Ex Parte Keeley

Board of Patent Appeals and Interferences

Dec 22, 2008

09407664 (B.P.A.I. Dec. 22, 2008)

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UNITED STATES PATENT AND TRADEMARK OFFICE 7
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BEFORE THE BOARD OF PATENT APPEALS 10
AND INTERFERENCES 11
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Ex parte THOMAS M. KEELEY 14
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Appeal 2008-3786 17
Application 09/407,664 18
Technology Center 3600 19
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Decided: December 22, 2008 22
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Before HUBERT C. LORIN, ANTON W. FETTING, and DAVID B. WALKER, 25
Administrative Patent Judges. 26
FETTING, Administrative Patent Judge. 27
DECISION ON APPEAL 28
STATEMENT OF THE CASE 29
Thomas M. Keeley (Appellant) seeks review under 35 U.S.C. § 134 of a final 30
rejection of claims 40-47, 49-56, 58-64, 69-74, and 76-79, the only claims pending 31
in the application on appeal. 32
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We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 1
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We AFFIRM. 3
The Appellant invented a system and method for collecting intelligence data in 4
order to determine a customer’s equipment maintenance or replacement needs 5
(Specification: page 1, lines 5-10). 6
An understanding of the invention can be derived from a reading of exemplary 7
claims 40, 50, and 60, which are reproduced below [bracketed matter and some 8
paragraphing added]. 9
40. A factory automation system for providing status information on 10
at least one factory automation component, comprising: 11
[1] a factory automation component distributed by a first party; 12
[2] the component residing at a site location of a second party; and 13
[3] the component communicating status information directly to the 14
first party wherein the first party compiles the status information from 15
the component and utilizes the status information to the benefit of the 16
second party, the status information comprises component source 17
information, first party site address information, component type 18
information, second party site information and component health 19
information; 20
[4] wherein the server site of the first party communicates version 21
upgrade information to the component in response to version 22
information from the component that does not correspond to a latest 23
version. 24
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50. An Internet business communication system, including: 26
[1] a website employed by a vendor for receiving factory 27
automation component status information over the Internet directly 28
from a plurality of factory components residing at one or more 29
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customer sites, each component having a different IP address, the 1
website matching component information residing at the vendor's 2
website with the IP address of the component and providing this 3
information to the vendor, the status information comprises 4
component type information, component health information, customer 5
name information, customer site information and component location 6
information; 7
[2] wherein the status information further includes the component 8
version information, such that the website communicates version 9
upgrade information to at least one of the plurality of components in 10
response to outdated component version information. 11
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60. The method of claim 59, wherein the status information includes 13
an IP address associated with the component and the step of searching 14
includes matching the customer identification information and 15
component location information corresponding to the IP address 16
included in the status information. 17
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This appeal arises from the Examiner’s final Rejection, mailed October 7, 19
2005. The Appellant filed an Appeal Brief in support of the appeal on May 21, 20
2007. An Examiner’s Answer to the Appeal Brief was mailed on September 6, 21
2007. A Reply Brief was filed on November 6, 2007. 22
PRIOR ART 23
The Examiner relies upon the following prior art: 24
Shigematsu et al. US 5,432,715 July 11, 1995
Martinez et al. US 5,956,665 Sep. 21, 1999
Ogushi et al. US 6,385,497 B1 May 7, 2002
Sekizawa US 6,430,711 B1 Aug. 6, 2002
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REJECTIONS 1
Claims 40-47, 49, 59, 61-64, 69-74, 76, and 78-79 stand rejected under 35 2
U.S.C. § 103(a) as unpatentable over Ogushi, Shigematsu, and Martinez. 3
Claims 50-56 and 58 stand rejected under 35 U.S.C. § 103(a) as unpatentable 4
