Ex Parte Southworth et al

Board of Patent Appeals and Interferences

Jan 3, 2012

10037389 (B.P.A.I. Jan. 3, 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.
10/037,389 01/04/2002 Robert A. Southworth 647-015.01 7346
7590 01/03/2012
Paul R. Katterle
Legal Department
ABB Inc.
29801 Euclid Avenue
Wickliffe, OH 44092-2530
EXAMINER
FISHER, MICHAEL J
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
01/03/2012 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte ROBERT A. SOUTHWORTH, 8
KENNETH C. VOLZ, 9
ROBERT C. MORRIS, JR., 10
and DAN S. CARROLL 11
___________ 12
13
Appeal 2010-007059 14
Application 10/037,389 15
Technology Center 3600 16
___________ 17
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19
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 20
JOSEPH A. FISCHETTI, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 6, 2007) and Reply Brief (“Reply Br.,” filed February
13, 2008), and the Examiner’s Answer (“Ans.,” mailed December 13, 2007).
Robert A. Southworth, Kenneth C. Volz, Robert C. Morris, Jr., and Dan 2
S. Carroll (Appellants) seek review under 35 U.S.C. § 134 (2002) of a final 3
rejection of claims 15-26 and 32-44, which along with claims 1-14, 27-31, 4
and 45-76, whose rejection has been withdrawn, are the only claims pending 5
in the application on appeal. We have jurisdiction over the appeal pursuant 6
to 35 U.S.C. § 6(b) (2002). 7
The Appellants invented a programmable timer module system including 8
a timer module and timer program builder system (Specification 1: 15-17). 9
An understanding of the invention can be derived from a reading of the 10
two independent claims 15 and 32 as exemplary, which are reproduced 11
below [bracketed matter and some paragraphing added]. 12
15. A programmable timer module system comprising: 13
[1] a programmable timer module; 14
[2] a model number data page 15
correlating 16
timer model numbers 17
with 18
information pertaining to each model number; 19
[3] a program builder system 20
responsive to timer model number inputs, 21
wherein said program builder builds timer program code 22
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based on which of a model number input is input 1
into said program builder system; 2
and 3
[4] a communication link 4
between said programmable timer module and said 5
program builder system, 6
allowing said program code, 7
built by said program builder system, 8
to be loaded into said programmable timer module. 9
32. A timer module system for establishing timing 10
characteristics of a timer, said system comprising: 11
[1] a timer module circuit including 12
[1.1] a power supply for converting a line voltage into 13
DC voltage; 14
[1.2] an output control circuit; 15
and 16
[1.3] a timer processor system 17
in communication with said power supply and said 18
output control unit, said timer processor system 19
having a program memory; 20
and 21
[2] a program builder system 22
in communication with said timer module circuit 23
for building timer program code. 24
The Examiner relies upon the following prior art: 25
Crawford US 6,411,943 B1 Jun. 25, 2002
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Claims 15-26 and 32-44 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Crawford. 2
ISSUES 3
The issue of obviousness with respect to claims 15-24 turns on whether 4
the model number data page in claim 15 limitation [2] is inherent in 5
Crawford. The issue of obviousness with respect to claims 32-44 turns on 6
whether the limitations in claim 32 are broad enough to read on generic 7
computers and analog to digital conversion circuits. 8
FACTS PERTINENT TO THE ISSUES 9
The following enumerated Findings of Fact (FF) are believed to be 10
supported by a preponderance of the evidence. 11
Facts Related to the Prior Art - Crawford 12
01. Crawford is directed to an on-line service that supplies 13
automated information processing services to computer users for a 14
fee and that allows remote computer users to connect on-line to 15
computer devices and access them to do such things as run 16
computer software from them. 17
02. Crawford’s on-line service system provides software and 18
computing services to a customer computer in return for fees. 19
Crawford 14:44-46. 20
Facts Related to the Prior Art – Generic Computers and Analog to 21
Digital Circuits – Known By Those Of Ordinary Skill In The Art 22
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03. Generic computers include a DC power supply, a system clock 1
to coordinate data transfer among registers and memory locations 2
at the hardware level, and varying levels of computer code to 3
translate the system clock timing signals into register level, 4
operating system level, and application level timing signals to 5
operate the computer and running software, as all such computers 6
do. These are simply inherent in computer architecture. 7
04. Similarly, analog to digital circuits, as modules that may be 8
attached to computers and create digital signals, necessarily have 9
similar system clock signals, implying both the DC power for 10
such circuits and the clock software to translate the hardware 11
cycles into those needed to perform the analog to digital 12
conversion. 13
ANALYSIS 14
As to claims 15-24, we are persuaded by the Appellants’ argument that 15
Crawford fails to describe the model number data page recited in limitation 16
[2]. Reply Br. 3-4. The Examiner found this to be inherent as some 17
identifier of a computer would be needed for Crawford to replicate its 18
operation. Ans. 6. While it may be that the model number would need to be 19
known, this does not show that the specific mechanism for determining that 20
model number recited in the claim was used. 21
As to claim 32-44, we are not persuaded by the Appellants’ argument 22
that the recited components would not be inherent or obvious. Reply Br. 4. 23
The Examiner found that these components were inherent in known circuits 24
such as those in analog to digital (A/D) conversion circuits and therefore 25
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obvious. Ans. 5. A source of DC power, timer processor and output control 1
are simply inherent in every computer and also in the A/D converters as the 2
Examiner found. FF 03 and 04. Thus, Crawford’s computers necessarily 3
contained circuitry meeting limitation [1] including its 3 sub elements. 4
Limitation [2] merely requires a program builder system that has the 5
capacity to build timer program code if the information needed to build such 6
code were provided. Since every computer builds code in order to execute 7
it, this system level code for executing such programs is itself a program 8
builder system. Since the claims fail to recite any particular manner in 9
which such code is to be built, any system that performs any level of 10
building will meet the claim limitation. 11
CONCLUSIONS OF LAW 12
The rejection of claims 15-26 under 35 U.S.C. § 103(a) as unpatentable 13
over Crawford is improper. 14
The rejection of claims 32-44 under 35 U.S.C. § 103(a) as unpatentable 15
over Crawford is proper. 16
DECISION 17
To summarize, our decision is as follows. 18
 The rejection of claims 15-26 under 35 U.S.C. § 103(a) as 19
unpatentable over Crawford is not sustained. 20
 The rejection of claims 32-44 under 35 U.S.C. § 103(a) as 21
unpatentable over Crawford is sustained. 22
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED-IN-PART 5
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JRG 9