Ex Parte Rapp et al

Board of Patent Appeals and Interferences

Aug 27, 2012

09956624 (B.P.A.I. Aug. 27, 2012)

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.
09/956,624 09/19/2001 John W. Rapp 1934-001-03 2276
996 7590 08/27/2012
GRAYBEAL JACKSON LLP
400 - 108TH AVENUE NE
SUITE 700
BELLEVUE, WA 98004
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
MAIL DATE DELIVERY MODE
08/27/2012 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 JOHN W. RAPP, CHANDAN MATHUR and
PAUL TODD LANE
________________

Appeal 2010-003879
Application 09/956,624
Technology Center 2400
________________

Before JOSEPH F. RUGGIERO, JEFFREY S. SMITH, and
GLENN J. PERRY, Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003879
Application 09/956,624

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STATEMENT OF THE CASE
Introduction
Appellants invokes our review
1
under 35 U.S.C. § 134(a) from the
Examiner’s rejection
2
of claims 1-29, 31-35, and 37-59. Claims 30 and 36
have been cancelled. Appellants have grouped claims as standing or falling
together: 1) claims 1-26; 2) 27-29, 31-33, and 37; 3) claims 34, 35; 4) claims
38-48; 5) claims 49-56; and 6) claims 57, 58; and 7) claim 59 (standing
alone). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part, and
institute a new ground of rejection according to 37 C.F.R. § 41.50(b).

Invention
Appellants’ invention relates in general to configuring a “hardware
subsystem” to operate with a “software component” carrying out an
application process related to the “hardware subsystem.” The “software
component” carries out a software process requiring input from the
“hardware subsystem.” A “translation interface” transforms an “electrical
signal” from the “hardware subsystem” into “data” representing a sensed
parameter. This “data” is processed by the “software component.” During
set up and initialization of the “hardware subsystem,” a “configuration
module” receives information describing the “hardware subsystem” and
generates a portion of the “translation interface” so that it is properly
configured to transform the “electrical signal” into “data” having a format
that can be utilized by the “software component.” See Abstract and claims 1
and 21.

1
Notice of Appeal filed June 11, 2007
2
Final Office Action dated March 6, 2007
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Evidence Considered
The Examiner relies on the following prior art in rejecting the claims:
Krivoshein US 5,980,078 Nov. 9, 1999

Alexander, A Can Based Status Control and Interlock Protection System For
The SRS, International Conference on Accelerator and Large Experimental
Physics Control Systems, 1999, pp. 60-62.

The Rejections
1. The Examiner rejected claims 1-6, 9-29, 31-35, and 37-59 under 35
U.S.C. § 102(e) as being anticipated by Krivoshein.
3

2. The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
being anticipated by Krivoshein in view of Alexander.

ANTICIPATION REJECTION
Appellants Contention
Appellants contend 1) that the rejection is “unclear” in that the
Examiner has not provided a clear mapping of the claims onto the
references. See App. Br. 18; Reply Br. 4. As for the particular substantive
contentions, Appellants argue that Krivoshein 2) does not teach “a
translation interface operable to convert an electrical signal associated with a
sensing operation into data having a format (App. Br. 19);” and 3) does not
teach configuring a translation interface by generating a portion of the
translation interface (App. Br. 19).

3
Throughout this opinion we refer to (1) the Final Office Action mailed
March 6, 2007; (2) the Appeal Brief (“App. Br.”) filed December 7, 2007;
(3) the Examiner’s Answer (“Ans.”) mailed January 25, 2008; and the Reply
Brief ("Reply Br.") filed March 27, 2008.
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Principles of Law
Our reviewing court has recently set forth the standard for
determining the sufficiency of an Examiner’s rejection:
[T]he PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
That section “is violated when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”

In re Jung, 98 USPQ2d 1174, 1177 (Fed. Cir. 2011) (citations
omitted) (alterations in original).

Analysis
Claim 1 is illustrative and is set forth below with disputed limitations
emphasized.
1. A system comprising:

a hardware subsystem that includes a component operable to generate
an electrical signal associated with a sensing operation;

a computer network;

a software component coupled to the computer network and providing
an application process corresponding to the hardware subsystem, the
application program operable to receive in a format data associated with the
sensing operation;

a translation interface separate from the software component and
coupled to the hardware subsystem and the computer network, the
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translation interface operable to convert the electrical signal into the data
having the format; and

a configuration module operable to receive information that describes
the hardware subsystem and to use the received information to configure the
translation interface to convert the electrical signal into the data, the
configuration module operable to configure the translation interface by
generating a portion of the translation interface.

