Ex Parte Davis

Patent Trial and Appeal Board

Sep 23, 2016

13428742 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/428,742 03/23/2012
42982 7590 09/27/2016
Rockwell Automation, Inc./FY
Attention: Linda H. Kasulke E-7Fl 9
1201 South Second Street
Milwaukee, WI 53204
FIRST NAMED INVENTOR
Wayne R. Davis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
11AB025-US(ALBR:0433/POW) 4787
EXAMINER
NICHOLAS, WENDY K
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
howell@fyiplaw.com
docket@fyiplaw.com
raintellectualproperty@ra.rockwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE R. DA VIS
Appeal2015-007353
Application 13/428,742
Technology Center 2100
Before JEAN R. HOMERE, AARON W. MOORE, and
DAVID J. CUTITTA II, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-007353
Application 13/428,742
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-16 and 21-24, which are all of the pending claims. App. Br. 13-
16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to "[ s ]ystems and methods ... for
providing an icon for display by a user interface from an automation device
that the icon depicts." (Abstract.) Claim 1, reproduced below, is
illustrative:
1. A method, comprising:
communicatively coupling a workstation with a first
automation device via an automation control network;
receiving a shell program at the workstation from the first
automation device;
detecting, using the shell program on the workstation, a
second automation device connected to the automation control
network;
receiving an icon and controlling characteristics of the icon
within the shell program from the second automation device,
wherein the icon is a representation of the second automation
device for display in a visualization of the workstation; and
enabling operational access to the second automation device
via the icon.
1 Appellant identifies Rockwell Automation Technologies, Inc. as the real
party in interest. (See App. Br. 2.)
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Appeal2015-007353
Application 13/428,742
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sato et al.
Kodosky et al.
Herberger et al.
Corson
US 2004/0120344 Al
US 7,134,090 B2
US 2008/0228924 Al
US 2011/0238731 Al
THE REJECTIONS
June 24, 2004
Nov. 7, 2006
Sept. 18, 2008
Sept. 29, 2011
1. Claims 1-5, 8-15, and 21-24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kodosky, Corson, and Sato. (See Final Act.
2-14.)
2. Claims 6, 7, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kodosky, Corson, Sato, and Herberger. (See Final Act.
14--16.)
APPELLANT'S CONTENTIONS
1. Appellant argues that the rejections are in error because "the
cited references, taken alone or in hypothetical combination, do not teach or
suggest a shell program that is received from a first automation device and
subsequently used to discover a second automation [device], as generally
described by independent claims 1 and 12." (App. Br. 7.)
2. Appellant argues that "there is no motivation provided by
Kodosky, Corson, or Sato to modify the downloadable script of Corson with
the device discovery API of Sato." (App. Br. 10.)
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Appeal2015-007353
Application 13/428,742
ANALYSIS
The Examiner finds that Kodosky teaches all limitations of claim 1
except that "Kodosky does not explicitly teach use of a shell program stored
on an automation device to perform the device detection method steps," such
that Kodosky does not teach "receiving a shell program at the workstation
from the first automation device" and "detecting, using the shell program on
the workstation, a second automation device connected to automation
control network." (Final Act. 4.) The Examiner further finds, however, that
Corson teaches "receiving a shell program at the workstation" and Sato
teaches "detecting, using the shell program on the workstation, a second
automation device connected to automation control network." (Id.)
Essentially, the Examiner's findings are that Kodosky teaches a
workstation coupled to an automation device, detecting a second device, and
that a second device may have an icon that operates the device. (See Final
Act. 2-3.) Corson teaches that a workstation may receive a shell program,
and Sato teaches that a shell program may be used to detect a device. (Id. at
4--5.) Thus, in the combination, a workstation is coupled to a first device (as
in Kodosky), a shell program is received at the workstation from the first
device (as taught in Corson), and the shell program is used to detect a second
device (as taught in Sato).
Appellant's argument that Corson's "script cannot be used to discover
the controlled device because the controlling device has already discovered
the controlled device before it retrieves the script" (App. Br. 7) is not
persuasive because (a) it argues the Corson reference individually, rather
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Appeal2015-007353
Application 13/428,742
than attacking the Examiner's combination as described above2 and (b) the
claim does not require that the script be used to discover the first device. In
the combination, as in the claimed arrangement, the first device would be
coupled to the workstation before the script is received and the script would
then be used to discover the second device.
Appellant's argument that "there does not appear to be any teaching
or suggestion that [Sato' s] device discovery application programming
interface is received from a first network device and used to discover
additional network devices" is not persuasive because, as explained above,
the Examiner relies on Corson for receipt of a shell program at the
workstation. See Merck, 800 F .2d at 1097.
We are not persuaded by Appellant's argument that there would be no
motivation "to modify the script received by the controlling device to enable
discovery of the controlled device because the controlling device appears to
already be aware of the controlled device" (App. Br. 10), because simply
being aware of a first device would not compel one to not look for a second
device. Nor are we persuaded by Appellant's argument that there would be
no motivation to add Sato' s teachings because "the discovery device API is
already resident on a control device in Sato" (App. Br. 11 ), as Sato is only
used by the Examiner to teach device discovery, not the location of the
component performing the discovery, which is taught by Corson. (See Final
Act. 4--5.)
2 See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.").
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Appeal2015-007353
Application 13/428,742
For these reasons, we sustain the rejection of claim 1 and, because
Appellant does not separately argue the rejections of claims 2-16 and 21-24,
we sustain the rejections of those claims as well.
DECISION
The rejections of claims 1-16 and 21-24 are 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)(l )(iv).
AFFIRMED
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