Ex Parte Walacavage et al

Board of Patent Appeals and Interferences

Oct 20, 2009

09965905 (B.P.A.I. Oct. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte J.G. WALACAVAGE and JIM D. COBURN
____________

Appeal 2009-004434
Application 09/965,905
Technology Center 2100
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Decided: October 20, 2009
____________

Before JOSEPH L. DIXON, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
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The Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-8, 10 and 12-21. Claims 9 and 11 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We REVERSE.

I. STATEMENT OF THE CASE
The Invention
The Appellants invented a method of part flow model for
programmable logic controller (PLC) logical verification system (Spec. 1, ll.
15-17).
The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method of part flow for a programmable logic
controller logical verification system, said method
comprising the steps of:
constructing a simulation model of a
manufacturing line using a computer;
playing the simulation model by a PLC logical
verification system on the computer and viewing a flow
of a part through the manufacturing line by a user,
wherein the PLC logical verification system dynamically
interacts through input and output with the simulation
model to verify a PLC code of the manufacturing line;
determining if the part flow represented in the
simulation model is correct to the user;
generating the PLC code if the part flow
represented in the simulation model is correct; and
using the generated PLC code and implementing
the manufacturing line according to the part flow
simulation model.

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The Rejections
The following rejections are before us for review:
Claims 1, 10, 12 and 20-21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Erickson.
Claims 2-8 and 13-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Erickson in view of LeBaron.
The References
The Examiner relied upon the following prior art as evidence in
support of rejections:
Cynthia Erickson et al., Simulation, Animation, and Shop-Floor Control,
Proc. of the 1987 Winter Simulation Conf., A. Thesen, H. Grant, W. David
Kelton, eds. (hereinafter Erickson).

Todd LeBaron & Kelly Thompson, Emulation of A Material Delivery
System, Proc. of the 1998 Winter Simulation Conf., D.J. Medeiros, E.F.
Watson, J.S. Carson and M.S. Manivannan, eds. (hereinafter LeBaron).

II. ISSUES
Have the Appellants shown that the Examiner erred in finding that
Erickson discloses:
playing the simulation model by a PLC logical
verification system on the computer and viewing a flow
of a part through the manufacturing line by a user,
wherein the PLC logical verification system dynamically
interacts through input and output with the simulation
model to verify a PLC code of the manufacturing line,

as recited in the independent claims 1 and 12?
Have the Appellants shown that the Examiner erred in finding that
Erickson discloses “constructing a simulation model of a part flow in a
manufacturing line using a computer by selecting a part generator,
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generating a part with the part generator, and identifying part locations of the
part in the manufacturing line” and “viewing a flow of the part through the
manufacturing ling by a change of color at any of the part location by a user”,
as recited in independent claim 21?

III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)). Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
Anticipation
“[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . .” In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). “[A]bsence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986) (citing Atlas Powder Co. v. E.I. du Pont De Nemours &
Co., 750 F.2d 1569, 1573 (Fed. Cir. 1984)). Inherency is not established by
probabilities or possibilities. MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.
3d 1362, 1365 (Fed. Cir. 1999) (citing In re Oelrich, 666 F.2d 578, 581
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(CCPA 1981)). That a certain thing may result from a given set of
circumstance is not sufficient to establish inherency. Id.
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
1. Erickson discloses an embodiment for developing and utilizing a
simulation model linked directly to a PLC to verify the control logic of the
PLC. (Erickson at 649). The implementation of the verification system may
be: 1) the simulation program reads the register value that represents an
event generation of the PLC from the register of the PLC to test the control
logic of the PLC; and 2) the interface cards of PLCs poll or receive the
information of the system as a database for the simulation and transmit the
information through RS 232C port to the simulation program for the control
logic verification of PLC. (Id. at 649-650). “Animation now supplies the
analyst with a means to graphically depict the simulation of the system’s
operations and their interaction.” (Id. at 649).
2. Erickson also discloses an embodiment of emulation that describes
graphical system displaying the current status of manufacturing shop floor.
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A second application of linking simulation and
animation to shop-floor is emulation. Rather than testing
logic of individual PLC’s, emulation graphically depicts
the current status of the manufacturing system. This
status is updated in real time as simulation language uses
the shop-floor interfaces to detect changes in the system
as processes are completed or new jobs arrive. The
primary use of emulation is for remote monitoring of the
system’s function, in which a graphical display on an
office desk might provide information about system
faults, switches sticking, buffers overflowing, etc.

