Ex parte MILLIKEN et al.

Board of Patent Appeals and Interferences

Apr 22, 1998

08176330 (B.P.A.I. Apr. 22, 1998)

Application for patent filed January 3, 1994. According to appellants,1
this application is a continuation of application 07/622,936, filed
December 11, 1990, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JON B. MILLIKEN, RICHARD J. VANDERAH and
DENNIS G. SICKELS
__________
Appeal No. 95-3498
Application 08/176,3301
__________
ON BRIEF
__________
Before THOMAS, HAIRSTON and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 8, 10, 11 and 22. Claim 14 has been allowed. Claims 1
Appeal No. 95-3498
Application 08/176,330
Appellants filed an appeal brief on December 1, 1994. We will refer to2
this appeal brief as simply the brief. Appellants filed a reply appeal brief
on February 21, 1995. We will refer to this reply appeal brief as the reply
brief. The Examiner stated in the Examiner’s letter dated March 2, 1995 that
the reply brief has been entered and considered but no further response by the
Examiner is deemed necessary.
2
through 7, 9, 12, 13, 15 through 21 and 23 through 25 have
been canceled.
The invention relates to a process controller having a
plurality of modular input/output units.
The only independent claims 8 and 10 present in the
application are reproduced in Appendix A of this decision.
The reference relied on by the Examiner is as follows:
Shah et al. (Shah) 4,589,063 May 13, 1986
Claims 8, 10, 11 and 22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Shah and the admitted prior
art. Rather than repeat the arguments of Appellants or
the Examiner, we make reference to the briefs and the answer2
for the details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 8, 10, 11 and 22 are
properly rejected under 35 U.S.C. § 103.
Appeal No. 95-3498
Application 08/176,330
3
Appellants argue on pages 4 through 6 of the brief that
there is not the slightest suggestion in either Shah or the
admitted prior art that either the Shah I/O boards or the
process
controller boards be modified to incorporate a single I/O
circuit, as recited in claim 8. Appellants argue that Shah
teaches a number of different types of I/O boards each of
which has a different type of controller disposed thereon and
that the admitted prior art teaches a conventional process
controller having a number of internal slots into which a
number of I/O boards having a fixed number of I/O circuits may
be inserted. Appellants argue that the prior art does not
suggest a process controller having a number of internal slots
into which a number of I/O boards each having a single I/O
circuit may be inserted as recited in Appellants' claim 8. In
the reply brief, Appellants agree that Shah suggests to those
skilled in the art to use analog-to-digital interfaces but
argue that Shah does not suggest providing a single I/O
circuit of the four specific types as recited in Appellants'
Appeal No. 95-3498
Application 08/176,330
4
claim 8.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the reasonable teachings or suggestions found in
the prior art, or by a reasonable inference to the artisan
contained
in such teachings or suggestions. In re Sernaker, 702 F.2d
989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). In addition, the
Federal
Circuit states that "[t]he mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). However, the Federal Circuit reasons
in Para-Ordnance Mfg., 73 F.3d at 1087-88, 37 USPQ2d at 1239-
40, that for the determination of obviousness, the court must
Appeal No. 95-3498
Application 08/176,330
5
answer whether one of ordinary skill in the art who sets out
to solve the problem, and who had before him in his workshop
the prior art, would have been reasonably expected to use the
solution that is claimed by the Appellants.
We note that Shah teaches in column 3, lines 26-43, that
Figure 2 shows an example of the dedicated I/O boards for
various peripheral devices. Furthermore, we note that those
skilled in the art in view of the Shah teachings would have
recognized that only the required I/O circuits are placed on
these boards. Furthermore, we note that the admitted prior
art on page 2 of
Appellants' specification teaches that the basic types of I/O
circuits (a digital input circuit, a digital output circuit,
an
analog input circuit and an analog output circuit) are well
known in the art. Furthermore, we find that Shah teaches in
column 3, lines 15-25, that any type of I/O board may be
placed in one of the identical slots 20 (A-E). In column 3,
lines 44-52, Shah suggests that any number of variations of
Appeal No. 95-3498
Application 08/176,330
6
I/O boards for any type of peripheral device can be connected
into these slots.
We agree that Shah does not expressly teach that these
I/O boards contain only one of the type of I/O circuit (a
digital input circuit, a digital output circuit, an analog
input circuit and an analog output circuit). However, Shah
does suggest that the Shah system can connect any type of I/O
board for a partic-ular type peripheral device. We note that
there are many particular types of peripheral device that
would require only one type of I/O circuit. For instance,
audio speakers are a well- known peripheral device that only
require an analog output circuit and LED displays are another
well-known peripheral device that only require a digital
output circuit. A temperature probe is a well-known
peripheral device that only requires an analog input circuit
or a digital input circuit depending upon the type of probe.
Thus, we find that Shah would have suggested to those
skilled in the art to provide a I/O board to be connected into
one of the identical slots 20 that would only have a single
