Rosemount Inc.

Patent Trials and Appeals Board

Oct 30, 2020

15617506 - (D) (P.T.A.B. Oct. 30, 2020)

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.
15/617,506 06/08/2017 Nicholas Aaron Wienhold R011.1193US1 8114
27367 7590 10/30/2020
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1100
121 South Eighth Street
MINNEAPOLIS, MN 55402
EXAMINER
CASILLASHERNANDEZ, OMAR
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
10/30/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@wck.com
tsorbel@wck.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS AARON WIENHOLD and
ANDREW JAMES BRONCZYK

Appeal 2019-003885
Application 15/617,506
Technology Center 2600
____________

Before JOHN A. EVANS, JUSTIN BUSCH, and
JOHN P. PINKERTON, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject Claims 1–27, which are all of the claims
pending in the present application. Appeal Br. 1; see also id. at 24–28,
Claims App. We have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.
We REVERSE.2

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Rosemount Inc. Appeal Br. 3.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (“Appeal Br.”) and Claims Appendix (“Claims
App.”), filed December 31, 2018; the Examiner’s Answer (“Ans.”), mailed
February 20, 2019; the Reply Brief (“Reply Br.”), filed April 15, 2019; the
Final Office Action (“Final”), mailed July 31, 2018; and the Specification
(“Spec.”), filed June 8, 2017, for their respective details.

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STATEMENT OF THE CASE
Claimed Subject Matter
The claims relate to “[a] field device for an industrial process
includ[ing] a current detector for detecting the amount of current consumed
by the field device and an interface allowing the field device to
communicate with . . . other devices.” Spec. ¶ 4. The interface may
communicate a first alert when the amount of current consumed by the field
device exceeds a first threshold and a second alert when the amount of
current consumed by the field device is below a second threshold. Id.
Claims
Claims 1, 13, and 18 are independent. Claim 1 is illustrative and
reproduced below with some formatting added:
1. A field device for an industrial process, the field device
comprising:
a current detector for detecting the amount of current
consumed by the field device;
an interface, allowing the field device to communicate with at
least one other device, such that the interface
communicates a first alert when the amount of current
consumed by the field device exceeds a first threshold
and a second alert when the amount of current
consumed by the field device is below a second
threshold.
References and Rejections on Appeal
Claims 1–4, 8, 9, 12–15, 17, 18, and 20–22 stand rejected under
35 U.S.C. § 102(a)(1) as being anticipated by Wehrs et al. (US 9,182,256
B2; issued Nov. 10, 2015) (“Wehrs”). Final 2–6.
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Claims 5–7, 16, and 24–26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wehrs and Takeuchi et al. (US 5,793,297; issued
Aug. 11, 1998) (“Takeuchi”).3 Id. at 7–10.
Claims 10, 11, 19, and 27 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wehrs and Huisenga et al. (US 7,321,846 B1;
issued Jan. 22, 2008) (“Huisenga”).4 Id. at 10–13.
Claim 23 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Wehrs. Id. at 13–14.
ANALYSIS
The Examiner rejects independent claims 1, 13, and 18 under
35 U.S.C. 102(a)(1) as anticipated by Wehrs. Final 2–6. Of particular
relevance to this Appeal, the Examiner finds Wehrs discloses the following
claim limitations:

3 The Final Office Action does not list claim 16 in the statement of rejection
but nonetheless includes findings from Wehrs or Takeuchi for all the
elements of claim 16 (including all the elements of its parent claims), along
with an alleged reason to combine Wehrs and Takeuchi. See Final 4–5, 9.
Accordingly, we consider claim 16 to stand rejected under 35 U.S.C. § 103
as unpatentable over the combination of Wehrs and Takeuchi. We treat this
irregularity in the record to be a clerical or typographical error.
4 The Final Office Action does not list claims 11, 19, and 27 in the
statement of rejection but nonetheless includes findings from Wehrs or
Huisenga for all the elements of claims 11, 19, and 27 (including all the
elements of their respective parent claims), along with alleged reasons to
combine Wehrs and Huisenga. See Final 2–3, 5–6, 11–13. Accordingly, we
consider claims 11, 19, and 27 to stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Wehrs and Huisenga. We treat this
irregularity in the record to be a clerical or typographical error.

