Ex Parte Cassiolato

Board of Patent Appeals and Interferences

Nov 20, 2007

10316720 (B.P.A.I. Nov. 20, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CESAR CASSIOLATO
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Appeal 2007-1706
Application 10/316,7201
Technology Center 2100
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Decided: November 20, 2007
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Before ANITA PELLMAN GROSS, ALLEN R. MacDONALD, and
MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-60. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention relates to a system and method for generating a
fieldbus network layout and simulating a fieldbus network design (Spec. 1).
Claims 1 and 11 are exemplary:

1 Application filed December 11, 2002. The real party in interest is SMAR
Research Corporation.
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Application 10/316,720

1. A method for generating a layout for a fieldbus network, comprising
the steps of:
obtaining at least one fieldbus network design rule for use with
the fieldbus network;
obtaining data associated with one or more components of the
fieldbus network;
using a processing arrangement, automatically generating an
association of the components based on the data and the at least one
fieldbus network design rule;
and
upon a request or an instruction to at least one of (i) replace of
at least one of the components of the fieldbus network with at least
one further component, and (ii) add the at least one further component
to the fieldbus network, obtaining further data associated with the at
least one further component, and automatically regenerating the
association based on the further data and the at least on fieldbus
network design rule using the processing arrangement.

11. A method for simulating an operation of a fieldbus network,
comprising the steps of:
obtaining at least one fieldbus network operation rule for use
with the fieldbus network;
obtaining data associated with one or more components of the
fieldbus network; and
using a processing arrangement, simulating the operation of the
fieldbus network in accordance with the at least one fieldbus network
operation rule and the data.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stewart US 6,411,923 B1 Jun. 25, 2002
Kodosky US 2002/0111783 A1 Aug. 15, 2002
Claims 1, 2, 4-7, 21, 22, 24-27, 41, 42, and 44-47 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Stewart.
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Claims 3, 23, and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stewart.
Claims 11-17, 31-37, and 51-57 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stewart in view of Kodosky.
Claims 8-10, 18-20, 28-30, 38-40, 48-50, and 58-60 have been
cancelled by Appellant.
Appellant contends that the Examiner erred in his rejections because
(a) Stewart does not teach that an association of fieldbus components is
automatically regenerated based on further data and at least one fieldbus
network design rule, and (b) Stewart in combination with Kodosky does not
teach or fairly suggest simulating the operation of a fieldbus network. The
Examiner contends that the claims are properly rejected because Stewart
teaches both automatically generating, and automatically regenerating,
association of components; and because Kodosky’s teaching of simulation of
a wide range of systems supplies the teaching missing from Stewart such
that Appellant’s claimed invention is rendered obvious.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUE
There are two principal issues in the appeal before us.
The first issue is whether the Examiner erred in holding that Stewart
teaches automatically regenerating an association of fieldbus network
components upon a request or instruction to replace or add a component in
an existing network design.
The second issue is whether Stewart in combination with Kodosky
renders obvious a claimed invention directed to simulating the operation of a
fieldbus network in accordance with at least one fieldbus network operation
rule and data associated with one or more components of a fieldbus network.
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. Appellant indicates he has invented a system and method for
automatic generation of a layout for a fieldbus network in accordance with
physical layer guidelines for the particular protocol, allowing for an analysis
of the network prior to its physical implementation. At least one fieldbus
network design rule, and data associated with one or more components of
the fieldbus network, can be obtained. Then, an association of the
components can be automatically generated based on the data and the at
least one fieldbus network design rule (para. [0012]).
2. In another embodiment, the operation of the fieldbus network
can be simulated in accordance with the obtained fieldbus network operation
rules and the retrieved data (para. [0013]).
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3. Appellant provides a user’s fieldbus network design, which
may include, “e.g., the field devices to be used, a layout of the plant,
physical locations where some of the fieldbus devices are to be mounted,
etc.” (para. [0030]).
4. Next, Appellant’s system can “generate a layout for a fieldbus
design” (para. [0031]), following design rules which may include minimum
voltage at field device terminals; typical output voltage for a segment
coupler; typical output current for a segment coupler; current consumption;
loop resistance; and maximum length of cable (Id.).
5. Appellant provides an example of replacing a segment coupler
with one of a different type, with different current and voltage characteristics
(para. [0037]). Current and voltage characteristics of the new coupler are
provided. Appellant’s software then determines the maximum number of
field devices that can be connected to the given fieldbus segment, and
verifies that the total current consumed is within the specification of the
particular fieldbus protocol (para. [0038]-[0040]).

