10152902 (B.P.A.I. Jul. 9, 2010)

Ex Parte Karaila

Board of Patent Appeals and InterferencesJul 9, 2010

10152902 (B.P.A.I. Jul. 9, 2010)

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. 10/152,902 05/22/2002 Mika Karaila 33047/248057 8998 826 7590 07/09/2010 ALSTON & BIRD LLP BANK OF AMERICA PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE, NC 28280-4000 EXAMINER STORK, KYLE R ART UNIT PAPER NUMBER 2178 MAIL DATE DELIVERY MODE 07/09/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MIKA KARAILA ____________________ Appeal 2009-000886 Application 10/152,902 Technology Center 2100 ____________________ Before THU A. DANG, CAROLYN D. THOMAS, and DEBRA K. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-000886 Application 10/152,902 2 Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b) (2008). We AFFIRM. Introduction According to Appellant, the invention is a system and method for monitoring an industrial automation process (Spec. 1, [0001]). Various measurements are taken and monitored during a process (including process values) and the status of the process is displayed (Spec. 1, [0002]). A system and method are provided that will generate structural status documents and compare process values in each document to determine differences in the process operation at different points in time (Spec. 2, [0005]). STATEMENT OF THE CASE Exemplary Claim Claim 1 is an exemplary claim and is reproduced below: 1. A method of using status images describing a process in a control system for an industrial automation process, the method comprising: specifying a plurality of process values to be collected from the industrial automation process, collecting the process values from the industrial automation process at a first time for describing its status at the first time, Appeal 2009-000886 Application 10/152,902 3 generating a first structural status document comprising the process values collected from the process at the first time, wherein the process values are stored in the document based on a structural language format, storing the first structural status document, collecting the process values from the industrial automation process at a second time for describing its status at the second time, generating a second structural status document comprising the process values collected from the process at the second time, wherein the process values are stored in the document based on a structural language format, storing the second structural status document, comparing process values included in the first and second structural status documents in response to a need to find differences in the operation of the process at different points in time, and displaying at least the difference in the process values collected at the first and second time to a user. Prior Art Salonen WO 00/23860 Apr. 27, 2000 McMahan US 6,625,567 B1 Sept. 23, 2003 Muenzel US 2002/0004804 A1 Jan. 10, 2002 AlphaWorks: XML Diff and Merge Tool, updated posting on March 27, 2001, http://www.alphaworks.ibm.com/tech/xmldiffmerge (hereinafter “XML”). Appeal 2009-000886 Application 10/152,902 4 Rejections Claims 1, 3-7, 9-12, 14, and 16-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Salonen, McMahan, and XML. Claims 2, 8, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Salonen, McMahan, XML, and Muenzel. GROUPING OF CLAIMS Appellant argues all the claims 1-19 as a group on the basis of independent claims 1, 7, 11, and 14 (App. Br. 5-11). We select independent claim 1 as the representative claim and therefore, treat claims 2-19 as standing or falling with representative claim 1. (See 37 C.F.R. § 41.37(c)(1)(vii)). Claims 1, 3-7, 9-12, 14, and 16-19 ISSUE 1 Appellant asserts the invention is not obvious over Salonen, McMahan and XML because these references, taken alone or in combination, do not teach “the generation of first and second structural status documents using process values collected from an industrial (claims 1, 7, and 11) or paper making (claim 14) process at first and second times” (App. Br. 7). The Examiner finds Salonen discloses the process values being collected from an industrial process (Ans. 11). Appeal 2009-000886 Application 10/152,902 5 Issue 1: Has Appellant shown the Examiner erred in finding Salonen discloses collecting process values from an industrial or paper making process? FINDINGS OF FACT (FF) Salonen (1) A method and system are described for monitoring operation of an industrial process. The industrial process is used in compiling a document that includes a group of cause-effect relationships that are dependent on the industrial process. Status data of the process is also collected. A document server compares the status data with data from the group of cause-effect relationships and generates an account of the status. (Abstract and pg. 1, ll. 4-12). McMahan (2) McMahan teaches an automated method and system for analyzing data associated with an industrial process (Abstract). Time-tagged data (used to record events occurring in an industrial process) are analyzed to identify problems associated with the industrial process (col. 1, ll. 15-16 and ll. 46-48). The time-tagged data may be stored as a log file which can be manually analyzed by a technician or an engineer to identify problems (col. 1, ll. 42-48). ANALYSIS We find both Salonen and McMahan teach an industrial process that collects status data of the process (FFs.1 & 2). We further find that the type Appeal 2009-000886 Application 10/152,902 6 of process from which process data is collected is non-functional descriptive material. The labels or content of this nonfunctional descriptive material is not entitled to weight in the patentability analysis. Such nonfunctional descriptive material does not further limit the claimed invention either functionally or structurally. