Ex Parte Karschnia et al

Patent Trial and Appeal Board

Sep 25, 2018

10359902 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/359,902 02/06/2003
4743 7590 09/27/2018
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Robert J. Karschnia
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30203/38288 9499
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. KARSCHNIA and MARCOS PELUSO
Appeal2016-006472 1
Application 10/359,9022
Technology Center 3600
Before ANTON W. PETTING, BRADLEY B. BAY AT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, 5-19, 22-28, 31-35, 38, 39, and 42---66. 3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed Nov.
19, 2015), and Reply Brief ("Reply Br.," filed June 13, 2016), the Final
Office Action ("Final Act.," mailed May 20, 2015), and the Examiner's
Answer ("Ans.," mailed Apr. 11, 2016).
2 The real party in interest is identified as Rosemount, Inc. App. Br. 1.
3 Claims 3, 4, 20, 21, 29, 30, 36, 37, 40, and 41 have been canceled. Id.,
Claims App'x.
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CLAIMED INVENTION
"The present invention relates generally to process plants and, more
particularly, to a service facility that provides remote diagnostic and
maintenance services to a process plant." Spec. 1:5-7.
Claims 1, 18, 25, 33, and 38 are independent. Claim 25, reproduced
below with added emphasis, is illustrative of the subject matter on appeal
and recites:
25. A method for providing a plurality of applications to a
process plant, the method comprising:
remotely collecting process plant data associated with the
process plant, wherein the process plant includes a process plant
controller and a plurality of field devices coupled to the process
plant controller and wherein the process plant controller is
configured to control and measure the operation of the field
devices to control a flow or processing of a material in the
process plant according to a control scheme to thereby control
process parameters according to an overall control scheme;
remotely detecting a condition associated with the process
plant in response to the collected process plant data; and at least
one of
remotely and automatically downloading at least one of
the plurality of applications from a service facility located
remotely from the process plant to the process plant and
implement the at least one of the plurality of applications in the
process plant in response to the detected condition associated
with the process plant, and/or
remotely and automatically activating a web page on a
display screen in the process plant that provides graphical and/or
textual information for guiding an operator in correcting the
detected condition associated with the process plant.
App. Br. 55, Claims App'x.
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REJECTIONS
I. Claims 1, 2, 5-19, 22-24, 32-35, 38, 39, 42, 43, 45--48, 50-53,
55-58, 60-63, 65, and 66 stand rejected under 35 U.S.C. § 112,
second paragraph. Ans. 2.
II. Claims 1, 2, 5-19, 22-28, 31-35, 38, 39, and 42---66 stand rejected
under 35 U.S.C. § 112, first paragraph. Id.
III. Claims 1, 2, 5-19, 22-28, 31-35, 38, 39 and 42---66 stand rejected
under 35 U.S.C. § 101. Id.
IV. Claims 1, 2, 5-12, 14--19, 22-28, 31-35, 38, 39 and 42---66 stand
rejected under 35 U.S.C. § I02(e) as being anticipated by Eryurek
(US 2002/0123864 Al, pub. Sept. 5, 2002). Id.
V. Claim 13 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Eryurek and Official Notice. Id.
ANALYSIS
Rejections I and II
The Examiner's Rejections I and II are based on a finding that various
limitations in the claims invoke 35 U.S.C. § 112, sixth paragraph, and the
Specification fails to describe corresponding structure to satisfy the
definiteness and written description requirements. See Final Act. 2-12; see
also Ans. 11-16.
We are persuaded by Appellants' arguments (App. Br. 7-19; Reply
Br. 2-7) that the Examiner did not overcome the presumption that 35 U.S.C.
§ 112, sixth paragraph, does not apply.
It is well established that the use of the term "means" triggers a
rebuttable presumption that§ 112, sixth paragraph, governs the construction
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of the claim term. Conversely, when claim language does not recite the term
"means," as here, the presumption is that the limitation does not
invoke§ 112, sixth paragraph. However, this presumption can be overcome
if the challenger demonstrates that "the claim term fails to 'recite sufficiently
definite structure' or else recites 'function without reciting sufficient
structure for performing that function."' vVatts v. XL ~vs., Inc., 232 F.3d
877, 880 (Fed. Cir. 2000). The correct inquiry is whether skilled artisans,
after reading the patent, would conclude that a claim limitation is so devoid
of structure that the drafter constructively engaged in means-plus-function
claiming. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed.
