Ex Parte Sommer

Board of Patent Appeals and Interferences

Dec 16, 2009

09897870 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAINER SOMMER
____________

Appeal 2009-001149
Application 09/897,870
Technology Center 2100
____________

Decided: December 17, 2009
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-001149
Application 09/897,870

2
The Appellant appeals the rejected claims 1-32 under 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and device for
controlling a run of a program executable on at least one microprocessor of a
microcontroller (Spec. 1).

The Illustrative Claim
1. A method for controlling a run of a program
executable on at least one microprocessor of a microcontroller,
comprising the steps of:

reading in information regarding hardware of the
microcontroller from at least one information register of the
microcontroller; and

actuating at least one switch via which the program run is
controlled as a function of the information read in;

wherein program execution only depends on information
in the at least one information register of the microcontroller,
which is special for each microcontroller step, without other
external or operator related influences.

Appeal 2009-001149
Application 09/897,870

3
The References
The Examiner relied upon the following prior art as evidence in
support of rejections:
Titherley US 4,489,414 Dec. 18, 1984
Simar US 6,182,203 B1 Jan. 30, 2001

Tom R. Halfhill, Transforming the PC: Plug and Play, BYTE (Sept.
1994), available at http://www.byte.com/art/9409/sec7/art1.htm (last visited
Sept. 12, 2006) (hereinafter “Halfhill”).

Microsoft Corp. and Intel Corp., Plug and Play ISA Specification, Vol.
1.0a, (May 5, 1994) (hereinafter “PnPISA”).

The Rejections
Claims 1-4, 6-8, 10-14, and 16-32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Titherley, PnPISA,
and Halfhill.
Claims 5, 9, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Titherley, PnPISA, and Simar.

II. ISSUES
Has the Appellant shown that the Examiner erred in setting forth a
sufficient initial showing of obviousness of the claimed invention in
rejecting claim 1 as being unpatentable over the combination of Titherley,
PnPISA, and Halfhill? In particular, the issue turns on: 1) Whether there is a
proper motivation to combine the Titherley, PnPISA, and Halfhill references;
2) Whether Titherley teaches away from the combination of Titherley,
PnPISA, and Halfhill; 3) When one skilled in the art considers the prior art
Appeal 2009-001149
Application 09/897,870

4
references in their entirety, whether the claimed invention is obvious over
the combination of Titherley, PnPISA, and Halfhill; and 4) Whether one
skilled in the art would be motivated to combine the teachings of Titherley,
PnPISA, and Halfhill without employing impermissible hindsight or
subjective “obvious to try” standard.

III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)). The Examiner bears the initial burden of presenting a prima facie
case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the opportunity on appeal to the Board of Appeals and
Interferences (BPAI) to demonstrate error in the Examiner’s position. See In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

Scope of Claim
The claim construction analysis begins with the words of the claim.
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC., v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (internal citations
omitted).
Appeal 2009-001149
Application 09/897,870

5
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any the differences between the claimed subject matter and the prior art;
and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).
In determining obviousness, the Supreme Court stated:
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The Court reaffirmed the principle based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
1. Titherley discloses a microcontroller with a microprocessor to
test a plurality of computer peripherals:
The computer is a portable microprocessor system provided
with plug-in modules containing the software as firmware to
Appeal 2009-001149
Application 09/897,870

6
define the test and exercising routines required for different
peripheral devices. The software defines different peripheral
connector configurations applicable to the different peripheral
devices concerned and also different key functions for operator
control of the test and exercising routines.

(Titherley, Abstract.)

2. Halfhill discloses that PnP will automatically configure
computer peripherals without user’s intervention:
PnP will bring automatic, software-driven configuration to
almost every I/O bus and part on a PC, including ISA, EISA,
PCI, VL-Bus, PCMCIA, SCSI, Micro Channel Architecture,
IDE, Access.bus, P1394, parallel ports, RS-232 serial ports, and
SVGA monitors. PnP will also configure hard-wired
motherboard devices in your system, such as the keyboard,
mouse, joystick, and display controllers. No more jumpers, no
more DIP switches, no more messing with configuration
files . . . .”