over Ogushi, Shigematsu, Sekizawa, and Martinez. 5
Claims 60 and 77 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 6
Ogushi, Shigematsu, Martinez, and Sekizawa. 7
ISSUES 8
The issues pertinent to this appeal are: 9
• Whether the Appellant have sustained their burden of showing that the 10
Examiner erred in rejecting claims 40-47, 49, 59, 61-64, 69-74, 76, and 78-11
79 under 35 U.S.C. § 103(a) as unpatentable over Ogushi, Shigematsu, and 12
Martinez. 13
• Whether the Appellant have sustained their burden of showing that the 14
Examiner erred in rejecting claims 50-56 and 58 under 35 U.S.C. § 103(a) as 15
unpatentable over Ogushi, Shigematsu, Sekizawa, and Martinez. 16
• Whether the Appellant have sustained their burden of showing that the 17
Examiner erred in rejecting claims 60 and 77 under 35 U.S.C. § 103(a) as 18
unpatentable over Ogushi, Shigematsu, Martinez, and Sekizawa. 19
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The pertinent issue turns on whether Ogushi, Shigematsu, and Martinez 21
describe communicating upgrade information to the component in response to 22
version information from the component that does not correspond to a latest 23
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version and whether one of ordinary skill in the art would have been motivated to 1
combine Ogushi, Shigematsu, and Martinez at the time of the invention. 2
FACTS PERTINENT TO THE ISSUES 3
The following enumerated Findings of Fact (FF) are believed to be supported 4
by a preponderance of the evidence. 5
Shigematsu 6
01. Shigemitsu is directed towards a system and method for monitoring 7
computers (col. 1, ll. 60-63). 8
02. Shigemitsu describes the transmitting/receiving of status messages to 9
include the address of the monitoring computer, the port of the collecting 10
unit, and the address of the monitored computer (col. 9, ll. 53-61). 11
Martinez 12
03. Martinez is directed to a system and method of automatically 13
determining operational status of components of a computer system (col. 14
1, ll. 29-31). 15
04. Martinez describes the detection of the version number for 16
components and the monitoring of any changes to the configuration of 17
the components (col. 2, ll. 58-65). 18
Ogushi 19
05. Ogushi is directed to a system for maintaining equipment at a remote 20
location (col. 1, ll. 5-6). 21
06. Ogushi describes a system using a web interface where a host 22
computer at a factory transmits operating status information of industrial 23
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equipment at the factory to the vendor of the equipment (col. 3, ll. 15-29, 1
col. 5, ll. 64-67, and figure 5). 2
07. Ogushi describes the equipment and the factory in a remote location 3
from the vendor that receives the status information (figure 1 and col. 3, 4
ll. 15-29). 5
08. The transmitted status information includes an address/URL of the 6
host systems, the serial number of the equipment, model of the 7
equipment, date and time information, an error code, emergency degree, 8
countermeasures, trouble state, and progress (col. 4, ll. 14-21 and col. 9
5,ll. 55-63). 10
09. The status information is transmitted from the equipment to the host 11
computer. The information is then transmitted to the vendor in order for 12
the vendor to provide maintenance support for the equipment. The host 13
computer of the vendor searches through a trouble database to find 14
solutions and countermeasures to the trouble state (figure 2, col. 3, ll. 55-15
67, and col. 4, ll. 37-56). 16
10. The host computer automatically maintains the equipment by software 17
updating (col. 3, ll. 64-67). 18
11. The vendor can retrieve a new version of the software to be used for 19
maintenance (col. 6, ll. 1-3). 20
Sekizawa 21
12. Sekizawa is directed to a machine monitoring system for monitoring 22
the state of plurality of connected machines (col. 1, ll. 8-9). 23
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13. Sekizawa describes the preparation of an email that includes status 1
information, such as the operational state, of each network printer (col. 2
19, ll. 16-26). 3
14. The status information includes the IP address to each of the 4
networked printers (col. 19, ll. 26-30 and col. 21, ll. 22-24). 5
Facts Related To The Level Of Skill In The Art 6
15. Neither the Examiner nor the Appellant has addressed the level of 7
ordinary skill in the pertinent arts of automated maintenance systems. 8
We will therefore consider the cited prior art as representative of the 9
level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 10
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the 11
level of skill in the art does not give rise to reversible error ‘where the 12
prior art itself reflects an appropriate level and a need for testimony is 13
