Ex Parte Hall et alDownload PDFBoard of Patent Appeals and InterferencesNov 16, 200709954367 (B.P.A.I. Nov. 16, 2007) Copy Citation 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. Appeal 2007-2699 Application 09/954,367 2 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. Appeal 2007-2699 Application 09/954,367 3 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 Appeal 2007-2699 Application 09/954,367 4 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. Appeal 2007-2699 Application 09/954,367 5 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 Appeal 2007-2699 Application 09/954,367 6 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 Appeal 2007-2699 Application 09/954,367 7 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 Appeal 2007-2699 Application 09/954,367 8 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. Appeal 2007-2699 Application 09/954,367 9 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. Appeal 2007-2699 Application 09/954,367 10 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 … Appeal 2007-2699 Application 09/954,367 11 (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) rwk ALEXANDER M. GERASIMOW, ESQ. ROCKWELL AUTOMATION (ALLEN-BRADLEY CO., INC.) 1201 SOUTH SECOND STREET MILWAUKEE, WI 53204 Copy with citationCopy as parenthetical citation