Cir. 2015) (en bane). "Ultimately, whether claim language invokes§ 112, ,r
6 depends on how those skilled in the art would understand the structural
significance of that claim language." EnOcean GmbH v. Face Intern. Corp.,
742 F.3d 955, 958 (Fed. Cir. 2014) (citations omitted). As with the term
"receiver" in EnOcean, the terms "data collection unit," "analysis unit,"
"control unit," and "computer systems" do not recite the term "means" and,
thus, presumptively connote sufficiently definite structure to those of skill in
the art. EnOcean, 742 F.3d at 960. Although the term "unit" may serve as a
generic placeholder and substitute for "means," the inquiry does not end
there.
In Williamson, for example, the court demonstrated that the term
"distributed learning control module" was recited in a format consistent with
traditional means-plus-function language (i.e., by replacing "means for" with
"module for" followed by a function), the term was not described in the
disclosure in a way that imparted structural significance, the presence of
modifiers did not provide structural significance to the term "module," and
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the claim did not describe how the "distributed learning control module"
interacts with other components in the claimed system. See App. Br. 8-9;
see also Williamson, 792 F.3d at 1350-51. We find that the Examiner's
inquiry falls short, especially considering that none of the cited limitations
are drafted in the same format as a traditional means-plus-function
limitation, by merely replacing the term "means" with "unit" followed by
the linking term "for." For instance, claim 1 recites in part, "a data
collection unit located remotely from the process plant and adapted to collect
process plant data associated with the process plant via a communication
link, wherein the process plant includes a process plant controller and a
plurality of field devices coupled to the process plant controller." App.
Br. 51, Claims App'x. The rejection, for example, indicates that "'data
collection unit. .. to collect'" is interpreted as invoking § 112, sixth paragraph,
because it uses a generic placeholder without sufficient structure to achieve
the function or a structural modifier, and concludes that "one of ordinary
skill in the art would have recognized that these are not specific structural
elements that have [sic] are unique to carry out the particular functions."
Final Act. 3--4. The rejection does not adequately construe the recited claim
language in light of the Specification and evaluate whether the claim
describes how each limitation interacts with other recited components "in a
way that might inform the structural character of the limitation in question or
otherwise impart structure." Williamson, 792 F.3d at 1351. And, in
response to Appellants' arguments, which are reproduced by the Examiner
on pages 3-11 of the Answer, the Examiner only refers to and asserts that
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"rationales, and explanations were provided in the Non-Final Rejection."4
See Ans. 11 (emphasis omitted). We have reviewed the cited Non-Final
Office Action, but agree with Appellants that the Examiner has not
overcome the presumption that 35 U.S.C. § 112, sixth paragraph, does not
apply.
Because the Examiner's rejections under 35 U.S.C. § 112, first and
second paragraphs, are premised upon the Examiner's findings that§ 112,
sixth paragraph, is invoked, we will not sustain those rejections. See Final
Act. 6-12.
Rejection III
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
4 Although the Examiner cites to "Non-Final Rejection mailed on
9/19/2014" (Ans. 11), we note that the correct mailing date of the Non-Final
Office Action was Nov. 26, 2014. Appellants' response to a previous Non-
Final Office Action (mailed July 9, 2014) was filed on Sept. 19, 2014.
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at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., to an abstract
idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step
where the elements of the claims are considered "individually and 'as an
ordered combination'" to determine whether there are additional elements
that "'transform the nature of the claim' into a patent-eligible application."
Id. (quoting Mayo, 566 U.S. at 66, 78, 79).
Applying the framework in Alice, the Examiner determines that the
claims are directed to "an abstract idea of remote monitoring, specifically,
acquiring information from a monitored location, analyzing the data, and
transmitting information (corrections) to the monitored location." Ans. 1 7-
18. According to the Examiner,
the claimed invention is directed to comparing information
regarding a sample or test subject to a control or target data
( collecting plant data and comparing it to some threshold
parameter, or the like, in order to determine whether a condition
exists); collecting and comparing known information ( collecting
plant information and comparing it to known information in
order to determine if a condition exists); comparing known data
to determine risk level (based on the comparison a determination
is made that a condition exists, i.e. risk, that requires a
correction); diagnosing an abnormal condition by collecting the
information and analyzing the results in order to determine the
correct solution); comparing new and stored information and
using rules to identify options (based on the comparison
determining, based on a set of rules, the corresponding solution
to the particular detected condition); data recognition and storage
(identifying the condition providing the corresponding solution
based the analysis), which results in it being an idea of itself.
