Ex Parte Teranishi et alDownload PDFPatent Trial and Appeal BoardApr 30, 201411405703 (P.T.A.B. Apr. 30, 2014) Copy Citation 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. 11/405,703 04/18/2006 Keiichi Teranishi 044499-0282 2791 22428 7590 04/30/2014 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER GUYTON, PHILIP A ART UNIT PAPER NUMBER 2113 MAIL DATE DELIVERY MODE 04/30/2014 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 PATENT TRIAL AND APPEAL BOARD ________________ Ex parte KEIICHI TERANISHI, YASUO MUNETA, CHIAKI KOSHIRO, NAOAKI IKENO, TOSHIYUKI NAKAMURA, HIROMU SUGANUMA, ASAHI MATSUI, KATSUFUMI YOSHIDA, SHOHEI FUJIWARA, and TAKEHIKO HIOKA ________________ Appeal 2011-009843 Application 11/405,703 Technology Center 2100 ________________ Before STEVEN D.A. MCCARTHY, BRADLEY W. BAUMEISTER, and BRETT C. MARTIN, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009843 Application 11/405,703 2 SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-7, 9, and 10. Each of these claims stands rejected under 35 U.S.C. § 103(a) as obvious over Winchcomb (US 6,176,247 B1; issued Jan. 23, 2001) in view of Snowbarger (US 7,621,293 B2; issued Nov. 24, 2009, filed June 23, 2006). Claim 8 was cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). We reverse. STATEMENT OF CASE The invention relates to an input/output “I/O” terminal that connects various safety devices to a network system. Spec. ¶ 7. The I/O terminal includes an input unit that has input terminals, an output unit that has output terminals, and a testing unit that has test terminals. Spec. ¶ 20. The I/O terminal also receives and stores specification settings. Spec. ¶¶ 20-21. The specification settings modify and dictate the functions that the various input, output, and test terminals have in given situations. Spec. ¶¶ 8, 22. Independent claim 1 is illustrative: 1. A safety I/0 terminal for connecting to an input device designed based on a safety standard, to which an on-off signal is input, connecting to a safety controller designed based on the safety standard via a network, and transmitting an input signal from the input device to a communication master unit of the safety controller, comprising: Appeal 2011-009843 Application 11/405,703 3 one or more input terminals configured to be given the input signal from the input device compliant with the safety standard; a test terminal, configured to be used in a test out specification in combination with at least one of a nonuse specification, a standard output specification, a power supply specification and a muting lamp specification; a memory configured to store a specification setting regarding the test terminal, wherein the specification setting allows the safety I/0 terminal to switch the structure of the one or more input terminals and test terminal in accordance with the input device to be controlled; and a microcomputer configured to output a test signal for determining presence of abnormality when the specification setting regarding the test terminal is specified as the test out specification and to carry out a process regarding the test terminal based on the specification setting when the specification setting regarding the test terminal is specified as one of the other specifications, in accordance with the specification setting in the memory, wherein the process includes at least one of: stopping use of an output from the test terminal when the specification setting is specified as the “nonuse specification”, outputting a signal regarding operating conditions of the safety I/0 terminal from the test terminal when the specification setting is specified as the “standard output specification”, outputting power voltage from the test terminal when the specification setting is specified as the “power supply specification”, and outputting a signal to a muting lamp from the test terminal when the specification setting is specified as the “muting lamp specification”. Appeal 2011-009843 Application 11/405,703 4 CONTENTIONS1 The Examiner finds that Winchcomb discloses most of the limitations of independent claim 1, but does not disclose that the specification setting allows the safety I/O terminal to switch the structure of the one or more input terminals and test terminal in accordance with the input device to be controlled. Ans. 4-6. The Examiner finds that Snowbarger teaches these limitations (Ans. 11-12) and that motivation existed to combine the references (Ans. 12-13). More specifically, the Examiner finds Snowbarger teaches an emergency shutdown device controller that can be configured to control and test a shutdown device according to the type of shutdown device. Ans. 11. The Examiner finds that the controller includes a memory for configuring the controller for different kinds of shutdown equipment such as by receiving a test activation signal from the emergency shutdown controller or user. Id. The Examiner further finds there are numerous variations of the configuration of the emergency shutdown system. Ans. 12. The Examiner therefore reasons that the structure of the test terminal can be switched according to the desired specification setting. Ans. 11-12. The Examiner further finds Snowbarger discloses two different configurations of the emergency shutdown system having two pressure sensors 40 and 42. Examiner interprets the pressure sensors as the input terminals. Examiner finds the sensor 42, via line 45, is connected differently 1 Rather than repeat the Examiner’s positions and Appellants’ arguments in their entirety, we refer to the following documents for their respective details: the Appeal Brief (“App. Br.”) filed January 21, 2011; the Examiner’s Answer (“Ans.”) mailed May 