Ex Parte Barth

Patent Trial and Appeal Board

Oct 27, 2014

10659766 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAINER BARTH
____________

Appeal 2012-003680
Application 10/659,766
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, JASON V. MORGAN,
and MICHELLE N. WORMMEESTER, Administrative Patent Judges.

WORMMEESTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1–12, 14, 15, and 17–26, which constitute all the
claims pending in this application. Claims 13 and 16 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2012-003680
Application 10/659,766

2
STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to transmitting securely messages of
industrial controllers to pre-defined receivers via a network. See
Specification ¶ 2. Exemplary independent claim 1 reads as follows:
1. A method for securely providing event-relevant information
about an industrial control alarm event occurring in a machine from
an industrial controller controlling the machine to a specified remote
receiver via a network, comprising the steps of:
assigning a specific receiver to each specific industrial control
alarm event occurring in the machine;
writing event-relevant information to a database in the
controller controlling the machine, said event-relevant information
including sensitive information;
transmitting from the controller to the specified receiver in
response to the alarm event a receiver-specific message indicating that
the alarm event has occurred and not containing said sensitive
information;
accessing the event-relevant information via a Web server using
a cryptographically protected communication protocol based on an
Internet browser in response to the receiver-specific message; and
performing at least one of failure analysis or fault repair on the
machine using sensitive information accessed using said
cryptographically protected communication protocol.
Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Qi et al. (Qi) US 6,892,064 B2 May 10, 2005
Wylie et al. (Wylie) US 7,203,560 B1 Apr. 10, 2007
Subramaniam et al.
(Subramaniam)
US 2007/0208697 A1 Sept. 6, 2007
Zhou et al. (Zhou) US 2008/0186166 A1 Aug. 7, 2008
Appeal 2012-003680
Application 10/659,766

3
Rejections
Claims 1–4, 7–12, 14, 15, and 17–26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wylie and Zhou. See Ans. 4–11.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wylie, Zhou, and Qi. See Ans. 11–12.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wylie, Zhou, and Subramaniam. See Ans. 12–13.

ANALYSIS
Appellant argues that the Examiner has erred in rejecting independent
claims 1 and 11 because the claims are not obvious in view of Wylie and
Zhou. See App. Br. 4–6. We disagree with Appellant.
While the Examiner finds that Wylie teaches transmitting from the
controller to a receiver a receiver-specific message (or alert) that indicates
that an alarm event has occurred, see Ans. 5, the Examiner finds that Wylie
does not teach explicitly that the alert does not contain sensitive information,
see Ans. 6. The Examiner relies on Zhou for teaching this feature. See Ans.
6–7, 14–15 (citing Zhou ¶¶ 22, 102, 111 (teaching a notification system that
generates a basic message for users and allows authorized users to access
additional information beyond the basic message through a secured website
or call management center)). As the Examiner finds, the users in Zhou
“must log in to the system in order to view secure information (i.e. the
sensitive information) that is not provided by the ‘basic message.’” See Ans.
15. Given the Examiner’s findings, the Examiner concludes that the
combined teachings in Wylie and Zhou suggest modifying Wylie’s alerts so
Appeal 2012-003680
Application 10/659,766

4
that they do not contain sensitive information, as taught by Zhou, to improve
system security. See Ans. 7, 16.
Arguing that the Examiner’s rejection is based on hindsight, Appellant
contends that there is no motivation for combining Wylie and Zhou because
Appellant’s “communication is from the controller to the recipient of the
alarm message, not to some centralized office” as in Zhou. See App. Br. 4–
5. Appellant further contends that “[t]he invention is not obvious if this
communications problem can’t be solved without relying on hindsight.” See
App. Br. 5. The Examiner points out, however, that Wylie—not Zhou—
teaches or suggests the disputed communication feature. See Ans. 5, 14.
The Examiner merely relies on Zhou to teach or suggest an alert message
that does not contain sensitive information. See Ans. 14. The Examiner also
correctly finds an artisan of ordinary skill would have recognized that
combining the teachings in Wylie and Zhou would improve system security.
See Ans. 7, 16. We find that this explanation shows that an artisan of
ordinary skill would have had a motivation for combining the references.
Appellant’s arguments do not persuasively show error in the Examiner’s
proffered reasoning, which has a rational underpinning, in support of the
Examiner’s legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
Appellant further contends that Wylie “suggests that there is no
problem with the [disclosed] conventional communications methods.” See
App. Br. 5. Appellant contends specifically that Wylie does not suggest “the
lack of secure, timely information encountered by Germany’s roving
technicians who constantly travel from one automated plant to another.” See
App. Br. 5. Appellant submits “[t]echnicians need to receive alarm event
Appeal 2012-003680
Application 10/659,766

5
messages in real time over whatever public networks they can access from
wherever they happen to be . . . . [and] can’t rely on private networks, much
less on their central office or Zhou’s central service bureau.” See App. Br.
5. According to Appellant, “[w]hen a problem isn’t yet recognized, there
logically can be no ‘obvious’ solution.” See App. Br. 5. We find
Appellant’s arguments unpersuasive. The applied prior art need not suggest
a combination that addresses the same problem that the applicant addresses.
See In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (“In considering
motivation in the obviousness analysis, the problem examined is not the
specific problem solved by the invention but the general problem that
confronted the inventor before the invention was made.”). While Appellant
contends that Wylie does not address the same problem that Appellant’s
invention addresses, see App. Br. 5, the Examiner’s proposed combination
nonetheless addresses a problem that would have been recognized by an
artisan of ordinary skill, see Ans. 7, 16.
Moreover, Appellant does not identify any language in claims 1 or 11
that requires a “public” network environment or “real time” transmissions.
As claims 1 and 11 do not recite these features, Appellant’s arguments are
not commensurate in scope with the claims, and the arguments are therefore
unavailing.
Finally, Appellant argues that Zhou teaches away from Appellant’s
invention because Zhou’s system is centralized, unlike Appellant’s
decentralized system. See App. Br. 5–6. Appellant explains that “[t]he
conventional security measures such as PKI [(public key infrastructure)],
that are used by controllers to email or otherwise contact a central office . . .
are not usable to contact these roving technicians.” See App. Br. 6. As
Appeal 2012-003680
Application 10/659,766

6
claims 1 and 11 neither recite a decentralized system nor exclude from their
scope security measures like PKI, however, Appellant’s argument is not
commensurate in scope with the claims, and we therefore find the argument
unavailing. We nonetheless also find Appellant’s argument unpersuasive.
As discussed above, the Examiner relies on Zhou for teaching an alert
message that does not contain sensitive information. See Ans. 14. Appellant
does not identify any discussion in Zhou that teaches away from using such
alert message in a decentralized system. Further, as the Examiner finds, “the
teachings of Wylie do not preclude this type of message.” See Ans. 16;
Wylie, col. 8, ll. 5–10.
Appellant does not argue separately any feature recited in the
dependent claims. See App. Br. 6.
In view of the foregoing, we sustain the Examiner’s § 103 rejection of
claims 1–12, 14, 15, and 17–26.

DECISION
The Examiner’s decision rejecting claims 1–12, 14, 15, and 17–26
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tj