Ex Parte Kantzes et al

Patent Trial and Appeal Board

Mar 25, 2013

10435819 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/435,819 05/12/2003 Christopher P. Kantzes P32.12-0028 1155
27367 7590 03/26/2013
WESTMAN CHAMPLIN & KELLY, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
LE, TOAN M
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
03/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte CHRISTOPHER P. KANTZES, BRAD N. MATHIOWETZ
and ALDEN C. RUSSELL, III
_____________

Appeal 2010-001100
Application 10/435,819
Technology Center 2800
______________

Before KALYAN K. DESHPANDE, BRYAN F. MOORE, and
JOHN G. NEW, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001100
Application 10/435,819

2
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-9. App. Br. 3. Claims 10 and 11 are canceled. Id. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE, and enter a NEW GROUND of rejection in
accordance with 37 C.F.R. § 41.50(b).

INVENTION
The invention is directed to a handheld field maintenance tool with
removable memory module. The module adapted to be removable in the
presence hazardous environment. Further, the handheld field maintenance
tool is adapted, via hardware, software, or both to automatically detect the
presence of the removable memory module and to copy, or otherwise install
data from the module to the tool. See Spec. 3:19-26.
Claim 1 is exemplary of the invention and is reproduced below:
1. A method of adding application software to a handheld
field maintenance tool, the method comprising:
storing the application software on a removable memory
module, the module being adapted to be replaceable in a
hazardous location;
removably coupling the removable memory module to
the tool;
installing the software into the tool from the removable
memory module;
decoupling the removable memory module from the tool;
and
executing the software on the tool.

REFERENCES
Dobrowski US 6,330,517 B1 Dec. 11, 2001

Appeal 2010-001100
Application 10/435,819

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REJECTION AT ISSUE
Claims 1-9 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Dobrowski. Ans. 3-10.
ISSUE
1. Did the Examiner err in finding that Dobrowski discloses
“installing the software into the tool from the removable memory
module [,]” as recited in claim 1?
1

ANALYSIS
Appellants argue that “independent claim 1 specifically recites storing
application software and executing the application software on the tool.
Application software is quite distinct from the testing data of Dobrowski.”
App. Br. 9. We are persuaded by this argument.
Dobrowski discloses that testing data includes:
field device identification information, input block type
information for selecting the parameters of device 16 to be read,
parameter information for reading and writing the values for all
information types that are relevant for the particular device 16,
special parameter information for storing any special
information about a parameter, default parameter values, and
formulas for determining values of an information type. In
addition, calibration information, generally in the form of test
results 50, can be stored in calibrator 14 as a calibrator-specific
record (CSR) 52 for later retrieval by FMS 12.
Dobrowski, 3:59 - 4:3. The Examiner found that field device identification
information, parameter information, default parameter values, and formulas

1
Appellants make additional arguments. App. Br. 8-11. We do not reach
these additional issues since this issue is dispositive of this appeal.
Appeal 2010-001100
Application 10/435,819

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each represent application software. However, there is no disclosure that any
one of these constitutes application software or is necessarily part of any
application software installed on the calibrator. The Examiner also finds that
FMS 12 is a software package, however, there is no evidence that FMS 12 is
stored and executed on the calibration tool as recited in claim 1. The
Examiner makes no findings, nor provides technical explanation, to support
such a proposition. Thus, the Examiner has not set forth a prima facie case
of anticipation that adequately supports the position that Dobrowski
discloses the claimed limitation.
NEW GROUND OF REJECTION - 37 C.F.R. § 41.50(b)
We enter the following new grounds of rejection for claim 1 as being
rejected under 35 U.S.C. § 103(a) as being unpatentable over Dobrowski,
pursuant to our authority under 37 C.F.R. § 41.50(b).
35 U.S.C. § 103(a) – Dobrowski
Claim 1
With respect to claim 1, Dobrowski fails to explicitly disclose the
limitation “installing the software into the tool from the removable memory
module” as argued by the Appellants. Br. 9-10.
One of ordinary skill in the art would recognize that the calibrator 14
must perform testing and data transfer as taught by Dobrowski. Dobrowski,
1:22-39. Consequently, it would have been obvious to one of ordinary skill
in the art at the time of the invention that a personal device such as a
calibrator may be loaded with software related to testing or data transfer.
The motivation to do so would be to enable the tool to perform testing and
data transfer more efficiently.
Appeal 2010-001100
Application 10/435,819

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We also find that such a modification of Dobrowski’s teaching such
that software is loaded and executed is merely a combination of familiar
elements according to known methods that does no more than yield
predictable results - an obvious improvement - that can be implemented by
a person of ordinary skill. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-
17 (2007). We conclude that it would have been obvious to one of ordinary
skill in the art to recognize that the field device identification information,
parameter information, default parameter values, and formulas loaded onto
the tool could also include application software.
For the reasons stated above, we enter a new ground of rejection of
claim 1 under 35 U.S.C. § 103 (a) as being unpatentable over Dobrowski.
ADDITIONAL ARGUMENT
Because we enter a new ground, we address Appellants’ additional
argument regarding claim 1. Claim 1 recites a “removably coupling the
removable memory module to the tool.” Appellants argue that because the
memory in Dobrowski is coupled to the tool using “serial connection, an
infrared link, or any other suitable connections,” the CMS module 10 is not a
removable memory module. Br. 8. We find, to the extent that Appellants are
arguing that claim 1 requires a direct coupling with the tool and without the
use of a “connection,” this argument is not commensurate with the
limitations of claim 1. Claim 1 does not recite that the removable memory is
directly coupled to the tool, only that it is coupled.
Appellants further argue that “CMS module 10 is actually simply a
component of FMS 12 that is run on computer, which component includes a
couple of submodules one of which is responsible for establishing
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Application 10/435,819

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communication with the calibrator . . . .” Br. 9. We find that claim 1 does not
exclude the use of a computer as the removable memory module. We find
that Appellants have not made a persuasive argument that the FMS 12 and
CMS module 10 cannot be considered a removable memory module
“removably coupl[ed] to the tool,” as recited in claim 1.
However, for the reasons discussed above relating to the claimed
“application program”, we cannot sustain the rejections of independent
claim 1, nor the claims dependent therefrom.
DECISION
We newly reject claim 1 under 35 U.S.C. § 103 (a) as being
unpatentable over Dobrowski. 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 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 proceedings (37 C.F.R. § 1.197 (b)) 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. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .

Appeal 2010-001100
Application 10/435,819

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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).

REVERSED; 37 C.F.R. § 41.50(b)

ELD