(Erickson at 650) (emphasis added).

3. Erickson further discloses that the simulation model polls the
registers of the PLC’s to detect changes in status. The “[c]ommunication is
strictly one way -- the simulation model gathers information and updates the
simulation (and animation) without providing any input to the PLC.”
(Erickson at 652).

V. ANALYSIS
The Examiner set forth a detailed explanation of a prima facie case of
obviousness in the Examiner’s Answer. Therefore, we look to the
Appellants’ Briefs to show error in the proffered prima facie case.
35 U.S.C. § 102(b)
With respect to claims 1 and 12, the Appellants contend that Erickson
does not teach or suggest “playing the simulation model by a PLC logical
verification system on a computer and viewing a flow of a part through a
manufacturing line by a user” because Erickson “merely discloses linking
shop-floor hardware such as programmable controllers directly to a discrete-
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event simulation model or a graphical animation using a system emulator.”
(App. Br. 14).
The Examiner maintains that the claimed language is anticipated by
Erickson.
A second application of linking simulation and animation
to shop-floor control is emulation. Rather than testing
logic of individual PLC’s, emulation graphically depicts
the current status of the manufacturing system. This
status is updated in real time as the simulation language
uses the shop-floor interfaces to detect changes in the
system as processes are completed or new jobs arrive.

(Erickson at 650).
Erickson expressly discloses a PLC logical verification
system by stating "Linking a simulation directly to a
programmable logic controller (PLC) provides a means to test
the control logic of the PLC. [...] Once the control logic for the
PLC has been written, it must be debugged and tested.
Currently, much of this verification takes place on the shop
floor once the manufacturing system is in place. [...] To verify
the PLC logic using simulation, a model of the physical system
must be developed; however, the timing of some events would
be generated by the PLC."