not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 14
755 F.2d 158, 163 (Fed. Cir. 1985). 15
Facts Related To Secondary Considerations 16
16. There is no evidence on record of secondary considerations of non-17
obviousness for our consideration. 18
PRINCIPLES OF LAW 19
Obviousness 20
A claimed invention is unpatentable if the differences between it and the 21
prior art are “such that the subject matter as a whole would have been obvious at 22
the time the invention was made to a person having ordinary skill in the art.” 35 23
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U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30 1
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 2
In Graham, the Court held that that the obviousness analysis is bottomed on 3
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be 4
determined; [(2)] differences between the prior art and the claims at issue are to be 5
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383 6
U.S. at 17. See also KSR, 127 S.Ct. at 1734. “The combination of familiar 7
elements according to known methods is likely to be obvious when it does no more 8
than yield predictable results.” Id., at 1739. 9
“When a work is available in one field of endeavor, design incentives and 10
other market forces can prompt variations of it, either in the same field or a 11
different one. If a person of ordinary skill can implement a predictable variation, § 12
103 likely bars its patentability.” Id. at 1740. 13
“For the same reason, if a technique has been used to improve one device, 14
and a person of ordinary skill in the art would recognize that it would improve 15
similar devices in the same way, using the technique is obvious unless its actual 16
application is beyond his or her skill.” Id. 17
“Under the correct analysis, any need or problem known in the field of 18
endeavor at the time of invention and addressed by the patent can provide a reason 19
for combining the elements in the manner claimed.” Id. at 1742. 20
Automation of a Known Process 21
It is generally obvious to automate a known manual procedure or mechanical 22
device. Our reviewing court stated in Leapfrog Enterprises Inc. v. Fisher-Price 23
Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary skill in the art would have 24
found it obvious to combine an old electromechanical device with electronic 25
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circuitry “to update it using modern electronic components in order to gain the 1
commonly understood benefits of such adaptation, such as decreased size, 2
increased reliability, simplified operation, and reduced cost. . . . The combination 3
is thus the adaptation of an old idea or invention . . . using newer technology that is 4
commonly available and understood in the art.” Id at 1163. 5
ANALYSIS 6
Claims 40-47, 49, 59, 61-64, 69-74, 76, and 78-79 stand rejected under 35 7
U.S.C. § 103(a) as unpatentable over Ogushi, Shigematsu, and Martinez 8
The Appellant argues these claims as a group. 9
Accordingly, we select claim 40 as representative of the group. 10
37 C.F.R. § 41.37(c)(1)(vii) (2007). 11
The Examiner found that Ogushi taught all of the limitations of claim 40 12
except “component source information” and “version information from the 13
component that does not correspond to a latest version” (Answer 4-5). The 14
Examiner found that these limitations were taught by Shigematsu and Martinez 15
respectively (Answer 4-5). The Examiner concluded that it would have been 16
obvious to combine Ogushi, Shigematsu, and Martinez in order to create a more 17
robust system (Answer 5). 18
The Appellant contends that 1) none of the references disclose “wherein the 19
server site of the first party communicates version upgrade information to the 20
component in response to version information from the component that does not 21
correspond to a latest version” (App. Br. 8, first paragraph), specifically that the 22
information is not communicated to the component in response to version 23
information from the component that does not correspond to a latest version (App. 24
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Br. 8, last paragraph) and 2) there is no motivation to combine the references (App. 1
Br. 9, last paragraph) because a) the Examiner failed to cite where in the reference 2
there is a motivation to combine the references (App. Br. 9, last paragraph) and b) 3
the references are non-analogous (App. Br. 10, second paragraph) and the 4
Examiner has used impermissible hindsight in combining the references (App. Br. 5
11, second paragraph). 6
We disagree with the Appellant. First, only limitation [4] is being contested 7
and all other limitations are described by Ogushi, Shigematsu, and Martinez (FF 8
02, FF 04, FF 06, FF 07, FF 08, FF 09, and FF 11). 9