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Id. at 18 ( emphasis omitted). The Examiner also determines that the claims
do "not include additional element[ s] that are sufficient to amount to
significantly more than the judicial exception because the claim recited
generically computer elements ( e.g. a computing device) which do not add a
meaningful limitation to the abstract idea because they would be routine in
any computer implementation." Id. at 22.
In contesting this rejection, Appellants argue independent claims 1,
18, 25, 33, and 38 as a group. App. Br. 33. We select claim 25 as the
representative claim for the group. Thus, independent claims 1, 18, 33, and
38 stand or fall with claim 25. See 37 C.F.R. § 4I.37(c)(l)(iv). For the
following reasons, we do not find any of Appellants' arguments to be
persuasive of error in the rejection of claim 25.
Initially, Appellants argue5 that a prima facie case of subject matter
ineligibility has not been established because the Examiner has not
"identif[ ied] the specific recitations of the claims that pertain to the judicial
exception, and then explain, with particularity why the remaining recitations
do not amount to significantly more than the exception." App. Br. 35-36;
Reply Br. 9-11. We disagree.
Section 132 sets forth a general notice requirement whereby an
Applicant must be notified of the reasons for a rejection together with such
information as may be useful in judging the propriety of continuing with
prosecution of the application. See, e.g., In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011). We find the Examiner provided adequate explanation to
5 Appellants' arguments on pages 34--35 of the Appeal Brief as to the claims
not being directed to a fundamental economic practice are deemed moot in
light of the Examiner's response on page 18 of the Answer.
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meet the notice requirement. See Final Act. 12-14; see also Ans. 16-25.
The Examiner set forth the statutory basis of the rejection, applied Alice's
two-part framework, and sufficiently articulated reasoning in an informative
manner (see supra), including further analysis and explanation in response to
Appellants' arguments (see Final Act. 3 6-41 ), thus, meeting the notice
requirement of Section 132. See Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) (Section 132 "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
Next, Appellants contend that "[e]ven assuming, arguendo, that
'acquiring information from a monitored location, analyzing the data,
and transmitting information (corrections) to the monitored location'
amounts to an abstract idea, they are only abstract when presented in a
merely generic manner." App. Br. 36. According to Appellants, the
Examiner's
characterization completely ignores the remaining recitations of
the claim, including, but not limited to, remotely collecting
process plant data associated with the process plant, remotely
detecting a condition associated with the process plant by
analysis of process plant data collected from the process plant,
and remotely and automatically downloading at least one of a
plurality of applications to the process plant via a communication
link and implementing the at least one of the plurality of
applications in the process plant in response to the detected
condition associated with the process plant, and/or automatically
activating a web page on a display screen in the process plant that
provides graphical and/or textual information for guiding an
operator in correcting the detected condition associated with the
process plant.
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Id.; see also Reply Br. 10 (asserting that "while collecting the process
plant data and analyzing the collected process plant data to detect a
condition may arguably correspond to remote monitoring, the
remaining recitations do not have anything to do with mere remote
monitoring").
This argument is unpersuasive of error because the "directed to"
inquiry applies a stage-one filter to the claims, considered in light of the
Specification, instead of a piecemeal analysis of the claim limitations. See
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). In that regard, we "look at the 'focus of the claimed
advance over the prior art' to determine if the claim's 'character as a whole'
is directed to excluded subject matter." Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
To that end, Appellants' invention is drawn to a method and "system
for providing remote diagnostic and maintenance services to a process
plant." Spec., Abstract. Representative claim 25 recites a method that
requires the performance of three steps: (1) remotely collecting data; (2)
remotely detecting a condition in response to the collected data; and (3)
remotely and automatically activating a web page on a display screen that
provides graphical and/or textual information for guiding an operator in
correcting the detected condition. 6 Cf Spec. 6: 5-14 ("data collection unit
6 Claim 25 alternatively recites a step of remotely and automatically
downloading an application, but because the language of the claim does not
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collects data associated with the process plant," "analysis unit analyzes the
collected data to detect a condition associated with the process plant," and
"[i]n response to the detected condition, the control unit
automatically ... activating a web page that provides information for
guiding an operator ... in correcting the detected condition").
