Ex Parte Oswald

Board of Patent Appeals and Interferences

May 29, 2012

09949366 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte TOM OSWALD
_____________

Appeal 2009-010930
Application 09/949,366
Technology Center 2400
______________

Before, ALLEN R. MacDONALD, DAVID M. KOHUT, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 11 and 22-38.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm the Examiner’s rejection of these claims.

1 Claims 1-10 and 12-21 were previously cancelled.
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INVENTION
The invention is directed to a method and system for controlling an
embedded device by placing control code in a control code repository that is
accessible across every medium. See generally Spec. 4-5. Claim 11 is
representative of the invention and is reproduced below:
11. A method for controlling an embedded device, the method
comprising:
establishing a control code repository;
establishing a plurality of objects corresponding to a
plurality of control routines;
establishing a range of selectable data values associated
with each data object;
accessing the repository through a plurality of mediums
selected from the group including an embedded device front
panel, simple network management protocol (SNMP),
hypertext transport protocol (HTTP), a serial port, and a parallel
port; and,
using the control codes to communicate with an embedded
device as follows:
selecting data values; and
issuing commands to the embedded device in response to
the data values.

REFERENCES
Danknick US 5,901,286 May 4, 1999

Judge US 6,430,564 B1 Aug. 6, 2002
(filed Mar. 1, 1999)

REJECTION AT ISSUE
Claims 11 and 22-38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Danknick and Judge. Ans. 3-7.

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ISSUE
Did the Examiner err in finding the combination of Danknick and
Judge teaches or suggests a plurality of objects corresponding to a plurality
of control routines?
Did the Examiner err in finding the combination of Danknick and
Judge teaches or suggests devices that issue commands to an embedded
device in response to the data value?
Did the Examiner err in finding it obvious to combine Danknick with
Judge?
ANALYSIS
Appellant selects claims 11, 22, and 31 as representative of the groups
comprising claims 11, 22-30, and 31-38 (respectively). App. Br. 9.
Appellant argues that the combination of Danknick and Judge does not
disclose a plurality of objects corresponding to a plurality of control
routines, as required by independent claims 11, 22, and 31. App. Br. 7;
Reply Br. 2. Appellant argues that Judge’s JAVA methods are not control
routines, as defined by Appellant’s Specification on page 8, lines 8-21. App.
Br. 8; Reply Br. 3. Additionally, even if Judge’s JAVA methods were
control routines the JAVA method does not include objects with selectable
data values. App. Br. 8; Reply Br. 3. We disagree.
Initially, we note, that Appellant’s Specification does not provide a
specific definition of the term “control routines.” Instead, Appellant’s
Specification merely infers that control routines are used to control
embedded device functions. See Spec. 8. Therefore, the Examiner’s
interpretation that “control routines” are Judge’s JAVA methods is
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reasonable since these methods are applied to the objects in order to cause
something to occur. Ans. 17-18.
The Examiner also finds and explains how Judge’s JAVA methods
include objects with selectable data values. Ans. 17. For instance, the
Examiner finds that when objects are constructed, their initial state is
specified. Ans. 17. In order to specify an initial state a data value is
selected. Ans. 17. Thus, we agree with the Examiner that Judge’s JAVA
methods include objects with selectable data values.
Appellant also argues that the combination of Danknick and Judge
does not teach or suggest issuing commands to an embedded device in
response to the selected data value, as required by independent claims 11,
22, and 31, because a command is not issued “to an embedded device as a
result of selecting a data item.” App. Br. 8. However, the Examiner finds
that Danknick teaches or suggests that when a threshold is exceeded, an
event occurs (i.e., maintenance is performed on the embedded device, i.e.,
printer.) Ans. 19. Thus, the Examiner finds that the command is issued as a
result of selecting the threshold value. Ans. 19. We agree with the
Examiner.
Additionally, Appellant argues that the references do not teach or
suggest “a plurality of control routines interposed between a calling interface
and a control code interface, where the calling interface selects a control
routine via a plurality of communication media” or “a control code interface
that communicates a selection, made via the calling interface, to an
embedded device.” App. Br. 9. As such, Appellant is merely restating the
limitations and arguing that the references fail to teach or suggest these
limitations. App. Br. 9. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
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which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). In the Reply
Brief, on pages 4-6, Appellant argues that these limitations are not taught by
the references because “the claimed invention is a repository that accepts
commands in a plurality of communication mediums, and converts the
commands into a single version (medium) of control code, so the embedded
device only need be loaded with a single version of control code.” This
argument raises a new issue not presented before in the Appeal Brief and
will, therefore, not be considered. See 37 C.F.R. § 41.41(a)(2).
The Examiner finds that it would have been obvious to combine Judge
with Danknick “in order to allow data to be stored on remote network
devices and dynamically loaded into an embedded device when needed”
(citing Judge, col. 2, ll. 6-15.) Ans. 4. Appellant argues that it would not
have been obvious to combine Danknick with Judge since the combination is
conclusory, based upon hindsight reasoning, references do not suggest how
to make the combination, there is no evidence that an expert would combine
the references, and there is no expectation of success. App. Br. 6-7; Reply
Br. 6-8. We disagree and add the following for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
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and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellant’s invention and does not include
knowledge gleaned only from the Appellant’s disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 3-7. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
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the references of record. See Ans. 3-7 and 9-15. Thus, we agree with the
Examiner’s findings and conclusions.
For the reasons stated supra, we sustain the Examiner’s rejection of
claims 11 and 22-38.
CONCLUSION
The Examiner did not err in finding the combination of Danknick and
Judge teaches or suggests a plurality of objects corresponding to a plurality
of control routines.
The Examiner did not err in finding the combination of Danknick and
Judge teaches or suggests devices that issue commands to an embedded
device in response to the data value.
The Examiner did not err in finding it obvious to combine Danknick
with Judge.

SUMMARY
The Examiner’s decision to reject claims 11 and 22-38 is affirmed.
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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