Ex Parte Mann et al

Patent Trial and Appeal Board

Feb 28, 2017

12708089 (P.T.A.B. Feb. 28, 2017)

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.
12/708,089 02/18/2010 Krista Kummerfeldt Mann 2005P-152-US2/ALBRP487USA 3800
42981 7590 03/02/2017
ROCKWELL AUTOMATION / AT&W
ATTENTION: Linda H. Kasulke, E-7F19
1201 SOUTH SECOND STREET
MILWAUKEE, WI 53204
EXAMINER
RIEGLER, PATRICK F
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
docketl @thepatentattorneys.com
hmckee@thepatentattomeys.com
raintellectu alproperty @ ra.rockwell .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTA KUMMERFELDT MANN, ROBERT F.
LLOYD, STEVEN MARK CISLER, CLINTON D. BRITT,
and JOSEPH FRANCIS MANN
Appeal 2016-003836
Application 12/708,0891
Technology Center 2100
Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and JOYCE
CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1, 2, 5—9, 13, 14, 25—27, and 30-37, which
constitute of all of the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is ROCKWELL
AUTOMATION TECHNOLOGIES, INC. App. Br. 2.
Appeal 2016-003836
Application 12/708,089
INVENTION
Appellants’ application relates to access and control of a machine
through a customizable interface device. Abstract. Claim 1 is illustrative of
the appealed subject matter and reads as follows:
1. An industrial automation system, comprising:
a memory that stores computer-executable instructions;
and
a processor that facilitates execution of the computer-
executable instructions to at least:
facilitate display of a main interface screen comprising a
plurality of device elements stored in a temporary memory;
check a status of a first device element of the plurality of
device elements;
determine whether to fully unload the first device element
from the temporary memory or partially unload the first device
element from the temporary memory based upon the status;
in response to a determination to fully unload the first
device element from the temporary memory, fully unload the
first device element from the temporary memory; and
in response to a determination to partially unload the first
device element from the temporary memory, partially unload the
first device element from the temporary memory.
REJECTIONS
Claims 1, 2, 5—9, 13, 14, 25—27, and 30-37 stand rejected under
35 U.S.C § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 1, 2, 5—9, 13, 14, 25—27, and 30-37 stand rejected under
35 U.S.C § 112, first paragraph, as failing to comply with the enablement
requirement.
2
Appeal 2016-003836
Application 12/708,089
Claims 1, 2, 5—9, 13, 14, 25—27, and 30-37 stand rejected under
35U.S.C§ 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter which the applicant regards
as the invention.
Claims 1, 2, 9, 14, 25, 27, and 31—332 stand rejected as unpatentable
under 35 U.S.C. § 103(a) over the combination of Stupek, Jr. et al. (US
2003/0221004 Al; published Nov. 27, 2003) (“Stupek”) and Collins (US
2002/0073061 Al; published June 13, 2002) (“Collins”).
Claims 6—8, 30, and 35—37 stand rejected as unpatentable under
35 U.S.C. § 103(a) over the combination of Stupek, Collins, and Shteyn (US
6,499,062 Bl; issued Dec. 24, 2002).
Claims 5 and 34 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) over the combination of Stupek, Collins, and Kardach et al. (US
2007/0002036 Al; published Jan. 4, 2007) (“Kardach”).
Claim 13 stands rejected as unpatentable under 35 U.S.C. § 103(a)
over the combination of Stupek, Collins, and Costo et al. (US 2004/0228275
Al; published Nov. 18, 2004).
Claim 26 stands rejected as unpatentable under 35 U.S.C. § 103(a)
over the combination of Stupek, Collins, and Kudukoli et al. (US
2001/0020291 Al; published Sept. 6, 2001).
2 The Examiner did not identify claim 9 in the rejection heading, but
discussed claim 9 in the body of the rejection. See Final Act. 6, 9. We find
the Examiner’s omission of claim 9 in the rejection heading harmless error.
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Appeal 2016-003836
Application 12/708,089
ANALYSIS
Claim Rejections under 35 U.S.C. § 112
Claims 1, 9, 32
The Examiner rejected independent claims 1, 9, and 32 under 35
U.S.C § 112, first paragraph, as failing to comply with the written
description requirement. In particular, the Examiner found the recited
limitation “determine whether to fully unload the first device elements from
the temporary memory or partially unload the first device element from the
temporary memory based upon the status” is not supported in the
Specification. Final Act. 2—3. We agree with Appellants that the Examiner
erred. In particular, we agree that at least paragraphs 48 and 49 of the
Specification support the disputed limitation. See App. Br. 11—15.
