Ex Parte Lo et al

Board of Patent Appeals and Interferences

May 2, 2011

09961879 (B.P.A.I. May. 2, 2011)

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.
09/961,879 09/24/2001 George Lo 2001 P 17640 US 7188
7590 05/02/2011
Siemens Corporation
Intellectual Property Department
186 Wood Avenue South
Iselin, NJ 08830
EXAMINER
ENG, DAVID Y
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
05/02/2011 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 GEORGE LO and PAUL CAMUTI
____________________

Appeal 2009-006690
Application 09/961,8791
Technology Center 2400
____________________

Before JAY P. LUCAS, JOHN A. JEFFERY, and JAMES R. HUGHES,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal from a twice rejection of claims 41 to 78 and 80
under authority of 35 U.S.C. § 134(a). Claims 1 to 40 and 79 are cancelled.
The Board of Patent Appeals and Interferences (BPAI) has jurisdiction
under 35 U.S.C. § 6(b).

1 Application filed September 24, 2001. The real party in interest is Siemens
Energy & Automation, Inc.
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We affirm.

Appellants’ invention relates to a method and system for two or more
users at separate browsers to develop code for programming programmable
controllers. In the words of Appellants:
Field of the Invention
The present invention relates generally to
the field of programmable controllers. In
particular, the present invention provides
collaborative engineering methods and systems for
allowing engineers or code developers to work
together to create programming code, which may
include or contain configuration data, for industrial
programmable controllers and the networks that
they operate on.
Background of the Invention
Programmable controllers, including
Programmable Logic Controllers (“PLCs”) are
used in many commercial and industrial
applications. Programmable controllers typically
monitor inputs, make decisions based on how they
are programmed, and control outputs of automated
processes or machines. One of the most common
programmable controllers in use is the PLC. PLCs
consist of input modules or points, a Central
Processing Unit ("CPU"), and output modules or
points. An input accepts a variety of digital or
analog signals from various field devices, such as
sensors, and converts them into a logic signal that
can be used by the CPU. The CPU makes
decisions and executes control instructions based
on programming instructions stored in a memory.
These programming instructions determine what
the PLC will do for a specific input. Output
modules convert the control instructions from the
CPU into a digital or analog signal that can be used
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to control various field devices, such as actuators
or valves.
. . . .
The present invention enables a team
approach to generating programming code. In an
embodiment of the present invention, engineering
tool software is downloaded form a server to a
plurality of client devices. The engineering tool
software need not be simultaneously downloaded
to each client device. A first user uses his or her
client device to create a first portion of the
programming code. A second user, either
simultaneously with the first user or before or after
the first user creates the first portion of the
programming code, user his or her client device to
create a second portion of the programming code.
The two portions are then combined. In some
situations, it may be advantageous to provide the
first user with the right to read a copy of the
second part of the programming code and to grant
the second user the right to read a copy of the first
part of the programming code. There is no limit to
the number of users who may contribute to the
programming code nor do the users have to work
in the same physical location. The present
invention allows code developers to collaborate
from virtually anywhere.
(Spec. 1, 6).
The following illustrates the claims on appeal:
Claim 41:
41. A method comprising:

responsive to a request from a first
user, providing instructions adapted to
transmit, to a first web browser. a first user
interface adapted to modify a first piece of a
programming code via an IEC-1131
programming language comprising at least
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one of Ladder Diagram, Function Block
Diagram, Sequential Function Chart,
Instruction List, and Structured Text; and

responsive to a request from a second
user, providing instructions adapted to
transmit to, a second web browser, a second
user interface adapted to modify a second
piece of the programming code via the
IEC-ll3l programming language.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
E. James Whitehead, Jr. & Meredith Wiggins, “WEBDAV: IETF
Standard for Collaborative Authoring on the Web,” IEEE Internet
Computing, Sept./Oct. 1998, at 34-40 (“Whitehead”).

Siemens Energy & Automation, Industrial Software Bulletin: STEP 7
Professional (2000).

REJECTION
The Examiner rejects the claims as follows:

Claims 41 to 78 and 80 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Whitehead in view of Appellants’ Admitted Prior Art
(AAPA).

We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether Whitehead teaches the instructions adapted to transmit to a web
browser a first user interface as claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method and system for modifying code used
to program controllers, such as those that control automated processes or
machines. (Spec. 1, middle). These controllers are often controlled by a
software tool, such as Siemens STEP 7 or MicroWin using special
programming languages, such as Ladder Diagrams. (Spec. 4, top; Fig. 1,
#10). Appellants transmit a user interface to browsers on user’s
computers across a network to affect such programming. (Spec. 6,
middle).
2. The Whitehead reference teaches a standard for programming in a special
language used to program controllers where the programming is
performed by multiple people across the Internet. (p. 34, bottom). The
Whitehead system uses standard Internet protocols. (pp. 34 to 36) and
teaches a “Windows Explorer-like interface.” (p. 39, left column, 9 lines
from bottom).
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PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). Also see In re Jung, No. 2011-1019, 2011 WL 1235093 *
4, 5, 7 (Fed. Cir. Mar. 28, 2011).

“A court must ask whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007).

ANALYSIS
Arguments with respect to the rejection
of claims 41 to 78, 80
under 35 U.S.C. § 103

The Examiner has rejected the noted claims for being obvious over
Whitehead in view of AAPA. Appellants have presented numerous
arguments, which we will consider seriatim.
Under the heading Missing Limitations, Appellants make a general
statement that the references fail to teach the limitations of the claims. (App.
Br. 20, top). However, we find to the contrary that the Examiner has
applied the references to the claims; see Answer 3 to 6. Rather we find the
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Appellants have failed to point out which limitations of their claims are
missing from the teachings of the references, as required. (See In re Kahn,
cited above.) A mere assertion of non-obviousness followed by a recitation
of the complete claim language is not a convincing argument.
Under the heading “Whitehead Not Enabling” (App. Br. 20, bottom)
Appellants focus their arguments onto Whitehead’s alleged failure to teach a
user interface being transmitted to a Web Browser. Whitehead is allegedly
“not enabled” as a reference as nothing is transmitted to a web browser as
claimed. (App. Br. 21, top). We find this argument unconvincing:
Whitehead clearly uses standard HTTP Internet protocol, including teaching
add-ons to a standard web browser. (See FF2 above.) A standard web
browser cannot display a user interface developed on the connected server
without a transmission to that browser. Whitehead clearly teaches an
enabled user interface supporting remote programming: “Because
documents will be editable in-place on the Web, organizations will begin to
see greater benefit in performing work in the Web environment rather than
on local, isolated disk drives.” (Whitehead 39, right column, middle).
We should add that the claims do not actually require the transmission
as argued. (App. Br. 21, top). The reference Whitehead does teach a system
“adapted to transmit” a user interface (WebDAV, etc.) to a web browser, as
claimed. We further find that the Examiner has articulated a reason to
combine the cited references with some rational underpinning to support the
obviousness conclusion. Ans. 7, 13.
Appellants argue that the inherency of a transmission of the user
interface to the browser has not been established. (App Br. 22, top). As
Whitehead teaches standard HTTP protocols (FF2), we find the transmission
to be fully established.
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Appellants rely upon similar arguments against the rejection of all
claims. (App. Br. 22 to 163). The disputed limitations of the other claims
have been addressed by the Examiner; we endorse and adopt the Examiner’s
responses. As the arguments do not establish error in the Examiner’s
rejection, we find them unconvincing.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting claims 41 to
78, and 80.

DECISION
We affirm the Examiner’s rejection of claims 41 to 78 and 80.

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).

AFFIRMED

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