Ex Parte Kreiner

Board of Patent Appeals and Interferences

Sep 5, 2012

11348791 (B.P.A.I. Sep. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/348,791 02/07/2006 Georg Kreiner 2005P00918US 4980
7590 09/05/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE, SOUTH
ISELIN, NJ 08830
EXAMINER
PATEL, SHAMBHAVI K
ART UNIT PAPER NUMBER
2128
MAIL DATE DELIVERY MODE
09/05/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte GEORG KREINER
________________

Appeal 2010-004976
Application 11/348,791
Technology Center 2100
________________

Before JOHN A. JEFFERY, ERIC B. CHEN, and
BARBARA A. BENOIT, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 22-24, 26-34, and 36-40. Claims 1-21, 25, and 35 have
been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention provides user information within a software-
based development environment for designing circuits and/or systems
constructed from functional units. See generally Abstract; Spec. 1.
Claim 32 is illustrative with key disputed limitations emphasized:
32. A system for providing user information, comprising:
a memory having a software-based development environment for
designing circuits or systems including a plurality of functional units;
a detecting unit for detecting a functional unit selected by a user;
a display device for displaying a demonstration application having the
selected functional unit;
a simulator unit for simulating the demonstration application;
a visualization device for visualizing simulation results of the
simulated demonstration application;
means for connecting the selected functional unit to other functional
units via inputs or outputs within the demonstration application, current
states of the inputs or outputs visualized during and/or after the simulation,
wherein the connected functional units comprise a circuit block diagram;
a code generator configured to generate a control code
corresponding to the circuit block diagram; and
a code loader configured to load the generated control code in a
controller.
The Examiner relies on the following references as evidence of
unpatentability:
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Sally L. Wood, A New Approach to Interactive Tutorial Software for
Engineering Education, 39 IEEE TRANSACTIONS ON EDUC. 399 (Aug.
1996).
Jeremy Kindy et al., Design of an Interactive Tutorial for Logic and
Logical Circuits, 6 CROSSROADS 6 (Mar. 2000), available at
http://xrds.acm.org/article.cfm?aid=331629.
E.L. Dobson et al., An Evaluation of the Student Response to
Electronics Teaching Using a CAL Package, 25 COMPUTERS EDUC. 13
(1995).

THE REJECTIONS
1. The Examiner rejected claims 22-24, 26-29, 31-34, and 36-39 under
35 U.S.C. § 103(a) as unpatentable over Wood in view of Kindy.
Ans. 3-6.1,2,3

1 Throughout this opinion, we refer to the Appeal Brief filed August 10,
2009, the Examiner’s Answer mailed November 13, 2009, and the Reply
Brief filed January 7, 2010.
2 We presume that including claims 30 and 40 in the statement of the
rejection is a typographical error and that claims 30 and 40 are rejected only
by a separate § 103(a) rejection over Wood in view of Kindy and Dobson.
Our presumption is based on the fact that the § 103(a) rejection over Wood
in view of Kindy does not include a discussion of claims 30 and 40 in the
body of the rejection. We deem this typographical error as harmless, and
present the correct claim listing here for clarity.
3 We also presume that the body of the rejection in the Examiner’s Answer at
pages 5-6 refers to claim 32 rather than claim 31 as written. Our
presumption is based on the fact that claim 31 has been addressed with claim
22 in the body of the rejection (Ans. 3-4), whereas claim 32 is not otherwise
addressed in the body of the rejection. In addition, the claim elements
discussed in this portion of the rejection body labeled as claim 31 include
elements that appear only in claim 32 (such as “a memory having a
software-based development environment . . . ; a detecting unit . . . ; a
display device . . . ; a simulator unit . . . ; a visualization device . . . ”).
Accordingly, we believe that the rejection body on pages 5-6 labeled as
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2. The Examiner rejected claims 30 and 40 under 35 U.S.C. § 103(a) as
unpatentable over Wood in view of Kindy and Dobson. Ans. 6-7.