Appeal No. 95-3498
Application 08/176,330
7
I/O circuit being each of the four specific types as recited
in claim 8. Therefore, we find that it would have been
obvious to one skilled in the art to provide a I/O board to be
connected into one of the Shah identical slots that would only
have a single I/O circuit which could be one of the four types
of ad-mitted prior art I/O circuits as recited in Appellants'
claim 8.
Appellants also argue on pages 6 through 8 of the brief
that there is no suggestion in either Shah or the admitted
prior art to provide separate housing for the Shah I/O boards.
Appellants admit on page 1 of the specification that a
conventional process controller typically contains a plurality
of printed circuit boards within a housing. On pages 9 and
10, Appellants disclose that for their embodiment each of the
I/O circuits 60 is provided within a separate housing 66,
which may be plastic housing for example. Appellants do not
disclose that providing the separate housing 66 solves any
particular problem that cannot be solved by the conventional
admitted housing.
In In re Kuhle, 526 F.2d 553,555, 188 USPQ 7,9 (CCPA
1975), the court held that the test for design choice depends
Appeal No. 95-3498
Application 08/176,330
8
on whether
the use of the arrangement solves a stated problem.
Appellants have not argued or disclosed that the separate
housing provides a
solution to a problem not solved by the conventional housing.
Whether the I/O circuit is protected by the housing provided
for the controller or whether the I/O circuit is protected by
a separate housing is a matter of choice by a particular
designer but does not affect the functionality of the housing
or the I/O circuits. Therefore, we will sustain the
Examiner's rejection of Appellants' claim 8.
On pages 8 and 9 of the brief, Appellants argue that
claim 10 would not have been obvious for the reasons set forth
for Appellants' claim 8. Therefore, we will sustain the
Examiner's rejection of Appellants' claim 10 for the same
reasons set forth above.
On page 9 of the brief, Appellants argue that there is no
suggestion in either Shah or the admitted prior art to modify
the Shah I/O boards to provide a single I/O circuit in each
Appeal No. 95-3498
Application 08/176,330
9
module and to have each module include its own housing and its
own connector. As pointed out above, we find that the prior
art does suggest the modification to the Shah I/O boards.
Therefore, we will sustain the Examiner's rejection of
Appellants' claim 11 for the same reasons as set forth above.
On pages 9 and 10 of the brief, Appellants argue that
there is no disclosure or suggestion of Appellants'
transmitting means
for transmitting a code-request signal from the processor to
one of the circuit modules, receiving means for receiving a
code signal from said one circuit module in response to said
code-request signal and means for determining the type of one
circuit module based upon the code signal received from the
one circuit module. Appellants argue that the Examiner has
not indicated what portion of the Shah autoconfiguration means
is structurally equivalent to each of Appellants' claimed
means as required by In re Donaldson Co. Inc., 16 F.3d 1189,
29 USPQ2d 1845 (Fed. Cir. 1994).
Our reviewing court has stated in In re Donaldson Co.
Appeal No. 95-3498
Application 08/176,330
10
Inc., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir.
1994) that the "plain and unambiguous meaning of paragraph six
is that one construing means-plus-function language in a claim
must look to the specification and interpret that language in
light of the corresponding structure, material, or acts
described therein, and equivalents thereof, to the extent that
the specification provides such disclosure." However, our
reviewing court also has stated that "[i]t is applicant’s
burden to precisely define the invention, not the PTO’s.” In
re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed.
Cir. 1997).
Appellants have not pointed to the structure or
structures as disclosed in their specification which
correspond to these claimed means. Without Appellants
precisely defining the corresponding disclosed structure, we
find that the Examiner reasonably interpreted the claim. In
the absence of such input by Appellants, the claims are given
the broadest reasonable interpretation. In re Zletz, 893 F.2d
Appeal No. 95-3498
Application 08/176,330
11
319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Turning to Shah, we find that Shah discloses in column 4,
line 51, through column 5, line 10, a transmitting means, a
receiving means and a means for determining the type of the
one circuit module as recited in Appellants' claim 22. In
particular, Shah discloses that a linking routine polls all of
the motherboard slots to determine which I/O devices are
plugged into the slot. The linking routine transmits a code-
request signal to the slot. If a I/O device is plugged into
the slot, the linking routine receives identifying codes
signals from the I/O device and determines the type of circuit
module plugged into each slot. Therefore, we find that the
Examiner has met the burden of showing that the prior art
meets Appellants' claim limitations and thereby we will
sustain the rejection of Appellants' claim 22.
In view of the foregoing, the decision of the Examiner
rejecting claims 1 8, 10, 11 and 22 under 35 U.S.C. § 103 is
affirmed.
No time period for taking any subsequent action in
Appeal No. 95-3498
Application 08/176,330
12
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-3498
Application 08/176,330
13
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