Ex Parte Lo

Board of Patent Appeals and Interferences

Sep 8, 2011

11047057 (B.P.A.I. Sep. 8, 2011)

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
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Application 11/047,057

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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.
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Application 11/047,057

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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
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Application 11/047,057

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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

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