Ex Parte Kantzes et alDownload PDFPatent Trial and Appeal BoardMar 25, 201310435819 (P.T.A.B. Mar. 25, 2013) 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. 10/435,819 05/12/2003 Christopher P. Kantzes P32.12-0028 1155 27367 7590 03/26/2013 WESTMAN CHAMPLIN & KELLY, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER LE, TOAN M ART UNIT PAPER NUMBER 2857 MAIL DATE DELIVERY MODE 03/26/2013 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 CHRISTOPHER P. KANTZES, BRAD N. MATHIOWETZ and ALDEN C. RUSSELL, III _____________ Appeal 2010-001100 Application 10/435,819 Technology Center 2800 ______________ Before KALYAN K. DESHPANDE, BRYAN F. MOORE, and JOHN G. NEW, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001100 Application 10/435,819 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-9. App. Br. 3. Claims 10 and 11 are canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE, and enter a NEW GROUND of rejection in accordance with 37 C.F.R. § 41.50(b). INVENTION The invention is directed to a handheld field maintenance tool with removable memory module. The module adapted to be removable in the presence hazardous environment. Further, the handheld field maintenance tool is adapted, via hardware, software, or both to automatically detect the presence of the removable memory module and to copy, or otherwise install data from the module to the tool. See Spec. 3:19-26. Claim 1 is exemplary of the invention and is 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 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. REFERENCES Dobrowski US 6,330,517 B1 Dec. 11, 2001 Appeal 2010-001100 Application 10/435,819 3 REJECTION AT ISSUE Claims 1-9 stand rejected under 35 U.S.C. § 102(e) as anticipated by Dobrowski. Ans. 3-10. ISSUE 1. Did the Examiner err in finding that Dobrowski discloses “installing the software into the tool from the removable memory module [,]” as recited in claim 1? 1 ANALYSIS Appellants argue that “independent claim 1 specifically recites storing application software and executing the application software on the tool. Application software is quite distinct from the testing data of Dobrowski.” App. Br. 9. We are persuaded by this argument. Dobrowski discloses that testing data includes: field device identification information, input block type information for selecting the parameters of device 16 to be read, parameter information for reading and writing the values for all information types that are relevant for the particular device 16, special parameter information for storing any special information about a parameter, default parameter values, and formulas for determining values of an information type. In addition, calibration information, generally in the form of test results 50, can be stored in calibrator 14 as a calibrator-specific record (CSR) 52 for later retrieval by FMS 12. Dobrowski, 3:59 - 4:3. The Examiner found that field device identification information, parameter information, default parameter values, and formulas 1 Appellants make additional arguments. App. Br. 8-11. We do not reach these additional issues since this issue is dispositive of this appeal. Appeal 2010-001100 Application 10/435,819 4 each represent application software. However, there is no disclosure that any one of these constitutes application software or is necessarily part of any application software installed on the calibrator. The Examiner also finds that FMS 12 is a software package, however, there is no evidence that FMS 12 is stored and executed on the calibration tool as recited in claim 1. The Examiner makes no findings, nor provides technical explanation, to support such a proposition. Thus, the Examiner has not set forth a prima facie case of anticipation that adequately supports the position that Dobrowski discloses the claimed limitation. NEW GROUND OF REJECTION - 37 C.F.R. § 41.50(b) We enter the following new grounds of rejection for claim 1 as being rejected under 35 U.S.C. § 103(a) as being unpatentable over Dobrowski, pursuant to our authority under 37 C.F.R. § 41.50(b). 35 U.S.C. § 103(a) – Dobrowski Claim 1 With respect to claim 1, Dobrowski fails to explicitly disclose the limitation “installing the software into the tool from the removable memory module” as argued by the Appellants. Br. 9-10. One of ordinary skill in the art would recognize that the calibrator 14 must perform testing and data transfer as taught by Dobrowski. Dobrowski, 1:22-39. Consequently, it would have been obvious to one of ordinary skill in the art at the time of the invention that a personal device such as a calibrator may be loaded with software related to testing or data transfer. The motivation to do so would be to enable the tool to perform testing and data transfer more efficiently. Appeal 2010-001100 Application 10/435,819 5 We also find that such a modification of Dobrowski’s teaching such that software is loaded and executed is merely a combination of familiar elements according to known methods that does no more than yield predictable results - an obvious improvement - that can be implemented by a person of ordinary skill. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416- 17 (2007). We conclude that 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 onto the tool could also include application software. For the reasons stated above, we enter a new ground of rejection of claim 1 under 35 U.S.C. § 103 (a) as being unpatentable over Dobrowski. ADDITIONAL ARGUMENT Because we enter a new ground, we address Appellants’ additional argument regarding claim 1. Claim 1 recites a “removably coupling the removable memory module to the tool.” Appellants argue that because the memory in Dobrowski is coupled to the tool using “serial connection, an infrared link, or any other suitable connections,” the CMS module 10 is not a removable memory module. Br. 8. We find, to the extent that Appellants are arguing that claim 1 requires a direct coupling with the tool and without the use of a “connection,” this argument is not commensurate with the limitations of claim 1. Claim 1 does not recite that the removable memory is directly coupled to the tool, only that it is coupled. Appellants further argue that “CMS module 10 is actually simply a component of FMS 12 that is run on computer, which component includes a couple of submodules one of which is responsible for establishing Appeal 2010-001100 Application 10/435,819 6 communication with the calibrator . . . .” Br. 9. We find that claim 1 does not exclude the use of a computer as the removable memory module. We find that Appellants have not made a persuasive argument that the FMS 12 and CMS module 10 cannot be considered a removable memory module “removably coupl[ed] to the tool,” as recited in claim 1. However, for the reasons discussed above relating to the claimed “application program”, we cannot sustain the rejections of independent claim 1, nor the claims dependent therefrom. DECISION We newly reject claim 1 under 35 U.S.C. § 103 (a) as being unpatentable over Dobrowski. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record. . . . Appeal 2010-001100 Application 10/435,819 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) ELD Copy with citationCopy as parenthetical citation