Stewart
6. Stewart teaches an analysis tool for aiding in the design of a
process control system which conforms to a standard protocol, (such as
Fieldbus). Such a tool advantageously allows the efficient design of a
process control system while ensuring that the physical characteristics of the
system conform to standard (col. 2, ll. 43-48).
7. Stewart teaches that a fieldbus network allows devices made by
different manufacturers to interoperate and communicate with one another
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via a standard bus to effect decentralized control within a process (col. 2, ll.
12-18).
8. Stewart teaches a “check calculations” portion of the network
analysis tool, which checks (a) spur lengths, to assure that they do not
exceed a predetermined spur length as defined by the standard protocol; (b)
the number of devices per segment, against a maximum which may vary
based upon the controller used; (c) the total current draw per segment; (d)
the total segment cable length; and (e) the minimum voltage per segment
(col. 7, l. 48 – col. 8, l. 43).
9. Each of these checks may result in a warning message from the
analysis tool, if the checked value is not within the range permitted by the
standard protocol. All of the checked values are (automatically) reviewed by
the analysis tool to assure that all values are within their limits (col. 8, ll. 44-
46).
Kodosky
10. Kodosky teaches a system and method for coordinating timing
between simulation of a system and measurement and/or control of the
system. The simulation program may be operable to simulate any of various
types of systems. The measurement/control program may interface with the
simulation program using the same techniques as for interfacing with a real
system (para. [0023]).
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11. The simulation program of Kodosky may be operable to
simulate any of various types of systems, including discrete-time or
continuous time systems (id.). Exemplary systems which may be simulated
include a device in motion, an engine or an engine component, a chemical
reaction, a petroleum refining process, a room maintained at a setpoint
temperature, a system of liquids flowing among different tanks, etc. (para.
[0039]).
PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
When a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.
KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727 (2007) (quoting Sakraida v. AG
Pro, Inc., 425 U.S. 273, 282 (1976)).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
a patent might be determined to be obvious. In particular, the Supreme Court
emphasized that “the principles laid down in Graham reaffirmed the
‘functional approach’ of Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739,
(citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)),
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and reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. The Court explained:
When a work is available in one form of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
ANALYSIS
Rejections under 35 U.S.C. § 102
Appellant argues that the Examiner erred in rejecting claims 1, 21,
and 41 as being anticipated by Stewart because Stewart does not teach, in
response to a request to replace or add a component in the fieldbus network
under design, automatically regenerating the association of components
based on further data associated with the replacement or new component and
at least one fieldbus network design rule (Br. 14). Appellant refers to column
5 of Stewart for support of his position, which discloses that
[A] user selects a controller card from the available listed
controller cards … [Doing so essentially] configures a segment
of a fieldbus network. After the segments have been configured,
the [analysis] tool analyzes the relevant data to determine
whether the process control network design conforms to the
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appropriate standard via check calculations step 310. [If so,] the
tool provides the user with a message to this effect and the
operation of the tool is completed. If the design does not
conform…, then the user may return to the configuration steps
to adjust the design of the portions that do not meet the criteria.
In this way, a user may iteratively design a process control
network so that the design conforms to criteria set forth by a
standard protocol. (Col. 5, ll. 16-42).
Appellant’s position is that the requirement for user intervention to
adjust the design, and to iteratively design the (fieldbus) process control
network, fails to meet the limitation of “automatically regenerating the
association of components” required by claims 1, 21, and 41.
The Examiner notes, however, that Appellant does not contest his
position that Stewart meets the earlier claim limitation of “automatically
generating an association of the components based on the data and the at
least one fieldbus network design rule.” Appellant also does not argue that
the result obtaining from its automatic regeneration of the association of
components would differ in any way from an automatic generation of the
association of components corresponding to the “revised” network in the
first instance.
The Examiner refers to Stewart (col. 7, l. 48 to col. 8, l. 43) to meet
the limitation of “automatically generating an association of the components