The background of Appellants' Specification discloses that typically,
experienced and highly skilled human operators are responsible for
overseeing daily monitoring activities to assure that devices within a process
plant are operating efficiently, as well as repairing and replacing
malfunctioning devices. Spec. 5: 9-21.
[D]ue to the increasing number and complexity of monitoring,
diagnostic, and maintenance applications available in the process
control industry, it is often difficult, if not impossible, for an
operator to become knowledgeable about all of the various
applications in order to choose and implement the most suitable
application to correct a poorly performing loop or device.
Id. at 5:22-27. Appellants' "system provides remote diagnostic and
maintenance services to a process plant by diagnosing a problem, associated
with the plant, such as a poorly performing loop or device, and automatically
implementing the appropriate software application or tool to correct the
problem without the intervention of a human operator." Id. at 6: 17-21. The
advantages realized by Appellants' system eliminates the need for individual
plants to purchase software applications and the expensive overhead
associated with personnel supporting these applications. Id. at 6:21-23. In
require this step to be performed, we need not address it in our analysis. We
note that all the independent claims recite that "at least one of' the two
alternative limitations is to be performed. See App. Br., Claims App'x.
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light of the Specification's description of the problem and solution, the
advance over the prior art by the claimed invention is in automating the
monitoring of power plant devices and implementation of tools to make
corrections.
Unlike the claims found non-abstract in prior cases, the claimed
invention here uses generic computer technology to facilitate remote
condition monitoring of power plant devices, and fails to recite any
improvement to a particular computer technology. Cf McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( determining claims not abstract because they "focused on a specific
asserted improvement in computer animation"). The alleged advantages that
Appellants tout do not concern an improvement to computer capabilities, but
instead relate to an alleged improvement in automating the monitoring
activities of a power plant and correcting of detected conditions, for which a
computer is used as a tool in its ordinary capacity. As such, we agree with
the Examiner that claim 25 as a whole is directed to "remote [condition]
monitoring, specifically, acquiring information from a monitored location,
analyzing the data, and transmitting [ or displaying] information (corrections)
to the monitored location." Ans. 17-18.
Although there is no definitive rule to determine what constitutes an
abstract idea, the Federal Circuit has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases." Enfish, 822 F.3d at 1334; see also Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent eligible under § 101, "the decisional
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mechanism courts now apply is to examine earlier cases in which
a similar or parallel descriptive nature can be seen--what prior cases were
about, and which way they were decided"). After the briefings in this case,
the Federal Circuit held that claims involving "collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
"a familiar class of claims 'directed to' a patent-ineligible concept." Elec.
Power Grp., 830 F.3d at 1353. The claims in Electric Power described
systems and methods for performing real-time performance monitoring of an
electric power grid by collecting data frorn multiple data sources, analyzing
the data, and displaying the results. Id. at 1352. We determine claim 25 is
similar to the claims in Electric Power, which did "not go beyond requiring
the collection, analysis, and display of available information in a particular
field, stating those functions in general terms, without limiting them to
technical means for performing the functions that are arguably an advance
over conventional computer and network technology." Id. at 1351. The
court explained that "collecting information, including when limited to
particular content (which does not change its character as information), is
within the realm of abstract ideas" and characterized "analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Id. at 1353-54 (citations omitted). In light of this precedent, we
agree with the Examiner that claim 25 is "directed to" an abstract idea.
Because claim 25 is directed to a patent-ineligible concept, we proceed to
the second step in the Alice framework.
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Under Alice step two, Appellants contend that even assuming that the
claims are directed to an abstract idea, the claims recite substantially more
than the abstract idea (App. Br. 37) because
[ t ]hese additional limitations simplify and improve the
technology of the process plants (i.e., something other than the
claimed system). As disclosed in the originally filed
specification, "the remote system provides easy access to various
software applications via a common medium such as the Internet,
thus eliminating the need for expensive proprietary
communication protocols and networks," (page 6, lines 23-26)
where conventional process plants would otherwise utilize
proprietary communication protocol and networks that require
special (possibly custom) software and hardware (page 17, line
26 to page 18, line 4; page). The additional limitations therefore
obviate, or at least reduce, the need for proprietary
communication protocol and networks, including special
software and hardware, for the process plant.
Id. at 38. We disagree.
The only portions of claim 25 that could be considered
"technological" is the recitation of a process plant "controller" coupled to
"field devices" and a "display screen" for presenting a web page, which are
not enough, alone or in combination, to confer subject-matter eligibility.
