Ex Parte Callaghan

Board of Patent Appeals and Interferences

Mar 12, 2007

10298852 (B.P.A.I. Mar. 12, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID MICHAEL CALLAGHAN
____________

Appeal 2006-2976
Application 10/298,852
Technology Center 2100
____________

Decided: March 12, 2007
____________

Before JOSEPH F. RUGGIERO, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-30, the only claims pending in this
application. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a).
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INTRODUCTION
The claims relate to systems and processes that provide network
database interactions in an industrial controller environment. Claim 1 is
illustrative:
1. An industrial control system, comprising:

an industrial control component adapted to communicate across a
network via [sic; via]1 a database protocol; and

at least one of a client and a server database to communicate with the
industrial control component through employment of at least one controller
tag element in accordance with the database protocol.

The Examiner relies on the following prior art references to show

unpatentability:

Nixon US 2002/0077711 A1 June 20, 2002
Pasadyn US 2002/0087229 A1 July 4, 2002
Todorov US 2002/0116453 A1 Aug. 22, 2002
Walsh US 6,810,429 B1 Oct. 26, 2004

The rejections as presented by the Examiner are as follows:
1. Claims 1-3, 5-8, 13-18, 20-27, 29, and 30 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Todorov.
2. Claim 9 is rejected under 35 U.S.C § 103(a) as unpatentable over
Todorov and Pasadyn.

1 Italicized terms should not appear in claims printed in any patent issuing
from the instant application. Under current practice, italics represent
material added to an original patent by prosecution of a reissue application.
See Manual of Patent Examining Procedure (MPEP) § 1455, subheading II
(8th Ed., Rev. 5, Aug. 2006).
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3. Claims 4, 19, and 28 are rejected under 35 U.S.C § 103(a) as
unpatentable over Todorov and Nixon.
4. Claims 10, 11, and 12 are rejected under 35 U.S.C § 103(a) as
unpatentable over Todorov, Pasadyn, and Walsh.
OPINION
I. The Standing Rejections
Appellant submits that the rejection of claim 1 over Todorov is in
error. According to Appellant, the reference does not disclose at least one of
a client and a server database to communicate with the industrial control
component through employment of at least one controller tag element as
claimed.
The Examiner responds that the term “one controller tag element” has
not been clearly defined. As such, the recitation may be read on the
IioPlugIn interface depicted in Figure 8 of Todorov. (Answer 12-13.)
Todorov describes a data access server 50 (Fig. 1) interposed between
supervisory control level processing nodes 16 and the lower levels of the
process control system (e.g., the local control level 14 and fieldbus level 12).
The data access server 50 receives and/or extracts data from the field devices
20 (via channel 52) and/or the control processors 30 (via channel 54), and
provides corresponding (possibly reformatted) data to processing nodes at
the supervisory control level 16. Todorov ¶ 29. Todorov teaches the
incorporation of plugins supporting particular data exchange protocols
meeting the data access needs of new client applications at the supervisory
control level 16. Todorov ¶¶ 30-31.
As shown in Figure 2 of the reference, the data access server 50
obtains data from physical devices 56 by means of vendor-specific data
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input logic 58. The data access server converts the obtained data into a
generic format and stores the converted data in a database maintained by the
data access server 50. In response to client requests, the data access server
50 transmits the data in accordance with particular protocols associated with
each of the different client exchange protocols (such as DDE, Suite Logic
(or SuiteLink), and OPC) needed to transfer data to clients 60, 62, and 64,
using the protocol-specific plugins 70, 72, and 74. Todorov ¶ 33; ¶ 8.
Figure 8 depicts an IioPlugIn interface 502, which is the primary interface
exposed by each plugin to the data access server (DAS) engine layer 90 (Fig.
3). Todorov ¶ 80. In terms of the software architecture of data access server
50 (Fig. 3; ¶ 34), the plugins function as protocol converters between
particular client application protocols and the DAS engine 90 (¶ 60).
In light of the statement of the rejection (Answer 3) and the Response
to Arguments section of the Answer (id. at 12), the rejection reads the
“industrial control component” of claim 1 on the field devices 20 and/or
process controllers 30 (Todorov Fig. 1). The “controller tag element”
identified by the rejection, however, is not used to communicate with the
field devices 20 and/or process controllers 30. Rather, data access server 50
communicates with the physical devices by means of vendor-specific data
access protocols (¶ 33). Moreover, control processor 30 does not obtain data
via one of the identified “data access protocols,” contrary to the statement of
the rejection (Answer 3).
The rejection of independent claim 18 (Answer 6) suffers from similar
deficiencies. The control components in Todorov are not adapted to process
one or more “database” languages 70, 72, 74 (Fig. 2) through use of
“controller schema” (Fig. 8). Rather, the protocols used by the plugins that
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interface clients 60, 62, and 64 with data access server 50 are not used in the
vendor-specific data access protocols (Figs. 2 and 3).
We therefore do not sustain the § 102(e) rejection of claims 1-3, 5-8,
13-18, 20-25 over Todorov. Nor do we sustain the 103(a) rejection of
claims 4, 9-12, and 19, as the claims depend from claim 1 or claim 18 and
the further references that are applied do not remedy the deficiency in the
rejection against the base claims.
We find, however, that Todorov is sufficient to meet the terms of
independent claims 26, 27, and 29.
Instant claim 26 recites means for automatically translating data
between an industrial protocol and a database protocol. Todorov describes,
as we have previously noted, means for automatically translating data
between an industrial protocol (i.e., a vendor-specific protocol) and a
database protocol (i.e., for the database maintained by data access server 50;
¶ 33). Todorov further describes means for exchanging data between an
industrial control component and a database that employs the database
protocol.2 Data access server 50 of Todorov both receives data from the
physical devices and translates the data for storage in the database.
Todorov meets at least the minimum requirement of exchange of data
from an industrial control component to a database. The data disclosed by
Todorov may fairly be described as “control data,” in that the data are
exchanged and maintained within a process control environment. However,
the data contents are not entitled to patentable weight because the claim does