CONTENTIONS
The Examiner finds that Wood discloses every recited feature of
representative claim 32 except for connecting the selected functional unit to
other functional units via inputs or outputs within the demonstration
application, current states of the inputs or outputs visualized during and/or
after the simulation, wherein the connected functional units comprise a
circuit block diagram. Ans. 5-6. The Examiner interprets Wood’s topics
(such as various types of filters shown in Figure 2) as the claimed functional
units. Ans. 5 (citing Wood § IV.B, ¶ 2). The Examiner relies on Wood’s
demonstration feature in manual mode as disclosing the demonstration
application, visualized simulation results, and generating and loading a
control code. Id. (citing Wood § IV.B; Fig. 2). The Examiner cites Kindy
as teaching connecting the selected functional unit to other functional units
via inputs or outputs within the demonstration application, current states of
the inputs or outputs visualized during and/or after the simulation wherein
the connected functional units comprise a circuit block diagram. Ans. 6
(citing Kindy 3-4). The Examiner finds that Wood and Kindy are both
directed to tutorial systems that allow users to vary the input to the design,
simulate the design with the user-controlled inputs, and display the results.
Id. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to combine the teachings

applying to claim 31 actually applies to claim 32. We also deem this
typographical error as harmless.
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of Wood and Kindy to develop a tutorial that provides additional
understanding of the material. Id. (citing Kindy Introduction).
Appellant contends for various reasons that an interactive tutorial
software system, such as disclosed by Wood or Kindy, cannot teach or
suggest elements recited by the claim. More particularly, Appellant argues
that the claim language requires (i) a software-based development
environment for designing circuits or systems that is a design tool rather
than an interactive tutorial system, and (ii) generating a control code
corresponding to a circuit block diagram and then loading the control code
onto a real-world controller, such as a Programmable Logic Controller or
PLC. App. Br. 5-7; Reply Br. 1-2. Appellant also contends that Wood and
Kindy each “recognize the non-suitability of tutorial software . . . for
designing circuits or systems” and therefore cannot be properly combined.
Reply Br. 1-2; see also App. Br. 6 (stating “the proposed modification would
render Wood and Kindy unsatisfactory for their intended purpose of
tutoring”).
The issues before us, then, are as follows:

ISSUES
1. Under § 103, has the Examiner erred in rejecting claims 22-24, 26-
29, 31-34, and 36-39 by finding that Wood and Kindy collectively
would have taught or suggested:
a. a software-based development environment for designing
circuits or systems?
b. generating a control code corresponding to the circuit block
diagram?
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c. loading the generated control code in a controller?
2. Under § 103, is the Examiner’s reason to combine the teachings of
Wood and Kindy supported by articulated reasoning with some
rational underpinning to justify the Examiner’s obviousness
conclusion? This issue turns on whether combining Wood and
Kindy as the Examiner proposes would render Kindy
unsatisfactory for its intended purpose.

