Ex Parte Sudolcan et al

Board of Patent Appeals and Interferences

Apr 5, 2010

10460732 (B.P.A.I. Apr. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID C. SUDOLCAN and THOMAS J. CHADWELL
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Appeal 2009-006540
Application 10/460,732
Technology Center 3600
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Decided: April 6, 2010
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Before STEFAN STAICOVICI, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David C. Sudolcan and Thomas J. Chadwell (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 41, 42, 44, 46,
47, 63 and 64. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to an electronic control
system for beverage dispensers that provides a modular, portable
implementation (Spec. 2: 3-5).
Claim 41, reproduced below, is representative of the subject matter on
appeal.
41. A method of designing a beverage dispenser
or re-configuring an existing beverage dispenser,
comprising:
providing beverage dispenser components,
comprising at least:
a user interface adapted to receive a
beverage dispense request,
a dispensing valve, and
a valve interface for regulating the
delivery of a beverage from the dispensing valve;
providing an electronic control system,
comprising:
a microcontroller for monitoring the
user interface and for activating the valve interface
responsive to user input, thereby regulating the
delivery of a beverage from the dispensing valve,
and
a program memory including low
level drivers firmware for controlling the
microcontroller; and
modifying the low level drivers firmware to
interface the microcontroller with the beverage
dispenser components.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Talbott US 5,357,440 Oct. 18, 1994
Durham US 6,435,375 B2 Aug. 20, 2002

The following rejections1 by the Examiner are before us for review:
1. Claims 41, 42, 44, 46, 47, 63 and 64 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Talbott in view of Durham.
2. Claims 41, 42, 44, 46, 47, 63 and 64 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Durham in view of Talbott.

ISSUE
The issue before us is whether the Examiner has failed to articulate a
reason with rational underpinning that would have led a person having
ordinary skill in the art to combine the teachings of Talbott and Durham in
the manner called for in independent claim 41 (App. Br. 5, 14).

ANALYSIS
Appellants contend (1) that the combined teachings of Talbott and
Durham fail to describe “the modification of low level drivers firmware to

1 Although the Examiner’s Answer states otherwise, claims 43 and 45 will
not be considered part of this appeal. The Grounds of Rejection section of
the Examiner’s Answer denoted that claims 41-47, 63 and 64 were rejected
under 35 U.S.C. § 103(a) (Ans. 3). The Status of Claims section of the
Appeal Brief indicated that “[c]laims 41, 42, 44, 46, 47, 63 and 64 are the
subject of this appeal.” (App. Br. 2). Claims 43 and 45 were canceled in a
communication submitted December 22, 2003.
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interface a microcontroller with beverage dispenser components in either the
design or redesign of a beverage dispenser” (App. Br. 5-6); (2) what the
Examiner references as low level drivers firmware in Talbott "are nothing
more than fields in Talbot's (sic., Talbott's) design program that contain
system requirement information" (App. Br. 6); and (3) that "software fields
in a computer design program that hold parameters utilized in designing a
system have absolutely nothing to do with actual dispensing of a beverage"
(App. Br. 6).
Appellants still further contend that “[t]here is not a single use of the
term ‘low level drivers’ in Talbot [sic., Talbott] and, as previously stated,
Talbot [sic., Talbott] does not provide any disclosure that can be interpreted
as low level drivers.” (App. Br. 8).
Appellants still further contend that “nowhere in Durham is there any
disclosure of low level drivers modified separate and apart from the entire
control system architecture.” (App. Br. 14).
The Examiner found that
Talbot discloses “The executable functional
descriptions are used to compute outputs from
inputs in order to test the functional operation of
SLABs.” Talbot discloses differing hierarchal
levels of SLABS, including functional child slabs.
It is clear that within a firmware context this
inevitably must represent low level drivers being
modeled by the designer when pursuing this
method for designing. Talbot shows software
process software. The queuing software SLAB
264 (c10 L 41-45) described certainly appears to
be a low level driver. . . As there is a modeling of
low level drivers in the CASE tool, they suggest,
teach and obviate the low level drivers inherent to
top down programming.
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(emphasis added) (Ans. 6-7).
The Examiner found, regarding the rejection of claim 41 over Talbott
in view of Durham, that (1) Talbott describes “the use of a case development
station featuring: (re: cl 41) A method of dispensing a beverage dispenser or
re-configuring an existing beverage dispenser . . .” (Ans. 3), and (2) Durham
describes “the elements not explicitly taught by Talbott . . .” (Ans. 3).
The Examiner concluded, regarding the rejection of claim 41 over
Talbott in view of Durham, that
[i]t would have been obvious at the time of the
invention to apply the beverage dispensing case
tool development methodology of Talbott et al. in
designing and modifying components modular
proportioning valve dispenser of Durham et al. to
ascertain system interactions due modifications of
particular modification and thereby come up with
the instant invention.
(emphasis added) (Ans. 4).
The Examiner found, regarding the rejection of claim 41 over Durham
in view of Talbott, that (1) Durham describes “a vending system having a
microcontroller with an interface . . .” (Ans. 4), and (2) Talbott describes
“the elements not explicitly taught by Durham . . . including of utilizing that
interface to modify firmware:as exemplified by: (re: cl 41) A method of
designing a beverage dispenser or re-configuring an existing beverage
dispenser . . .” (Ans. 5).
The Examiner concluded, regarding the rejection of claim 41 over
Durham in view of Talbott, that
[i]t would have been obvious for Durham et
al. to develop a design on the case tool of Talbott
et al. to quickly and economically substitute the
component and try different designs without the
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need to fully prototype the design. It would have
been obvious at the time of the invention to
combine the beverage dispensing case tool
development methodology of Talbott et al. in
designing and modifying components modular
proportioning valve dispenser of Durham et al. to
ascertain system interactions due modifications of
particular modification and thereby come up with
the instant invention.
(emphasis added) (Ans. 6).
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984).
We find that the Examiner’s explanation of the rejection consists of
nothing more than a series of essentially unconnected discussions of selected
teachings of references followed by a conclusory statement of obviousness.
The determination as to whether there was an apparent reason to combine
the known elements of Talbott and Durham in the manner claimed requires
an analysis regarding the teachings of Talbott and Durham, and the
knowledge of a person having ordinary skill in the art. However, the
Examiner has not provided an analysis as to how the known elements of
Talbott and Durham would be combined in the manner called for in
independent claim 41. Further, the Examiner has not adequately articulated
a rationale as to why the combined teachings of Talbott and Durham would
have been obvious to a person having ordinary skill in the art. See KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
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instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
We conclude that the Examiner erred in rejecting claim 41 over the
combined teachings of Talbott and Durham. Likewise, the Examiner erred
in rejecting claims 42, 44, 46, 47, 63 and 64, which depend from claim 41.

CONCLUSION
The Examiner has failed to articulate a reason with rational
underpinning that would have led a person having ordinary skill in the art to
combine the teachings of Talbott and Durham in the manner called for in
independent claim 41.

DECISION
The decision of the Examiner to reject claims 41, 42, 44, 46, 47, 63
and 64 is reversed.

REVERSED

mls

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