4, 2011; and the Reply Brief (“Reply Br.”) filed May 31, 2011. Appeal 2011-009843 Application 11/405,703 5 between the two configurations. Id. Therefore, the Examiner reasons that the structure of the input terminals is switched according to the specification setting for the device to be controlled. Regarding claims 1, 2, and 4, Appellants contend that neither Winchcomb nor Snowbarger discloses a memory configured to store a specification setting regarding the test terminal, wherein the specification setting allows the safety I/O terminal to switch the structure of the one or more input terminals and test terminal in accordance with the input device to be controlled. App. Br. 11-12; Reply Br. 1-3. According to Appellants, Snowbarger is directed to a shutdown device controller and a method for testing physical safety valves and other electromechanical devices. App. Br. 11-12; Reply Br. 1-2. Appellants argue there is no description in the passages cited by Examiner that disclose that the test routines stored in the memory allow the device controller to switch its structure or the structure of any component in accordance with the type of device being controlled. Id. Appellants further argue Examiner’s reference to Figures 1 and 3 of Snowbarger as depicting two different configurations does not teach switching the structure of the one or more input terminals as the depicted modification is merely changing a source of input. Reply Br. 2-3. Appellants argue Snowbarger fails to show how the memory of digital valve controller DVC or anything stored in memory switches the structure of sensors 40 and 42. Appellants contend that the existence of various configurations in itself does not teach a specification setting stored in memory that allows a safety I/O terminal to switch the structure of the one or more input terminals and test terminal in accordance with the input device to be controlled. Id. Appeal 2011-009843 Application 11/405,703 6 Appellants further contend there is not motivation for combining the references. Id. ANALYSIS Appellants have persuaded us of error in the Examiner’s obviousness rejection of independent claims 1, 2, and 4. For the reasons set forth below, the Examiner failed to establish that Snowbarger discloses “a memory configured to store a specification setting regarding the test terminal, wherein the specification setting allows the safety I/O terminal to switch the structure of the one or more input terminals and test terminal in accordance with the input device to be controlled” as claimed. As a threshold matter, we must first interpret what is meant by the claim language, “switch[ing] the structure of the one or more input terminals . . . .” Granted, the present Specification may not constitute a model translation of a foreign priority document. However, reading the Specification as a whole, we find it reasonably clear that the structures of the terminals themselves are not actually being switched or changed. Rather, it is the functionalities associated with the individual terminals that are being switched. Turning to the contentions, the Examiner states that Snowbarger teaches an emergency shutdown device controller that can be configured to control and test a shutdown device according to the type of shutdown device. Ans. 11-12. However, the teachings noted by the Examiner merely state that the memory of the device controller stores test routines for causing emergency shutdown tests or that different types and configurations of emergency shutdown devices can be controlled and tested. Examiner has Appeal 2011-009843 Application 11/405,703 7 not demonstrated how these teachings disclose actually switching the structure of the one or more input terminals and test terminal. Merely testing different types and configurations of emergency shutdown devices does not establish that a memory is configured to store specification settings. Nor does such testing establish that a microcomputer is configured, based upon these stored specification settings, to allow the safety I/O terminal to switch the structure of the one or more input terminals and test terminal. We further disagree with the Examiner’s finding that the drawings’ depiction of differing configurations for sensors 40, 42 is sufficient to conclude that Snowbarger discloses “switching the structure of the input terminal.” See Ans. 11-12. The different arrangement of line 45 merely changes the input sources; it does not change the structure of the input terminal (sensors 40 and 42) or test terminal. Moreover, the Examiner has not explained how the disposing of line 45 differently in Figures 1 and 3 discloses that a memory is configured to store a specification setting that allows the safety I/O terminal to switch the structure of the one or more input terminals and test terminals. Because we find that the cited prior art does not, in fact, disclose the disputed limitation, Appellants’ arguments relating to why it would not have been obvious to modify the cited prior art, are moot. For the foregoing reasons, Appellants have persuaded us of error in the Examiner’s obviousness rejection of independent claim 1, as well as independent claims 2 and 4, which both set forth similar language regarding a memory that stores specification settings that allow the structure of the terminals to be switched. Accordingly, we will not sustain the obviousness Appeal 2011-009843 Application 11/405,703 8 rejection based upon Winchcomb in view of Snowberger of independent claims 1, 2, and 4, or of dependent claims 3, 5-7, 9, and 10. DECISION The Examiner’s decision rejecting claims 1-7, 9, and 10 is reversed. REVERSED msc Copy with citationCopy as parenthetical citation