based on the data and the at least one fieldbus network design rule.” Stewart
teaches a “check calculations” portion of the network analysis tool, which
checks (a) spur lengths, to assure that they do not exceed a predetermined
spur length as defined by the standard protocol; (b) the number of devices
per segment, against a maximum which may vary based upon the controller
used; (c) the total current draw per segment; (d) the total segment cable
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length; and (e) the minimum voltage per segment (FF 8). Each of these
checks may result in a warning message from the analysis tool, if the
checked value is not within the range permitted by the standard protocol. All
of the checked values are (automatically) reviewed by the analysis tool to
assure that all values are within their limits (FF 9).
Similarly, Appellant provides a user’s fieldbus network design, which
may include, “e.g., the field devices to be used, a layout of the plant,
physical locations where some of the fieldbus devices are to be mounted,
etc.” (FF 3). Next, Appellant’s system can “generate a layout for a fieldbus
design,” following design rules which may include minimum voltage at field
device terminals; typical output voltage for a segment coupler; typical output
current for a segment coupler; current consumption; loop resistance; and
maximum length of cable (FF 4). Appellant provides an example of
replacing a segment coupler with one of a different type, with different
current and voltage characteristics (FF 5). Current and voltage
characteristics of the new coupler are provided. Appellant’s software then
determines the maximum number of field devices that can be connected to
the given fieldbus segment, and verifies that the total current consumed is
within the specification of the particular fieldbus protocol (FF 5).
In summary, then, Appellant’s invention calls for a user to specify
components of a fieldbus network, after which Appellant’s software
performs checks and calculations to ensure that the proposed design is
within specifications. The user may modify his proposed design, changing or
replacing a component, after which Appellant’s software once again
performs the same checks and calculations. In Stewart, the user specifies
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components of a fieldbus network; subsequently, Stewart’s “check
calculations” module ensures that the proposed network is within applicable
limits. If the user modifies his proposed network, the “check calculations”
module is again employed to make sure the proposal complies with the
pertinent rules.
Appellant does not contest that Stewart teaches “automatically
generating an association of the components based on the data and the at
least one fieldbus network design rule.” Further, neither Appellant nor
Stewart makes a distinction between the process of initially generating an
association of components and the process of re-generating an association of
components upon a design change by the user. We therefore find Stewart’s
teachings with regard to “automatically generating,” supra, equally
applicable to “automatically regenerating the association based on the
further data and the at least one fieldbus network design rule,” as claims 1,
21, and 41 require. As a result, we affirm the rejection of claims 1, 21, and
41, as well as claims 2, 4-7, 22, 24-27, 42, and 44-47 which are dependent
therefrom and not separately argued.
Rejections under 35 U.S.C. § 103
Appellant argues that claims 3, 23, and 43 are unobvious over Stewart
for the same reasons given with respect to claims 1, 21, and 41, respectively,
which stand rejected as anticipated by Stewart. Appellant presents no
separate argument for the patentability of claims 3, 23, and 43. Because we
affirm the rejection of claims 1, 21, and 41, we therefore also affirm the
rejection of claims 3, 23, and 43, respectively dependent therefrom and not
separately argued.
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Appellant argues that the Examiner erred in rejecting claims 11-13,
15-17, 31-33, 35-37, 51-53, and 55-57 as obvious over Stewart in view of
Kodosky because Kodosky, contrary to the Examiner’s assertions, does not
teach or suggest the step of “simulating the operation of the fieldbus network
in accordance with the at least one fieldbus network operation rule and the
data” (Br. 19).
The Examiner holds, and Appellant does not contest, that Stewart
teaches obtaining at least one fieldbus network operation rule for use with
the fieldbus network, and obtaining data associated with one or more
components of the fieldbus network. The Examiner admits that Stewart does
not teach the step of simulating the operation of the fieldbus network.
Appellant admits that Kodosky “mentions the simulation of various types of
systems, and discusses certain fieldbus devices” (Br. 19). In fact, Kodosky is
directed to coordinating timing between simulation of a system and
measurement and/or control of a system (FF 10). The simulation program
may be operable to simulate any of various types of systems, including
discrete-time or continuous time systems (FF 11). Exemplary systems which
may be simulated include a device in motion, an engine or an engine
component, a chemical reaction, a petroleum refining process, a room
maintained at a setpoint temperature, a system of liquids flowing among
