Numatics, Incorporated

Patent Trials and Appeals Board

Jan 13, 2021

2021001071 (P.T.A.B. Jan. 13, 2021)

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.
14/794,003 07/08/2015 Enrico De Carolis 9681A-000002-US-RED 3982
28997 7590 01/13/2021
Harness Dickey (St. Louis)
7700 Bonhomme, Suite 400
St. Louis, MO 63105
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
01/13/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
bkamer@hdp.com
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ENRICO DE CAROLIS, JOHN F. ESKEW,
ADAM GIBSON, and MICHAEL W. HUNDT
Appeal 2021-001071
Application 14/794,003
Technology Center 3900
Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of reissue claim 60, which is the only claim pending in this reissue
application of U.S. Patent No. 7,967,646 B2 (“’646 Patent”). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as ASCO,
L.P., a subsidiary of Emerson Electric Co. Appeal Br. 2.
Appeal 2021-001071
Application 14/794,003

2
TECHNOLOGY
The application relates to a “modular electrical bus system for a valve
manifold.” ’646 Patent Abstract. Reissue claim 60 is reproduced below
with the limitations at issue emphasized:
60. A main communication module in connection with an
electrical serial fieldbus communication system, said main
communication module comprising:
an electronic numeric or alpha-numeric display on a face
of the main communication module for displaying information
relative thereto;
said main communication module constructed to be
connectable to a plurality of external output devices; and
said communication module being interposed between a
bank of I/O units and a bank of valve units.
REFERENCES
The Examiner relies on the following references as prior art:
Name Reference Date
Gaub US 2007/0297148 A1 Dec. 27, 2007
Herinckx US 2003/0084211 A1 May 1, 2003
Lieb US 2002/0182942 A1 Dec. 5, 2002
REJECTION
Reissue claim 60 stands rejected under 35 U.S.C. § 103(a) as obvious
over Lieb, Herinckx, and Gaub. Final Act. 4.
ISSUE
Did the Examiner err in finding Lieb teaches or suggests “said
communication module being interposed between a bank of I/O units and a
bank of valve units,” as recited in reissue claim 60?
Appeal 2021-001071
Application 14/794,003

3
ANALYSIS
Reissue claim 60 recites a “communication module being interposed
between a bank of I/O units and a bank of valve units.”
First, the Examiner determines that “the broadest reasonable
interpretation of claim 60 merely requires an operative relationship between
the bank of I/O units and a bank of valve units and not necessarily a physical
relationship.” Final Act. 7 (emphasis added). Based on this construction,
the Examiner finds that Lieb’s main communication model (2) is
“operatively interposed” between “external output devices (3)” and the
actuators/valves. See id. at 6–7 (citing Lieb ¶¶ 33–35).
Appellant argues that “Lieb discloses the I/O modules 3 are
operatively interposed between the terminal module 2 and the actuators
(corresponding to the claimed bank of valve units).” Appeal Br. 7–8 (citing
Lieb ¶¶ 33–34, Fig. 1), 3–5 (showing annotated versions of Lieb’s Fig. 1 and
the present invention’s Fig. 1). Appellant further argues that in context,
“interposed” must mean “physically interposed.” Reply Br. 3–7.
We agree with Appellant’s argument that Lieb does not disclose the
claimed “interposed” limitation. Lieb expressly states that “field bus
terminal module 2 . . . supplies control signals . . . via the I/O modules 3 to
the actuators.” Lieb ¶ 34 (emphasis added). Thus, regardless of whether
“interposed” is interpreted to be “operative” or “physical,” Lieb discloses
that field bus terminal module 2 is not interposed between I/O modules 3
and the actuators. Instead, Lieb’s I/O modules 3 are interposed between
field bus terminal module 2 and the actuators.
Second, the Examiner determines it would have been obvious to
modify Lieb because there were “a finite number of identified, predictable
Appeal 2021-001071
Application 14/794,003

4
solutions, with a reasonable expectation of success” and “arranging for the
communication module to be spatially interposed between a bank of I/O
units and a bank of valve units would have been an obvious and
predic[t]able design choice within the skill of a person of ordinary skill in
the art.” Ans. 11–12.
Appellant argues that the claimed arrangement provides benefits,
specifically “interposing the main communication module between a bank of
I/O units and a bank of valve units” (1) “permits the communication module
to relay signals between the field bus system controller and the valve units
without sending signals through the I/O units” and (2) “allows for outward
addressing of the I/O units independently of outward addressing of the valve
units, so I/O units can be added or removed and reconfigured independently
of the valve units.” Reply Br. 9 (citing De Carolis Decl. ¶ 22). Appellant
further argues that modifying Lieb as suggested would change the structure
and function of Lieb. Appeal Br. 9–10.
Given the record in this case, we are persuaded that the Examiner has
not met the burden to demonstrate unpatentability. For example, the
Examiner has not sufficiently addressed any trade-offs between the two
arrangements and why a person of ordinary skill in the art would have been
motivated to make such trade-offs.
Accordingly, we do not sustain the Examiner’s rejection of claim 60.
OUTCOME
The following table summarizes the outcome of each rejection:
Claim Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
60 103(a) Lieb, Herinckx, Gaub 60
REVERSED