Ex Parte LoDownload PDFBoard of Patent Appeals and InterferencesSep 8, 201111047057 (B.P.A.I. Sep. 8, 2011) Copy Citation 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. 11/047,057 01/31/2005 George Lo 2005P01569US 4682 28524 7590 09/09/2011 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER SHIN, KYUNG H ART UNIT PAPER NUMBER 2443 MAIL DATE DELIVERY MODE 09/09/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GEORGE LO ____________ Appeal 2009-008968 Application 11/047,057 Technology Center 2400 ____________ Before JOSEPH L. DIXON, THU A. DANG, and JAMES H. HUGHES, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE A Patent Examiner rejected claims 1-14. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2009-008968 Application 11/047,057 2 A. INVENTION The invention at issue on appeal relates generally to the field of programmable controllers. In particular, the present invention provides an apparatus and methods for writing programming code and/or generating configuration data for these programmable controllers without the need to purchase and install an engineering tool on a programming device. (Spec. 1). B. ILLUSTRATIVE CLAIM Claim 1, which further illustrates the invention, follows. 1. A system for configuring I/O networks and devices comprising: a server communicatively coupled to a network; and a configuration editor residing on the server, the configuration editor adapted to be invokable by a client device that is communicatively coupled to the network, the configuration editor adapted to map a logical I/O area of a programmable logic controller to a physical I/O area of the programmable logic controller, the programmable logic controller controlled via programming code adapted to cause the programmable logic controller to control field-based actuators, the configuration editor comprised by an engineering tool adapted to create an XML version of the programming code, the engineering tool residing on the server. C. REFERENCES The Examiner relies on the following references as evidence: Klindt 6,853,867 B2 Feb. 8, 2005 Johnson 6,788,980 B1 Sep.7, 2004 Krause 6.560,513 B2 May 6, 2003 Van Ryzin 5,909,689 Jun. 1, 1999 Appeal 2009-008968 Application 11/047,057 3 D. REJECTIONS Claims 1-10, 13, and 14 stand rejected under 35 U.S.C. § 102(e) as being anticipated by [sic, under 35 U.S.C. §103 as being obvious over] Johnson in view of Klindt in view of Krause.1 Claims 11 and 12 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Johnson and Klindt and Krause as applied to claim 1 above, and further in view of Van Ryzin. PRINCIPLES OF LAW "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 re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). 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) (citations omitted). "The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "'A prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject 1 The Examiner repeats this same confusing statement (typo) in the Final Rejection and the Examiner’s Answer. Appellant clarifies in Appeal brief (at page 5) and responds thereto. Appeal 2009-008968 Application 11/047,057 4 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)). ANALYSIS Appellant argues in the Reply Brief that the alleged response to Argument 1 does not appear to be specifically responsive to any argument raised by Appellant in the Appeal Brief and instead the Appellant and the Board are left to "distill, hunt, and speculate regarding any possible relationship between at least this argument of the Examiner's Answer and those presented in the Appeal Brief." (Reply Br. . 1). Appellant further contends that the Examiner mischaracterizes Appellant's arguments with respect to Appellant’s argument at page 9 of the Appeal Brief and contends that the Examiner "merely makes an impermissible unsupported assertion regarding alleged capabilities of an 'Operating System' for a 'computer system'." (Reply Br. 2). We agree with Appellant and find that the Examiner's stated grounds of rejection to be too abbreviated to set forth a reasonable showing of obviousness of independent claim 1. We further find the Examiner's explanations in the responsive arguments to go well beyond the scope of the independent claims and a majority of the responsive arguments appear to be based upon facts, opinion, or evidence not within the administrative record. For example, the Examiner cites to a website "www.answers.com…" (Ans. 11), but the Examiner does not provide a copy of the mentioned citation; the Examiner does not provide a date to establish the asserted material at the time of the invention; nor does the Examiner set forth a statement of Appeal 2009-008968 Application 11/047,057 5 relevance for the proffered showing with respect to the prior art rejection. Moreover, the Examiner's discussions in the responsive arguments go on at length without any citation to the applied prior art references nor to any other teaching or line of reasoning of record. Accordingly, we find the Examiner's discussions to be unsupported conclusions which are not supported by evidence in the prior art references relied upon by the Examiner in the grounds of the rejection. Therefore, we cannot sustain the rejection of independent claim 1 and its dependent claims 2-10, 13, and 14. Since the Examiner's relied upon the teachings of Van Ryzin in the grounds of rejection for dependent claims 11 and 12 does not remedy the above noted deficiency, we cannot sustain the rejection of dependent claims 11 and 12. CONCLUSION For the aforementioned reasons, Appellant has shown error in the Examiner's showing of obviousness of independent claim 1. VII. ORDER We reverse the obviousness rejections of claims 1-14. REVERSED tkl Copy with citationCopy as parenthetical citation