(Ans. 8) (citation omitted).
We disagree with the Examiner’s reading of the Erickson reference.
While teaching a simulation application for verifying the control logic of
PLC’s, Erickson does not teach “viewing a flow of a part through a
manufacturing line by a user” in the section 2 Testing Control Logic (FF 1).
Both implementations of the verification system in section 2 of Erickson
only expressly mention detecting a stored value as a possible event
generation for further simulation. The Examiner cited portions of section 3
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of Manufacturing System Emulation for the argued limitations. However,
the cited emulation system is another embodiment of Erickson that teaches
linking simulation and animation for remotely monitoring the function of the
manufacturing system, which is not related to the control logic verification
of PLC’s (FF 2). The Examiner does not provide a description of a single
embodiment meeting all of the limitations of the claimed control logic
verification system encompassed by claims 1 and 12, which is required to
support a finding of prima facie anticipation under §102(b). See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In our view, the argued
claim limitations are not identical to either embodiment of Erickson. Thus,
Erickson does not anticipate claims 1 and 12.
The Appellants further contend that Erickson fails to teach “the PLC
logical verification system dynamically interacting through input and output
with a simulation model to verify a PLC code of the manufacturing line.”
(App. Br. 14) (emphasis omitted). The Appellants also argue that Erickson
discloses “the emulator does not allow dynamic interaction directly with a
simulation model to test PLC logic to verify a PLC code of the
manufacturing line.” (Reply Br. 3.)
The Examiner maintains that Erickson expressly teaches
"To verify the PLC logic using simulation, a model of the
physical system must be developed; however, the timing
of some events would be generated by the PLC."
(emphasis added; pages 649-650, "2. Testing Control
Logic") and by stating "A second application of linking
simulation and animation to shop-floor control is
emulation. [... The status of the manufacturing system] is
updated in real time as the simulation language uses the
shop-floor interfaces to detect changes in the system as
processes are completed or new jobs arrive."
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(Ans. 8) (citation omitted).
We disagree. Here, the Examiner again used two distinct
embodiments to reject the argued limitation under §102(b). In addition, we
find that Erickson expressly states that the communication between PLC and
the simulation model is strictly one way (FF 3), and, thus, Erickson does not
teach “dynamically interacting through input and output with the simulation
model”.
Accordingly, we cannot sustain the anticipation rejection of
independent claims 1 and 12.
The Appellants also contend that Erickson fails to teach “constructing
a simulation model of a part flow in a manufacturing line using a computer
by selecting a part generator, generating a part with the part generator, and
identifying part locations of the part in the manufacturing line.” (App. Br.
20, Reply Br. 4-5).
We agree with the Appellants’ contention. We find that Erickson
mentions developing a simulation model. (FF 1). We, however, find that
Erickson does not disclose how to construct a simulation model, nor does
Erickson disclose developing a simulation model “by selecting a part
generator, generating a part with the part generator, and identifying part
locations of the part in the manufacturing line.”
The Examiner’s arguments that Erickson implicitly discloses system
emulation are unpersuasive. First, the simulation model used in the system
emulation may not be developed as the claimed invention. Thus, by merely
mentioning “developing a simulation model,” Erickson does not teach the
specifics of the claimed limitations, such as selecting a part generator.
Furthermore, as discussed above, the system emulation is a different
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embodiment of Erickson from the embodiment of control logic verification
of PLC. It is inappropriate to combine two distinct embodiments in a
rejection based upon §102(b). Finally, Erickson expressly teaches that
“[r]ather than testing logic of individual PLC’s, emulation graphically
depicts the current status of the manufacturing system.” (FF 2).
With respect to claim 21, the Appellants contend that Erickson fails to
teach “viewing a flow of the part through the manufacturing ling by a
change of color at any of the part location by a user.” (App. Br. 20, Reply
Br. 5). The Examiner maintains that “it would be impossible to disclose
animation on a computer display without also inherently disclosing a change
of colors, because it is only through assigning colors can a computer display
be useful.” (Ans. 12) (emphasis omitted).
We disagree with the Examiner’s argument. To establish inherency,
the extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that would be
so recognized by persons of ordinary skill. Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient. In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting In re Oelrich, 666
F.2d at 581). Here, besides changing the colors of the locations of part,
there are many ways to represent a location of a part when a user views a
flow of the part in an animated display such as using sounds or using
highlights. Thus, the inherency reasoning of the Examiner for the argued
limitation must fail. The Examiner has not shown, and we do not readily
find, where Erickson discloses the argued limitations.
Accordingly, we cannot sustain the anticipation rejection of claim 21.
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The rejection of dependent claims 10 and 20 contains the same
deficiencies.
Because we agree with at least one of the Appellants’ contentions, we
reverse the anticipation rejection of claims 1, 10, 12, and 20-21.

35 U.S.C. § 103(a) Rejection
We next consider the rejection of claims 2-8 and 13-19 under 35
U.S.C. § 103(a) as being unpatentable over Erickson in view of LeBaron.
The rejection of dependent claims 2-8 and 13-19 contains the same
deficiencies as the rejections of claims 1, 10, 12, 20 and 21 under 35 U.S.C.
§ 102(b) discussed above. The Examiner has not identified how LeBaron
remedies the noted deficiencies (the Examiner cites LeBaron for different
limitations (Ans. 14-15)). Therefore, we cannot sustain the obviousness
rejection of dependent claims 2-8 and 13-19.

VI. CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in finding that Erickson discloses “playing the simulation model by a PLC
logical verification system on the computer and viewing a flow of a part
through the manufacturing line by a user, wherein the PLC logical
verification system dynamically interacts through input and output with the
simulation model to verify a PLC code of the manufacturing line”, as recited
in independent claims 1 and 12.
We also conclude that the Appellants have shown that the Examiner
erred in finding that Erickson discloses “constructing a simulation model of
a part flow in a manufacturing line using a computer by selecting a part
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generator, generating a part with the part generator, and identifying part
locations of the part in the manufacturing line” and “viewing a flow of the
part through the manufacturing line by a change of color at any of the part
locations by a user,” as recited in independent claim 21.

VII. DECISION
We reverse the Examiner’s rejections of claims 1-8, 10, and 12-21.

REVERSED

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DANIEL H. BLISS
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