Ex Parte MALSCH

Patent Trials and Appeals Board

May 1, 2019

13529800 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/529,800 06/21/2012
27799 7590 05/03/2019
Cozen O'Connor
277 Park A venue, 20th floor
NEW YORK, NY 10172
FIRST NAMED INVENTOR
Christian MALSCH
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.
5029-983-322548.000 4467
EXAMINER
FENNEMA, ROBERT E
ART UNIT PAPER NUMBER
2118
NOTIFICATION DATE DELIVERY MODE
05/03/2019 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):
patentsecretary@cozen.com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN MALSCH
Appeal2018-004306
Application 13/529,800
Technology Center 2100
Before JOHNNY A. KUMAR, JUSTIN BUSCH, and JOHN D. HAMANN,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1-13, 16, and 17, which constitute all
claims pending in this application. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b). We affirm.
CLAIMED SUBJECT MATTER
Appellant's invention generally "relates to power management and,
more particularly to, a method for saving energy at a network node in an
automation network." Spec. ,r 1. The claimed invention relates to network
nodes and methods executed at the node to receive, forward, and evaluate
commands to switch a network device, which is connected to the node via a
Appeal2018-004306
Application 13/529,800
network port, to a low energy mode. See Spec. ,r 51. The network node may
switch a portion of the node to an energy saving state such that the node
receives and/or outputs a lower ( or zero) volume of data to/from the device.
See Spec. ,r,r 52-55. Claims 1 and 12 are independent claims, and claim 1 is
reproduced below:
1. A method for saving energy at a network node in an
industrial automation network including a realtime
communication protocol and a non-realtime communication
protocol, the method comprising:
receiving energy saving command data for switching at
least one network device of network devices connected to
network ports at the network node in the industrial automation
network to an energy saving state in which the at least one
network device consumes less energy than in an operating state;
forwarding the energy saving command data to the at least
one network device;
evaluating the energy saving command data by the
network node in the industrial automation network; and
switching at least a portion of the network node in the
industrial automation network to an energy saving state to save
energy at the network node, the network node in the industrial
automation network at least one of receiving and outputting one
of no data and a reduced volume of data to the at least one
network device when the at least one network node is in the
energy saving state, and the network node being controlled by a
controller;
wherein the at least one portion of the network node in the
industrial automation network to be switched to the energy
saving state is determined based on network ports associated
with the at least one network device in the energy saving state;
and
wherein the realtime communication protocol provides
communication between the at least one controller and the at
least one network device and the non-realtime communication
protocol provides at least one of setup and reparameterization of
the at least one controller.
2
Appeal2018-004306
Application 13/529,800
REJECTIONS
Claims 1, 2, 5, 6, 11-13, 16, and 17 stand rejected under 35 U.S.C.
§ 103 as obvious in view of Wheeler (US 2008/0177424 Al; July 24, 2008)
and Fung (US 2009/0235104 Al; Sept. 17, 2009). Final Act. 2-12.
Claim 3 stands rejected under 35 U.S.C. § 103 as obvious in view of
Wheeler, Fung, and Kansal (US 2010/0063644 Al; Mar. 11, 2010). Final
Act. 12-13.
Claim 4 stands rejected under 35 U.S.C. § 103 as obvious in view of
Wheeler, Fung, Kansal, and Hatemata (US 2001/0014832 Al; Aug. 16,
2001). Final Act. 13-14.
Claims 7-9 stand rejected under 35 U.S.C. § 103 as obvious in view
of Wheeler, Fung, and Koch (US 2009/0138679 Al; May 28, 2009). Final
Act. 14--16.
Claim 10 stands rejected under 35 U.S.C. § 103 as obvious in view of
Wheeler, Fung, and Terwal (US 8,615,091 B2; Dec. 24, 2013). Final Act.
17-18.
ANALYSIS
The Examiner finds the combination of Wheeler and Fung teaches or
suggests the subject matter recited in independent claim 1. Final Act. 2-5
(citing Wheeler ,r,r 2, 9, 11, 14, 15, 19; Fung ,r 187). Specifically, the
Examiner finds Wheeler teaches or suggests everything recited in claim 1
except "Wheeler fails to teach an automation network including a real-time
communication protocol and a non-real time communication protocol,"
which the Examiner finds Fung teaches. Final Act. 2-5; see also Final
Act. 5 ("Fung teaches, in the field of same endeavor, an automation network
including a real-time communication protocol and a non-real time
3
Appeal2018-004306
Application 13/529,800
communication protocol," citing Fung ,r 187 ( emphasis added)). The
Examiner determines it would have been obvious to a person of ordinary
skill in the art to improve Wheeler's network node energy-saving method
"by adding the feature wherein an automation network including a real-time
communication protocol and a non-real time communication protocol as
taught by Fung." Final Act. 5.
Notwithstanding the Examiner's apparent reliance on Fung to teach or
suggest both "a real-time communication protocol and a non-real time