The Appellant first contends that Ogushi fails to describe limitation [4] (App. 10
Br. 8, last paragraph). The Appellant specifically argues that Ogushi is only 11
concerned with archiving information associated with an item, rather than 12
communicating upgrade information to the component in response to version 13
information from the component (App. Br. 8, last paragraph). 14
We disagree with the Appellant. Ogushi describes a system where a host 15
computer receives status and trouble information from industrial components (FF 16
08 and FF 09). Thus, the information is received from the component. This 17
information is then transmitted to the vendor of the components (FF 09). The 18
vendor then searches a trouble database to find a solution or countermeasure to the 19
trouble state (FF 09) and automatically updates software to the component as 20
necessary (FF 10). A step of automatically updating software implicitly includes 21
performing a check to see whether the software is the most current. As such, this 22
step is functionally encompassing of communicating upgrade information to the 23
component. 24
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Additionally, the vendor can retrieve a new version of the software for 1
maintenance (FF 11), which would imply checking for lack of correspondence 2
with the most current version before retrieving that version. It is generally obvious 3
to automate a known manual procedure or mechanical device. Leapfrog, 485 F.3d 4
at 1163. 5
The Appellant further contends that Shigematsu and Martinez fail to teach this 6
limitation (Br. Page 8, last paragraph and Br. Page 9, first paragraph). Appellant's 7
contention that Shigematsu and Martinez fail to teach this limitation does not 8
persuade us of error on the part of the Examiner, because the Appellant responds to 9
the rejection by attacking the references separately, even though the rejection is 10
based on the combined teachings of the references. Nonobviousness cannot be 11
established by attacking the references individually when the rejection is 12
predicated upon a combination of prior art disclosures. See In re Merck & Co. 13
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner found that Shigematsu 14
describes “component source information” and Martinez specifically describes the 15
use of version numbers. The Examiner found that Ogushi taught the remaining 16
limitations (Answer 4-5). 17
The Appellant additionally contends that there is no motivation to combine 18
Ogushi, Shigematsu, and Martinez because the Examiner failed to cite some 19
teaching or suggestion in the references to support the combination (App. Br. 9, 20
second paragraph). We agree with the Examiner. As discussed in KSR, 127 S.Ct. 21
at 1742, a specific teaching or suggestion to support the combination of the 22
references need not be found in the references. We find that the benefit of making 23
the system more robust by determining the most updated information would have 24
been apparent to one of ordinary skill in the art at the time of the invention. 25
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The Appellant further contends that the references are non-analogous (App. Br. 1
10, second paragraph and third paragraph) and the Examiner used impermissible 2
hindsight in combining the references (App. Br. 11, second paragraph). We 3
disagree with the Appellant. Ogushi, Shigematsu, and Martinez are all concerned 4
with monitoring equipment (FF 01, FF 05, and FF 07). As such, Ogushi, 5
Shigematsu, and Martinez are analogous references. Furthermore, it would have 6
been apparent to one of ordinary skill in the art to combine Ogushi, Shigematsu, 7
and Martinez at the time of the invention (as discussed above). Thus, the 8
Examiner did not use impermissible hindsight analysis of the references. We find 9
that the Examiner did not err in combining Ogushi, Shigematsu, and Martinez in 10
rejecting claim 40. 11
The Appellant has not sustained his burden of showing that the Examiner erred 12
in rejecting claims 40-47, 49, 59, 61-64, 69-74, 76, and 78-79 under 35 U.S.C. § 13
103(a) as unpatentable over Ogushi, Shigematsu, and Martinez for the above 14
reasons. 15
Claims 50-56 and 58 stand rejected under 35 U.S.C. § 103(a) as unpatentable 16
over Ogushi, Shigematsu, Sekizawa, and Martinez 17
The Appellant argues these claims as a group. Accordingly, we select claim 18
50 as representative of the group. 19
The Examiner found that Ogushi teaches all of the limitations of claim 50, 20
except “name information and component information”, “each component having a 21
different IP address, the website matching component information residing at the 22
vendor’s website with the IP address of the component”, and “the status 23