See Alice Corp., 134 S. Ct. at 2358 (quoting Mayo, 566 U.S. at 66, 84) ("[I]f
a patent's recitation of a computer amounts to a mere instruction to
'implemen[t]' an abstract idea 'on ... a computer,' that addition cannot
impart patent eligibility."). To the extent that Appellants argue cost savings
and realized efficiencies "improve the technology of the process plants," we
are not persuaded that these improvements are to any technology, as
opposed to a business practice.
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Evaluating the claimed elements either individually or as an ordered
combination, we agree with the Examiner that claim 25 lacks an "inventive
concept" to transform the abstract idea into a patent-eligible application,
because those additional features must be more than well-understood,
routine, and conventional. See Alice Corp., 134 S. Ct. at 2357 ("[C]laims,
which merely require generic computer implementation, fail to transform
[an] abstract idea into a patent-eligible invention."). For example, as for the
claimed "controller," the Specification discloses that "[t]he process
controller 12 may be a distributed control system (DCS) type controller such
as, for example, a Delta Vâ„¢ controller sold by Fisher-Rosemount Systems,
Inc., or any other type of controller for use in controlling field devices 15-22
that are connected to the process controller 12 in any conventional or any
other desired manner." Spec. 7: 11-15. As for the recited "field devices,"
Appellants' Specification states:
The field devices 15-22 may be any types of devices, such
as sensors, valves, transmitters, positioners, etc. while the I/0
devices 26 and 28 may be any types of I/0 devices conforming
to any desired communication or controller protocol. As shown
in Fig. 1, the process controller 12 is communicatively coupled
to conventional (i.e., non-smart) field devices 15-18 via analog
lines 33-36. Field devices 15-18 may be standard 4-20 mA
analog field devices that communicate over analog lines 33-36 to
the I/0 device 26. Similarly, field devices 19-22 may be smart
devices, such as Fieldbus field devices, that communicate over a
digital bus 38 to the I/0 device 28 using Fieldbus non-proprietary
protocol communications.
Spec. 8:8-16. And programming conventional software or hardware to
apply rules or algorithms is routine and conventional practice, which
represent the most basic functions of a computer. See Spec. 12:26-28
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("[T]he analysis unit 44 analyzes the collected data to detect one or more
conditions associated with the process plant 10 in accordance with a set of
stored rules or other algorithms."); see also App. Br. 22-23. According to
the Specification, "the components described herein may be implemented in
a standard multipurpose CPU, or on specifically designed hardware or
firmware such as an ASIC or other hardwired devices, and still be a routine
executed in a processor." Spec. 18: 10-13.
Claim 25 does no more than simply instruct the practitioner to
implement the abstract idea on a generic computer or computing
devices. See Elec. Power Grp., 830 F.3d at 1355 ("Nothing in the claims,
understood in light of the specification, requires anything other than off-the-
shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information."); see also
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (citation
omitted) ("Simply adding a 'computer aided' limitation to a claim covering
an abstract concept, without more, is insufficient to render [a] claim patent
eligible."). On this record, Appellants have not shown that the limitations
individually, or as an ordered combination, ensure that claim 25 amounts to
"significantly more" than the abstract idea.
For the foregoing reasons, we are not apprised of reversible error in
the Examiner's rejection of record. Therefore, we sustain the rejection of
independent claim 25 under 35 U.S.C. § 101, including independent claims
1, 18, 33, and 38, which fall with claim 25.
As for the dependent claims 2, 5-17, 19, 22-24, 26-28, 31, 32, 34, 35,
39 and 42---66, Appellants argue that the Examiner has not made a prima
facie case under 35 U.S.C. § 101. App. Br. 39--42. We disagree. Instead,
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we agree with the Examiner that "[t]he dependent claims merely add further
details of the abstract steps/elements recited in claims 1, 18, 25, 33, and 38
without including an improvement to another technology or technical field,
an improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment." Ans. 25 ( emphasis omitted).
