Ex Parte Sodergren

Board of Patent Appeals and Interferences

Jun 3, 2010

09785123 (B.P.A.I. Jun. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASON SODERGREN
____________

Appeal 2009-006337
Application 09/785,123
Technology Center 2400
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Decided: June 4, 2010
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Before JOHN A. JEFFERY, LEE E. BARRETT, and
LANCE LEONARD BARRY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4-9, and 12-16. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
Appellant’s invention pertains to a multi-protocol adapter that can
communicate with remote computers over any of a variety of protocols. The
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adapter includes an integrated CPU including an embedded operating
system, where the operating system has software interface modules and
device drivers. See generally Abstract; Spec. 3, 14-17. Claim 1 is
illustrative with key disputed limitations emphasized:
1. A multi-protocol adapter for communicating with one or more
remote computers over any one of a plurality of protocols, the adapter
comprising:

an integrated CPU including an embedded operating system, said
operating system including software interface modules and device drivers
for one or more of interrogating, monitoring, retrieving data, downloading
data, recording data, revising data and performing diagnostics over any one
of the plurality of protocols, wherein the operating system is capable of
simultaneously communicating with the one or more computers running
different protocols; and

a plurality of daughter board interface slots for accepting at least one
daughter board interface modules for expanding the protocols of the multi-
protocol adapter.

The Examiner relies on the following as evidence of unpatentability:
Abraham US 5,530,842 June 25, 1996

Takahashi US 5,751,827 May 12, 1998

Richter US 5,905,885 May 18, 1999

Liebl US 6,236,917 B1 May 22, 2001
(filed Dec. 21, 1999)
Reul US 6,526,340 B1 Feb. 25, 2003
(filed Dec. 21, 1999)
Cambron US 6,539,027 B1 Mar. 25, 2003
(filed Jan. 19, 1999)

Sodergren US 2005/0083965 A1 Apr. 21, 2005
(eff. filed Feb. 16, 2001)
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THE REJECTIONS
1. The Examiner provisionally rejected claims 1, 4, 9, and 12-16 under
35 U.S.C. § 101 as claiming the same invention as that of claims 1-20
of the then-copending Sodergren application.1 Ans. 3-5.2
2. The Examiner rejected claims 1, 4, and 6-9 under 35 U.S.C. § 103(a)
as unpatentable over Abraham, Richter, and Takahashi. Ans. 5-8.
3. The Examiner rejected claims 12-14 under 35 U.S.C. § 103(a) as
unpatentable over Abraham, Richter, Takahashi, and Cambron. Ans.
8-9.
4. The Examiner rejected claims 15 and 16 under 35 U.S.C. § 103(a) as
unpatentable over Abraham, Richter, Takahashi, and Reul. Ans. 9-10.
5. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Abraham, Richter, Takahashi, and Liebl. Ans. 10.

THE DOUBLE PATENTING REJECTION
The Examiner finds that independent claim 1 recites the same
invention as claims 1, 11, and 18 of the then-copending Sodergren
application, and summarizes this alleged correspondence in a table. Ans. 3-
4. The Examiner similarly summarizes the alleged correspondence between
independent claim 4 of the present application with claims 8, 16, and 19 of
the Sodergren application. Ans. 4.

1 This application has since issued as U.S. Patent 7,603,471 B2.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed May 16,
2007; (2) the Examiner’s Answer mailed June 23, 2008; and (3) the Reply
Brief filed August 28, 2008.
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Despite the lack of an “embedded operating system” in the claims of
the Sodergren application, the Examiner nonetheless asserts that statutory
double patenting is appropriate given the similarities in claim language.
According to the Examiner, an embedded operating system with the recited
modules in claims 1 and 4 is allegedly “redundant,” since it is purportedly
“well-known in the art that an operating system is just the installed
foundation software that controls the usage of hardware resources on a
device . . . .” Ans. 11.
Appellant argues that statutory double patenting is inappropriate since
independent claims 1 and 4 both require, among other things, an embedded
operating system—a feature not recited in claims 1, 11, and 18 of the
Sodergren application. App. Br. 5-7.
The issue before us, then, is as follows:

ISSUE
Under § 101, has the Examiner erred in rejecting independent claims 1
and 4 by finding that they recite the same invention as that claimed in the
then-copending Sodergren application, despite the claims of the Sodergren
application not reciting an embedded operating system?

