Ex Parte Igarashi et al

Patent Trial and Appeal Board

May 24, 2016

12615461 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/615,461 11/10/2009
65565 7590 05/26/2016
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
FIRST NAMED INVENTOR
Syouji IGARASHI
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.
Ql 15886 1655
EXAMINER
ROCHE, JOHN B
ART UNIT PAPER NUMBER
2184
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
SUGHRUE265550@SUGHRUE.COM
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SYOUJI IGARASHI and KAZUHIRO HASHIZUMI 1
Appeal2014-005842
Application 12/615,461
Technology Center 2100
Before JOSEPH L. DIXON, JEFFREY A. STEPHENS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-3 and 5-12. Claim 4 has been canceled. See Resp. After Final,
filed July 11, 2013. We have jurisdiction over the remaining pending claims
under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Y okogawa Electric Corporation as the real party in
interest. App. Br. 2.
Appeal2014-005842
Application 12/615,461
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to updating software operating in a
field device. Abstract. In a disclosed embodiment, the field device
comprises "a history information generation and management section which
generates and stores history information of the current software when the
new software is downloaded from [a] host system." Abstract; Spec. i-f 16.
According to the Specification, by storing the history information of the
previously installed software, it becomes easier to remedy (i.e., revert to this
version) if a defect with the newly-downloaded software occurs. Spec.
,-r,-r 52-54.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A field device for downloading a new software through a field
bus from a host system and replacing a current software which is
currently executed \~1ith the ne\~1 soft\~1are, the field device comprising:
a non-transitory storage section including two or more program
storage areas for storing a software, wherein the new software is
stored in the program storage area where the current software is not
stored; and
a history information generation and management section
which generates and stores history information of the current software
when the new software is downloaded from the host system,
wherein the storage section further includes history information
storage areas for storing the history information in the two or more
program storage areas,
wherein the two or more program storage areas include: a first
program storage area where the current software is stored; and a
second program storage area where the new software is to be stored,
wherein the history information storage areas include: a first
history information storage area for storing the history information in
2
Appeal2014-005842
Application 12/615,461
the first program storage area; and a second history information
storage area for storing the history information in the second program
storage area, and
wherein when the new software is downloaded, the history
information generation and management unit copies the history
information stored in the first history information storage area into
the second history information storage area.
The Examiner's Rejections
1. Claims 1-3 and 5-9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tsuchiya (US 5,555,410; Sept. 10, 1996) and Saito
et al. (US 2005/0137719 Al; June 23, 2005) ("Saito"). Final Act. 2-7.
2. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuchiya, Saito, and Huntley et al. (US 6,701,284 Bl;
Mar. 2, 2004) ("Huntley"). Final Act. 7-9.
Issue on Appeal2
Did the Examiner err in finding Tsuchiya teaches or suggests "the
history information generation and management unit copies the history
information stored in the first history information storage area into the
second history information storage area," as recited in claim 1?
2 We only address this issue, which is dispositive. We do not address
additional, non-dispositive issues raised by Appellants' arguments.
3
Appeal2014-005842
Application 12/615,461
ANALYSIS 3
In rejecting claim 1, the Examiner relies on Tsuchiya to teach a
history information generation and management unit which generates history
information of the current software and stores the history information in a
history information storage area when the new software is downloaded.
Final Act. 3--4 (citing Tsuchiya, col. 7, 11. 35-39, 50-53, col. 10, 11. 60-63,
Fig. 6). 4
Appellants contend the Examiner erred in finding the history
information generation and management unit of Tsuchiya "copies the history
information stored in the first history information storage area into the
second history information storage area," as recited in claim 1. App. Br. 12-
15; Reply Br. 4--7. Rather, Appellants assert, Tsuchiya teaches generating
new history information and storing this into memory corresponding to the
first history storage information area. App. Br. 14. In other words, instead
of taking the current history information (associated with the current
software) and copying this over to a portion of memory associated with the
newly-downloaded software, as claimed, Tsuchiya teaches copying newly-
generated history information into the storage area associated with the
newly-downloaded software. App. Br. 14.
3 Throughout this Decision, we have considered the Appeal Brief filed
October 28, 2013 ("App. Br."); the Reply Brief filed April 11, 2014 ("Reply
Br."); the Examiner's Answer mailed on February 14, 2014 ("Ans."); and
the Final Office Action ("Final Act.") mailed on April 11, 2013, from which
this Appeal is taken.
4 We note in the Final Office Action the Examiner articulates the rejection
with reference to claim 2, but relies on the same findings with respect to
claim 1. See Final Act. 4.
4
Appeal2014-005842
Application 12/615,461
In response, the Examiner explains "[b ]y keeping a running history of
discrepancies between the software prior to editing and the software after
editing, Tsuchiya teaches cross-referencing lines from the pre-edit software
to the post-edit software, and supplementing the changes to the code."
Ans. 10.
We have reviewed the record before us and find Appellants'
arguments persuasive of Examiner error. Figure 6 of Tsuchiya is illustrative
and is reproduced below:
5
Appeal2014-005842
Application 12/615,461
F I G. 6
r _" _ _;: ____ ., ______ -·--;i
I GEN MANAGE I
! SYS l
i ~
Figure 6 shows a generation management system of Tsuchiya' s claimed
invention. Tsuchiya, col. 6, 1. 52. Tsuchiya teaches, inter alia, generating
history information and line number (of the software code) history
6
Appeal2014-005842
Application 12/615,461
information by comparing the current software (i.e., pre-edit software) with
newly-downloaded software (i.e., post-edit software). Tsuchiya, col. 6,
11. 50-60. As shown in Figure 6, pre-edit software and post-edit software are
adapted to adjust the line numbers and number of blank spaces contained in
the lines prior to being compared. See Fig. 6, blocks 11, 16-19, and 30-32.
Intermediate pre- and post-edit software modules are compared (19') where
History Info (21) and LN# (Line Number) History Info ((22) are generated
and provided to update module (34). See generally, Tsuchiya, col. 7.
Update module (34) updates the storage device (2) with the post-edit
software ( 16), history information (21) and line number history information
(22). Tsuchiya, col. 7, 11. 50-53. Thus, we agree with Appellants that the
Examiner has not persuasively shown how Tsuchiya teaches or reasonably
suggests copying history information associated with the current software
(i.e., Tsuchiya's pre-edit software) into memory associated with newly-
downloaded software (i.e., Tsuchiya's post-edit software).
Accordingly, for the reasons discussed supra, we do not sustain the
Examiner's rejection of claim 1. For similar reasons, we do not sustain the
Examiner's rejection of independent claim 2, which contains similar
limitations. Additionally, we do not sustain the rejection of dependent
claims 3 and 5-12.
7
Appeal2014-005842
Application 12/615,461
DECISION5
We reverse the Examiner's decision to reject claims 1-3 and 5-12.
REVERSED
5 In the event of further prosecution, we invite the Examiner to consider
whether claims 7-12, which are directed to a "field device software update
system" properly depend (directly or indirectly) from independent claims 1
and 2, which are directed to a "field device."
8