(Halfhill, at 3-4.)

Dynamic configuration is perhaps the most exciting
benefit of full PnP integration. Until recently, this wasn’t a
factor, because few I/O buses allowed hot-plugging. But newer
buses like PCMCIA and P1394 actually encourage you to add
or remove devices while the computer is running. To cope with
this, the operating system must juggle system resources and
device drivers without unduly pestering you. Moreover, the
operating system should be able to pass messages about
dynamic events to applications, which in turn should be capable
of responding appropriately.

(Id. at 10.)

3. PnPISA discloses a Plug and Play standard register stored the
Appeal 2009-001149
Application 09/897,870

7
PnP command for configuring the peripherals (pp. 14-15, Fig. 6, p. 49, Fig.
A-1).

V. ANALYSIS
“[T]he examiner bears the initial burden on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d at 1445.
The Examiner set forth a detailed explanation of a prima facie case of
unpatentability in the Examiner’s Answer. Therefore, we look to
Appellant’s Briefs to show error in the proffered prima facie case.
The Appellant argued claims 1-4, 6-8, 10-14, and 16-32 together as a
group (App. Br. 10). Therefore, we select independent claim 1 as the
representative claim for this group, and we will address the Appellant’s
arguments with respect thereto. See 37 C.F.R. § 41.37(c)(vii).

35 U.S.C. § 103(a)
With respect to claim 1, the Appellant contends that the combination
of Titherley, PnPISA, and Halfhill fails to provide a “valid motivation to
combine” because “‘Titherley’ reference is directed to testing computer
peripherals with portable test equipment. At any one time, the portable test
equipment is only attached to one peripheral under test, or at most a plurality
of serially attached devices,” and in contrast, PnP is “to arbitrate
simultaneous requests from a plurality of parallel devices.” (App. Br. 11;
Reply Br. 3.)
Appeal 2009-001149
Application 09/897,870

8
We disagree with the Appellant’s contention.
First, we find that the intention of Titherley is to test a plurality of
computer peripherals with the test routines stored in the plug-in module
(FF 1). Moreover, the testing process of Titherley needs the manual
intervention by the user because of “different peripheral connector
configurations applicable to the different peripheral devices” (FF 1). We
further find that PnP can automatically configure a plurality of computer
peripherals regardless how the peripherals are connected, and configure
them on the fly (FF 2), rather than the Appellant’s characterization of PnP
only to arbitrate simultaneous requests from a plurality of parallel devices.
We, finally, conclude that incorporating PnP technology into the testing
equipment of Titherley would improve the efficiency of the testing
equipment because the testing process would be automatic for different
computer peripherals by utilizing the automatic configuration feature of PnP.
The Appellant further contends that “there would also be no
motivation to modify the ‘Titherley’ reference with either the ‘Plug and
Play’ or the ‘Halfhill’ references because such a modification would not
actually even provide any benefit to a user of the portable equipment of the
‘Titherley’ reference.” (App. Br. 13.) Because the device intended to be
tested by Titherley is not a PC, nor is it a plug-and play peripheral, the
modification to combine Titherley with PnP or Halfhill would not be
desirable. (App. Br. 13; Reply Br. 5-6.)
We disagree with the Appellant’s contention. The Supreme Court
noted that although the teaching, suggestion, motivation test “captured a
helpful insight,” an obviousness analysis “need not seek out precise
Appeal 2009-001149
Application 09/897,870

9
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. As discussed
supra, incorporating PnP technology into the testing device of Titherley
would provide benefits to a user such as automatic testing different computer
peripherals. The knowledge that utilizing PnP technology for automatically
configuring different peripherals was a desirable and efficient way to
configure the peripherals to be tested and the microcontroller would have
been within the skill in the art, as evidenced by Titherley, PnPISA, and
Halfhill. Furthermore, one of ordinary skill in the art is also a person of
ordinary creativity, not an automaton. KSR, 550 U.S. at 421. Therefore, it
would have been obvious at the time of the invention to use the prior art PnP
technology taught by PnPISA or Halfhill in the testing microcontroller of
Titherley. This combination would predictably automate the testing process
of Titherley by automatically configuring the peripherals and the testing
device, and automatically invoking a testing routine for a peripheral to be
tested, a result that PnPISA and Halfhill teach to be desirable. Further, this
appears to be no more than the predictable use of one known prior art
element (i.e., PnP technology such as either PnPISA or Halhill) for another
(e.g., the testing equipment of Titherley) in order to automatically test a
plurality of computer peripherals. In our view, the combination of familiar
elements, for example, the microcontroller of Titherley combined with the
well known PnP technology, is nothing more than the “predictable use of
prior art elements according to their established functions.” KSR, 550 U.S.
at 417.
Appeal 2009-001149
Application 09/897,870