2 A fair reading of the claim does not require that exchange of data is
according to a database protocol. Moreover, the recitation “the database
protocols” lacks proper antecedent basis in the claim.
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not require that the data effect any type of control. The data as claimed in
claim 26 consist of what has come to be known as nonfunctional descriptive
material, as defined in Manual of Patent Examining Procedure (MPEP)
§ 2106.01 (8th Ed., Rev. 5, Aug. 2006). The informational content of the
nonfunctional descriptive material carries no weight in the analysis of
patentability over the prior art. Cf. In re Lowry, 32 F.3d 1579, 1583, 32
USPQ2d 1031, 1034 (Fed. Cir. 1994) (“Lowry does not claim merely the
information content of a memory. . . . [N]or does he seek to patent the
content of information resident in a database.”).
Independent claim 27 is drawn to a computer readable medium having
a data structure comprising a first and a second data field. Claim 29 appears
to be drawn to even less (i.e., non-statutory subject matter), but recites a first
and a second data field. In any event, the claims recite mere arrangements
of data (i.e., nonfunctional descriptive material); the informational content of
what the fields are to represent, specify, or be associated with carries no
weight in the analysis of patentability over the prior art. Since Todorov
describes a database (which has, at the minimum, more than one field)
maintained on a server, the reference is sufficient to show anticipation of the
subject matter of claims 27 and 29.
We thus find that claims 26, 27, and 29 are anticipated by Todorov.
Dependent claims 28 and 30, not separately argued, fall with the
independent claims. We sustain the § 102(e) rejection of claims 26, 27, 29,
and 30 over Todorov and the § 103(a) rejection of claim 28 over Todorov
and Nixon.

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II. New Ground of Rejection
Nixon refers (¶ 40) to a co-pending U.S. patent application for details
of communications using an eXtensible Markup Language (XML) protocol
in a process control environment. The referenced application issued as US
7,162,534 B2 on January 9, 2007 (filed Jul. 10, 2001) to Schleiss et al.
(“Schleiss”).
Schleiss describes a business enterprise 10 (Fig. 1) that includes an
XML server 52 networked with, inter alia, production/process control
system 36 (Figs. 1 and 2). The XML server may, for example, send alarm
information from process control system 36 to maintenance management
system 42 for notification of the alarm. Schleiss col. 6, ll. 25-45. Computer
114 (Fig. 2) may function as a server for allowing the process control system
to exchange data with XML server 52 (col. 6, ll. 46-64), in addition to
functioning as an operator workstation having alarm and event processing
software (col. 7, ll. 43-67).
Schleiss further discloses that XML server 52 may include a variety of
functional blocks and databases (Fig. 3), including a schema editor and
database, a data manipulation functions database, and a business rules
database. Schleiss provides, as an example, an input schema (Fig. 4) for a
device alert or alarm generated within the process control system 36.
However, both input and output schemas may be created to convey
information or data to or from process control system 36. Col. 11, l. 43 -
col. 12, l. 62.
Schleiss thus describes, in accordance with instant claim 1, an
industrial control system comprising an industrial control component
(process controller 112; Fig. 2) adapted (by server 114; Fig. 2) to
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communicate across a network (50; Fig. 1) via a database (XML) protocol,
and a server database (210; Fig. 3; col. 14, ll. 17-29) to communicate with
the industrial control component through employment of at least one
controller tag element (element FT-100; Fig. 4) in accordance with the
(XML) database protocol. Schleiss also describes, in accordance with instant
claim 18, a method for exchanging data between an industrial control
component and a database, comprising adapting (by server 114) a control
component (process controller 112) to process a database language (XML)
through use of controller schema (either of the input or output schemas
described by the reference), and exchanging data with the control
component in accordance with the database language (XML). Schleiss also
anticipates broader claim 26, and anticipates claims 27 and 29 because each
of the claims require, at most, two data fields as we have discussed supra.
The independent claims are drafted in broad terms, and may read on
additional embodiments described in Schleiss that we have not discussed.
The controller tag element shown in the Figure 4 XML schema of the
reference is only an example of how data and instructions may be exchanged
between clients and process controllers, via XML server 52, in the context of
the business enterprise system 10 depicted in Figure 1. However, claims 1,
18, 26, 27, and 29 are anticipated under 35 U.S.C. § 102(e)(2) by Schleiss at
least in view of the particular elements we have identified in the reference.
Rather than re-examining the application, we leave it to the Examiner
to apply the teachings of Schleiss, either alone or in combination with other
prior art, against the dependent claims if any amendments to the claims
submitted by Appellant in response to the new ground of rejection fail to
distinguish over the prior art.
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CONCLUSION
In summary, we affirm the rejection of claims 26, 27, 29, and 30 but
reverse the rejection of claims 1-3, 5-8, 13-18, and 20-25 under 35 U.S.C. §
102(e) as being anticipated by Todorov. We affirm the § 103(a) rejection of
claim 28 but reverse the § 103(a) rejection of claims 4, 9-12, and 19. The
Examiner’s decision is thus affirmed-in-part.
A new rejection of independent claims 1, 18, 26, 27, and 29 under 35
U.S.C. § 102(e)(2) over Schleiss is set forth herein.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2006). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART -- 37 C.F.R. § 41.50(b)

KIS

ROCKWELL AUTOMATION, INC./(AT)
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1201 SOUTH SECOND STREET
MILWAUKEE, WI 53204