Ex Parte Herberth et al

Patent Trial and Appeal Board

Dec 11, 2017

13061893 (P.T.A.B. Dec. 11, 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.
13/061,893 03/28/2011 Harald Herberth 5029-775PUS-307332.000 1086
27799 7590
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
VU, PHY ANH TRAN
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
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 HARALD HERBERTH, ULRICH KROGER, and ALLAN
SOBIHARD
Appeal 2017-002327
Application 13/061,89s1
Technology Center 2400
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
SHARON FENICK, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 15—26, 28, and 292. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Siemens AG as the real party in interest. App. Br. 2.
2 Claims 1—14 and 27 are cancelled. App. Br. 10, 12.
Appeal 2017-002327
Application 13/061,893
STATEMENT OF THE CASE
The Invention
According to Appellants, their invention relates to “automation
engineering and, more particularly, to a method for granting access
authorization for a computer-based object in an automation system.” Spec.
1:12-15.
Exemplary independent claim 29 is reproduced below.
29. A method for granting access authorization for a
computer-based object in an automation system, comprising:
ascertaining an identifier for a control program and
encrypting the identifier based on a private digital key associated
with a controller/monitor of the automation system, said
controller/monitor comprising an engineering system which at
least one of configures, services, starts up and documents the
automation system;
providing a first service based on the computer-based
object from the automation system, and providing a second
service from the automation system based on the control
program;
decrypting the encrypted identifier upon transmission to
an authentication service and verifying the decrypted identifier
by the authentication service;
transmitting, by the authentication service, a token having
at least a fixed-term validity to the second service if verification
of the transmitted decrypted identifier is successful;
transmitting the token via the control program to the first
service for checking when access to the computer-based object
is requested; and
granting access of the computer-based object of the
automation system to the control program if a result of the
checking is positive.
2
Appeal 2017-002327
Application 13/061,893
References and Rejections
1. Claims 15—21, 23—26, and 28—29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Lee (US 2010/0023760 Al; Jan. 28,
2010) and Dillaway (US 2004/0168056 Al; Aug. 26, 2004 ). Final Act. 3—
8.
2. Claim 22 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Dillaway, and Raiz (US 2002/0164025 Al; Nov. 7,
2002). Final Act. 9.
ANALYSIS
Claim 29
Claim 29 recites “said controller/monitor comprising an engineering
system which at least one of configures, services, starts up and documents
the automation system.” App. Br. 13.
Appellants argue Lee fails to teach or suggest the claimed
“engineering system.” For example, Appellants argue “[njothing in
paragraph [0014] of Lee teaches or suggests that a CA [Certification
Authority] corresponds to the engineering system of independent claim 29.”
App. Br. 5. Appellants also contend “it is clear this paragraph [[0099]]
utterly fails to teach or suggest the engineering system within the meaning
and scope of this invention.” App. Br. 5.
We are unpersuaded by Appellants’ argument. The Examiner finds
Lee’s CA is implemented in a system consisting of hardware and software
and therefore teaches an engineering system as claimed. Final Act. 2—3;
Ans. 4. Appellants do not present sufficiently persuasive evidence or
reasoning that the scope of the claimed “engineering system” does not
3
Appeal 2017-002327
Application 13/061,893
encompass Lee’s CA. Instead, Appellants merely summarize portions of
Lee, and summarily state that these portions do not teach or suggest the
claimed “engineering system.” See App. Br. 5. A statement that merely
points out what a claim recites is not an argument for patentability of the
claim. 37 C.F.R. § 41.37(c)(l)(iv); accord In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 201 l)(“[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”). Appellants also quote from their Specification,
but the quoted portions do not define “engineering system” nor describe it in
significantly more detail than the language of the claim itself. See App. Br.
6. We do not find these arguments to be persuasive of Examiner error.
Appellants also argue, “The ‘CA’ of Lee is provided for performing
functions, such as issuing, publishing, revoking and renewing certificates in
a computing device. Appellants believe this has nothing to do with
configuring, servicing, starting up and/or documenting an automation
system.” App. Br. 5. According to Appellants, “[t]he skilled person knows
an automation system has all to do with production plants, i.e., a
manufacturing facility or some other type of factory in which ‘widgets’ are
produced.” Reply Br. 2.
We find this argument to be unpersuasive as well. The Examiner
finds “the system of Lee qualifies as an ‘automation system’, as Lee
discloses a method of checking revocation of a content device using
software (applications) and digital computers (machinery).” Ans. 3.
Appellants do not present a definition or limiting description of the term
“automation system” from either intrinsic or extrinsic evidence in such a
4
Appeal 2017-002327
Application 13/061,893
way so as to rebut the Examiner’s findings. Similarly, Appellants do not
present persuasive evidence supporting their contention that a “skilled
person knows an automation system has all to do with production plants, i.e.,
a manufacturing facility or some other type of factory in which ‘widgets’ are
produced.” Reply Br. 2. Nor have we found this language anywhere in
Appellants’ Specification.
Appellants argue:
A controller/monitor comprising an engineering system
that configures, services, starts up and/or documents an
automation system is not inherent to the authentication system of
Lee. Lee merely describes a “CA” that performs functions, such
as issuing, publishing, revoking and renewing certificates in a
computing device. This functionality differs from the
functionality of the controller/monitor comprising an
engineering system of independent claim 29 that ‘configures,
services, starts up and/or documents an automation system. ’ The
issuance, publication, revocation and renewal of certificates as
described in Lee fails to correspond to Appellants’ claimed
subject matter. Lee fails to teach or suggest the
controller/monitor of independent claims 28 and 29.
Reply Br. 3^4 (emphases omitted); see also App. Br. 6—7 (“[A]
controller/monitor . . . that configures, services, starts up and/or documents
an automation system is not inherent to . . . Lee. Lee describes a ‘CA’ that
performs functions, such as issuing, publishing, revoking and renewing
certificates .... Lee fails to teach or suggest the controller/monitor of [the]
independent claims.” (emphases omitted)).
We are unpersuaded by Appellants’ argument. Instead, we agree with
the Examiner’s finding that by disclosing a CA that provides authentication
to Lee’s system, Lee discloses that the CA “services” Lee’s system. See
Ans. 3. Again, Appellants do not present persuasive evidence supporting
5
Appeal 2017-002327
Application 13/061,893
their argument that the functions provided by Lee’s CA would not either
configure, service, start up, or document an automation system.
Accordingly, we sustain the Examiner’s rejection of claim 29. We
also sustain the Examiner’s rejection of claims 15—28 which were argued
with claim 29 as a group, and for which Appellants do not make arguments
for separate patentability. See App. Br. 4, 8.
DECISION
The Examiner’s rejection of claims 15—26, 28, and 29 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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
6