Ex parte RILEY

Board of Patent Appeals and Interferences

Aug 19, 1998

07958046 (B.P.A.I. Aug. 19, 1998)

Application for patent filed October 5, 1992.1
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(2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KENNETH P. RILEY
__________
Appeal No. 96-0023
Application 07/958,0461
__________
ON BRIEF
__________
Before HAIRSTON, BARRETT and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 5, all of the claims present in the
application.
Appeal No. 96-0023
Application 07/958,046
2
The invention relates to a computer-based process
controller including graphical display of selected process
attributes.
The independent claim 1 is reproduced as follows:
1. A method of generating graphical display of process
attributes in a computer-based process controller,
comprising:
storing a history of underlying process
attributes for a plurality of points in time
during the operation of a process being
controlled;
displaying a graphical representation of said
process being controlled;
selecting a portion of the graphical
representation and a point in time for which
underlying process attributes from said history
are to be displayed; and
displaying said underlying process attributes of
the selected portion of the graphical
representa-tion for the selected point in time,
substantially simultaneous with the display of
said graphical representation.
The Examiner relies on the following references:
Hitchens et al. (Hitchens) 4,512,747 Apr. 23, 1985
Nigawara et al. (Nigawara) 0,389,132 Sep. 26,
1990
(European Patent)
Knoop et al., "Optimal Person-Machine Interface for the
Appeal No. 96-0023
Application 07/958,046
The Appellant filed an amendment to claim 1 in response to the new2
ground of rejection. The Examiner did not enter this amendment. Therefore,
for the purpose of this appeal, this amended claim 1 is not before us for our
consideration.
3
Control of Electric Power Grids", Elektrotechnische
Zeitschrift, Vol. 109 no. 12 (June 1988), pp. 532-537 (English
Translation pp. 1-24) (Knoop)
Thalimer, "Design of a Continuous Miner Motor Monitoring
System", Conference Record of the IEEE Industry Applications
Society Annual Meeting (Cat. No. 89CH2792-0)(1989), pp. 1576-
1579
(Thalimer)
In the final action, claims 1 through 5 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Hitchens and
Thalimer. On page 4 of the answer, the Examiner withdraws the
rejection of claims 1 through 4 under 35 U.S.C. § 103 as being
unpatentable over Hitchens and Thalimer. The Examiner set
forth a new ground of rejection of claims 1 through 4 under 35
U.S.C. § 103 as being unpatentable over Hitchens, Thalimer,
Nigawara and Knoop . Therefore, Claims 1 through 4 stand2
rejected under 35 U.S.C. § 103 as being unpatentable over
Hitchens, Thalimer, Nigawara and Knoop and claim 5 stands
rejected under 35 U.S.C. § 103 as being unpatentable over
Hitchens and Thalimer.
Appeal No. 96-0023
Application 07/958,046
Appellant filed an appeal brief on January 20, 1995. We will refer to3
this appeal brief as simply the brief. Appellant filed a response to the new
ground of rejection (a reply appeal brief) on June 23, 1995. We will refer to
this response as the reply brief.
The Examiner responded to the brief with an Examiner's answer, mailed4
April 20, 1995. We will refer to the Examiner's answer as simply the answer.
We note that the answer contains a new ground of rejection rejecting claims 1
through 4 under 35 U.S.C. § 103 as being unpatentable over Hitchens, Thalimer,
Nigawara and Knoop. The Examiner responded to the reply brief with a
supplemental Examiner's answer, mailed April 12, 1996. We will refer to the
supplemental Examiner's answer as simply the supplemental answer.
4
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the briefs and answers for the3 4
respective details thereof.
OPINION
After a careful review of the evidence before us, we do
not agree with the Examiner that claims 1 through 5 are
properly rejected under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
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 express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
Appeal No. 96-0023
Application 07/958,046
5
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
In regard to the rejection of claim 5 as being
unpatentable over Hitchens and Thalimer, Appellants argue on
pages 12 through
15 of the brief and pages 2 through 5 of the reply brief that
neither Hitchens nor Thalimer teaches or suggests an
historical data file in which stored historical data related
to process attributes underlying each of the plurality of
process elements for a plurality of points in time, a mask
data file including information which relates the historical
Appeal No. 96-0023
Application 07/958,046
6
data to corresponding process elements in at least one
graphical representation and a data processor to produce a
combined display of at least one graphical representation with
process attributes underlying at least one of the plurality of
process components for a selected point of time as recited in
Appellant's claim 5. Appellants argue in the reply brief that
the Examiner's argument that either Hitchens or Thalimer
implicitly teach these limitations is not supportable in view