1) Examiner explanation of rejections is sufficiently clear
Appellants argue that “it is unclear how the examiner is reading the
claims on Krivoshein in the final office action mailed March 6, 2007.”
Appellants recite facts which, according to Appellants, indicate a lack of
cooperation on the part of the Examiner in granting an interview or
otherwise explaining the Final Office Action mailed March 6, 2007. See
App. Br. 18. Appellants continue this line of argument in the Reply Brief,
suggesting that even in the Examiner Answer the Examiner has not clarified
the rejections and requests that prosecution be reopened. See Reply Br. 3-4.
As an example of Appellants’ frustration, they point out that the Examiner:
[I]dentifies in Krivoshein no component that corresponds
to the limitation “a translation interface ... operable to convert
[an] electrical signal into. . . data having [a] format” recited in
claim 1. Instead, the examiner inexplicably identifies "Device
Tables" of information (Krivoshein col. 22, lines 24-28) as
meeting this limitation. At best, this is akin to identifying a car
repair manual as a component of a car.

See Reply Br. 4.
The alleged lack of cooperation of the Examiner in scheduling an
interview is a petitionable - not appealable - matter and is therefore not
before us. See MPEP § 706.01 (“[T]he Board will not hear or decide issues
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pertaining to objections and formal matters which are not properly before the
Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a
question that should be decided by the Director on petition . . . .”).
As to the issue of “clarity” of the rejections, the Examiner explains the
rejections by mapping the various claim limitations to the references. Ans.
3. The Examiner also responds to specific arguments. Ans. 12-22. We have
reviewed the Examiner Answer and the Krivoshein reference and conclude
that the rejections are sufficiently clear to notify Appellants as to why the
claims are rejected based on the guidance provided by Jung, 98 USPQ2d at
1177. We glean the following mapping of the claims to Krivoshein from our
review of the Examiner’s explanation in the Answer and from the cited
portions
4
of the reference.
Krivoshein discloses a digital control system that automatically
installs and configures new digital devices. Some of these digital devices
are devices that sense a condition (e.g., a temperature, a flow rate, and etc.).
Some of these digital devices are devices that carry out some control action
(e.g., open a valve to change a flow rate). When a new device is attached to
the control system, the identity of the device is downloaded from the device.
Based on this identity, configuration data for operating that device is fetched
from database tables and installed in the control system so that the control
system knows how to read measured parameters from the device or control
some portion of a process, whichever is its purpose. Once the new device
has been calibrated and configured (based in part on the Krivoshein “device

4
Krivoshein col. 4, ll. 1-46; col. 6, ll. 29-40; col. 17, ll. 35- col 18, ll. 31; col.
21, ll. 42-60; and col. 22, ll. 1-34.
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tables” and a control strategy has been installed, the new device becomes
operational).
Functionally, the claimed “hardware subsystem” corresponds to
Krivoshein’s new device being installed. The claimed “software
component” corresponds to the Krivoshein digital control system. The
claimed “configuration module” corresponds to the Krivoshein process of
installing a new device including reading information from the “device
tables” that is relevant to the new device being installed and the process of
instantiating objects and software in the control system that allow the control
system to interact with the new device. The claimed “translation interface”
corresponds to the various software objects and tables instantiated during
configuration, calibration and installation of a control strategy for operating
the new device attached to the Krivoshein control system.
Appellants may substantively disagree with the Examiner as to
particular elements of the rejections, but, in our view, Appellants have been
sufficiently apprised of the Examiner’s positions under the standards set
forth in Jung. Id. We now turn to the substantive arguments.

2) Krivoshein teaches the claimed translation interface

Appellants argue:
Krivoshein fails to disclose that the device 12 is operable to
generate an electrical signal; consequently, Krivoshein does not
and cannot disclose that the local controller 4 (or any other
device) is a translation interface that is operable to convert an
electrical signal from the device into data having a format. The
only related information that Krivoshein provides is that the
device 12 "can respond to direct control signals" (col. 17, line
8). Therefore, although Krivoshein discloses that the device 12
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can receive signals, nowhere does Krivoshein disclose that the
device 12 can generate an electrical signal. And that the device
12 can generate a signal is not inherent, because there exist
many devices, (e.g., indicator lamps, relays, LEDs) that can
receive and respond to an electrical signal but that cannot
generate a signal.