FINDINGS OF FACT (FF)
1. Independent claim 1 of the present application recites, in pertinent
part, “an integrated CPU including an embedded operating system, said
operating system including software interface modules and device drivers

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for one or more of interrogating, monitoring, retrieving data, downloading
data, recording data, revising data and performing diagnostics over any one
of [a] plurality of protocols . . . .” Claims App’x, Claim 1.
2. Independent claim 4 of the present application recites a similar
limitation as that indicated above regarding claim 1, except that the term
“including” is changed to “having.” Claims App’x, Claim 4.
3. The claims of the Sodergren application do not recite an
“embedded operating system.” See generally Sodergren application, at 5-6.

PRINCIPLES OF LAW
Under 35 U.S.C. § 101, the same invention (i.e., identical subject
matter) may not be claimed twice, regardless of the presence of a terminal
disclaimer. In re Vogel, 422 F.2d 438, 441 (CCPA 1970). Inventions are
not the same if a claim of one invention can be literally infringed without
literally infringing the other. Id.
But if the same invention is not claimed twice, the Examiner must
determine whether the claim is merely an obvious variation of the other
claimed invention. Id. If so, “a terminal disclaimer is required to prevent
undue timewise extension of monopoly.” Id. at 442.

ANALYSIS
We find the Examiner’s statutory double patenting rejection of
independent claims 1 and 4 is erroneous for one simple reason—the lack of
an “embedded operating system” in the claims of the Sodergren application.

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FF 3. This omission is fatal to the Examiner’s rejection, for § 101 only
prohibits twice claiming the same invention, namely identical subject matter.
Vogel, 422 F.2d at 441 (emphases added).
Simply put, the absence of an embedded operating system in the
claims of the Sodergren application means that those claims could be
literally infringed with an adapter otherwise containing all the features of
those claims, yet not literally infringe independent claims 1 and 4 of the
present application which require an embedded operating system. In view of
this disparity, the inventions of claims 1 and 4 of the present application and
the Sodergren application are therefore not the same. See id.
Although we recognize that claims may be worded differently and still
define the same invention,3 that is not the case here. In this regard, the
Examiner’s assertion that the recited embedded operating system is allegedly
“redundant” (Ans. 11) is unavailing. Even assuming, without deciding, that
such embedded operating systems are “well-known in the art” as the
Examiner contends (id.) (a finding that that has not been evidenced on this
record in any event), bridging such a gap between the claimed inventions in
this manner is hardly appropriate for a statutory double patenting rejection.
See Vogel, 422 F.2d at 441-42. And to the extent that this analysis is
intended to satisfy Vogel’s second prong which asks whether the inventions
are obvious variations of each other (see id.) has simply not been established
on this record. Nor will we engage in such an inquiry here in the first
instance on appeal.

3 See, e.g., Vogel, 422 F.2d at 441 (“[A] claim reciting a length of ‘thirty-six
inches' defines the same invention as a claim reciting a length of ‘three feet,’
if all other limitations are identical.”).
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We are therefore persuaded that the Examiner erred in rejecting
independent claims 1 and 4 under § 101, and dependent claims 5-9 and 12-
16 for similar reasons.

