Ex Parte Kantzes et al

Patent Trial and Appeal Board

Jul 27, 2018

10435819 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/435,819 05/12/2003
117849 7590 07/31/2018
Kelly, Holt & Christenson, P.L.L.C.
141 West 1st Street, Suite 100
Waconia, MN 55387
FIRST NAMED INVENTOR
Christopher P. Kantzes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P32.12-0028 1155
EXAMINER
LE,TOANM
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
wmalherek@khcip.com
patents@khcip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER P. KANTZES, BRAD N. MATHIOWETZ, and
ALDEN C. RUSSELL III 1
Appeal2016-004772
Application 10/435,819
Technology Center 2800
Before ROBERT E. NAPPI, KAL YAN K. DESHPANDE, and
JOHN G. NEW, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1 through 9. App. Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Fisher-Rosemount
Systems Inc. App. Br. 3.
Appeal2016-004772
Application 10/435,819
INVENTION
Appellants' disclosed and claimed invention is directed to a handheld
field maintenance tool which is provided with a removable memory module.
Abstract. Claim 1 is representative of the invention and reproduced below.
1. A method of adding application software to a handheld
field maintenance tool, the method comprising:
storing the application software on a removable memory
module, the module being adapted to be replaceable in a
hazardous location;
removably coupling the removable memory module
directly to the tool;
installing the software into the tool from the removable
memory module;
decoupling the removable memory module from the tool;
and
executing the software on the tool.
REJECTION AT ISSUE2
The Examiner has rejected claims 1 through 9 under 35 U.S.C.
§ I03(a) forbeingunpatentable over Dobrowski (US 6,330,517 Bl, issued
Dec. 11, 2001) and Jackson ("Hand-Held Devices for Avionics System
Maintenance" (1997)). Final Action 2-7.
ISSUES
With respect to the Examiner's rejection of independent claim 1
Appellants' arguments on pages 6 through 8 of the Appeal Brief present us
with the following issues:
2 Throughout this Decision we refer to the Appeal Brief filed December 23,
2013, the Final Office Action mailed June 25, 2013, and the Examiner's
Answer mailed March 19, 2014.
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Application 10/435,819
1) Did the Examiner err in finding that the combination of
Dobrowski and Jackson teaches storing application software
on a removable memory module being adapted to be
replaceable in a hazardous location as recited in claim 1?
2) Did the Examiner err in finding that the combination of
Dobrowski and Jackson teaches storing application software
on a removable memory and executing the software on the
handheld field maintenance tool as recited in claim 1?
With respect to claim 5, Appellants' arguments on page 8 and 9 of the
Appeal Brief present us with this issue:
3) Did the Examiner err in finding the combination of
Dobrowski and Jackson teaches the memory module has a
serial number where the software license is based on the serial
number?
With respect to claim, 6 Appellants' arguments on page 9 of the
Appeal Brief of present us with the issue:
4) Did the Examiner err in finding the combination of
Dobrowski and Jackson teaches installation begins
automatically upon coupling the memory module to the tool?
With respect to claim, 9 Appellants' arguments on page 9 of the
Appeal Brief of present us with the issue:
5) Did the Examiner err in finding that the combination of
Dobrowski and Jackson teaches storing application software
on a removable memory module being adapted to be
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Application 10/435,819
replaceable in a hazardous location in compliance with
intrinsic safety as recited in claim 9?
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have persuaded us of error in the
Examiner's determination that claim 6 is unpatentable. However,
Appellants' arguments have not persuaded us of error in the Examiner's
determination that claims 1 through 5 and 7 through 9 are unpatentable.
Claim 1
Appellants' arguments directed to the first issue assert the
combination of Dobrowski and Jackson does not teach storing application
software on a removable memory module being adapted to be replaceable in
a hazardous location. App. Br. 7. Specifically, Appellants argue that
Dobrowski teaches a module on a computer that downloads test data to a
calibration tool, but does not teach a removable module as claimed. App.
