is obvious.
Nor do we elect to apply rigid preventative rules in hindsight analysis that
deny factfinders recourse to common sense. “Rigid preventative rules that
deny factfinders recourse to common sense . . . are neither necessary under
our case law nor consistent with it.” Id.
Hence, we agree with the Examiner that the applied combination of
references, resulting in a predictable solution or outcome, would have been
obvious to one of ordinary skill in the art. It follows that Appellants have
failed to demonstrate that the Examiner erred in rejecting claim 1.
Therefore, we affirm the rejection of claim 1, and of claims 3-29, which fall
therewith.
B. BOARD'S REJECTION
Under 37 C.F.R. § 41.50(b) (2007), we enter a new rejection against
claim 28. We reject claim 28 under 35 U.S.C. § 101 as being direct to non-
statutory subject matter.
Section 101 states:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
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Claim 28 recites a signal. However, a signal, as recited in claim 28,
“is not a ‘process, machine, manufacture, or composition of matter.’” In Re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). As such, “a signal cannot be
patentable subject matter.” Id.
Therefore, we further reject claim 28. "The Board is basically a board
of review," Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001).
Accordingly, we leave any further determination of issues of patentability of
claim 28 to the Examiner and the Appellants.

37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

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(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

VII. ORDER
In summary, the rejection of claims 1 and 3-29 under § 103(a) is
affirmed. A new rejection of claim 28 under 35 U.S.C. § 101 is added.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
37 C.F.R. § 41.50(b)

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ALEXANDER M. GERASIMOW, ESQ.
ROCKWELL AUTOMATION (ALLEN-BRADLEY CO., INC.)
1201 SOUTH SECOND STREET
MILWAUKEE, WI 53204