Ex Parte GÖTZ et alDownload PDFPatent Trial and Appeal BoardDec 15, 201613528611 (P.T.A.B. Dec. 15, 2016) Copy Citation 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. 13/528,611 06/20/2012 Franz-Josef GOTZ 5029-977-322130.000 9813 27799 7590 Cozen O'Connor 277 Park Avenue, 20th floor NEW YORK, NY 10172 12/19/2016 EXAMINER SONG, REBECCA E ART UNIT PAPER NUMBER 2414 NOTIFICATION DATE DELIVERY MODE 12/19/2016 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): patentsecretary @ cozen. com patentdocket@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANZ-JOSEF GOTZ and GUNTER STEINDL Appeal 2015-007892 Application 13/528,611 Technology Center 2400 Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and MICHAEL J. ENGLE, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-007892 Application 13/528,611 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—11. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary claim 1 under appeal reads as follows (bracketing added): 1. A method for transmitting data packets in an industrial Ethernet automation network including industrial automation devices communicating based on (i) a realtime communication protocol for control of industrial facilities and (ii) a further non-realtime communication protocol for at least one of monitoring, configuring, reprogramming and reparameterizing at least one control unit in the automation network, the data packets consisting of a plurality of data frames, where a minimum size of the data frames being less than 64 bytes, the method comprising: [(A)] receiving, by a transmitter of the industrial Ethernet automation network . . ., a first data packet having a first priority; [(B)] starting a transmit operation within the Ethernet automation network including industrial automation devices to send the first data packet from the transmitter to a receiver; [(C)] receiving, by the transmitter . . ., a second data packet having a second priority at an instant in time, the second priority being higher than the first priority, and the second data packet is to be transmitted to the receiver; [(D)] aborting the transmit operation of the first data packet within a data frame of the first data packet which is currently engaged in the transmit operation at a time of reception of the second data packet; and [(E)] transmitting the second data packet from the transmitter to the receiver; [(F)] wherein each data frame of the first data packet is buffered in a buffer during the transmit operation; and 2 Appeal 2015-007892 Application 13/528,611 [(G)] wherein, after aborting the transmit operation of the first data packet, the data frame whose transmission is aborted is retransmitted from the buffer after the second data packet has been transmitted. Rejections The Examiner rejected claims 1,3,5, and 7—11 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kruchinin et al. (US 2009/0319831 Al; published Dec. 24, 2009) and Pauwels (US 2008/0137675 Al; published June 12, 2008).1 Final Act. 4. The Examiner rejected claims 2, 4, and 6 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kruchinin, Pauwels, and Kulkami et al. (WO 2010/026067 Al; published March 11, 2010; US 2011/0142052 Al; published June 16, 2011).2 Final Act. 17. Appellants ’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because the Examiner takes the position that Kruchinin at paragraph 4 describes using an HTTP non-realtime 1 Separate patentability is not argued for claims 3,5, and 7—11. As to these claims, Appellants merely reference the arguments of claim 1. This fails to constitute arguments for separate patentability. Except for our ultimate decision, claims 3, 5, and 7—11 are not discussed further herein. 2 Separate patentability is not argued for claims 2, 4, and 6. As to these claims, Appellants merely reference the arguments of claim 1. Thus, the rejection of these claims turns on our decision as to claim 1. Except for our ultimate decision, these claims are not discussed further herein. 3 Appeal 2015-007892 Application 13/528,611 communication protocol to operate and monitor an automation device. App. Br. 8—9; Final Act. 6. Appellants disagree that this explanation provided in Kruchinin corresponds to the non-realtime communication of Appellants’ claimed invention. App. Br. 9. Kruchinin (paragraph [0029], lines 13—15) explains that “[t]he remote computers 4, 5 and 6 are each provided with a web browser 8, 9 or 10 to display the operating data on the remote computer 4, 5 or 6”. The web browsers form part of the system depicted in Fig. 1. That is, a user seeking to access the automation devices 1, 2, 3 will do so via their web browser. This processing occurs in real-time, however, because as explained at paragraph [0029], lines 22-33 of Kruchinin “the portal 11 is responsible for identification, authentication and authorization of a user who wants to gain access via one of the remote computers 4, 5 or 6. App. Br. 9, emphasis added. There is no teaching or suggestion of a non-realtime protocol that is used for either monitoring, configuring, reprogramming and/or reparameterizing at least one control unit in the automation network. App. Br. 10. 2. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Pauwels, on the other hand, describes an asynchronous or bit synchronous protocol (see, e.g., paragraphs [0015] and [0052]). There is nothing in these paragraphs about realtime and non-realtime protocols that are implemented in the manner recited in independent claim 1. App. Br. 10. 4 Appeal 2015-007892 Application 13/528,611 Issues on Appeal Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We disagree with Appellants’ conclusions. Except as noted below, 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. We concur with the conclusions reached by the Examiner. We highlight the following additional points. As to Appellants’ above contention 1, we disagree. The essence of the Examiner’s response is that Appellants are conflating “quick access” with a real-time protocol. Ans. 20 (emphasis omitted). The Examiner correctly points out that “claim 1 recites ‘a non-realtime protocol’.” Id. We agree with the Examiner that “HTTP protocol... is a non-realtime protocol,” and no matter how quick the access is using HTTP, that does not change the fact that the protocol (i.e., HTTP) is non-realtime. Id. (emphasis omitted). We conclude that Appellants’ “quick access” argument is not commensurate in scope with the non-realtime protocol limitation of claim 1. Additionally, Appellants’ argument focuses on the use of HTTP in Kruchinin’s invention (e.g., App. Br. 9—10 (citing Kruchinin 129)), while overlooking that the rejection also relies on paragraph 4 of Kruchinin to show use of an HTTP protocol for monitoring a control unit in the automation network (Final Act. 6). Paragraph 4 of Kruchinin is directed not 5 Appeal 2015-007892 Application 13/528,611 to the invention of Kruchinin, but rather to the prior art known to Kruchinin. The rejection is based on a combination of the prior art known to Kruchinin, Kruchinin’s invention, and Pauwels. Therefore, Appellants’ argument is not directed to the findings as they were set forth by the Examiner.3 As to Appellants’ above contention 2, we disagree. Appellants argue that “[tjhere is nothing in these paragraphs [cited from Pauwels] about realtime and non-realtime protocols that are implemented in the manner recited in independent claim 1.” App. Br. 10. However, the Examiner did not cite Pauwels for this limitation. Rather, as discussed above, the Examiner relied on the prior art known to Kruchinin to teach “non-realtime communication protocol for at least one of monitoring, configuring, reprogramming and reparameterizing at least one control unit in the automation network.” Final Act. 6. We conclude that Appellants’ argument does not address the actual reasoning of the Examiner’s rejections. Instead Appellants attack the references singly for lacking teachings that the Examiner relied on a combination to show. It is well established that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). This form of argument is inherently unpersuasive to show Examiner error. Our reviewing court requires that references must be read, not in isolation, but for what they 3 Although not necessary for our decision, we note that Akinlar (US 20040030797 Al; published February 12, 2004) at paragraph 57 describes HTTP as non-realtime. 6 Appeal 2015-007892 Application 13/528,611 fairly teach in combination with the prior art as a whole. Merck, 800 F.2d at 1097 (Fed. Cir. 1986). CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1—11 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1—11 are not patentable. DECISION The Examiner’s rejections of claims 1—11 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 7 Copy with citationCopy as parenthetical citation