Therefore, we also sustain the rejection of dependent claims 2, 5-17, 19, 22-
24, 26-28, 31, 32, 34, 35, 39 and 42---66 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Rejection IV
"All claims are argued together." App. Br. 43 (footnote 13: "[T]he
arguments for independent claim 1 apply equally to each of claims 2, 5-12,
14--19, 22-28, 31-35, 38, 39 and 42-66."). We also select claim 1 as the
representative claim. Thus, claims 2, 5-12, 14--19, 22-28, 31-35, 38, 39
and 42---66 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
In contesting the Examiner's rejection under 35 U.S.C. § 102(e) as
being anticipated by Eryurek, Appellants argue that "Eryurek discloses a
variety of systems and software located within the process plant (App. Br.
45 ( citing Eryurek Fig. 1) ), but "under the ordinary and customary meaning
of the term 'remote,' the claimed system cannot be located in the vicinity of
the process plant, such as within the process plant or as part of the process
plant." Reply Br. 12. Appellants define the term remote as "'[n]ot in the
immediate vicinity, as a computer or other device located in another place
(room, building, or city) and accessible through some type of cable or
communications link' ... Computers Located at a distance from another
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computer that is accessible by cables or other communications links: a
remote terminal." App. Br. 45.
In response to Appellants' argument, the Examiner relies on Figure 32
of Eryurek (Ans. 27-28 (quoting Eryurek ,r,r 140-142)), which "discloses
that the monitoring can also be performed remotely from the physical plant."
Id. at 29. "[T]he Examiner asserts that nothing in the definition would result
in one of ordinary skill in the art interpreting 'remote' as being a particular
set distance or outside the process plant." Id. We agree.
Eryurek is directed to the use of "process analysis tools by a remote
processing facility to analyze process control plant data." Eryurek ,r 2.
In the background of its disclosure, Eryurek recognizes the problems
associated with analysis tools being "widely used within process control
plants, [which] often result in a substantial cost to the plant owner." Id. ,r
12; see also id. ,r,r 9-10, 13. Eryurek proposes the following solution:
The remote data processing facility analyzes the process data
using a process analysis tool such as a process monitoring tool,
an equipment monitoring tool, a device monitoring tool, an index
generation tool, a work order generation tool and/or an
accounting tool to generate analysis data. The analysis data is
then transmitted to the process control plant via a communication
link such as the Internet.
Id., Abstract. As shown in Figure 32, a plurality of independently operable
process control plants (918, 920, 922) are communicatively connected to the
Internet (916) and coupled to the Application Service Provider (ASP 914)
via one or more communication links (936, 938), wherein ASP 914
functions as a remote data processing facility that provides software,
customization, and support services to plants 918, 920, and 922 via the
Internet. Eryurek ,r,r 140-142. In describing Figure 32, Eryurek discloses
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that system 900 "enables one or more independently operable process
control plants to remotely access models, optimizers and other data analysis
tools such as equipment performance monitoring tools." Id. ,r 140.
Thus, the ASP 914 can function as a remote monitoring or data
processing facility that can execute the software for asset,
performance, condition and process monitoring as well as
executing one or more optimizers for different plants. As a
result, the process control plants 918-922 do not need to include
processing power or applications for these purposes.
Id. ,I 146.
We disagree with Appellants' contention that the language of the
claim necessitates the scope of the term remote to be defined as not being
located in the vicinity of the process plant. Indeed, Appellants' proffered
definition of remote provides "not in the immediate vicinity," and does not
preclude a computer being in another room or building and accessible
through some type of communications link. As the Examiner correctly
observes (Ans. 29), neither the claim language nor the Specification requires
that each recited unit be located a set distance away, but only calling for a
"unit located remotely from the process plant." See App. Br. 51, Claims
App'x.
Nevertheless, Eryurek describes a remote service facility 914 enabling
one or more independently operable process plants 918-922 that are
physically remote form each other and from the service facility to remotely
access a plurality of software applications via the Internet. See supra. We
see no meaningful distinction between Figure 32 of Eryurek described
above, and Figure 2 of Appellants' disclosure, which shows a service facility
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that uses Internet-based communications to provide remote diagnostic and
maintenance services to a plurality of disparate process plants.
Furthermore, Appellants argue that Eryurek does not disclose a
control unit adapted to "automatically activate a web page on a display
screen in the process plant that provides graphical and/or textual information
for guiding an operator in correcting the detected condition associated with
the process plant," as required by claim 1. App. Br. 48.
