Ex Parte McLaughlin et alDownload PDFPatent Trial and Appeal BoardOct 23, 201412098943 (P.T.A.B. Oct. 23, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PAUL F. McLAUGHLIN, KAMEL ZERDOUM, and ANGELA LORDI ___________ Appeal 2012-006742 Application 12/098,943 Technology Center 2400 ____________ Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and DANIEL N. FISHMAN, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1, 2, 4, 5, 7, 15–17, 19–21, 24, and 25.1 Claims 3, 6, 8–14, 18, 22, and 23 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 In this Opinion, we refer to Appellants’ Appeal Brief (“App. Br.,” filed November 1, 2011), Appellants’ Reply Brief (“Reply Br.,” filed March 20, 2012), the Examiner’s Answer (“Ans.,” mailed January 20, 2012), and the originally filed Specification (“Spec.,” April 7, 2008). Appeal 2012-006742 Application 12/098,943 2 STATEMENT OF THE CASE THE INVENTION Appellants’ invention relates to peer-to-peer control signal communications between controllers of at least two control systems (e.g., first and subsequent generation control systems) using an input/output (I/O) network of one of the control systems. Spec. ¶ 1. Claims 1 and 24, reproduced below, are illustrative: l. A method for enabling peer-to-peer communications between a first controller in a first control system having a first input/output (I/O) network and a first I/O processing module, said first I/O processing module communicatively coupled to first industrial equipment, and a second controller communicatively coupled to a second I/O processing module via a second I/O network, said second I/O processing module communicatively coupled to second industrial equipment of a second control system, comprising the steps of: connecting said first controller that employs a first data message format and said second controller that employs a second data message format different from said first data message format using at least one communications path, said second controller comprising a data storage device; based on I/O configuration data regarding an I/O configuration of said first controller stored in said data storage device, matching an I/O configuration of said second controller to said I/O configuration of the first controller to emulate said first I/O processing module at said second controller, and performing peer-to-peer process parameter and control signal communications between said first and second controllers using said first data message format for communications from said first controller to said second controller and said second data message format for communications from said second controller to said first controller along said communications path during operation of said first and said second industrial equipment. Appeal 2012-006742 Application 12/098,943 3 24. The method of claim 1, wherein said second controller receives said first data message format and said first controller receives said second data message format during said peer-to-peer process parameter and control signal communications. THE REJECTIONS Claims 1, 2, 4, 5, 7, 15–17, and 19–21are rejected under 35 U.S.C. § 103(a) as unpatentable over Prendergast (US 2005/0210664 A1; Oct. 21, 2004), Flamingo (US 2008/0046227 A1; Feb. 21, 2008), and Johnston (US 2006/0294047 A1; Dec. 28, 2006). Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Prendergast, Flamingo, Johnston, and Motosugi (US 2008/0240136 A1; Oct. 2, 2008). Only those arguments actually made by Appellants have been considered in this Decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We have reviewed the Examiner’s rejections in light of Appellants’ arguments the Examiner erred. App. Br. 5–15; Reply Br. 2–17. We are unpersuaded by Appellants’ contentions. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and as set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 10–13). However, we highlight and address specific arguments and findings for emphasis as follows. Appeal 2012-006742 Application 12/098,943 4 CLAIMS 1, 2, 4, 5, 7, 15–17, AND 19–21 ISSUES Appellants’ arguments present issues as follows: 1. Has the Examiner erred because combining teachings of Flamingo with Prendergast renders Prendergast unsatisfactory for its intended purpose? 2. Has the Examiner erred because Prendergast teaches away from combination with Johnston? 3. Has the Examiner erred finding the combination of Prendergast, Flamingo, and Johnston teaches or reasonably suggests, “based on I/O configuration data regarding an I/O configuration of said first controller stored in said data storage device, matching an I/O configuration of said second controller to said I/O configuration of the first controller to emulate said first I/O processing module at said second controller,” as recited in claim 1 (hereinafter, the “Disputed Limitation”)? ANALYSIS Issue 1 Appellants argue Prendergast’s intended purpose is to transmit data between Programmable Logic Controllers (“PLCs”) employing different communication protocols by translating all exchanges into Simple Network Management Protocol (“SNMP”). App. Br. 8–9. More specifically, Appellants argue “Appellants’ best attempt to try to implement the proposed modification of Prendergast . . . . [W]ould eliminate the use of Prendergast’s single communication protocol (SNMP) . . .” App. Br. 9–10. Appellants Appeal 2012-006742 Application 12/098,943 5 further contend the proposed combination of Prendergast and Flamingo, therefore, “render[s] Prendergast’s system unsatisfactory for the intended purpose of eliminating the need for communication protocol translation between a plurality of different communication protocols.” App. Br. 10. We are not persuaded the Examiner erred. We are not persuaded the Examiner erred in combining Prendergast and Flamingo. Appellants’ arguments appear to demand direct integration of Flamingo teachings in the structure and techniques of Prendergast. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner explains Flamingo is relied upon in the combination for emulation of a PLC to disclose a second PLC (emulated) storing the configuration of a first PLC (the physical PLC that is identically copied in the emulated PLC). Ans. 12. The Examiner concludes, “Therefore, incorporating emulation as taught by Flamingo with the teaching of Prendergast does not destroy the intended purpose because the controllers / emulator can still communicate whether or not protocol conversion is required.” Id. We agree. We are not persuaded that combining Flamingo’s disclosure of two identically configured PLCs (one physical and one emulated) with Prendergast would render Prendergast in any way inoperable or unsatisfactory for its intended purpose. The Examiner also explains Prendergast is not limited to only differently configured PLCs (Ans. 11) and thus, nothing in Prendergast precludes two similarly configured PLCs communicating over the network Appeal 2012-006742 Application 12/098,943 6 and the proposed combination does not require the first PLC’s protocol to be changed (Ans. 11–12). We agree. Although Prendergast is intended to improve efficiency/cost involved in translating between different protocols of different PLCs, we see no reason Prendergast would function differently if the communicating PLCs happen to use the same protocol. Prendergast paragraphs 24 and 25 describe exemplary transmission between two PLCs but do not preclude the same techniques being applied if the communicating PLCs happen to use identical protocols. For example, transmission from a first PLC may be translated from the first protocol into SNMP, transmitted to the second PLC, and translated from SNMP into the protocol of the second PLC, which could be the same protocol as the first PLC. In view of the above discussion, we are not persuaded combining teachings of Flamingo with Prendergast renders Prendergast unsatisfactory for its intended purpose. Issue 2 Appellants argue Prendergast specifically teaches away from use of expensive bridges to provide requisite translation between controllers and Johnston specifically teaches use of such a bridge for translation between controllers. App. Br. 11–12. Appellants, therefore, contend the combination of Prendergast and Flamingo with Johnston is improper. App. Br. 12. The Examiner explains Johnston is not relied upon for its teaching of a bridge for translation purposes but rather is relied upon for disclosing a controller capable of using different message formats or protocols. Ans. 13. The Examiner further explains, Prendergast does not discredit or disparage such Appeal 2012-006742 Application 12/098,943 7 a teaching of different message formats/protocols but rather endorses it. Id. at 13. We agree. Furthermore, the Examiner finds “Prendergast already contemplates PLCs communicating with different formats / protocols.” Id. We agree and, therefore, find the teachings of Johnston merely cumulative to those of Prendergast as regards support for multiple protocols. In view of the above discussion, we are not persuaded Prendergast teaches away from combination with Johnston. Issue 3 Appellants argue the combined references fail to teach or suggest the Disputed Limitation because, although Prendergast discloses each PLC storing its own configuration information, the claim requires that the second controller store the I/O configuration of the first controller. App. Br. 6–7. We are not persuaded the Examiner erred. The Examiner explains Prendergast discloses each PLC has a storage device and Flamingo discloses the second controller (the emulator) has a configuration unit that is functionally equivalent to the recited storage device and stores the configuration of the first controller. Ans. 10–11 (citing Flamingo, ¶¶ 19, 20). We agree. In view of the above discussion, we are not persuaded the Examiner erred finding the combination of Prendergast, Flamingo, and Johnston teaches or reasonably suggests the Disputed Limitation as recited in claim 1 Therefore, we sustain the Examiner’s rejection of claim 1. Independent claim 15 and dependent claims 2, 4, 5, 7, 16, 17, and 19–21 are Appeal 2012-006742 Application 12/098,943 8 argued together with claim 1 (App. Br. 12) and thus, for the same reasons as claim 1, we sustain the rejection of claims 2, 4, 5, 7, 15–17, and 19–21. CLAIMS 24 AND 25 Claims 24 and 25 depend from claims 1 and 15, respectively. The Examiner contends Motosugi discloses the additional feature of claims 24 and 25 as a PLC capable of handling multiple protocols. Ans. 9. The Examiner further explains each layer of a multi-layer protocol may be understood as a different message format handled within each PLC. Ans. 13. We agree with the Examiner’s finding that Motosugi discloses a PLC capable of processing multiple protocols.2 In addition to the arguments discussed supra regarding claims 1 and 15, Appellants argue the Examiner erred in rejecting claims 24 and 25 because, Claim 24 thus requires the “process parameter and control signal communications” communicated between the first controller (part of the first control system) and second controller (part of the second control system) to perform peer to peer communications which maintain the respective data message formats transmitted over the entire communications path (end-to-end). Reply Br. 3. Although the emphasized portion of Appellants’ assertion is not specifically recited in the claim, we agree with Appellants that the Examiner’s reliance on Motosugi fails to teach or reasonably suggest the additional feature of claims 24 and 25. Reading an exemplary portion of 2 We further note that Prendergast also discloses each PLC of a communicating pair of PLCs supports at least two message formats/protocols—its native protocol and SNMP. Thus, we perceive the teachings of Motosugi as cumulative with respect to that of Prendergast. Appeal 2012-006742 Application 12/098,943 9 claim 24 in the context of its base claim 1, recites, in pertinent part, “performing . . . communications . . . using said first data message format for communications from said first controller to said second controller . . . wherein said second controller receives said first data message format . . . .” Thus, as Appellants assert (Reply Br. 3), claim 24 (and claim 25) requires peer-to-peer communication from the first controller to the second controller such that the transmission is sent by the first controller in its first data message format and is received at the second controller in the same first data message format. Similarly, claim 24 requires transmission from the second controller to use the second format and the same second format is received by the first controller. The Examiner has failed to show where the combination of references discloses such a feature. The Examiner’s reliance on Motosugi’s disclosure of a PLC that handles multiple protocols fails to disclose this feature. Therefore, on the record before us, we do not sustain the rejection of claims 24 and 25. Appellants’ contentions regarding claims 24 and 25 present additional issues. We are persuaded of error with regard to the identified issue discussed supra, which is dispositive as to claims 24 and 25. We, therefore, do not reach the additional issues. Appeal 2012-006742 Application 12/098,943 10 DECISION For the above reasons, the Examiner’s decision rejecting claims 1, 2, 4, 5, 7, 15–17, and 19–21 under § 103 is affirmed. For the above reasons, the Examiner’s decision rejecting claims 24 and 25 under 35 U.S.C. § 103 is reversed. 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-IN-PART tj Copy with citationCopy as parenthetical citation