App. Br. 19-20.
Appellants’ logic is that the Krivoshein “device” (corresponding to
the claimed “hardware subsystem”) does not generate an “electrical signal.”
Therefore there can be no element in Krivoshein that corresponds to the
claimed “translation interface” which functions to translate such “electrical
signal” into “data having a format.” Thus, according to Appellants,
Krivoshein does not teach “a translation interface operable to convert an
electrical signal associated with a sensing operation into data having a
format.”
Appellants’ logic required that the claimed “electrical signal” be an
analog signal.
5
We look to the specification to understand better the nature
of the “electrical signal” referred to in claim 1. The Specification describes
at page 2 that sensing elements can sense/provide “digital” signals as well as
“analog” signals.
Krivoshein’s digital control system is a digital system. It accepts
digital format data from devices attached to the system and provides
instructions via digital signals to operate devices. Thus, Appellants’
argument has some merit as to claims that are limited to “analog” signals
that must be converted into data having a “format.” However, we are not

5
Claims 27, 34, 37, 38, 53, and 55 specifically limit the hardware subsystem
to providing an “analog signal.” The remaining claims do not.
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persuaded by Appellants’ logic as to claims not limited to “analog” electrical
signals.
Krivoshein discloses a digital control system automatically installs
and configures new digital devices that are attached to and become part of it.
The Examiner finds that when a new device,
6
such as e.g., a FieldBus
protocol type device, is attached to the control system, the identity of the
device is downloaded from the device and configuration data
7
for operating
that device is fetched and installed. Once the device has been calibrated and
configured and a control strategy has been installed, it becomes operational
as part of the Krivoshein control system.
According to Krivoshein, when a new device (corresponding to the
claimed “hardware subsystem) is installed, software controls for operating
the new device are instantiated based on information gathered from database
“device tables” that store configuration and use information. It is the
software controls built into the Krivoshein control system that correspond to
the claimed “translation interface.” Thus, the installation of a new device
that creates a software equivalent of the claimed “translation interface.”
8

The Krivoshein digital control system operates with both FieldBus
protocol devices and with devices that do not adhere to the FieldBus
protocol. Since Krivoshein is a “digital” system, the translation of electrical
signals into a usable “format” for the control system is a digital translation

6
Krivoshein describes devices of the control system at col. 3, ll. 45-55 and
at col. 6, ll. 25-41 and configuring them at col. 22, ll. 1-24.
7
Krivoshein describes at col. 22, ll. 1-24 how configuration information is
obtained from databases for use in installing new devices attached to control
system. Installation of “non-protocol” (not conforming to FieldBus
protocol) devices are described at col. 6, ll. 25-41 and at col. 17, ll. 56-67.
8
See Krivoshein col. 17, l. 56 to col. 18, l. 32; and col. 22, ll. 1-24;
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that is carried out by digital “objects” instantiated during configuration and
calibration and installation of the control strategy.
9
There isn’t a single
“element” or “object” that alone does the translation. Rather, translation is
carried out by a collection of objects instantiated at the time of set up of the
new device to implement calibration, configuration and install a control
strategy when the new device is connected to the control system. We agree
with the Examiner’s position that installing objects (from master databases
and tables) when configuring a new device effectively creates a “translation
interface” as claimed.
Appellants argue using as an example, a “switch” (See App. Br. 18-
19). It is true, as Appellants point out, that there is no single element in
Krivoshein that corresponds to Appellant s’ “coder” for providing a digital
signal corresponding to the electrical signal generated by the “switch.”
While that may be true, claim 1 (and other claims) are not limited to specific
examples such as a “switch.” The specification describes a “hardware sub-
system” generating an “electrical signal” that can be a “digital” signal.

3) Krivoshein teaches configuring a translation interface.