ANALYSIS
OBVIOUSNESS REJECTION OF CLAIMS 22-24, 26-29, 31-34, AND 36-39
OVER WOOD IN VIEW OF KINDY
Claims 32-34 and 36-39
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 32. Turning first to the claim
language issues raised by Appellant, Wood discloses, according to the
Examiner, a software-based development environment for designing circuits
or systems including a plurality of functional units in Section IV.B, which
describes the structure of Wood’s interactive tutorial software for
engineering education. Ans. 5. In response to Appellant’s arguments, the
Examiner also points to Wood’s disclosure that the tutorial system includes
tutorials on digital analysis for digital logic design, and the Examiner notes
the Examiner’s express interpretation that digital logic design means circuit
design. Ans. 11 (citing Wood § IV.B, ¶ 1).
We do not see error with the Examiner’s position that Wood discloses
a software-based development environment for designing circuits or systems
including a plurality of functional units. Wood’s interactive tutorial
software runs on a computer, includes tutorials on digital analysis for digital
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logic design, and has a demonstration of user interaction in which the user
controls relevant parameters and then observes the effects of parameter
changes on, for example, various filters that can be used in digital logic
design, which the Examiner equates to circuit design. See Wood § IV.B
(describing manual mode for the demonstration interaction type of the
tutorial software). Wood’s interactive tutorial software also includes
functional units, which the Examiner maps to topics within general subject
areas covered by the tutorials. Ans. 5 (citing, for example, Wood § IV.B,
¶ 2, in which a “user selects a topic, for example a filter”). Wood’s Figure 2
shows, for instance, various topics concerning filters that could be included
in circuits. Wood § IV.B.
Appellant contends that Wood’s interactive tutorial software cannot
properly read on the claim because tutorial software is not suitable for the
invention’s intended purpose of designing circuits. Reply Br. 1-2 (citing
Wood Abstract); see also App. Br. 6 (arguing that “packages for circuit
design, (such as recited in the claimed invention) are not meant to be a
tutorial for students (such as Wood and Kindy)”). For this proposition,
Appellant points to Wood’s statement that Wood’s interactive tutorial
software is “not a design tool.” Reply Br. 1 (citing Wood Abstract). Wood,
however, also discloses interactive tutorial software that includes “tutorials
on DIgital ANAlysis for digital logic design.” Wood § IV.B, ¶ 1 (emphasis
added). Regardless of Wood’s statement that the interactive tutorial
software is not a design tool, Wood nonetheless discloses that the interactive
tutorial software is for digital logic design. As such, Wood discloses that
Wood’s interactive tutorial software is suitable for digital logic design but is
not a design tool.
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To determine whether Wood’s statement that the tutorial software is
not a design tool indicates that Wood’s interactive tutorial software for
digital logic design would render the claimed invention inoperable, we look
to the language of claim 32, which recites, among other limitations, a
software-based development environment for designing circuits or systems.
However, Appellant’s Specification does not expressly define a software-
based development environment for designing circuits or systems; nor does
Appellant’s Specification otherwise narrow the definition of a software-
based development environment for designing circuits or systems to exclude
interactive software tutorials on digital analysis for digital logic design.
Rather, Appellant’s Specification provides non-limiting examples. See
Spec. 5 (introducing Fig. 1 as “a user interface . . . in accordance with the
invention”), 7 (introducing Fig. 2 as “a further user interface . . . in which
the inventive method is used” and Fig. 3 as “an inventive embodiment”).
Moreover, Appellant’s Specification includes explicit disclaimers that the
exemplary embodiments are not limiting and that the invention can be used
in other contexts, including pure simulation programs:
The present invention is not intended to be limited to the
exemplary embodiments shown here. . . . The method proposed
in accordance with the invention is not only suitable for use
within a programming environment. The method can also be
employed in pure simulation programs. Examples of this are
circuit and system-simulation environments in which a user
constructs an electrical circuit diagram or a closed-loop control
block diagram in the form of individual functional units.
Spec. 8.
We decline to read limitations into a claim from preferred
embodiments described in the Specification. See In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Accordingly, a software-
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based development environment for designing circuits or systems does not
necessarily exclude interactive tutorial software on digital analysis for digital
logic design. We therefore, do not see error with the Examiner’s position
that a software-based development environment for designing circuits or
systems does not necessarily exclude Wood’s interactive tutorial software on
digital analysis for digital logic design, notwithstanding Wood’s indication
in the Abstract that such interactive tutorial software is not a “design tool.”
Turning to whether Wood and Kindy collectively teach or suggest
generating a control code corresponding to the circuit block diagram and
loading the generated control code in a controller, the Examiner found that
Wood discloses generating a control code and loading the generated control
code in a controller. Ans. 5 (citing Wood § IV.B, ¶ 4), 10-11. The
Examiner explains that Wood discloses generating a control code in
generating code that controls the circuit and/or the circuit simulation.
Ans. 10. The Examiner further explains that the controller is an entity that
controls/performs the simulation; the control code is the simulation code that
is generated after the user’s input is received; and loading the control code in
a controller is the running of the simulation based on the user’s input (which
is contained in the simulation code). Id.
We are also not persuaded of error in the Examiner’s position. Nor
does Appellant “challeng[e] whether Wood or Kindy may generate some
type of software code.” App. Br. 6. Rather, Appellant argues that claim
limitations of generating and loading the control code in a controller
correspond to the embodiment shown in Figure 3 and that “the control code
corresponding to a simulated circuit block diagram (simulated by the user
with graphical user interface 4) is generated and then loaded onto a real-
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world controller, such as PLC 12.” App. Br. 5. Appellant’s contentions are
unavailing, for they rely on non-limiting, exemplary implementations that
are not claimed, as the Examiner indicates. Ans. 7.4
The Examiner relies on Kindy for teaching “connecting the selected
functional unit to other functional units . . . wherein the connected functional
units comprise a circuit block diagram.” Ans. 6 (citing Kindy 3-4, half-
adder circuit). Kindy’s Figure 3 unambiguously shows a circuit diagram
constructed with various types of gates and the accompanying text describes
how “the student can experiment with sets of inputs, and . . . both the circuit
output and the truth table values are generated.” Kindy 4-5 (describing Fig.
3). Appellant does not contest whether Kindy discloses “connecting the
selected functional unit to other functional units . . . wherein the connected
functional units comprise a circuit block diagram.” See App. Br. 5-7; Reply
Br. 1-2.
Accordingly, we are not persuaded that the Examiner erred in finding
that Wood and Kindy collectively would have taught or suggested (a) a
software-based development environment for designing circuits or systems,
(b) a code generator configured to generate a control code corresponding to
the circuit block diagram, and (c) a code loader configured to load the
generated control code in a controller, as recited by claim 32.
Nor are we persuaded that combining Wood with Kindy, as the
Examiner proposes, would render Wood and Kindy unsatisfactory for the
intended purpose of tutoring, as Appellant contends. App. Br. 6; Reply Br.