THE OBVIOUSNESS REJECTION OVER ABRAHAM, RICHTER, AND TAKAHASHI
Regarding independent claims 1 and 4, the Examiner finds that
Abraham discloses a multi-protocol adapter with every recited feature except
for, among other things, daughter board slots and other recited elements of
claim 4. The Examiner, however, cites Richter for these features (as well as
Takahashi for a piezoelectric speaker) in concluding that the claims would
have been obvious. Ans. 5-7.
Appellant argues, among other things, that Abraham fails to teach or
suggest an integrated CPU having an embedded operating system, with the
operating system including software interface modules and device drivers as
claimed. App. Br. 8-9; Reply Br. 3-4.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claims 1 and 4 by
finding that Abraham, Richter, and Takahashi collectively would have
taught or suggested a multi-protocol adapter with an integrated CPU
including an embedded operating system, where the operating system
includes software interface modules and device drivers?

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ADDITIONAL FINDINGS OF FACT
4. Abraham discloses a generic multichannel backplane bus
architecture that can provide (1) multiple local area network (LAN)
protocols, and (2) simultaneous multiple protocol-independent generic
communication channels on a backplane. Abraham, col. 1, ll. 10-23.
5. To this end, Abraham’s system includes a “concentrator” 10 with
modules that are connected to a backplane bus.4 The modules include a
controller module 18 and “media distribution modules” (e.g., fiber modules
14 and twisted pair modules 16) that provide a connection between a
specific type of medium (e.g., twisted pair, fiber optic cable, coaxial cable)
and the concentrator. Abraham, col. 9, ll. 3-19; Fig. 1.
6. In Figure 2, Abraham’s concentrator 10 provides three different
networks, each using a different protocol: (1) Channel A of the concentrator
uses twisted pair media 28 and the Ethernet protocol; (2) Channel B uses the
100 Mbps Fiber optic Distributed Data Interface (FDDI) protocol; and (3)
Channel C uses fiber optic media 48 and the fiber optic Ethernet protocol.
Abraham, col. 1, ll. 39-40; col. 9, ll. 20-42; Fig. 2.
7. As shown in Figure 3, the concentrator’s backplane bus
architecture includes (1) control card module 128; (2) LAN management
card 118; (3) media distribution modules 120; and (4) bridging and routing
modules 122, 124. Abraham, col. 10, ll. 4-33; Fig. 3.
8. The bridging and routing modules (1) convert one protocol to
another and/or (2) filter (receive transmissions on one port and selectively
transmit them on another port). Abraham, col. 10, ll. 22-28; Fig. 3.

4 “[A] backplane bus is a wiring center common to a single platform and
shared by a number of users . . . .” Abraham, col. 1, ll. 47-49.
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9. Abraham’s Figure 8 shows hub management architecture where
LAN management modules 118 are associated with each channel A-C. Each
LAN management module has an agent 182 that is the network management
entity that controls and reports management status to other agents.
Abraham, col. 17, ll. 5-30; Fig. 8.
10. Richter describes in the Background section a system 101 with
CPU 140 that controls system operations. Richter, col. 1, ll. 25-53; Fig. 1A.

ANALYSIS
We will not sustain the Examiner’s obviousness rejection of
independent claims 1 and 4 which call for, in pertinent part, a multi-protocol
adapter with an integrated CPU including an embedded operating system,
where the operating system includes software interface modules and device
drivers. While the Examiner is correct that an operating system is the
software that controls the usage of hardware resources on a device (Ans. 11),
it is more than that.
Notably, the same dictionary that the Examiner cites to support this
proposition indicates that an “operating system” is “[t]he software that
controls the allocation and usage of hardware resources such as memory,
central processing unit (CPU) time, disk space, and peripheral devices. The
operating system is the foundation software on which applications depend.
Popular operating systems include Windows 98, Windows NT, Mac OS, and
UNIX.”5