Br. 6-7. Appellants argue that Jackson teaches plug in cards with data or
program memory, but that the teaching is directed to an avionics maintained
device and does not teach removable modules in a "hazardous location."
App. Br. 7. Based upon these assertions, Appellants conclude, "neither of
these references teach a tool that satisfies an intrinsic safety standard." App.
Br. 7.
The Examiner provides a detailed response to the Appellants'
arguments on pages 2 through 6 of the Examiner's answer. We have
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Application 10/435,819
reviewed the Examiner's response and concur with the Examiner's analysis
and findings. The Examiner finds that Dobrowski does not teach the
limitation concerning a removable memory, and relies upon Jackson to teach
that feature. Answer 3. Further, the Examiner finds that Jackson teaches a
hand-held device for use in aircraft maintenance, which has removable cards
to program the device. Answer 5---6 ( citing Jackson 490). The Examiner
considers using this teaching of Jackson with Dobrowski provides the
"capability for adding memory ... to the tool calibrator in a rugged compact
form factor." Answer 6. The Examiner considers field aircraft maintained
as a hazardous environment. We agree. We additionally note Appellants'
assertion that "neither of these references teach a tool that satisfies an
intrinsic safety standard" is not commensurate with the scope of claim 1,
which does not recite such a limitation.
Appellants' arguments directed to the second issue assert the
combination of Dobrowski and Jackson does not teach storing application
software and executing the application software on the tool. App. Br. 7.
Specifically, Appellants argue that the claimed application software is
distinct from the testing data of Dobrowski. App. Br. 7. As such,
Appellants conclude, "Dobrowski does not teach or even suggest the storing
of application software on a removable memory module and executing the
software on the handheld field maintenance tool." App. Br. 8.
The Examiner responds by noting that in our prior decision in this
application (Appeal 2010-001100, dated Mar. 26, 2013), we concluded the
skilled artisan would recognize that Dobrowski's calibrator may be loaded
with software related to testing and data transfer. Answer 7 ( citing pages 4--
5 of the prior decision). Further the Examiner states:
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Application 10/435,819
Thus, even though the Appellant's application software is
distinct from Dobrowki' s field device identification
information, parameter information, default parameter values,
and formulas for testing and data transfer, one of ordinary skill
in the art would recognize that the calibrator 14 of Dobrowski
must perform testing and data transfer, and consequently it
would have been obvious to one of ordinary skill in the art at
the time of the invention that the calibrator 14 may be loaded
with application software related to testing or data transfer.
Answer 7.
We concur with the Examiner. As stated, on page 5, in our prior
decision in this application we consider it would be obvious to the skilled
artisan that a tool, such as Dobrowski' s, would also include application
software. Further, we note that Jackson also teaches a portable test device
that executes software applications. See, e.g., paragraph bridging first and
second column of page 497, and paragraph bridging pages 498--499. Thus,
Appellants' augments directed to the second issue have not persuaded us of
error in the Examiner's rejection of claim 1. Accordingly, we sustain the
Examiner's rejection of claim 1.
Claim 5
Appellants' arguments directed to claim 5 assert the Examiner has not
addressed the limitations of claim 5 and that the combination of Dobrowski
and Jackson does not teach the memory module has a serial number where
the software license is based on the serial number. App. Br. 8-9.
The Examiner responds identifying where the Final Action addressed
the limitation and reasoned that the device identification information loaded
could include a serial number where the software license is based upon the
serial number. Answer 10. We agree with the Examiner's reasoning and
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Application 10/435,819
additionally note that the disputed limitation of claim 5, is directed to non-
functional descriptive material (printed matter), which will not define an
invention over the prior art. "[O]nce it is determined that the limitation is
directed to printed matter, one must then determine if the matter is
functionally or structurally related to the associated physical substrate, and
only if the answer is 'no' is the printed matter owed no patentable weight."