10
The Appellant further contends that “one skilled in the art would not
be motivated to modify the ‘Titherley’ reference to apply plug-and-play
functionality because the ‘Titherley’ reference in fact teaches away from this
combination.” (App. Br. 12.) “Thus, the portable test equipment of the
‘Titherley’ reference, if modified by the ‘Plug and Play’ reference, would
greatly increase in complexity and not function for its intended use as a
portable diagnostic tool.” (Id. at 13.)
We disagree with the Appellant’s contention. We find that the
teaching of the use of PnP technology is simply one way of automatically
configuring computer peripherals, and the technology is well known to be
utilized in either general computers or in portable devices such as portable
computers (FF 2). We also find that the PnP technology simplifies the
process of initializing, identifying, and configuring the peripherals by
automatically dynamic configuration (FF 2). We conclude that PnP
technology could be coded in the plug-in module or stored in the memory of
the microcontroller of Titherley (FF 3) without affecting the portability of
testing device of Titherley. “The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed . . . .” In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). We do not find teachings in the disclosure of
either Titherley or PnPISA or Halfhill that criticize, discredit, or otherwise
discourage the solution claimed, i.e., automatic execution of a program
“without other external or operator related influences.” We, thus, conclude
that the PnP technology of PnPISA or Halfhill, particularly automatically
Appeal 2009-001149
Application 09/897,870

11
configuring the peripherals, is not contradictory or teaching away with the
portable testing device of Titherley.
The Appellant further contends that in reviewing Titherley in its
entirety,
it would at least be overly burdensome to modify all of the devices
that the “Titherley” reference is intended to test to be plug-and-play
enabled. For evidence of the incredible difficulty of such a task, the
Office is directed to the “Halfhill” reference, which discusses this at
length. The “Halfhill” reference[] states [at] page 1, for example,
“And although Plug and Play does a remarkable job of making PCs
friendlier while maintaining compatibility with existing hardware, it
also requires that you eventually replace almost all that hardware.”
In the Advisory Action (at the continuation of 11), the Office asserts
that this reference has been taken out of context and that the many
advantages of plug-and-play far outweigh the stipulation that you
must eventually replace old, obsolete hardware, however Applicants
disagree. Within the context of the “Titherley” reference, this
requirement to replace all hardware would be burdensome, as
conceded by the Office in the Advisory Action (at the continuation of
11), and would not provide any benefit because the device of the
“Titherley” reference is not a PC and does not test plug-and-play
peripherals. Consequently, one of ordinary skill in the art would be
dissuaded from modifying the “Titherley” reference.

(App. Br. 14; see also Reply Br. 6.)
We disagree with the Appellant’s contentions. We find that the
Appellant’s analysis of replacing all hardware of Titherley for utilizing PnP
technology to be a rigid, bodily incorporation of PnPISA or Halfhill with
Titherley. “[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR, 550 U.S. at 417. Here,
Appeal 2009-001149
Application 09/897,870