communication protocol," see Final Act. 5, the Examiner states in the
Answer that "Wheeler was cited with the intention of teaching non-real-time
communication protocol," Ans. 4. Accordingly, the Examiner now relies on
Fung only for teaching a real-time communication protocol. See Ans. 4
("Examiner's presentation of Fung to remedy the deficiencies of Wheeler
was stated as follows: 'Wheeler fails to teach an automation network
including a real-time communication protocol and a non-real time
communication protocol."'). With respect to the claimed "non-realtime
communication protocol," the Examiner explains that production
environments must use either real-time or non-real-time communication
schemes. Ans. 3. The Examiner finds that, because Wheeler does not
explicitly disclose switching its components' power modes in real-time,
Wheeler teaches switching power modes in non-real-time. Ans. 3 (citing
Wheeler ,r 17).
Appellant asserts the cited combination of Wheeler and Fung does not
teach or suggest using the two recited types of protocols as claimed.
Specifically, Appellant argues Fung fails to cure Wheeler's deficiencies and,
therefore, the combination of Wheeler and Fung fails to teach or suggest
4
Appeal2018-004306
Application 13/529,800
using real-time and non-realtime communication protocols as recited in the
claims. Appeal Br. 5-8; Reply Br. 2-5.
More specifically, Appellant argues Fung discloses using real-time
communication in every situation and, therefore, "fails to teach or suggest a
'non-realtime communication protocol [that] provides at least one of setup
and reparameterization of the at least one controller."' Appeal Br. 6-7
(emphasis omitted); Reply Br. 3-5. Appellant further argues Wheeler does
not describe using a non-realtime communication protocol to provide "at
least one of setup and reparameterization of the at least one controller," and
it is unreasonable to "simply state that the process must be performed in
non-real-time if it is not being performed in real-time." Reply Br. 2.
Appellant contends that, because neither Wheeler nor Fung teaches the
non-realtime communication protocol limitation, the combination fails to
teach or suggest every limitation of claim 1. Appeal Br. 7.
We are not persuaded by Appellant's arguments that the Examiner
erred. As explained above, the Examiner finds Wheeler teaches or suggests
"the non-realtime communication protocol provides at least one of setup and
reparameterization of the at least one controller." See Ans. 4. Because the
Examiner does not rely on Fung to teach or suggest the recited limitations
relating to the non-realtime communication protocol, we need to address
only Appellant's arguments that Wheeler fails to teach the non-realtime
communication protocol limitation and that the combination of Wheeler and
Fung fails to teach or suggest the claimed subject matter.
We agree with the Examiner's finding that communication schemes in
an industrial automation network must be either real-time or non-real time.
See Ans. 3. Appellant disagrees, see Reply Br. 2, but does not persuasively
5
Appeal2018-004306
Application 13/529,800
explain why the Examiner's finding is incorrect. Notably, and contrary to
Appellant's assertion that the combination of Wheeler and Fung would
result in only using one protocol type, see Appeal Br. 7-8, the Examiner
proposes adding Fung's real-time communication protocol to Wheeler's
non-realtime communication protocol, Ans. 3--4.
We also agree with the Examiner's conclusion that a person of
ordinary skill in the art at the time of the invention, when presented with
Wheeler and Fung, would have understood the benefits of using both real-
time and non-real time communications protocols. See Final Act. 5. More
specifically, an ordinarily skilled artisan would have understood that there
are benefits and disadvantages to using either protocol and evaluated the
tradeoffs to determine non-real-time communications should be used when
the benefits of real-time communication do not outweigh the disadvantages
(e.g., cost, energy usage), such as for setup and reparameterization of the
controller. Appellant asserts the proposed modification would require undue
experimentation, but Appellant presents no persuasive argument or evidence
indicating that choosing one of the two (i.e., real-time and non-realtime
communication protocols) for different functions in a system requires more
than a simple tradeoff analysis that a person of ordinary skill in the art would
have performed and would have been capable of performing based on their
own knowledge without undue experimentation.
Appellant argues claims 1, 2, 5, 6, 11-13, 16, and 17 as a group.
Accordingly, for the above reasons, we are not persuaded the Examiner
erred in rejecting claims 1, 2, 5, 6, 11-13, 16, and 17 as obvious in view of
Wheeler and Fung. Appellant asserts the additionally recited references
used to reject claims 3, 4, and 7-10 do not cure the argued deficiencies, but
6
Appeal2018-004306
Application 13/529,800
does not argue these claims separately with particularity. Because we find
no deficiencies in the rejection of claim 1, we are not persuaded the
Examiner erred in rejecting claims 3, 4, and 7-10 for the reasons discussed
above.
DECISION
We affirm the Examiner's decision to reject claims 1-13, 16, and 17
under 35 U.S.C. § 103 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
7