In response to Appellants' argument, the Examiner states that the
citations to Eryurek disclose a control unit adapted to or capable of
activating a web page to provide an operator with the necessary information
to resolve an issue, as required by claim 1. Ans. 29. According to the
Examiner "the term 'automatically' does not mean without human
interaction. Examiner asserts a process may be automatic even though a
human initiates or may interrupt to the process. The term 'automatically'
can be construed to mean 'once initiated by a human, the function is
performed by a machine, without the need for manually performing the
function."' Ans. 30 (citing CollegeNet, Inc. v. Apply Yourself, Inc., 418 F.3d
1225, 1235 (Fed. Cir. 2005)).
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) ( citations omitted). Although "[t]he phrase 'adapted to' generally
means 'made to,' 'designed to,' or 'configured to,' ... it can also be used
more broadly to mean 'capable of' or 'suitable for."' In re Man Machine
Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) (citing In re
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Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014)). "While the Board must
give the terms their broadest reasonable construction, the construction
cannot be divorced from the specification." In re NTP, Inc., 654 F.3d 1279,
1288 (Fed. Cir. 2011).
Here, the Specification describes the functions ascribed to the control
unit as being capable of or suitable for being performed, instead of the
narrower meaning of being configured to. See, e.g., Spec. 13:3--4 ("[T]he
control unit 46 may automatically implement an appropriate software
application 70 to further analyze the detected condition."), 13: 14--16
("Examples of parameters capable of being calculated by the control unit 46
include tuning parameters, indexes for the process plant 10, or any other
parameters capable of being provided by the software applications 70."),
13 :27-28 ("[T]he control unit 46 may automatically download the
appropriate software application."), 14:4--6 ("[T]he control unit 46 may
activate a web page providing graphical and/or textual information such as,
for example, instructions from an operator's manual."). We find that the
Examiner's broader interpretation of the term "adapted to" as meaning
"capable of' is consistent with the Specification's description of the control
unit, and is not so broad as to include a configuration expressly disclaimed
by Appellants' disclosure. Appellants did not explicitly contest this
construction of the claim language.
We also agree with the Examiner that the term automatically normally
does not exclude all possible human intervention. See WhitServe, LLC v.
Comput. Packages, Inc., 694 F.3d 10, 19 (Fed. Cir. 2012); CollegeNet, 418
F.3d at 1235. Appellants' Specification does not define or otherwise limit
the use of the term automatically to exclude all human intervention. The
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Specification provides that "the control unit 46 may activate a web page
providing graphical and/or textual information such as, for example,
instructions from an operator's manual, for guiding an operator at the
process plant 10 in manually troubleshooting and/or correcting the detected
condition." Spec. 14:4--7. As such, we construe "a control unit ... adapted
to ... automatically activate a web page on a display screen in the process
plant that provides" information for guiding an operator to encompass a
system's capability of allowing a user to initiate the display of and access the
web page. This construction is consistent with the Examiner's broadest
reasonable interpretation of the claim, and is expressly disclosed by Eryurek.
Appellants concede that Eryurek provides such capability. See Reply Br. 12
("While the process plants 918, 920, 922 may access a web page, the web
page is not automatically activated in the process plants 918, 920, 922 by the
remote system 900 in response to a detected condition."). Nonetheless, we
find "the GUI described [in Eryurek] may automatically, or may in response
to a request by a user, provide maintenance information to the user."
Eryurek ,r 112. Because claim 1 requires that the control unit perform "at
least one of' the recited functions, we need not address Appellants'
arguments as to the alternative automatic download limitation, which is not
required to be implemented.
Accordingly we are not persuaded the Examiner erred in rejecting
claim 1 as being anticipated by Eryurek. Thus, we sustain the rejection of
claim 1 under 35 U.S.C. § 102(e), including claims 2, 5-12, 14--19, 22-28,
31-35, 38, 39 and 42---66, which fall with claim 1.
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Rejection V
In contesting the rejection of claim 13 as unpatentable over Eryurek
and Official Notice, Appellants argue: "Claim 13 is patentable for at least
the same reasons set for above for Claim 1." App. Br. 49. Accordingly, for
the same reasons discussed above with respect to claim 1, we sustain the
rejection of claim 13 under 35 U.S.C. § 103(a).
DECISION
Rejection I under 35 U.S.C. § 112, second paragraph, is reversed.
Rejection II under 35 U.S.C. § 112, first paragraph, is reversed.
Rejection III under 35 U.S.C. § 101 is affirmed.
Rejection IV under 35 U.S.C. § 102(e) is affirmed.
Rejection V under 35 U.S.C. § 103(a) 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).
AFFIRMED
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