information further includes version information from the component” (Answer 24
19). The Examiner found that Shigematsu, Sekizawa, and Martinez teach these 25
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features, respectively (Answer 19). The Examiner concluded that it would have 1
been obvious to combine Ogushi, Shigematsu, Sekizawa, and Martinez in order to 2
create a more robust system (Answer 20). 3
The Appellant contends that Sekizawa fails to disclose “a website that 4
communicates upgrade information to a component that is running an outdated 5
version” (App. Br. 12, second paragraph). We disagree with the Appellants. The 6
Examiner found that Ogushi described this limitation (Answer 18-19, last 7
paragraph-first paragraph). As discussed above, nonobviousness cannot be 8
established by attacking the references individually when the rejection is 9
predicated upon a combination of prior art disclosures. See In re Merck, 800 F.2d 10
at 1097. 11
The Appellant further reiterates the lack of motivation to combine the 12
references and the impermissible hindsight arguments supra (App. Br. 12, second 13
paragraph). We disagree with the Appellant. Sekizawa is concerned with 14
monitoring the state of equipment (FF 12) and therefore provides implementation 15
details pertinent to practicing Ogushi, Shigematsu, and Martinez (FF 01, FF 05, 16
and FF 07). Thus, it would have been apparent to one of ordinary skill in the art at 17
the time of the invention to combine the references, and the Examiner did not use 18
impermissible hindsight analysis of the references. 19
Therefore, the Appellant has not sustained his burden of showing that the 20
Examiner erred in rejecting claims 50-56 and 58 under 35 U.S.C. § 103(a) as 21
unpatentable over Ogushi, Shigematsu, Sekizawa, and Martinez. 22
Claims 60 and 77 stand rejected under 35 U.S.C. § 103(a) as unpatentable 23
over Ogushi, Shigematsu, Martinez, and Sekizawa 24
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The Appellant argues these claims as a group. Accordingly, we select claim 60 1
as representative of the group. 2
The Examiner found that Ogushi, Shigematsu, and Martinez teach all of the 3
limitations of independent claim 59 (as discussed above for claim 40) (Answer 23), 4
except for the feature of “the status information includes an IP address associated 5
with the component and the step of searching includes matching the customer 6
identification information and component location information corresponding to 7
the IP address included in the status information” (Answer 23). The Examiner 8
found that Sekizawa teaches this feature (Answer 23). The Examiner oncluded 9
that it would have been obvious to combine this feature taught by Sekizawa to 10
Ogushi, Shigematsu, and Martinez to increase efficiency (Answer 23). Claims 60 11
and 77 depend from claims 59 and 74 respectively. 12
The Appellant contends Sekizawa fails to describe the deficiencies argued for 13
claim 40 above. As discussed above, we find that Ogushi, Shigematsu, and 14
Martinez describe claims 59 and 74, and thus Appellant’s contention that Sekizawa 15
fails to cure any deficiencies is not persuasive. 16
The Appellant further contends that one of ordinary skill in the art would not 17
have been motivated to combine Ogushi, Shigematsu, Martinez, and Sekizawa. 18
This argument was found to be insufficient to overcome their burden of showing 19
that the Examiner erred in rejecting claims 50-56 and 58 supra and is not found to 20
be persuasive here for the same reasons. 21
Therefore the Appellant has not sustained his burden of showing that the 22
Examiner erred in rejecting claims 60 and 77 under 35 U.S.C. § 103(a) as 23
unpatentable over Ogushi, Shigematsu, Sekizawa, and Martinez. 24
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CONCLUSIONS OF LAW 1
The Appellant has not sustained its burden of showing that the Examiner erred 2
in rejecting claims 40-47, 49-56, 58-64, 69-74, 76-79 under 35 U.S.C. § 103(a) as 3
unpatentable over the prior art. 4
DECISION 5
To summarize, our decision is as follows: 6
• The rejection of claims 40-47, 49, 59, 61-64, 69-74, 76, and 78-79 under 35 7
U.S.C. § 103(a) as unpatentable over Ogushi, Shigematsu, and Martinez is 8
sustained. 9
• The rejection of claims 50-56 and 58 under 35 U.S.C. § 103(a) as 10
unpatentable over Ogushi, Shigematsu, Sekizawa, and Martinez is sustained. 11
• The rejection of claims 60 and 77 under 35 U.S.C. § 103(a) as unpatentable 12
over Ogushi, Shigematsu, Martinez, and Sekizawa is sustained. 13
No time period for taking any subsequent action in connection with this appeal 14
may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007). 15
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AFFIRMED 17
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