Ex Parte Hessmer et al

Board of Patent Appeals and Interferences

Dec 14, 2009

09954422 (B.P.A.I. Dec. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAINER HESSMER, IVAN A. TODOROV,
MICHAEL HADRICH, and LOUIS D. ROSS
____________

Appeal 2009-006778
Application 09/954,422
Technology Center 2400
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Decided: December 14, 2009
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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STATEMENT OF THE CASE
Appellants’ invention relates to computerized process control
networks wherein configuration utilities access server components within
manufacturing/process control networks to tailor the operation of the server
components such as a process control data access server system (Spec. 1).
Claim 1, which is illustrative of the invention, reads as follows:
1. A distributed configuration utility facilitating remote …,
distributed configuration utility comprising:

a configuration editor located at a configuration console;

a configuration storage for storing configuration information
including parameter values corresponding to a current configuration
of a configurable process control data access server;

a rules storage for storing a set of configuration rules
associated with the configurable process control data access server,
wherein the set of configuration rules provide a guide to processing
the configuration information within the configuration storage
corresponding to the current configuration of the configurable process
control data access server; and

a server agent, located on a computing node remote from the
configuration console and containing the configurable process control
data access server, the server agent including executable procedures
for notifying the configuration editor of the configurable process
control data access server and thereby facilitating establishing a
configuration interface between the configuration editor and the
configurable process control data access server.

The Examiner relies on the following prior art in rejecting the claims:
Fisher US 6,247,128 B1 Jun. 12, 2001

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Claims 1-20 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Fisher.
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellants and the
Examiner.
ISSUE
In rejecting the claims, the Examiner characterizes the Channel
Configuration Program (CCP) of Fisher as the claimed configuration editor
(Ans. 3) and the Preinstall Reengineering Initiative for Software
Management (PRISM) of Fisher as the claimed server agent (Ans. 4). The
Examiner finds that the claimed server agent and its functionality is met by
the portions in Fisher titled “Software Configuration Overview” and
“Product Bill-of-Materials” or Product BOM (col. 28, ll. 23-52) where
server agent is taught to be located on a computing node remote from the
configuration console and containing the configurable process control data
access server (Ans. 4; 15-16). Appellants argue (App. Br. 8) that Fisher
does not disclose a server agent residing on a node, remote from the
configuration editor, and containing a process control data access server, as
recited in claim 1. Appellants further argue that, even under the broadest
reasonable interpretation principle, the components in Fisher’s system
exhibit neither the functionality nor the structural relationships required by
the claimed invention (Reply Br. 7).
Therefore, the issue specifically turns on whether Appellants have
shown that the Examiner erred in rejecting claim 1 as anticipated by Fisher
by characterizing the Preinstall Reengineering Initiative for Software
Management (PRISM) of Fisher as the claimed server agent.
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FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
1. Fisher describes a system of computer manufacturing with pre-
installation of software which uses a software selection process controlled
by a rules database. (Abstract.)
2. Fisher describes a set of definitions such as CCP as Channel
Configuration Program (col. 8, l. 52) and Preinstall Reengineering Initiative
for Software Management (PRISM) for putting software on manufactured
systems (col. 9, ll. 45-47).
3. Fisher shows in Figure 1 a block diagram of the data flows
between a remote manufacturing facility and manufacturing headquarters.

Figure 1 of Fisher
4. Fisher further discloses that the Product BOM contains two
types of objects; one describing a software deliverable and the other
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consisting of rules showing the dependencies between the two software
components. (Col. 28, ll. 23-46.)

PRINCIPLES OF LAW
A rejection for anticipation requires that the four corners of a single
prior art document describe every element of the claimed invention, either
expressly or inherently, such that a person of ordinary skill in the art could
practice the invention without undue experimentation. See Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30
F.3d 1475, 1478-79 (Fed. Cir. 1994).

ANALYSIS
We disagree with the Examiner’s position reading the claimed server
agent on the disclosure of Fisher related to the Preinstall Reengineering
Initiative for Software Management (PRISM). While Fisher installs
software selected based on a rules database (FF 1), neither of the CCP or the
PRISM are shown to function as required by the claimed configuration
editor and the server agent (FF 1-2). In that regard, although PRISM is
shown as a server (FF 3), the Examiner has not pointed to any teachings in
Fisher specifying that the PRISM is remote from the configuration editor
and contains a process control data access server.
Contrary to the Examiner’s assertion (Ans. 15) that “by giving the
broader reasonable interpretation,” the identified elements in Fisher meet the
claimed requirement, the PRISM is not shown to meet the structural and
functional requirements of the claimed server agent. Even if the CCP
Database Server may meet the claimed process control data access server
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(Ans. 4), the Examiner has not shown that the PRISM, as the server agent,
contains the CCP Database Server. In fact, the portions of Fisher describing
the Product BOM describe the relationship among the software deliverable
part numbers (FF 4) with no connection to the PRISM Server.
In view of our analysis of Fisher, we agree with Appellants (Reply Br.
7) that the identified elements in Fisher are not shown to have the
relationship required by the server agent in claim 1. More specifically, as
argued by Appellants (id.), we do not find any specific description in the
Examiner’s response pointing to and clarifying the relationship between the
server agent, the configuration editor, and a process control data access
server and how they correspond to the claimed server agent.

CONCLUSION
On the record before us and in view of the analysis above, we find
that Appellants have shown that the Examiner erred in characterizing the
Preinstall Reengineering Initiative for Software Management (PRISM) of
Fisher as the claimed server agent recited in claim 1 and the other
independent claims. Therefore, the 35 U.S.C. § 102 rejection of claims 1-20
as anticipated by Fisher cannot be sustained.

ORDER
The decision of the Examiner rejecting claims 1-20 is reversed.

REVERSED

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