In re DiStefano, 808 F.3d. 845, 851 (Fed. Cir. 2015). Here, the claim merely
recites that the module has serial number data. The claim does not recite a
limitation describing a function associated with the data, but merely recites
that the data is a serial number and the software is licensed based upon the
serial number. Thus, Appellants' arguments have not persuaded us of error
in the Examiner's rejection of claim 5 and we sustain the Examiner's
rejection.
Claim 6
Appellants' arguments directed to claim 6 assert the Examiner has not
addressed the limitations of claim 6 other than a conclusory statement
concerning obviousness, and as such, the Examiner has not shown the
combination of Dobrowski and Jackson teaches installation begins
automatically upon coupling the memory module to the tool. App. Br. 9.
The Examiner states:
Therefore, it would have been obvious to one of ordinary skill
in the art to recognize that the field device identification
information, parameter information, default parameter values,
and formulas loaded/installed onto the tool could also include
application software such as copying files from the removable
memory module to random access memory of the tool ...
wherein the installing begins automatically upon removably
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Application 10/435,819
coupling the removable memory module to the tool as cited in
claim 6 ....
Answer 10 ( emphasis omitted).
We agree with Appellants that the Examiner's rationale is conclusory
and does not identify sufficient evidence to support the conclusion that
installation of the software begins automatically upon coupling the
removable memory to the tool as claimed. In the absence of such evidence,
we do not sustain the Examiner's obviousness rejection of claim 6.
Claim 9
Appellants' arguments directed to claim 9 assert the Examiner erred in
finding that the combination of Dobrowski and Jackson teaches storing
application software on a removable memory module being adapted to be
replaceable in a hazardous location in compliance with intrinsic safety. App.
Br. 9-10. Appellants argue:
[T]he Examiner does not describe any hazardous environment,
much less an environment as described in the current
specification, paragraph [0002]: "Examples of such process
installations include petroleum, pharmaceutical, chemical, pulp
and other process installations." Jackson also fails to teach the
specific problem found in these hazardous environments, as
noted in the current specification paragraph [0003]: "instrument
operation or failure cannot cause ignition if the instrument is
properly installed in an environment that contains explosive
gasses."
App. Br. 9-10.
The Examiner responds to Appellants' arguments stating that Jackson
teaches using the device in the field of aircraft maintenance, which includes
hydraulic systems and fuel systems and, as such, teaches a hazardous
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environment inherently in compliance with intrinsic safety certifications.
Answer 12 (citing Jackson 490, first column, first paragraph).
We concur with the Examiner. As identified by Appellants in the
quoted argument, the Specification identifies hazardous environments in
compliance with intrinsic safety as including petroleum and chemical
process installations. Thus, an aircraft fuel and hydraulic system, both of
which deal with petroleum and chemicals, meets such hazardous
environment. We are not persuaded by Appellants' argument that these
environments are such that "instrument operation or failure cannot cause
ignition" as we do not consider the claim to be so limited. While
Appellants' Specification may discuss this as goal of the instrument, we
decline to import such limitations into the claims. Accordingly, Appellants'
arguments have not persuaded us of error in the Examiner's rejection of
claim 9 and we sustain the Examiner's rejection.
Claims 2 through 4, 7, and 8
Appellants have asserted that claims 2 through 9 are patentable for the
same reasons as claim 1 and have not presented separate arguments directed
to the Examiner's rejection of claims 2 through 4, 7, and 8. App. Br. 8.
Accordingly, we sustain the Examiner's rejection of claims 2 through 4, 7,
and 8 for the same reasons as claim 1.
DECISION
We affirm the Examiner's rejection of claims 1 through 5 and 7
through 9 under 35 U.S.C. § 103(a). We reverse the Examiner's rejection of
claim 6 under 35 U.S.C. § 103(a).
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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)(l )(iv).
AFFIRMED-IN-PART
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