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“the interface communicates . . . a second alert when the
amount of current consumed by the field device is below a
second threshold” (Claim 1);
“the interface communicating an alert that indicates that
the field device is functioning improperly when an amount of
current consumed at the field device is below a threshold”
(Claim 13); and
“interface circuitry . . . providing a signal . . . indicative
of an alert that the field device is functioning improperly when
the device circuitry receives the binary indication that the
current passing through the power regulator exceeds the
threshold” (Claim 18).
Final 2–3, 4, 5–6 (citing Wehrs 5:26–37, Figs. 2, 3); Appeal Br. 24, 25–26,
27, Claims App. For the reasons that follow, we are persuaded by
Appellant’s arguments that the cited portions of Wehrs do not disclose these
claim limitations. Appeal Br. 4–9, 11–12; Reply Br. 2–4.
Wehrs describes a system that can perform an electrical
characterization of a two-wire process control loop. Wehrs 4:46–5:33. The
characterization process may begin by obtaining terminal voltage and loop
read back current measurements. Id. at 4:53–66. These measurements may
be used to determine pre-check values of loop resistance and power supply
voltage, which are used to verify that the system is capable of operating
when the output is set to its extreme minimum (VTmin) and maximum
(VTmax) values, for example using currents of 23.0 mA and 3.6 mA,
respectively. Id. at 4:48–49, 4:66–5:18. Having calculated VTmin and
VTmax, Wehrs describes that
[i]f VTmin is below a minimum the specified
TERMINAL_VOLTAGE for this system, for example 12 volts,
or VTmax is above a maximum specified
TERMINAL_VOLTAGE for the system, for example, 42.4
volts, the microprocessor can be configured to provide a warning
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to the user, for example, by transmitting data through the two-
wire process loop 18 or by providing a visual output, etc., which
instructs the user to adjust the power supply 24 shown in FIG. 1
as appropriate.
Wehrs 5:26–33; Final 2–3, 4, 5–6.
The Examiner explains that “VTmax and VTmin [are thresholds]
defined by the Terminal voltage, which is the measure voltage between loop
18 which is defined by the current passing through loop 18, thus voltage is a
representation [of] and/or based [on] the current passing through the loop.”
Ans. 4–5 (citation omitted) (citing Wehrs 4:34–36, 5:14–18). The Examiner
explains further that “VTmax and . . . VTmin . . . each . . . correspond to a
particular current . . . and said values would result in first and second alert,
which would meet the claim limitation. Id. at 6 (citing Wehrs 5:14–18).5
Appellant argues Examiner error because the cited portions of Wehrs
calculate two voltages, VTmin and VTmax, but do not disclose a current
consumed by a field device (claims 1 and 13) or current passing through the
power regulator (claim 18) as recited. Appeal Br. 5–9, 14–15; Reply Br. 2–
4. In support, Appellant asserts that the terminal voltage in Wehrs is not the
same as, or functionally equivalent to, reading a current because “the
terminal voltage in Wehrs is not proportional to the loop current in Wehrs,”
and “different loop currents can be present for the same terminal voltage.”
Appeal Br. 15; see also id. at 5–9.