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (Bd. Pat. App. & Int. 2008) (precedential) (discussing cases pertaining to non-functional descriptive material); Ex parte Mathias, No. 2005-1851 (Bd. Pat. App. & Int. Aug. 19, 2005), aff'd, In re Mathias, No. 2006-1103, WL 2433879 (Fed. Cir. Aug. 17, 2006) (Rule 36, unpublished); Ex parte Curry, No. 2005-0509 (Bd. Pat. App. & Int. June 30, 2005), aff'd, In re Curry, No. 2006-1003 (Fed. Cir. June 12, 2006) (Rule 36, unpublished) (both cases treating data as nonfunctional descriptive material). Thus, we find the Examiner did not err in finding Salonen teaches collected process values from an industrial automation process. ISSUE 2 Appellant next asserts the invention is not obvious over Salonen, McMahan and XML because these references taken alone or in combination do not teach comparing the process values of the first and second structural status documents “in response to a need to find differences in the operation of the process at different points in time” as set forth in claims 1, 7, 11 and 14 (App. Br. 5). Appeal 2009-000886 Application 10/152,902 7 Issue 2: Has Appellant shown the Examiner erred in finding the prior art teaches comparing process values included in the first and second structural status documents in response to a need to find differences in the operation of the process at different points in time?” FURTHER FINDINGS OF FACT XML (3) XML is directed to a program that can be used in reconciling or understanding changes made by a single user or by several people to a single document (pg. 1). A base XML document is compared to a second document and differences are highlighted through symbols and color (id.). ANALYSIS We find XML teaches comparing two documents to find differences (FF 3). Salonen’s teaching of generating a document with process values was not argued. Appellant’s argument that none of the prior art teaches “in response to a need to find differences in the operation of the process at different points in time” (App. Br. 5) is not persuasive. This language does not state a result but instead, expresses a need. We construe this “need” broadly to include some action or result that activates the “comparing step.” Thus, we find the comparison in XML is done in response to a user action and thus, we find Appellant’s argument unpersuasive. Accordingly, we find that the combination of Salonen and XML teaches “comparing process values included in the first and second structural Appeal 2009-000886 Application 10/152,902 8 status documents in response to a need to find differences in the operation of the process at different points in time,” as recited in claim 1. ISSUE 3 Appellant asserts the invention is not obvious over Salonen, McMahan, XML and Muenzel because the references are not properly combinable (App. Br. 10 and Reply 1-5). Specifically, Appellant contends the Examiner has only made “broad conclusory statements”; combining the references would require modification of their principle of operation; one of ordinary skill in the art would not have been motivated to combine the references; the combination uses hindsight reconstruction; and McMahan and Salonen teach away from the invention as recited in the independent claims (App. Br. 8-11 and Reply 1-5). The Examiner finds Appellant is arguing the references individually and concludes one of ordinary skill in the art would have found it obvious to combine the technique of XML and McMahan into the system of Salonen (Ans. 9-12) Issue 3: Has the Examiner erred in concluding one of ordinary skill in the art would have found it obvious to combine Salonen, McMahan, and XML? Appeal 2009-000886 Application 10/152,902 9 FURTHER FINDINGS OF FACT (FF) ANALYSIS We find the Examiner has not made merely “broad conclusory statements,” but specific findings with regard to what each reference teaches and specific conclusions as to why one of ordinary skill in the art would have found it obvious to combine the Salonen, McMahan, and XML references (Ans. 9-12). Appellant’s arguments focus on the individual differences between the limitations of claim 1 and the Salonen, McMahan, and XML references and the individual limitations of each reference. It is apparent, however, from the Examiner’s line of reasoning, that the basis for the obviousness rejection is the combination of Salonen, McMahan, and XML. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F. 2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F. 2d 1091, 1096 (Fed. Cir. 1986). We further find Appellant’s arguments regarding the “principle of operation” to be unpersuasive. We find both Salonen and McMahan as well as the present invention, monitor data to detect problems or issues in an industrial process and thus, monitor the operation of an industrial process (FFs.1 & 2). We further find XML describes comparing documents to find differences (FF. 3). We fail to see how any of these references being combined would modify their principle of operation. Appellant further argues that Salonen and McMahan teach away from the present invention because they each only disclose one document being Appeal 2009-000886 Application 10/152,902 10 created. However, both Salonen and McMahan as well as the present invention teach collecting and monitoring data from an industrial process to identify problems (FFs.1 & 2). We find Salonen and McMahan do not teach away since they merely express a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan – they do not discredit or discourage investigation into the invention as claimed. (See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).) Indeed, Appellant has not shown teachings in Salonen or McMahan that would lead a person of ordinary skill in the art upon reading Salonen or McMahan to be discouraged from following the path set out in the present invention or to take a divergent path from that taken by Appellant (See Ricoh Co. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)). Appellant’s argument that one of ordinary skill in the art would not have been motivated to combine the techniques of comparing documents from XML and the storing of a document as taught by McMahan with the system of Salonen and such a combination involves hindsight is similarly without merit. While this court indeed warns against employing hindsight, its counsel is just that – a warning. That warning does not provide a rule of law that an express, written motivation to combine must appear in prior art references before a finding of obviousness. Stated differently, this court has consistently stated that a court or examiner may find a motivation to combine prior art references in the nature of the problem to be solved. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004); See also Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996); In re Huang, 100 F.3d 135, 139 n.5 (Fed. Cir. 1996). Appeal 2009-000886 Application 10/152,902 11 Here the nature of the problem to be solved has been clearly articulated by the Examiner who has also provided details as to why one of ordinary skill in the art would have been motivated to combine the XML and McMahan techniques into the system of Salonen (See Ans. 4-5 and Ans. 8- 11). [A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. . . . In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). We find an ordinary artisan would have possessed the knowledge and skills rendering him capable of combining storing a document and comparing two documents to find differences into the system of Salonen. We further find that Appellant’s invention is a combination of known elements. [I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 417 (2007). To show an apparent reason to combine the known elements in the fashion claimed, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of Appeal 2009-000886 Application 10/152,902 12 obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “However, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. We find the Examiner has articulated reasoning with rational underpinning to support the legal conclusion of obviousness. Appellant’s argument that Salonen and McMahan disclose only one document is unpersuasive. We find it to be a known technique for one of ordinary skill in the art to generate and compare two documents (FFs.1, 2 & 3). We further find it to be a known technique for one of ordinary skill in the art to store a document (FF 2). We find it to be a known technique to create a document that has process values indicating the operation of a process (FFs. 1 & 2). We also find it to be a known technique to generate two or more documents for comparison (FFs.1 & 3). Accordingly, we conclude one of ordinary skill in the art would have found it obvious to combine the techniques of McMahan and XML into Salonen. 35 U.S.C. § 103(a): claims 2, 8, 13, and 15 Claims 2, 8, 13, and 15 were not argued separately but instead argued as patentable on the basis of their respective independent claims 1, 7, 11, and 14. Therefore, for the reasons set forth above, we find Appellant has not shown the Examiner erred in concluding claims 2, 8, 13, and 15 are obvious over Salonen, McMahan, XML and Muenzel. Appeal 2009-000886 Application 10/152,902 13 CONCLUSION Appellant has not shown the Examiner erred in rejecting claims 1, 3- 7, 9-12, 14, and 16-19 for obviousness over Salonen, McMahan and XML. Appellant has not shown the Examiner erred in rejecting claims 2, 8, 13, and 15 for obviousness over Salonen, McMahan, XML and Muenzel. DECISION The Examiner’s rejection of claims 1, 3-7, 9-12, 14, and 16-19 under 35 U.S.C. § 103(a) as being obvious over Salonen, McMahan and XML is affirmed. The Examiner’s rejection of claims 2, 8, 13, and 15 under 35 U.S.C. § 103(a) as being obvious over Salonen, McMahan, XML and Muenzel 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) (2009). AFFIRMED llw ALSTON & BIRD LLP BANK OF AMERICA PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE NC 28280-4000