Ex Parte Martin

Board of Patent Appeals and Interferences

Feb 28, 2011

11058532 (B.P.A.I. Feb. 28, 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.
11/058,532 02/15/2005 David Martin 2004P04371US01 9000
28524 7590 02/28/2011
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
NORTON, JENNIFER L
ART UNIT PAPER NUMBER
2121
MAIL DATE DELIVERY MODE
02/28/2011 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 DAVID MARTIN
___________

Appeal 2009-007981
Application 11/058,532
Technology Center 3600
____________

Before HUBERT C. LORIN, JEAN R. HOMERE, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, 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 2009-007981
Application 11/058,532

2
STATEMENT OF THE CASE
David Martin (Appellant) seeks our review under 35 U.S.C. § 134
(2010) of the final rejection of claims 1-6 and 9-13. We have jurisdiction
under 35 U.S.C. § 6(b) (2010). Claims 7-8 and 14-17 are canceled2. App.
Br. 6.

SUMMARY OF DECISION
We AFFIRM. 3

THE INVENTION
This invention is a method and system for accessing programmable
logic controller data on demand. Specification [0002].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for providing programmable logic
controller data on demand, the method comprising
the steps of:
loading an access code from an external
application for pass through access to a memory
area of a programmable logic controller;

2 The Notice of Appeal indicates that the rejection of claim 1-17 is appealed
(Notice of Appeal, filed Sep. 28, 2007). In the Appeal Brief, the Appellant
indicates that claims 7-8 and 14-17 are canceled. App. Br. 6. Therefore, we
will not address claims 7-8 and 14-17 in our decision. Upon return of the
application to the Examiner, appropriate action should be taken on claims 7-
8 and 14-17. See 37 C.F.R § 41.33.
3 Our decision will refer to the Appellant’s Appeal Brief (“App. Br.,” filed
Feb. 27, 2008) and Reply Brief (“Reply Br.,” filed May 29, 2008), and the
Examiner’s Answer (“Answer,” mailed May 1, 2008).

Appeal 2009-007981
Application 11/058,532

3
receiving a function call at the
programmable logic controller from the external
application; and
accessing a plurality of memory locations on
demand in the area of the programmable logic
controller in response to the function call.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kreidler
Nair
US 2003/0023336 A1
US 6,675,226 B1
Jan. 30, 2003
Jan. 6, 2004

The following rejections are before us for review:
1. Claims 1-6, 9, and 13 are rejected under 35 U.S.C. §102(b) as
being anticipated by Kreidler.
2. Claims 10-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kreidler and Nair.

ISSUE
The pivotal issue before us is whether claims 1-6, 9, and 13 are
anticipated by Kreidler. Specifically, the issue is whether the Appellant has
shown that the Examiner erred in finding that Kreidler describes the step of
accessing a plurality of memory locations on demand.

Appeal 2009-007981
Application 11/058,532

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ANALYSIS
The rejection of claims 1-6, 9, and 13 under 35 U.S.C. §102(b) as being
anticipated by Kreidler.
Claim 1
To traverse the rejection of claim 1, the Appellant argues that Kreidler
does not describe the step of “accessing a plurality of memory locations on
demand in the area of the programmable logic controller in response to the
function call.” App. Br. 14-15 and Reply Br. 9-14. For example, the
Appellant asserts that “[t]he cited reference simply does not disclose
accessing memory locations of a programmable logic controller on demand
by an external application.” App. Br. 14. Also, the Appellant argues that,
“the present claims require that the external application or entity have direct
or pass through access on demand to the PLC memory locations” (Reply
Br. 12) and that the external application is provides with full access to any
location of the PLC’s memory (Reply Br. 12-14).
The Appellant’s arguments are not commensurate with the scope of
claim 1. These arguments are narrower. First, claim 1 does not require that
the accessing be done by the external application. Claim 1 is silent as to
what is doing the accessing and therefore, does not require that the external
application to do the accessing. Second, claim 1 does not require the
accessed memory locations be “of a programmable logic controller,” but
instead more broadly recites “a plurality of memory locations . . in the area
of the programmable logic controller.” Third, we see nothing in claim 1 that
requires “direct or pass through access.” Finally, the Appellant seems to
argue that the term “on-demand” requires that the external application can
demand any and all types of data at any time. App. Br. 15 and Reply Br. 12-
Appeal 2009-007981
Application 11/058,532

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14. However, we find no such requirement. Claim 1 only requires that “a
plurality of memory locations” be accessed on demand and does not require
that any and all types of data be accessed on demand.
Since the Appellant’s arguments are narrower in scope than claim 1,
we are not persuaded by the Appellant that Examiner erred in rejection claim
1.
Filing a Board appeal does not, unto itself, entitle
an appellant to de novo review of all aspects of a
rejection. If an appellant fails to present
arguments on a particular issue – or, more broadly,
on a particular rejection – the Board will not, as a
general matter, unilaterally review those
uncontested aspects of the rejection. . . Thus, the
Board will generally not reach the merits of any
issues not contested by an appellant.
In re Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)(precedential).
Accordingly, we find that the Appellant has not overcome the rejection of
claim 1 as being anticipated under § 102(b) by Kreidler.

