Ex Parte Opaterny

Board of Patent Appeals and Interferences

Jun 8, 2011

10768732 (B.P.A.I. Jun. 8, 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.
10/768,732 01/29/2004 Thilo Opaterny 2001P11936WOUS 7627
7590 06/09/2011
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPT.
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
CHEN, QING
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
06/09/2011 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 THILO OPATERNY
____________
Appeal 2009-011612
Application 10/768,7321
Technology Center 2100
____________

Before DAVID M. KOHUT, ERIC B. CHEN, and MICHAEL R. ZECHER,
Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on January 29, 2004. This application is a continuation of
PCT/DE02/02763, filed July 26, 2002. The real party in interest is Siemens
Aktiengesellschaft. (App. Br. 1.)
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Application 10/768,732

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1-24. (App. Br. 2.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellant’s Invention
Appellant invented a method and system for creating instructions that
are utilized to complete a control task or regulate a process in an automated
system. (Spec. 1, ll. 5-7.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method for creating instructions in an
automation system, comprising:

providing an automation system including a
programming device comprising a processor and memory, and
software loaded on the programming device;

commissioning the automation system; and

during commissioning or operation of the automation
system, sending instructions to the automation system for
execution by firmware, the instructions defining operands,
control values, and types of instructions associated with the
operands in instructions, wherein a user provides input to the
programming device to parameterize the instructions and
automatically specify and assign to the instructions both an
execution moment and an application frequency of the
instructions according to the operands and a first type of
instruction.

Prior Art Relied Upon
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The Examiner relies on the following prior art as evidence of
unpatentability:
Duff US 5,644,487 July 1, 1997
Bennett US 5,877,957 Mar. 2, 1999
Fiszman US 6,115,646 Sept. 5, 2000

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1-8, 10-20, and 22-24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Duff and Fiszman.
Claims 9 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Duff, Fiszman, and Bennett.
Appellant’s Contentions
Appellant contends that Duff’s disclosure of monitoring, editing, or
changing a program utilizing software that is run off-line does not teach or
fairly suggest “during commissioning or operation of the automation
system,” as recited in independent claim 1. (App. Br. 8-9; Reply Br. 2-4.)
Next, Appellant argues that Duff’s disclosure of uploading a program to a
programmer station for editing, in conjunction with utilizing a dialogue box
to debug the program, does not teach or fairly suggest “sending instructions
to the automation system for execution by firmware,” as recited in
independent claim 1. (App. Br. 9; Reply Br. 4-6.)
Further, Appellant alleges that Duff’s disclosure of action blocks,
which have true-false inputs, does not teach or fairly suggest “the
instructions defining operands, control values, and types of instructions
associated with the operands in instructions,” as recited in independent claim
1. (App. Br. 10.) Appellant also contends that Duff only discloses
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Application 10/768,732

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programming in relation to the processor of the programmer station and does
not teach or fairly suggest sending the claimed “instructions” to controllers
A or B during commission or operation. (Reply Br. 7-8.) Moreover,
Appellant argues that Duff’s disclosure of uploading a program for editing
or modifying does not teach or fairly suggest “wherein a user provides input
to the programming device to parameterize the instructions,” as recited in
independent claim 1. (App. Br. 10; Reply Br. 8-9.)
Additionally, Appellant alleges that Fiszman discloses a rudimentary
scheduler that only produces a schedule that considers available resources.
(App. Br. 10-13; Reply Br. 9-12.) Therefore, Appellant contends that since
Fiszman’s scheduler does not assign both an execution moment and an
application frequency to an instruction, Fiszman does not teach or fairly
suggest “automatically specify and assign to the instructions both an
execution moment and an application frequency of the instructions
according to the operands and a first type of instruction,” as recited
independent claim 1. (Id.) Finally, Appellant argues that there is
insufficient rationale to combine Duff and Fiszman. (App. Br. 13-14.)
Examiner’s Findings and Conclusions
The Examiner finds that Duff’s disclosure of a programmer station
that allows an operator to exert control on the operation of a controller
teaches or fairly suggests “during commissioning or operation of the
automation system,” as recited in independent claim 1. (Ans. 29-30.) The
Examiner also finds that since Duff discloses that the software for the
process control system can be run on-line, Duff teaches or fairly suggests
“during commissioning or operation of the automation system,” as claimed.
(Id. at 31.) Next, the Examiner finds that Duff’s disclosure of a Chart
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Control dialogue box that contains control instruction, which are utilized to
program the Sequential Function Chart logic of a controller, teaches or fairly
suggests “sending instructions to the automation system for execution by
firmware,” as recited in independent claim 1. (Id. at 31-32.)
Further, the Examiner finds that Duff’s disclosure of a Chart Control
dialogue box that affects the input and output values of the action blocks of a
Sequential Function Chart teaches or fairly suggests “the instructions
defining operands, control values, and types of instructions associated with
the operands in instructions,” as recited in independent claim 1. (Ans. 33-
34.) Moreover, the Examiner finds that Duff’s disclosure of a programmer
utilizing a programmer station to exert control on the operation of a
controller teaches or fairly suggests “wherein a user provides input to the
programming device to parameterize the instructions,” as recited in
independent claim 1. (Id. at 34-35.)
Additionally, the Examiner finds that Fiszman discloses a scheduler
that automatically produces a schedule containing the data and time when an
agent will execute and the desired execution frequency. (Id. at 37-38.)
Therefore, the Examiner finds that Fiszman teaches or fairly suggests
“automatically specify and assign to the instructions both an execution
moment and an application frequency of the instructions according to the
operands and a first type of instruction,” as recited independent claim 1.
(Id.) Finally, the Examiner finds that there is sufficient rationale to combine
Duff and Fiszman. (Id. at 42-43.)