4 Accord Spec. 7 (noting that Fig. 3 “shows an inventive embodiment”
(emphasis added)), 8 (stating that “[t]he present invention is not intended to
be limited to the exemplary embodiments shown here”).
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1-2. For support, Appellant points to Kindy’s disclosure that the “several
fairly advanced circuit development packages available” are for circuit
design and are not meant to be a tutorial on understanding the relationship
between Boolean algebra and logical circuits at an elementary level.
Appellant argues that these advanced circuit development packages referred
to by Kindy were deemed infeasible for use in tutorials. App. Br. 6 (citing
Kindy 1-2). We agree with the Examiner that Kindy’s statement does not
broadly apply to all circuit development packages or all tutorial applications.
Ans. 8-9. Rather, Kindy’s statement concerning infeasibility is limited to
“several fairly advanced circuit development packages” and notes that “these
packages are for circuit design, and are not meant to be a tutorial on
understanding the relationship between [B]oolean algebra and logical
circuits at an elementary level.” Kindy 1-2. Kindy’s limited statement does
not encompass all tutorial applications, but rather encompasses only those
tutorials for “understanding the relationship between [B]oolean algebra and
logical circuits at an elementary level.”
Moreover, Wood and Kindy both teach interactive tutorial software
systems. Wood teaches an interactive tutorial software for engineering
education, whereas Kindy teaches an interactive tutorial software system for
introducing logic and logical circuits to computer science students, among
others. Compare Wood Abstract (stating that the “experimental tutorial
software described in this paper is designed specifically for engineering
education at the university level”) with Kindy 1. The Examiner recognized
that both Wood and Kindy are directed to similar tutorial systems. Ans. 6.
Notably, Wood does not purport to be one of Kindy’s “fairly advanced
circuit development packages,” which are said to be infeasible to provide an
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interactive tutorial on understanding the relationship between Boolean
algebra and logical circuits at an elementary level. Moreover, Wood, in
stating that an advantage of the interactive tutorial software is that “the
tutorial set can be distributed without license fees or additional software
acquisition costs for the user,” addresses one of Kindy’s reasons for deeming
advanced circuit development packages infeasible for use as tutorial
software. Compare Wood Abstract with Kindy 1-2 (indicating one of the
three reasons given for infeasibility was the requirement of licenses for each
computer running the software). This further weighs against Appellant’s
contention that the Examiner’s proposed modification of Wood renders
Wood and Kindy unsatisfactory for their intended purpose of tutoring. See
App. Br. 6 (citing MPEP § 2143.01(V)).
Moreover, contrary to Appellant’s argument, the passage in Kindy
does not indicate the infeasibility of using Kindy’s connection of functional
units in a circuit block diagram for Wood’s interactive tutorial software. At
most, Kindy’s passage may teach away from using Kindy’s interactive
tutorial for understanding the relationship between Boolean algebra and
logical circuits at an elementary level in an advanced circuit development
package. The Examiner, however, cites Kindy merely to show the limitation
of “connecting the selected functional unit to other functional units . . .
wherein the connected functional units comprise a circuit block diagram.”
Ans. 6 (citing Kindy pp. 3-4, Fig. 3 (showing a diagram of a half adder
circuit constructed from various types of gates)). We see no reason why
skilled artisans would not combine the teaching of Kindy’s half adder circuit
example in Kindy’s interactive tutorial for logic and logical circuits with
Wood’s interactive tutorial software in manual mode to connect multiple
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filters shown in Figure 2 to show simulated results, for this would provide a
tutorial with additional understanding of the material, as the Examiner
suggests. See id. We are not persuaded of error in the Examiner’s reliance
on Kindy (id.) in this limited way.
We agree with the Examiner’s proposed combination of Wood and
Kindy because the Examiner’s proposed combination predictably uses prior
art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Accordingly, we find the Examiner’s reason to combine the teachings of the
cited references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
claim 32 and claims 33, 34, and 36-39, which depend from claim 32 and are
not separately argued with particularity.

