Ex Parte Damith et al

Patent Trial and Appeal Board

Apr 10, 2017

13677448 (P.T.A.B. Apr. 10, 2017)

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.
13/677,448 11/15/2012 Stephan Damith DAMI3001/JS/FD 1071
23364 7590 04/12/2017
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
LIN, JSING FORNG
ART UNIT PAPER NUMBER
2446
NOTIFICATION DATE DELIVERY MODE
04/12/2017 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):
MAIL @B ACONTHOMAS .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHAN DAMITH, ULRICH SYBER,
ROBERT WOTSCH, CHRISTIAN SCHNEID,
and BERND BRIECHLE
Appeal 2016-005055
Application 13/677,4481
Technology Center 2400
Before BRUCE R. WINSOR, JOHN R. KENNY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 17, 18, 20, 24, 26—31, and 33—36, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1—16, 19, 21—23, 25, and 32 are cancelled. App. Br. (Claims App’x)
16-19.
We affirm.
1 The Applicant and the real party in interest identified by Appellants is
Endress + Hauser Wetzer GMBH + Co. KG. App. Br. 2.
Appeal 2016-005055
Application 13/677,448
STATEMENT OF THE CASE
Appellants’ disclosed invention relates to the operation of a field
device for the recording or manipulation of process variables in process or
automation technology. See Spec, 1:5—12. Claim 17, which is illustrative,
reads as follows:
17. A method for the operating of a field device of
process automation technology, comprising the steps of:
exchanging data via a connection between the field device
and an operating device, for operating the field device; which
field device is a sensor or an actuator;
establishing said connection via a communication
interface on the field device and a communication interface on
the operating device; and
providing the communication interface of the operating
device as a hardware communication interface, which is
emulated by software as an Ethernet interface, and wherein:
the connecting system is connected to an available
communication port on the field device, and to an available
communication port on the operating device;
the field device does not comprise an integrated web
server;
the connecting system comprises a data processing unit,
which is connected to the communication interface of the field
device via a first sub connection of the connecting system and
to the communication interface of the operating device via a
second sub connection;
the data processing unit comprises a web server;
said data is transmitted to the operating device via the
second sub connection by means of the web server;
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said data from the field device is transmitted via the first
sub connection to the data processing unit by means of a field
device specific protocol;
said data, which is exchanged in the form of Ethernet
packets or Ethernet frames between the web server and a web
browser on the operating device, and is
encapsulated/embedded, for the transmission via the hardware
communication interface of the operating device, in telegrams
or packets of the protocol used for the transmission of data via
the communication interface of the operating device;
the data processing unit of the connecting system
comprises a memory unit in which a field device driver or a
field device description as the case may be are stored on the
memory unit and are loaded by the data processing unit and
used for communication with the field device, and
thereby the operating, in particular the parameterization,
of the field device is achieved via said web browser in the
operating device.
Claims 17, 18, 20, 24, 26, 27, 31, 33, 35, and 36 stand rejected under
35 U.S.C. § 103(a)2 as being unpatentable over Pagnano et al. (US
2004/0230582 Al; Nov. 18, 2004) (“Pagnano”) and Schneider et al. (US
2010/0135311 Al; June 3, 2010) (“Schneider”). See Final Act. 4-9.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pagnano, Schneider, and Penning (US 2008/0168283 Al;
July 10, 2008). See Final Act. 9—10.
Claims 29, 30, and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pagnano, Schneider, and Hladky et al. (US
2010/0000879 Al; Jan. 7, 2010) (“Hladky”). See Final Act. 10-12.
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011. Final Act 3.
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Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Oct. 20, 2015; “Reply Br.” filed Apr. 4, 2016) and the
Specification (“Spec.” filed Nov. 15, 2012, amended Nov. 20, 2012) for the
positions of Appellants and the Office Actions (“Final Act.” mailed Mar. 18,
2015; “Adv. Act” mailed July 9, 2015) and Answer (“Ans.” mailed Feb. 4,
2016) for the reasoning, findings, and conclusions of the Examiner. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
ISSUE
Based on Appellants’ arguments, we discuss the appeal by reference
to claim 17. See, e.g., App. Br 14. The issue presented by Appellants’
arguments is whether the Examiner errs in finding the combination of
Pagnano and Schneider teaches or suggests the limitations of claim 17.
ANALYSIS
We have reviewed Appellants’ arguments and contentions (App. Br.
10—14; Reply Br. 2—3) in light of the Examiner’s findings and conclusions
(Final Act. 4—7) and further explanations (Adv. Act. 2; Ans. 2-4) regarding
claim 17. We agree with the Examiner’s findings, conclusions, and
explanations and we adopt them as our own. The following discussion,
findings, and conclusions are for emphasis.
Appellants’ central argument is that Pagnano does not teach or
suggest “providing the communication interface of the operating
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device as a hardware communication interface, which is emulated by
software as an Ethernet interface,” as recited in claim 17 (see App.
Br. 12—13), whereas Schneider does not teach or suggest “exchanging
data via a connection between the field device and an operating
device, for operating the field device,” as also recited in claim 17 (see
App. Br. 13—14). However, it is well settled that “one cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413, 426 (CCPA 1981). The Examiner relies on Pagnano, not Schneider, to
teach all the limitations of claim 17 except the emulation of an Ethernet