12
the PnP technique of PnPISA and Halfhill were well known and widely used
to automate configuration of computer peripherals and allocation of the
system resources (FF 2-3). One of ordinary skill in the art would have
recognized that PnP technology would improve the similar system of
Titherley in the same or similar way. It is our view that the combination of
either PnPISA or Halfhill with Titherley is “a design step well within the
grasp of a person of ordinary skill in the relevant art” and the benefit of
doing so would be obvious. KSR, 550 U.S. at 427. The Appellant has not
shown that employing PnP technology in the microcontroller of Titherley
was uniquely challenging or difficult for one of ordinary skill in the art or
represented an unobvious step over the prior art.
The Appellant also contends that the Examiner employs a subjective
“obvious to try” standard to combine the references and thus, “does not
reflect the proper evidence to support an obviousness rejection based on the
references relied upon” (App. Br. 15); and that “the Office Actions to date
offer no evidence whatsoever, but only conclusory hindsight, reconstruction
and speculation, which these cases have indicated does not constitute
evidence that will support a proper obviousness finding.” (Id. at 16.)
We disagree with the Appellant’s contentions. When there is
motivation
to solve a problem and there are a finite number of identified
predictable solutions, a person of ordinary skill has good reason to
pursue the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that instance
the fact that a combination was obvious to try might show that it was
obvious under § 103.

Appeal 2009-001149
Application 09/897,870

13
KSR, 550 U.S. at 421.
This reasoning is applicable here to evaluate the “obvious to try”
standard used, as alleged by the Appellant. To simplify the testing process
of Titherley, the limited choices are either utilizing PnP technology to
automate the testing process or designing a specific program for the device
automation. We find these known options would have been well within the
technical grasp of a person of ordinary skill, and in fact, widely used. A
skilled artisan would have had reason to try these technologies with the
reasonable expectation that at least one would be successful. Thus, utilizing
a program stored in a register for automatically controlling the operation of a
microcontroller was not “a product of innovation but [rather the result] of
ordinary skill and common sense.” Finally, the Appellant has not shown
that employing PnP technology in the portable testing microcontroller was
uniquely challenging or difficult for one of ordinary skill in the art or
represented an unobvious step over the prior art.
Therefore, we conclude that the claimed invention is not patentable as
it would have been obvious over the combination of Titherley, PnPISA, and
Halfhill.
To determine whether there was an apparent reason to combine the
known elements in the way,
[o]ften it will be necessary . . . to look to interrelated teachings of
multiple patents; the effects of demands known to the design com-
munity or present in the marketplace; and to the background
knowledge possessed by a person having ordinary skill in the art . . . .
To facilitate review, this analysis should be made explicit. . . . [But it]
need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can [consider] the
inferences and creative steps that a person of ordinary skill in the art
Appeal 2009-001149
Application 09/897,870

14
would employ.

KSR, 550 U.S. at 418 (citation omitted).
Here, automatically configuring the computer peripherals was well
known and widely used at the time of the invention, as taught by PnPISA
and Halfhill. A person of ordinary skill in the art who would simplify the
testing process of computer peripherals for automatically and appropriately
configuring and allocating the system resources would have obviously
employed the known PnP technology. Thus, we find that the Examiner’s
obviousness rejection was not based on impermissible hindsight, rather
based on “the inferences and creative steps a person of ordinary skill in the
art would employ.” (Id.)
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1. We also sustain the Examiner’s obviousness
rejections of independent claims 6, 10, and 32, which have not been
separately argued. Dependent claims 2-4, 7-8, 11-14, and 16-31 fall with
the corresponding base claims. 37 C.F.R. § 41.37(c)(1)(vii). See also In
re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
With respect to claims 5, 9, and 15, the Appellant only contends that
“the third level ‘Simar’ reference does not cure and is not asserted to cure
the critical deficiencies of the primary and secondary references as explained
above.” (App. Br. 17).
Since we sustain the Examiner’s obviousness rejection of independent
claims, we also sustain the obviousness rejection of dependent claims 5, 9,
and 15, which have not been separately argued. 37 C.F.R. § 41.37(c)(1)(vii).
See also In re Nielson, 816 F.2d at 1572.
Appeal 2009-001149
Application 09/897,870

15

VI. CONCLUSION
Based on the administrative record before us, the Appellant has not
shown that the Examiner erred in determining that the combination of
Titherley, PnPISA, and Halfhill renders the claimed invention obvious.

VII. DECISION
We affirm the rejection of claims 1-32 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

msc

KENYON & KENYON, LLP
ONE BROADWAY
NEW YORK, NY 10004