of the teachings of these references.
For a reference to "inherently" disclose an invention it
must be shown that the missing descriptive matter is
necessarily present in the thing described in the reference,
and that it be so recognized by persons skilled in the art.
Continental Can Co. USA, Inc. V. Monsanto Co., 948 F.2d 1264,
1268-69, 20 USPQ 1746,
1749 (Fed. Cir. 1991). Inherency may not be established by
probabilities or possibilities. Id.
Appeal No. 96-0023
Application 07/958,046
7
Upon our review of Hitchens and Thalimer, we fail to find
that these references implicitly teach an historical data file
in which stored historical data related to process attributes
underlying each of the plurality of process elements for a
plurality of points in time, a mask data file including
information which relates the historical data to corresponding
process elements in at least one graphical representation and
a data processor to produce a combined display of at least one
graphical representation with process attributes underlying at
least one of the plurality of process components for a
selected point of time. In particular, we fail to find that
Thalimer implicitly teaches displaying data for selected data
points for a selected point of time or that Hitchens
implicitly teaches a mask data file that is a data structure
that defines the structure records in the historical data file
to allow the display of process attributes of a process
component for a selected point in time.
Hitchens teaches in column 1, lines 28-35, that the
Appeal No. 96-0023
Application 07/958,046
8
purpose of their invention is to simulate the actual material
conveying system so that a system designer can observe system
operation
prior to operation. Hitchens does not contemplate the need to
record historical data for an actual system. We agree with
the
Examiner that Hitchens does suggest that their system could be
used to monitor an actual system in operation, however,
Hitchens
only suggests providing real time data and not maintaining a
historical record.
Thalimer teaches continuous monitoring of a miner moter
for the purpose of calculating deterioration values for the
insulation of the motor. Thalimer does teach maintaining a
historical record of the calculated deterioration values and
displaying this history. Further, Thalimer does not
contemplate displaying these deterioration values for only a
selected point of time or providing a mask file to correspond
these values to a graphical representation so as to allow a
combined display of the graphical representation with these
deterioration values for a selected point in time.
Appeal No. 96-0023
Application 07/958,046
9
Furthermore, we fail to find any reason to modify
Hitchens
to obtain Appellant's invention. 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).
Furthermore, rejecting patents solely by finding prior art
corollaries for the claimed elements would permit an examiner
to use the claimed invention itself as a blueprint for piecing
together elements in the prior art to defeat the patentability
of the claimed invention. Such an approach would be an
illogical and inappropriate process by which to determine
patentability. In Re Denis Rouffet, 97-1492 (Fed. Cir.
Appeal No. 96-0023
Application 07/958,046
10
decided July 15, 1998).
Turning to the Examiner's rejection of claims 1 through 4
as being unpatentable over Hitchens, Thalimer, Nigawara and
Knoop, we fail to find that the references teach or suggest
selecting a stored history of underlying process attributes
for a plurality of points in time during the operation of a
process being
controlled, selecting a portion of the graphical
representation
and a point in time for which the underlying process
attributes for the history are displayed and displaying the
underlying process attributes of the selected portion of the
graphical
representation for the selected point in time, substantially
simultaneous with the display of the graphical representation.
Furthermore, we fail to find any suggestion by these
references to modify Hitchens to obtain Appellant's claimed
invention.
As shown above, the Examiner has not shown that Hitchens
Appeal No. 96-0023
Application 07/958,046
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or Thalimer teaches or suggests selecting a point of time for
displaying the historical attributes of a selected portion of
the graphical representation and displaying simultaneously the
selected underlying process attributes and the graphical
representation. Furthermore, we fail to find that Nigawara or
Knoop supply this missing teaching or suggestion. In
particular, neither Nigawara nor Knoop teaches or suggests a
selection of a point in time for which the underlying process
attributes from the history are to be displayed.
We have not sustained the rejection of claims 1 through 5
under 35 U.S.C. § 103. Accordingly, the Examiner's decision
is reversed.
Reversed
KENNETH W. HAIRSTON )
Administrative Patent Judge )
Appeal No. 96-0023
Application 07/958,046
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)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 96-0023
Application 07/958,046
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Arnold, White & Durkee
P.O. Box 4433
Houston, TX 77210