different tanks, etc. (FF 11). Given that Stewart teaches that a fieldbus
network allows devices made by different manufacturers to interoperate and
communicate with one another via a standard bus to effect decentralized
control within a process (FF 7), and that such processes may include
chemical, petroleum, and other manufacturing and refining processes, we
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find that Kodosky’s set of exemplary systems which may be simulated,
noted supra, encompasses the simulation of a fieldbus network.
The question is whether one of ordinary skill in the art starting with
Stewart would have found it obvious at the time the invention was made to
modify Stewart’s fieldbus network and associated configuration software to
include simulation of the operation of the fieldbus network, as taught by
Kodosky, in order to provide a single tool which not only assists the user
with the design of the network layout but also with verifying its correct
operation (Examiner’s Ans. 9). In considering the teachings of Stewart and
Kodosky, we have found that (1) each of the claimed elements is found
within the scope and content of the prior art; (2) one of ordinary skill in the
art could have combined the elements as claimed by methods known at the
time the invention was made; and (3) one of ordinary skill in the art would
have recognized at the time the invention was made that the capabilities or
functions of the combination were predictable. Furthermore, neither
Appellant’s Specification nor Appellant’s arguments present any evidence
that modifying Stewart to include network simulation as taught by Kodosky
was uniquely challenging or difficult for one of ordinary skill in the art. The
modification of Stewart to include the simulation of Kodosky thus is no
more than “the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for
improvement.” KSR, 127 S.Ct. at 1740. Therefore, it would have been
obvious at the time the invention was made to include the fieldbus network
simulation methods of Kodosky with the fieldbus network and configuration
of Stewart.
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This conclusion is consistent with the line of cases from the Federal
Circuit and its predecessor court. See, e.g., In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (holding that the claimed manner in which an electrical
contact was made, i.e. by “metallic wrapping,” that provided no novel or
unexpected result over the metallic connections used in the applied
references was an obvious choice within the skill of the art) (cited with
approval in In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995)). In the present
case, the disputed claim limitation of “simulating the operation of a fieldbus
network” is identical between the claimed invention and the prior art. Thus,
the addition of the simulation of Kodosky to the network design and
configuration of Stewart represents an obvious choice within the skill of the
art, i.e., the application of a known technique to a piece of prior art ready for
improvement.
Appellant’s claims 11-13, 15-17, 31-33, 35-37, 51-53, and 55-57 were
combinations which only unite old elements with no change in their
respective functions and which yield predictable results. Thus, the claimed
subject matter likely would have been obvious under KSR. In addition,
neither Appellant’s Specification nor Appellant’s arguments present any
evidence that the modifications necessary to effect the combination are
uniquely challenging or difficult for one of ordinary skill in the art. Because
this is a case where the improvement is no more than “the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for improvement,” KSR, 127
S.Ct. at 1740 no further analysis was required by the Examiner. Under those
circumstances, the Examiner did not err in holding that it would have been
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obvious to one having ordinary skill in the art at the time the invention was
made to modify Stewart to include simulation of the fieldbus network, as
taught by Kodosky, in order to provide a single tool which not only assists
the user with the design of the network layout but also with verifying its
correct operation (Examiner’s Ans. 9).
Appellant’s arguments with regard to claims 14, 34, and 54 are merely
a combination of the arguments presented with regard to claims 1, 21, and
41, and those presented with regard to claims 11, 31, and 51. Because we
find supra that Stewart teaches “automatically regenerating …,” and because
we find supra that Stewart in combination with Kodosky meets the
limitation of “simulating a fieldbus network,” we find that the Examiner did
not err in holding that it would have been obvious to one having ordinary
skill in the art at the time the invention was made to modify Stewart to
include simulation as taught by Kodosky.

CONCLUSION OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-7, 11-17, 21-27, 31-37, 41-47, and 51-57. On the record
before us, claims 1-7, 11-17, 21-27, 31-37, 41-47, and 51-57 are
unpatentable.

DECISION
The Examiner’s rejection of claims 1-7, 11-17, 21-27, 31-37, 41-47,
and 51-57 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).
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AFFIRMED

eld

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