When evaluating claims for written description, the Specification
must be viewed from the perspective of a person of skill in the art, who is
deemed to “come[] to the [application] with the knowledge of what has
come before.” LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336,
1345 (Fed. Cir. 2005). Thus, a Specification need not spell out every detail
of the invention, but “enough must be included to convince a person of skill
in the art that the inventor possessed the invention” at the time the
application was filed. Id. “[T]he written description requirement does not
demand either examples or an actual reduction to practice; a constructive
reduction to practice that in a definite way identifies the claimed invention
can satisfy the written description requirement.” Ariad Pharmaceuticals, Inc.
v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010); Streck, Inc. v.
Research & Diagnostic Systems, Inc., 665 F.3d 1269, 1285 (Fed. Cir. 2012).
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Application 12/708,089
We agree with Appellants that at least paragraphs 48 and 49 of the
originally-filed Specification sufficiently describe the industrial automation
system claimed in claim 1. App. Br. 11, 14—15. We find the Specification
describes the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
subject matter as of the filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562-63 (Fed. Cir. 1991). In particular, an ordinarily skilled artisan
would have understood from the Specification’s description that unessential
device elements are either fully or partially unloaded from memory and that
Appellants possessed the ability to determine whether to fully or partially
unload a particular device element. See Spec. Tflf 48^49.
Accordingly, on the record before us, we do not sustain the rejection
of claims 1, 5, 6, 8, 9, 13, 14, 25, 26, and 30-32, 34, 35, 37 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement. We also reverse the rejection of the same claims under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement, and under 35 U.S.C. § 112, second paragraph, for
indefmiteness, as those rejections are based on the same reasoning as the
written description rejection.3 See Final Act. 5.
3 In the event of further prosecution of this application, we leave it to the
Examiner to consider rejecting claim 1 under 35 U.S.C. § 112, second
paragraph, as indefinite for combining two classes of invention. Although
the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no
inference should be drawn when the Board elects not to do so. See Manual
of Patent Examining Procedure (MPEP) §1213.02.
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Appeal 2016-003836
Application 12/708,089
Claims 2, 27, and 33
With regard to claims 2, 27, and 33, the Examiner found that the
limitation
wherein the determination. . . is further based upon the utility
based analysis factors at least one of a current state of an
operator of the main interface screen, a preference of the
operator, a past behavior of the operator, a behavior of the
interface screen, a behavior of the system, or a capability of the
system
is not supported by the Specification. Final Act. 3 (emphasis omitted).
Appellants argue that paragraphs 36-40 and 42-43 support the
disputed limitation. App. Br. 16—18. Appellants, however, do not
persuasively explain how the cited paragraphs support the disputed
limitation. See id. Nor do Appellants persuasively rebut the Examiner’s
finding that:
[t]he paragraphs referenced by Applicant. . . describe the
utility-based analysis to be associated with “classifiers” which
are in turn described to be utilized by what is termed a
“configuration station.” However, the specification does not
link (explicitly or implicitly) the unloading of device elements
with classifiers nor a configuration station, and thus does not
recite utilizing a utility-based analysis for the unloading. A
point of emphasis is that any disclosure of the “unloading” is
confined to paragraphs [0045]—[0048] and [0068]—[0069] and
in such a disparate way that there does not appear to be a link
between “unloading” and the rest of the specification.
Ans. 4. For these reasons, we are not persuaded the Examiner erred in
finding that the disputed limitation lacks written description in the
Specification.
Accordingly, we sustain the rejection of claims 2, 27, and 33 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
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Application 12/708,089
description requirement. We also sustain the rejection of the same claims
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement, and under 35 U.S.C. § 112, second paragraph, for
indefiniteness.
Claims 7 and 36
With regard to claims 7 and 36, the Examiner found that the limitation
“update the main interface screen based upon the fully or partially unloading
the first device element from temporary memory” is not supported by the
Specification. Final Act. 4.
