Ex Parte Wischinski

Board of Patent Appeals and Interferences

Jun 18, 2007

09635280 (B.P.A.I. Jun. 18, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RAINER H. WISCHINSKI
____________________

Appeal 2007-0894
Application 09/635,280
Technology Center 2100
____________________

Decided: June 18, 2007
____________________

Before LEE E. BARRETT, MAHSHID D. SAADAT, and ALLEN R.
MACDONALD, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-17, 19-21, and 23. Claims 18 and 22 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to a control system on a network which
includes an automation device and a network device. One of the plurality of
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Application 09/635,280

application programs stored in the network device controls the automation
device and is selected by the network device in response to an application
program request sent from the automation device (Specification 2).
Independent Claim 1 is exemplary and reads as follows:
1. A control system, comprising:

an automation device operably connected to a network;

a network device operably connected to the network; and,

a plurality of customized application programs for the
automation device stored in the network device, wherein one
customized application program of the plurality of customized
application programs controls the automation device, and is
selected by the network device in response to a specific
application program request message for the one customized
application program received at the network device and sent
from the automation device as part of a bootstrap protocol, and
wherein the customized application program is downloaded to
the automation device at a boot time of the automation device.

The Examiner relies on the following prior art in rejecting the claims:
Nookala US 5,878,257 Mar. 2, 1999
Nixon US 5,909,368 Jun. 1, 1999
Johnson US 6,788,980 B1 Sep. 7, 2004
(effectively filed Aug. 17, 1999)

Ditze, “A Customizable Library to support Software Synthesis for Embedded
Applications and Micro-Kernel Systems’, September 1998, pp. 88-95.

Claims 1, 2, 4-9, 11-13, 15, 17, 19-21, and 23 stand rejected as being
unpatentable under 35 U.S.C. § 103(a) over Nixon and Nookala.
Claims 3, 14, and 16 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over Nixon, Nookala and Ditze.
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Claim 10 stands rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Nixon, Nookala, and Johnson.
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of the Appellant and the
Examiner.
We reverse.

ISSUE
Appellant contends that, instead of the automation device, it is the
user in Nixon who selects a control routine to be downloaded (Br. 11). The
Examiner argues that the user in Nixon creates a customized program which
defines the programs to be downloaded (Answer 16-18). Therefore, the
issue on appeal turns on whether a preponderance of the evidence before us
shows that the combination of the prior art teaches or suggests the claimed
subject matter and specifically the customized application program in
response to a specific application program request received at the network
device and sent from the automation device.

FINDINGS OF FACT
Nixon relates to a process control system using a distributed process
control strategy (col. 2, ll. 8-10) wherein a user defines the control strategy
by building a plurality of function blocks and control modules and
downloading or installing user-specified portions of the control strategy to
be downloaded (col. 4, ll. 45-51).
The customized program of Nixon relied on by the Examiner is
actually various control routines generated in response to user input
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Application 09/635,280

commands (col. 7, ll. 8-13). The user designs the control routines by
creating control templates which are defined as the grouping of attribute
functions that are used to control a process and the related control
methodology (col. 9, l. 62-67). However, Nixon does not provide any
teachings related to the selection of the application program in response to a
message from any element other than the user.
Nookala provides for programs that allow firmware to be dynamically
written into programmable memory from a remote location (col. 2, ll. 6-9).
Nookala further discloses that a request is sent to the data source to
initiate the transmission of the program’s instruction codes for retrieving the
program used in writing a firmware into a storage device from a source
connected to the network (col. 3, ll. 21-27, 43-45). However, there is no
disclosure in Nookala describing that the request is received at the network
device and sent from the automation device.

PRINCIPLES OF LAW
A claimed invention is unpatentable as obvious “if 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.” See 35 U.S.C. § 103(a) (2002); In re
Dembiczak,175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir. 1999).
While “the common sense of those skilled in the art” may be relevant
to an obviousness inquiry, cf. Leapfrog Enterprises, Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1690 (Fed. Cir. 2007), the
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Application 09/635,280

ultimate consideration depends on “the differences between the subject
matter sought to be patented and the prior art” and the level of “ordinary
skill in the art.” See 35 U.S.C. 103(a) (2002). Thus, a determination of
obviousness requires us to:
1) determine the scope and content of the prior art;
2) ascertain differences between the prior art and the claims at issue;
and
3) determine the level of ordinary skill in the art. See Graham v. John
Deere, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Further, a rejection based on section 103 must rest upon a factual
basis rather than conjecture, or speculation. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.” In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967). See also In re Lee,
277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002) and In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).

ANALYSIS
The Examiner does not show where the prior art teaches or suggests
that the application programs are selected in response to a request message
sent from the automation device. While Nixon indicates that control
templates define the control process and methodology, no further suggestion
as to the source of the request message used for selection of the application
programs other than the user can be discerned from the reference.
Similarly, the Examiner’s assertion that Nookala provides for the
specific application program request (Answer 19), ignores the specific
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recited features of the claim. Nookala’s request is for transmission of the
codes to retrieve a program used in rewriting the firmware which is different
from the claimed request sent from an automation device for a specific
application program for the control of the automation device. Thus, we find
that the Examiner’s rejection rests on speculation and less than a
preponderance of the evidence and thus, fails to provide sufficient reasons
for finding claim 1, as well as claims 2, 4-9, 11-13, 15, 17, 19-21, and 23
which include similar limitations, unpatentable for obviousness under
35 U.S.C. § 103(a) over Nixon and Nookala.
With respect to the rejection of claims 3, 10, 14, and 16, we note that
the Examiner further relies on Ditze and Johnson for the additional features
recited in these dependent claims. However, the Examiner does not point to
any additional teachings or convincing rationale in modifying the
combination of Nixon and Nookala with the teachings of these references
that would have overcome the deficiencies of the applied prior art as
discussed above with respect to claim 1. Accordingly, we do not sustain the
35 U.S.C. § 103 rejection of claims 3, 14, and 16 over Nixon and Nookala in
combination with Ditze, nor of claim 10 over Nixon and Nookala in
combination with Johnson.

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DECISION
The decision of the Examiner rejecting claims 1-17, 19-21, and 23
under 35 U.S.C. § 103 is reversed.

REVERSED

KIS

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