5 Microsoft Computer Dictionary, 5th ed., 2002, at 378 (emphasis added).
Although this dictionary was published after the effective filing date of the
invention, it is nevertheless consistent with the Examiner’s citation (see Ans.
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Based on this definition, an “operating system” is not only the
software that controls the allocation and usage of hardware resources, but
also is the foundation software on which applications depend. This
functionality is reasonably consistent with Appellant’s characterization of an
operating system which includes not only code running on a machine, but
also enables applications to be written and loaded onto the machine. Reply
Br. 3-4. Ordinarily skilled artisans would therefore understand an operating
system to have such a capability.
Also, an “embedded system” is defined as “[m]icroprocessors used to
control devices such as appliances, automobiles, and machines used in
business and manufacturing. . . . . An embedded system is often built onto a
single chip or board and is used to control or monitor the host device . . . .”6
When reading these two definitions together, we find that an
“embedded operating system” is operating system software that controls the
allocation and usage of hardware resources, and is the foundation software
on which applications depend, where this software is built onto a single chip
or board.
Thus, we construe “an integrated CPU with an embedded operating
system” as claimed as a CPU with built-in operating system software that
controls the allocation and usage of hardware resources, and is the
foundation software on which applications depend.

11)—a source whose applicability is undisputed. In any event, this
definition refers to operating systems that existed before the filing date of
the present invention (e.g., Windows 98).
6 Id. at 190-91.
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Based on this construction, we find the Examiner’s reliance on
Abraham problematic. First, the Examiner does not squarely identify the
operating system in Abraham. Nevertheless, the Examiner does refer to
Abraham’s “concentrator” in connection with this limitation. Ans. 6. While
Abraham’s concentrator converts various protocols associated with networks
using diverse transmission media (FF 4-6, 8), we still fail to see how this
concentrator has an integrated CPU with an embedded operating system as
noted above, let alone that such an operating system includes software
interface modules and device drivers as claimed.
To be sure, the concentrator’s backplane bus architecture in Abraham
includes (1) a control card module 128; (2) LAN management card 118; (3)
media distribution modules 120; and (4) bridging and routing modules 122,
124. FF 7. And the bridging and routing modules can perform protocol
conversion functions. FF 8. But apart from noting the concentrator’s
functions, the Examiner has simply failed to show how any of its modules
contains an integrated CPU with an embedded operating system under the
ordinary and customary meaning of the term.
We reach this conclusion acknowledging the agent within the
concentrator’s LAN management module which controls and reports
management status to other agents. FF 9. Leaving aside that fact that an
agent is understood to be an automatically-implemented program as
Appellant indicates (Reply Br. 4), the Examiner has not shown how such an
agent constitutes an integrated CPU with an embedded operating system as
claimed in light of its ordinary and customary meaning noted above.

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We therefore find that Abraham fails to teach or suggest a multi-
protocol adapter with an integrated CPU including an embedded operating
system, where the operating system includes software interface modules and
device drivers as claimed.
Nor does the Examiner’s reliance on Richter or Takahashi cure this
deficiency. While Richter mentions a CPU in connection with controlling
operations for a conventional system (FF 10), that general teaching falls well
short of teaching or suggesting that it would have an embedded operating
system as claimed. Therefore, even if these references were combinable as
the Examiner proposes, the recited limitations would still not be taught or
suggested.
We are therefore persuaded that the Examiner erred in rejecting
independent claims 1 and 4, and dependent claims 6-9 for similar reasons.
Since this issue is dispositive of our reversal of these claims, we need not
reach Appellant’s additional arguments regarding the simultaneous
interaction limitation of claim 4 (App. Br. 10) or the limitations of claims
6-9 (App. Br. 10-11).

OTHER OBVIOUSNESS REJECTIONS
Since the Examiner has not shown that the references cited in the
obviousness rejections of dependent claims 5 and 12-16 (Ans. 8-10) cures
the deficiencies noted above regarding independent claim 1, we will not
sustain these rejections for similar reasons.

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CONCLUSION
The Examiner erred in rejecting claims 1, 4-9, and 12-16 under §§ 101
and 103.

ORDER
The Examiner’s decision rejecting claims 1, 4-9, and 12-16 is
reversed.

REVERSED

pgc

Philip R. Warn
Warn, Burgess & Hoffmann, P.C.
P.O. Box 70098
Rochester Hills, MI 48307