Ex Parte Gikas et al

Patent Trial and Appeal Board

Mar 31, 2015

11313124 (P.T.A.B. Mar. 31, 2015)

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.
11/313,124 12/20/2005 Diamantis Gikas 2004P19937US 3222
7590 03/31/2015
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE, SOUTH
ISELIN, NJ 08830
EXAMINER
HASAN, SYED HAROON
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
03/31/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DIAMANTIS GIKAS, RONALD LANGE, RALF LEINS,
KLAUS MEUSSER, and JURGEN SCHMOLL
____________

Appeal 2012-010679
Application 11/313,124
Technology Center 2100
____________

Before MAHSHID D. SAADAT, CHRISTA P. ZADO, and
ADAM J. PYONIN, Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL

Appellants
1
appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 31–33, 35–38, and 40, which constitute all the
pending claims in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1
According to Appellants, the Real Party in Interest is Siemens
Aktiengesellschaft (App. Br. 1).

Appeal 2012-010679
Application 11/313,124

2
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a system and method for managing
and/or providing partial solutions comprising a number of elements and
technological objects which represent parts of an automation system (see
Spec. ¶¶ 2, 3).
Claim 31 is illustrative of the invention and reads as follows (with the
disputed limitations in Italics):
31. A method for managing or providing multiple
automation solutions, the method comprising:
creating a first solution comprising an original partial
solution with identifiable solution elements;
using the original partial solution as a template for
creating a copy thereof for use in creating a second solution;
storing the original partial solution in a library; creating
at least one copy of the original partial solution;
creating the second solution based on the at least one
copy of the stored original partial solution; and
providing a bi-directional connection between the library
storing the original partial solution and the at least one copy to
permit updating one or more individual elements of the copy
based on changes made to elements in the original partial
solution.
The Examiner’s Rejections
The Examiner rejected claims 31, 32, and 40 under 35 U.S.C. § 103(a)
as being obvious over Becker (US 6,701,325 B2; Mar. 2, 2004) and Jartyn
(US 6,993,409 B2; Jan. 31, 2006) and further added Hess (US 6,600,964 B2;
July 29, 2003) to reject claim 33, and Sutter (US 6,446,092 B1; Sept. 3,
2002) to reject claims 35–38. (See Ans. 6–14).
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Application 11/313,124

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Appellants’ Contentions
1. Appellants contend the Examiner erred in rejecting claim 31
because:
a. The “bi-directional connection” of Jartyn is not related to
a system for “managing or providing a second solution based on use
or re-use of a copy of an existing partial solution stored in a library”
(App. Br. 6).
b. Jartyn does not disclose making changes “to the copy
based on changes made to the original partial solution” (App. Br. 7).
c. None of the references teach or suggest “updating . . .
individual elements of the copy based on changes made to elements in
the original partial solution” (App. Br. 8).
2. With respect to claim 32, Appellants contend the cited portions
in columns 2 and 3 of Becker do not disclose “a modifiable element, an
adaptable element . . . [or] an adaptable parameter” (App. Br. 9).
3. With respect to claim 33, Appellants contend the cited portions
of Hess do not disclose “a system in which a root element in a partial
solution is so individually modifiable” (App. Br. 10).
4. With respect to claim 35, Appellants contend the proposed
combination is improper because the cited portions of Sutter are not related
to updates of partial solutions and therefore, do not suggest “using a time
stamp to compare two partial solutions in order, for example, to determine
which has been most recently updated” (App. Br. 10).
5. Appellants argue the patentability of claims 36–38 based on the
same arguments presented for claim 35 (App. Br. 11–12).
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Application 11/313,124

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6. With respect to claim 40, Appellants present no separate
argument and allow claim 40 to stand or fall with its base claim.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are unpersuaded by Appellants’
arguments.
The Examiner has provided a comprehensive response, supported by
sufficient evidence based on the teachings of Becker and Jartyn, to each of
the above-noted contentions raised by Appellants. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (see
Ans. 12–26). We concur with the conclusion reached by the Examiner.
With respect to Appellants’ contentions 1a–1c, we specifically agree
with the Examiner’s findings (Ans. 15–20) that Becker teaches managing
multiple solutions whereas Jartyn has been applied for teaching an improved
data link between the components of an automation system. Therefore, as
concluded by the Examiner (Ans. 9), modifying Becker with the bi-
directional data link of Jartyn would have been obvious to one of ordinary
skill in the art because the combination would have improved the
programming of the data communication in an automation system.
We must point out, however, that all of the features of the secondary
reference need not be bodily incorporated into the primary reference (see In
re Keller, 642 F.2d 413, 425 (CCPA 1981)) and the artisan is not compelled
to blindly follow the teaching of one prior art reference over the other
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Application 11/313,124

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without the exercise of independent judgment (see Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). Here, the proposed
modification to Becker’s management of multiple automation solutions,
including partial solutions and their copies, is based merely on Jartyn’s bi-
directional connection (see Ans. 17–20). Therefore, contrary to Appellants’
contention that Jartyn is not related to a system for providing multiple
solutions or does not disclose a data link related to storing partial solutions
(Reply Br. 3–4), the Examiner’s findings and conclusions show that the
teaching value of Jartyn is providing a bi-directional data link for sending
messages between the components of an automation system (see Ans. 18).
Accordingly, Appellants’ contentions do not persuade us of the Examiner’s
error in rejecting claim 1.
Regarding Appellants’ contentions 2–6, we further agree with the
Examiner’s findings and conclusions regarding claims 32, 33, 35–38, and 40
(see Ans. 20–26) and adopt them as our own. In particular, the Examiner
has identified the relevant portions of each applied prior art and has properly
mapped the disputed claim limitations to those teachings (id.). Therefore,
we are not persuaded by Appellants’ contentions that the Examiner erred in
rejecting these claims.

DECISION
The Examiner’s decision to reject claims 31–33, 35–38, and 40 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).

Appeal 2012-010679
Application 11/313,124

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AFFIRMED
dw