connection by the operating device and the resulting Ethernet protocol
communication between the operating device and a data processing unit
comprising a web browser. See Final Act. 4—6 (citing Pagnano || 18—19,
21—24, Fig. 1). The Examiner relies on Schneider, not Pagnano, to teach
that emulation of an Ethernet connection by a device that has a USB
hardware connection, enabling Ethernet protocol communication between
devices having a web browser and web server. See Final Act. 6—7 (citing
Schneider || 3, 19-20, 23—25, Fig. 1); Ans. 3^4. Appellants’ arguments,
which do not address “what the combined teachings of the references would
have suggested to those of ordinary skill in the art,” Keller, 642 F.2d at 425,
are therefore unpersuasive.
Appellants argue that Pagnano is directed to a different purpose than
the invention of claim 17. App. Br. 13.
Pagnano discloses an arrangement for displaying
properties of a field device to a user of a host processing system
by means of an XML or HTML stylesheet language page,
without downloading additional software. On the other hand, the
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present invention targets communication between a field device
and operating device essentially independent of the attendant
hardware of a communication interface.
Id. To the extent Appellants contend Pagnano is not analogous art, in an
obviousness analysis,
[t]wo separate tests define the scope of analogous prior art:
(1) whether the art vs, from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004)) (emphases added). Pagnano is analogous
art to Appellants invention because Pagnano and Appellants’ disclosure are
both directed to the same field of endeavor: communication in a process
automation systems between field devices (e.g., sensors and actuators) and
an operating device. See Pagnano ]Hf 2—3; Spec., Abstract. We agree with
the Examiner that it would have been obvious to a person of ordinary skill in
the art at the time of the invention to implement communication between
Pagnano’s processing system 60 (that includes a web server) and a remote
processing system 50 (i.e., the operating device in claim 17) using a USB
port of the remote processing system to emulate an Ethernet connection as
taught by Schneider. “[M]ere application of a known technique to a piece of
prior art ready for the improvement” generally will be obvious unless the
application of the known technique would require more than the predictable
use of the prior art elements according to their established functions. KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
In response to the Examiner’s Answer, Appellants further argue that
the reliance on Schneider is error because Schneider’s “field bus controller,”
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which includes a web server, is a “field device,” whereas claim 17
specifically states that “the field device does not comprise an integrated
web server.” See Reply Br. 2—3. We are not persuaded of error
because Appellants’ argument is inconsistent with the language of
claim 17. Claim 17 does not preclude all field devices from having
an integrated web browser; rather it merely requires that “a field
device” (i.e., at least one) “is a sensor or an actuator” and “does not
comprise an integrated web server.” Each of Schneider and Pagnano
teaches at least one field device that comprises a sensor or an actuator
and does not comprise an integrated web browser. See Schneider
^ 10, Fig. 1 (items 10); Pagnano ^ 18, Fig 1 (items 10). We note that
Appellants do not assert that Schneider’s field bus controller is either
a sensor or an actuator.
Appellants have not demonstrated error in the rejection of claim
17. Accordingly, we sustain the rejections of claim 17 and claims 18,
20, 24, 26—31, and 33—36, which were argued relying on the arguments
made for claim 17 (see App. Br. 14).
ADDITIONAF REMARKS
Although not before us in this appeal, our review of the record raised
several possible issues regarding the form and definiteness of the claims. In
the event of further prosecution, the Examiner and Appellants may wish to
review the claims to consider these and other possible issues of form and
definiteness. A few examples follow.
The Examiner may wish to consider whether “the connecting system”
renders claim 17 indefinite for lack of antecedent basis. For example, it may
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be unclear whether Appellants intended to recite “a” connecting system here
or instead intended the connecting system to include previously recited
elements such as “said connection” or the two communication interfaces.
The Examiner may also wish to consider whether the phrase “as the case
may be” renders claim 17 indefinite for lack of antecedent basis. No “case”
or conditional limitation was previously introduced in the claim. Thus, it
may be unclear whether the claim is directed to (A) either a driver or a
description must be stored or (B) both a driver and a description must be
stored, just not necessarily at the same time (e.g., in different “cases”).
Independent claim 36 recites a similar limitation.
Appellants may wish to consider amending “are stored” and “are
loaded” in claim 17 to be “is stored” and “is loaded.” A similar issue arises
in independent claim 36.
The Examiner may wish to consider whether the phrase “in particular
the parameterization” renders claim 17 indefinite, such as whether it is clear
that “in particular” is suggesting a mandatory limitation or instead an
optional preferred embodiment. Dependent claims 18, 27, 29, and 30 also
recite other “in particular” phrases.
The Examiner may also wish to consider whether “the fieldbus”
(claims 24 and 30); “the power” (claim 28); “of the application as
published” (claim 34); and “said data,” “the communication interface,” and
“the hardware communication interface” (claim 36) render those claims
indefinite for lack of antecedent basis.
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DECISION
The decision of the Examiner to reject claims 17, 18, 20, 24, 26—31,
and 33—36 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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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