Appellants argue that “Krivoshein does not disclose how the local
controller 4 is configured, or even if the local controller is configurable by
the system, and thus does not disclose a configuration module operable to
generate a portion of the local controller 4.” App. Br. 21.
As we explained above, during the Krivoshein install process for a
new device, software controls for operating the new device are formed based

9
See Krivoshein col. 22, ll. 1-24.
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on the information gathered from database tables that store configuration
and use information. It is the installation itself that instantiates a software
equivalent of the claimed “translation interface.”
10

Since Krivoshein discloses a “digital” system, the translation of
electrical signals into a usable “format” for the control system is a digital
translation that is carried out by digital “objects” instantiated during
configuration and calibration and installation of the control strategy.
11
There
isn’t a single “element” or “object” that alone does the translation.
Translation is carried out by a collection of objects instantiated at the time of
set up of the new device to implement calibration, configuration and install a
control strategy when the new device is connected to the control system.
We agree with the Examiner’s position that installing objects (from master
databases and tables) when configuring a new device effectively creates a
“translation interface” as claimed.
For these reasons we are persuaded of error as to the anticipation
rejection of claims 27, 34, 37, 38, 53, and 55 which are specifically limited
to “analog” electrical signals. We are not persuaded of error as to claims 1-
6, 9-26, 28, 29, 31-33, 35, 39-52, 54, and 56-59.

OBVIOUSNESS REJECTION
Appellants do not separately argue the obviousness rejection of claims
7 and 8. Nor do Appellants challenge the Examiner’s position with respect
to the teachings of Alexander. We therefore sustain the rejection of claims
7and 8.

10
See Krivoshein col. 17, ll. 56 to col. 18, l. 32; and col. 22, ll. 1-24.
11
See Krivoshein col. 22, ll. 1-24.
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NEW GROUND OF REJECTION
We now reject claims 27, 34, 37, 38, 53, and 55 under 35 U.S.C.
§ 103 based on the combined teachings of Krivoshein and U.S. Patent No.
5,706,007 Fragnito (“Fragnito”). Per our reasoning above, Krivoshein
discloses a digital control system. Given that the rejection made by the
Examiner was a section 102 rejection, and that there was no clear teaching in
the reference anticipating “analog” limitation in claims 27, 34, 37, 38, 53,
and 55, we did not sustain the rejection of these claims that are specifically
limited to “analog” electrical signals.
We now reject claims 27, 34, 37, 38, 53, and 55 based on the
combined teachings of Krivoshein and Fragnito. Claim 27 reads as follows.
27. A method, comprising:

retrieving from a data base information describing a hardware
subsystem that is operable to communicate with a device via at least one
analog signal;

using the retrieved information to configure a translation interface
between the hardware subsystem and an application software program by
generating a portion of the translation interface;

generating the analog signal with the device;

converting with the configured translation interface the analog signal
into data having a predetermined format; and

sending the data to the application software program.

The Krivoshein “process control system including automatic sensing
and automatic configuration of devices” (See Krivoshein Title) utilizes the
“FieldBus” protocol. See Krivoshein col. 17,l. 57 to col. 18, l. 31. Fragnito
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describes an “analog current/digital bus protocol converter circuit” (See
Fragnito Title) that “converts between 4-20 mA analog signal format and a
digital Fieldbus signal format.” See Fragnito Abstract. A person have
ordinary skill in the control system art would appropriately look to both
Krivoshein and Fragnito when developing a method as claimed for
interfacing a hardware subsystem providing an analog signal output with an
application software program requiring a data input having a predetermined
format. Fragnito is specifically directed to converting an analog signal into
data having a format consistent with the FieldBus protocol, which can be
utilized by Krivoshein to incorporate analog devices into its control system.
We leave it to the Examiner to determine the extent to which this
combination of references is applicable to any other claims of this
application.

CONCLUSION(S)
For the reasons set forth above, we sustain the rejections of claims 1-
26, 28, 29, 31-33, 35, 39-52, 54, and 56-59; we do not sustain the rejection
of claims 27, 34, 37, 38, 53, and 55; and we impose a new ground of
rejection as to claims 27, 34, 37, 38, 53, and 55.

ORDER
The Examiner’s decision rejecting claims 1-26, 28, 29, 31-33, 35, 39-
52, 54, and 56-59 is affirmed. The Examiner’s decision rejecting claims 27,
34, 37, 38, 53, and 55 is reversed. Claims 27, 34, 37, 38, 53, and 55 are now
rejected based on the combined teachings of Krivoshein and Fragnito.

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FINALITY OF DECISION
Regarding the affirmed rejections 37 C.F.R. § 41.52(a)(1)
provides that “Appellants may file a single request for rehearing within two
months of the date of the original decision of the Board.”
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). This regulation states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 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 the appeal 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 § 41.52 by the Board upon the same record. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
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final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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