Ex Parte Roth et al

Board of Patent Appeals and Interferences

May 21, 2012

10514412 (B.P.A.I. May. 21, 2012)

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.
10/514,412 06/29/2005 Joerg Roth DASI3001/FJD 4371
23364 7590 05/22/2012
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
SINGH, HIRDEPAL
ART UNIT PAPER NUMBER
2611
MAIL DATE DELIVERY MODE
05/22/2012 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 JOERG ROTH and EUGENIO FERREIRA DA
SILVA NETO
____________________

Appeal 2010-001819
Application 10/514,412
Technology Center 2600
____________________

Before: LANCE LEONARD BARRY, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001819
Application 10/514,412
2
STATEMENT OF CASE
The Patent Examiner rejected claims 10-19. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
INVENTION
Claim 10, which follows, is illustrative of the claimed subject matter.
10. A variable field device for process automation, including:
a superordinated control-evaluation unit;
a sensor module SM for measured-value detection of a
process variable in an application;
a signal processing module SPM connected to said sensor
module SM;
a communication module CU; and
a processor module PM, which is connected with said
communications module CU for connection of the field device
with said superordinated control-evaluation unit, wherein:
said signal processing module SPM and said processor
module PM are provided in the form of a reprogrammable logic
device LD; and
at system start, both hardware and software are
configured on said reprogrammable logic device LD in a
desired fashion thereby matching the particular demands of the
application of said sensor module SM.

REFERENCES AND REJECTIONS
Gillen
Stinus
US 2003/0208290 A1
US 2005/0177708 A1
Nov. 6, 2003
Aug. 11, 2005
Appeal 2010-001819
Application 10/514,412
3

Claim 10-19 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Gillen and Stinus.

DISCUSSION
Based on the dependencies of the claims, we will decide the appeal of
claims 10-19 on the basis of independent claim 10. Therefore, the issue
before us follows.
Did the Examiner present a prima facie case of obviousness regarding
the limitations of "a signal processing module SPM," "a communication
module," "a processor module PM", and the SPM and PM "are provided in
the form of a reprogrammable logic device LD" of claim 10?
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness." In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992)). "'[T]he main purpose of the examination, to
which every application is subjected, is to try to make sure that what each
claim defines is patentable. . . . [T]he name of the game is the claim. . . .'"
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles S.
Rich, The Extent of the Protection and Interpretation of Claims-American
Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)).
When a reference is complex or shows or describes inventions
other than that claimed by the applicant, the particular part
relied on must be designated as nearly as practicable. The
pertinence of each reference, if not apparent, must be clearly
explained and each rejected claim specified.
37 C.F.R. § 1.104(c)(2) (emphasis added).
Appeal 2010-001819
Application 10/514,412
4
Here, the Examiner’s rejection fails to mention claim 10's
"signal processing module" and "processor module," let alone identify
which elements of Gillen or Stinus would have allegedly taught or
suggested the SPM and SM. The Examiner finds that Gillen's
"control unit, the microprocessor included in the device are
interpreted as logic devices and are reprogrammable . . . ." (Ans. 5.)
This finding does not address the independent claim's requirement that
the SPM and PM "are provided in the form of a reprogrammable logic
device." The rejection maps the independent claim's "communication
module" to "paragraph 0027, lines 1-6" of Gillen, (id.), but does not
identify which of the elements mentioned in that part of the reference
would have allegedly taught or suggested the CU.
Therefore, we conclude that the Examiner failed to present a prima
facie case of obviousness regarding the limitations of "a signal processing
module SPM," "a communication module," "a processor module PM", and
the SPM and PM "are provided in the form of a reprogrammable logic
device LD" of independent claim 10.

DECISION
We reverse the rejection of claim 10 and of claims 11-19, which
depend therefrom.

REVERSED

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