5 Ans. 5 (“VT max and VT min will be making reference to a
minimum/maximum current passing through the loop,” as “VTmin and
VTmax correspond to the current values 3.6mA and 23mA, respectively . . .
that would produce a VTmax and VTmin[,] which would produce the alerts”
(citation omitted)).
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We agree with Appellant. As Appellant argues, and as discussed
above, the cited portions of Wehrs describe a process for electrically
characterizing the system that includes calculating VTmax and VT min,
which are voltages, not current. Moreover, during this process, Wehrs
describes setting the current to 3.6 mA if the terminal supply voltage is
analyzed as too high, or 23 mA if the terminal supply voltage is analyzed as
too low. See, e.g., Wehrs 2:24–27, 5:39–41, Figs. 4, 5. This indicates that
the current has been clamped and is not being measured or detected. And,
even though Wehrs’s electrical characterization process begins by measuring
the loop read back current, the Examiner does not cite evidence indicating
that this measurement would inform the system that the current consumed by
the field device is below a threshold (Claims 1 and 13) or that the current
passing through the power regulator exceeds a threshold (Claim 18). Nor
has the Examiner demonstrated that Wehrs’s terminal voltage is the same as,
or proportional to, current “consumed by a field device” or “passing through
the regulator.” Appellant’s points on this issue are well taken (see Appeal
Br. 6–9), and the Examiner does not offer any persuasive evidence in
rebuttal (see Ans. 4–5).
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.” In re Van Os, 844
F.3d 1359, 1362 (Fed. Cir. 2017) (quoting Application
of Warner, 379 F.2d 1011, 1017 (CCPA 1967)). Accordingly, on this
record, we will not speculate in the first instance as to whether various other
of Wehrs’s disclosures that the Examiner has not cited or explained
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anticipate the claimed subject matter. Ex parte Braeken, 54 USPQ2d 1110,
1112 (BPAI 1999) (“The review authorized by 35 U.S.C. [§] 134[,] is not a
process whereby the examiner . . . invite[s] the [B]oard to examine the
application and resolve patentability in the first instance.”); see, e.g., Wehrs
6:40–44 (“The quiescent current can be useful in performing diagnostics.
The quiescent current can be measured using SHUNT_CURRENT reading
and a synchronized loop current value (output current reference).”), 6:48–51
(“If the quiescent current exceeds a predefined value, for example if the
quiescent value is greater than 3.4 mA, then an alert can be transmitted on
the two-wire process control loop and a local alarm generated as desired.”),
6:51–55 (“Further, a dynamic threshold value can be compared to the
quiescent current to verify that communication requirements are met. For
example, a low alarm setting minus the quiescent current should be greater
than 0.5 mA.”)); see also, e.g., id. at 6:9–15 (discussing comparing the loop
read back current to thresholds and outputting an alert).
We therefore agree with Appellant that the Examiner erred in finding
the cited portions of Wehrs disclose “a current consumed by a field device”
(Claims 1 and 13) or “current passing through the power regulator” (Claim
18) as recited. Accordingly, constrained by this record, we decline to sustain
the Examiner’s § 102(a)(1) rejection of independent Claims 1, 13, and 18 as
anticipated by Wehrs. We also decline to sustain the Examiner’s § 102(a)(1)
rejection of dependent claims 2–4, 8, 9, 12, 14, 15, 17, and 20–22, for which
the Examiner relies on the same defective reasoning. See Final 6–8; Ans. 3–
4. We likewise decline to sustain the Examiner’s § 103 rejections of claims
5–7, 10, 11, 16, 19, and 23–27 because the Examiner provides no finding or
explanation for these claims (for example, in Wehrs, Takeuchi, Huisenga, or
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the knowledge of one of ordinary skill in the art) that cures the deficiencies
discussed above for Claims 1, 13, and 18.

CONCLUSION
We reverse the Examiner’s rejection of Claims 1–4, 8, 9, 12–15, 17,
18, and 20–22 under 35 U.S.C. § 102(a)(1).
We reverse the Examiner’s rejections of Claims 5–7, 10, 11, 16, 19,
and 23–27 under 35 U.S.C. § 103.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
1–4, 8, 9, 12–15,
17, 18, 20–22 102(a)(1) Wehrs
1–4, 8, 9, 12–15,
17, 18, 20–22
5–7, 16, 24–26 103 Wehrs, Takeuchi 5–7, 16, 24–26
10, 11, 19, 27 103 Wehrs, Huisenga 10, 11, 19, 27
23 103 Wehrs 23
Overall
Outcome 1–27

REVERSED