Appellants argue that paragraphs 45—48 and 68—69 support the
disputed limitation. App. Br. 18—20. Appellants, however, do not
persuasively explain how the cited paragraphs support the disputed
limitation. See id. Nor do Appellants persuasively rebut the Examiner’s
finding that:
[tjhere does not appear to be any description of updating a user
interface based on full or partial unloading of device elements.
Specifically, the specification does not describe what the main
interface screen update would look like, or how to display a
device element if a device element was partially unloaded.
The lone clock example of the specification fully unloads
individual device elements.
Ans. 4—5. For these reasons, we are not persuaded the Examiner erred in
finding that the disputed limitation lacks written description in the
Specification.
Accordingly, we sustain the rejection of claims 7 and 36 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. We also sustain the rejection of the same claims
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
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Application 12/708,089
enablement requirement, and under 35 U.S.C. § 112, second paragraph, for
indefmiteness.
Claim Rejections under 35 U.S.C. § 103(a)
In rejecting claim 1 for obviousness, the Examiner found that Stupek
teaches or suggests all of the recited limitations, except “determine whether
to fully unload the first device element from the temporary memory or
partially unload the first device element from the temporary memory based
upon the status,” “in response to a determination to fully unload the first
device element from the temporary memory, fully unload the first device
element from the temporary memory,” and “in response to a determination
to partially unload the first device element from the temporary memory,
partially unload the first device element from the temporary memory,” for
which the Examiner relied on Collins. Final Act. 6—9 (citing Stupek || 54,
58, 59; Collins Abstract, 145, Table 1) (emphasis omitted).
Appellants contend the Examiner erred because the cited portions of
Stupek and Collins do not disclose the limitations
determine whether to fully unload the first device element from
the temporary memory or partially unload the first device
element from the temporary memory based upon the status; in
response to a determination to fully unload the first device
element from the temporary memory, fully unload the first
device element from the temporary memory; and in response to
a determination to partially unload the first device element
from the temporary memory, partially unload the first device
element from the temporary memory.
App. Br. 23. Appellants argue that Stupek does not teach or suggest those
limitations, and the “CACHE_PURGE_MEMORY_CACHE” command in
Collins, relied on by the Examiner, is related to purging the entire object
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Application 12/708,089
cache or a portion of the object cache, but is silent regarding full or partial
unloading of an object in the object cache, as claim 1 requires. Id. at 23.
Appellants’ arguments persuade us the Examiner erred. We disagree
with the Examiner’s stated position that combining Stupek’s construction
editor with the “CACHE_PURGE_MEMORY_CACHE” command in
Collins teaches or suggests all of the recited limitations in claim 1. We
agree with Appellants that purging the entire object cache or a portion of the
object cache is not the same as or suggestive of the full or partial unloading
of a device element in the object cache, as claim 1 requires. We note that
the Specification describes that, while an unloaded device element is
temporarily removed from memory, that device element still remains
instantiated and active. See Spec. 147. Thus, we find unreasonable the
Examiner’s interpretation of “unloading” as broad enough to encompass
purging. Moreover, in Collins it is cache that is purged; in claim 1, it is a
device element that is unloaded from a cache.
For these reasons, we are persuaded that the Examiner erred in finding
that the combination of Stupek and Collins teaches or suggests the disputed
limitations. The Examiner has not shown how the additionally cited
secondary references overcome the aforementioned deficiencies.
Accordingly, we are constrained on this record to reverse the Examiner's
obviousness rejection of claim 1 and claims 9, and 32 that recite similar
features, and dependent claims 2, 5—8, 13, 14, 25—27, 30-32, and 33—37
DECISION
We affirm the rejections of claims 2, 7, 27, 33, and 36 under 35
U.S.C. § 112, first paragraph (written description), 35 U.S.C. § 112, first
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Application 12/708,089
paragraph (enablement), and 35 U.S.C. § 112, second paragraph
(indefiniteness).
We reverse the rejections of claims 1, 5, 6, 8, 9, 13, 14, 25, 26, and
30-32, 34, 35, 37 under 35 U.S.C. § 112, first paragraph (written
description), 35 U.S.C. § 112, first paragraph (enablement), and 35 U.S.C. §
112, second paragraph (indefmiteness).
We reverse the rejections of claims 1, 2, 5—9, 13, 14, 25—27, and 30-
37 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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