Ex Parte CassiolatoDownload PDFBoard of Patent Appeals and InterferencesNov 20, 200710316720 (B.P.A.I. Nov. 20, 2007) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte CESAR CASSIOLATO ____________________ Appeal 2007-1706 Application 10/316,7201 Technology Center 2100 ____________________ Decided: November 20, 2007 ____________________ 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. Appeal 2007-1706 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. 2 Appeal 2007-1706 Application 10/316,720 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). 3 Appeal 2007-1706 Application 10/316,720 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]). 4 Appeal 2007-1706 Application 10/316,720 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 5 Appeal 2007-1706 Application 10/316,720 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]). 6 Appeal 2007-1706 Application 10/316,720 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)), 7 Appeal 2007-1706 Application 10/316,720 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 8 Appeal 2007-1706 Application 10/316,720 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 9 Appeal 2007-1706 Application 10/316,720 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 10 Appeal 2007-1706 Application 10/316,720 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. 11 Appeal 2007-1706 Application 10/316,720 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 12 Appeal 2007-1706 Application 10/316,720 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. 13 Appeal 2007-1706 Application 10/316,720 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 14 Appeal 2007-1706 Application 10/316,720 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). 15 Appeal 2007-1706 Application 10/316,720 AFFIRMED eld DORSEY & WHITNEY LLP INTELLECTUAL PROPERTY DEPARTMENT 250 PARK AVENUE NEW YORK NY 10177 16 Copy with citationCopy as parenthetical citation