Claims 22-24 and 26-29
We also sustain the obviousness rejection of independent claim 22 and
its dependent claims 23, 24, and 26-29 for the reasons described above with
respect to claim 32. Claim 22 recites, in pertinent part, generating a control
code corresponding to the circuit block diagram and loading the generated
control code in a controller. Unlike claim 32, however, claim 22 does not
recite a memory having a software-based development environment for
designing circuits or systems. Rather, claim 22 recites a method of
providing user information within a software-based development
environment for designing circuits or systems, the system having a plurality
of functional units, the method comprising various recited steps.
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Appellant argues that the preamble of claim 22 should be given
patentable weight. Reply Br. 2. Even assuming, without deciding, that the
preamble of claim 22 should be given patentable weight, we do not perceive
error in the Examiner’s obviousness rejection finding that Wood and Kindy
collectively would have taught or suggested a software-based development
environment for designing circuits or systems for the reasons discussed
above with respect to claim 32.
We are therefore not persuaded that the Examiner erred in rejecting
claim 22, and claims 23, 24, and 26-29, which depend from claim 22 and are
not separately argued with particularity.

Claim 31
For the reasons described above with respect to claims 32 and 22, we
also sustain the obviousness rejection of independent claim 31 directed to a
computer program for providing user information within a software-based
development environment for designing circuits or systems. Claim 31
recites, in pertinent part, generating a control code corresponding to the
circuit block diagram and loading the generated control code in a controller.
Therefore, according to the reasons described above, the rejection of
claims 22-24, 26-29, 31-34, and 36-39 is sustained.

OBVIOUSNESS REJECTION OF CLAIMS 30 AND 40
OVER WOOD IN VIEW OF KINDY AND DOBSON
Likewise, we sustain the obviousness rejection of dependent claims 30
and 40. The Examiner relies on Wood and Kindy as collectively teaching or
suggesting every recited feature of claims 30 and 40 except that the selected
functional unit is a user-defined functional unit including other functional
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units which are inherent components of the development environment.
Ans. 7. For this limitation, the Examiner relies on Dobson’s disclosure of
functional units to create user-defined functional units which can then be
simulated. Id. (citing Dobson 3-4, Fig. 1).
Appellant has not particularly pointed out errors in the Examiner’s
reasoning to persuasively rebut the Examiner’s prima facie case of
obviousness. Appellant merely relies on the same arguments with respect to
the alleged deficiencies of the combination of Wood and Kindy in
connection with independent claims 22 and 32, from which claims 30 and 40
depend respectively, and that Dobson does not cure the deficiencies of
Wood and Kindy. App. Br. 7; Reply Br. 3. We are not persuaded by these
arguments, however, for the same reasons discussed above with respect to
claims 22 and 32. The rejection of claims 30 and 40 is therefore sustained.

CONCLUSION
The Examiner did not err in rejecting (1) claims 22-24, 26-29, 31-34,
and 36-39 under 35 U.S.C. § 103(a) as unpatentable over Wood in view of
Kindy, and (2) claims 30 and 40 under 35 U.S.C. § 103(a) as unpatentable
over Wood in view of Kindy and Dobson.

ORDER
The Examiner’s decision rejecting claims 22-24, 26-34, and 36-40 is
affirmed.

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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)(1)(iv).

AFFIRMED

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