Claim 2
To traverse the rejection of claim 2, the Appellant argues that “[t]he
cited reference in fact uses remote function calls as a method of data
retrieval, not direct function calls via a defined interface to access the PLC
memory locations. Moreover, Kreidler et al. require that the trace
functionality be included in a downloaded code, which Claim 2 does not.”
App. Br. 16.
Claim 2 recites “wherein the function call is one of a read call, a write
call, a cyclic data request or combination thereof.” As with claim 1 above,
the Appellant’s arguments are not commensurate with the scope of claim 2.
Appeal 2009-007981
Application 11/058,532

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Therefore, we are not persuaded by the Appellant that the Examiner erred in
finding claim 2 anticipated by Kreidler. Accordingly, we find that the
Appellant has not overcome the rejection of claim 2 under 35 U.S.C.
§ 102(b) as being anticipated by Kreidler.

Claims 3-6
Claims 3-6 depend from either claim 1 or 2. To traverse the rejection
of each of claims 3-6, the Appellant relies upon their arguments to traverse
the rejection of claims 1 and 2. App. Br. 16-17. For the reasons discussed
above, we find the Appellant’s arguments unpersuasive. Accordingly, we
find that the Appellant has not overcome the rejection of claims 3-6 under 35
U.S.C. § 102(b) as being anticipated by Kreidler.

Claim 9
The Appellant argues that Kreidler fails to disclose a means for
receiving a call on demand from at least one external entity and a means for
directly accessing the memory area for the same. App. Br. 17. The
Appellant argues: “Only data that has previously been stored in an
intermediate database is available to a client according to the cited reference.
Moreover, the trace functionality of Kreidler et al. teaches away from the
recited ‘on demand’ and ‘direct access’ aspects of Claim 9.” App. Br. 17.
First, we note that unlike claim 1, the limitations at issue are written in
means-plus-function format.
35 U.S.C. § 112, paragraph 6:
An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts
Appeal 2009-007981
Application 11/058,532

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in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
Construing means-plus-function claim language in accordance with 35
U.S.C. § 112, paragraph 6, is a two step process.
The first step in construing a means-plus-function claim
limitation is to define the particular function of the claim
limitation. Budde v. Harley-Davidson, Inc., 250 F.3d
1369, 1376 (Fed.Cir.2001). “The court must construe the
function of a means-plus-function limitation to include
the limitations contained in the claim language, and only
those limitations.” Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106, 1113 (Fed.Cir.2002). . . . The
next step in construing a means-plus-function claim
limitation is to look to the specification and identify the
corresponding structure for that function. “Under this
second step, ‘structure disclosed in the specification is
“corresponding” structure only if the specification or
prosecution history clearly links or associates that
structure to the function recited in the claim.’ ” Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, 344
F.3d 1205, 1210 (Fed.Cir.2003) (quoting B. Braun Med.
Inc. v. Abbott Labs., 124 F.3d 1419, 1424
(Fed.Cir.1997)).
Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir.
2004).
Therefore, we will first construe the limitations at issue. First, for the
means for receiving a call, the Appellant cites item 118 in Figure 3 and
paragraph [0037] of the Specification as describing the corresponding
structure. App. Br. 9. In these passages, item 118 is described as an ODK,
or an Open Development Kit/DLL (see also Specification [0024]).
Therefore, the means for receiving a call in claim 9 requires this
corresponding structure or an equivalent.
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Second, for the means for directly accessing the memory area, the
Appellant cites items 100, 125, 145 in Figures 4 and 5 and paragraphs
[0036], [0037], and [0039] as describing the corresponding structure. App.
Br. 9. In these passages, items 100, 125, and 145 are described as data
structures. Therefore, the means for directly accessing the memory area in
claim 9 requires this corresponding structure or an equivalent.
The Appellant’s argument does not address whether Kreidler
describes the corresponding structure or an equivalent, as construed above.
The Appellant’s argument does not address the recited claimed limitations.
Therefore, we find the Appellant’s argument unpersuasive as to error in the
Examiner’s rejection.
Accordingly, we find that the Appellant has not overcome the
rejection of claim 9 under 35 U.S.C. § 102(b) as being anticipated by
Kreidler.

Claim 13
To traverse the rejection of claim 13, the Appellant relies upon their
argument to traverse the rejection of claim 9. App. Br. 18. For the reasons
discussed above, we find the Appellant’s argument unpersuasive.
Accordingly, we find that the Appellant has not overcome the rejection of
claim 13 under 35 U.S.C. § 102(b) as being anticipated by Kreidler.

The rejection of claims 10-12 under 35 U.S.C. § 103(a) as being
unpatentable over Kreidler and Nair.
Appeal 2009-007981
Application 11/058,532

9
The Notice of Appeal indicates that the rejection of claim 1-17 is
appealed (Notice of Appeal, filed Sep. 28, 2007). However, the Appeal
Brief does not list claims 10-12 as being appealed in the Status of Claims
(see App. Br. 6); the rejection of claims 10-12 under 35 U.S.C. § 103(a) was
not included in the Grounds of Rejection on Review (App. Br. 10); and the
Appellant presents no arguments direct to claims 10-12. Further, we note
that claims 10-12 were not listed among the claims the Appellant canceled
with the filing of the Appeal Brief (see App. Br. 6). Accordingly, we will
summarily sustain the rejection of claims 10-12 under 35 U.S.C. § 103(a) as
being unpatentable over Kreidler and Nair.

DECISION
The decision of the Examiner to reject claims 1-6 and 9- 13 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).
AFFIRMED

mev

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN NJ 08830