II. ISSUE
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Has Appellant shown that the Examiner erred in concluding that the
combination of Duff and Fiszman renders independent claim 1
unpatentable? In particular, the issue turns on whether:
(a) the proffered combination teaches or fairly suggests “during
commissioning or operation of the automation system,” as recited in
independent claim 1;
(b) the proffered combination teaches or fairly suggests “sending
instructions to the automation system for execution by firmware,” as recited
in independent claim 1;
(c) the proffered combination teaches or fairly suggests “the
instructions defining operands, control values, and types of instructions
associated with the operands in instructions,” as recited in independent claim
1;
(d) the proffered combination teaches or fairly suggests “wherein a
user provides input to the programming device to parameterize the
instructions,” as recited in independent claim 1;
(e) the proffered combination teaches or fairly suggests
“automatically specify and assign to the instructions both an execution
moment and an application frequency of the instructions according to the
operands and a first type of instruction,” as recited independent claim 1; and
(f) there is sufficient rationale to combine Duff and Fiszman.

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Duff
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FF 1. Duff’s figure 1 depicts a programmer station that exerts control
over the microprocessor of a controller primarily by an operator changing
the respective program, or by feeding the controller varying information
produced by processing the data received from the controller. (Col. 3, ll. 38-
42.)
FF 2. Duff discloses that the process control system preferably runs
4-mationTM software, which can be run on-line or off-line. (Id. at ll. 64-66.)
FF 3. Duff discloses that the programmer controllers are allowed to
operate as desired. (Col. 4, ll. 4-5.) That is, at any time an operator desires
to monitor, edit, or change the program of a controller, Duff discloses
uploading the program to the programmer station, and with the aid of the
saved graphics, presenting the program in a Sequential Function Chart
format on the monitor screen. (Id. at ll. 6-9.)
FF 4. Duff’s figure 3 depicts a Chart Control dialogue box (61),
which is utilized by a programmer to help debug Sequential Function Chart
logic. (Col. 5, ll. 30-31.) After the programmer selects a Sequential
Function Chart, Duff discloses that all the controls within the Chart Control
dialogue box (61) are capable of being executed with respect to the selected
Sequential Function Chart. (Id. at ll. 44-46.) Duff discloses that the five
buttons within button group (62) correspond to one of the five possible
modes of the selected Sequential Function Chart. (Id. at ll. 46-48.) After
selecting a mode within button group (62), Duff discloses that the
programmer is presented with a number of permissible operations. (Id. at
46-47.)
Fiszman
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FF 5. According to Fiszman, “[i]t would be advantageous to have a
process automation system which is capable of running []processes in an
automated fashion in a manner which makes efficient use of the resources
provided by the distributed processing nodes, and which at the same time
satisfies various constraints.” (Col. 1, ll. 16-21.)
FF 6. Fiszman’s figure 3 depicts an automation system that comprises
a generic process automation engine (hereinafter “GPAE”) (10), which
includes a scheduler (74). (Col. 8, ll. 47-56.) In particular, Fiszman
discloses that the scheduler (74) produces a schedule that provides the
activities forming part of a request process instance (80), or a tuple
composed of a host and time. (Col. 9, ll. 18-20.) Fiszman discloses that the
host is where an agent (i.e., tool or role) associated with an activity executes,
and the time is the date and time when the agent will execute. (Id. at ll. 20-
22.)
FF 7. During the request creation stage, Fiszman discloses that an
authorized role creates a request instance and ties it to a process definition.
(Col. 11, ll. 27-29.) At this stage, Fiszman discloses specifying the data (i.e.,
in and out parameter values), the desired execution frequency, roles to be
notified about the outcome of the request, and respective priorities. (Id. at ll.
29-33.)

IV. ANALYSIS
Claim 1
Independent claim 1 recites, inter alia:
[1)] during commissioning or operation of the automation
system, [2)] sending instructions to the automation system for
execution by firmware, [3)] the instructions defining operands,
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control values, and types of instructions associated with the
operands in instructions, [4)] wherein a user provides input to
the programming device to parameterize the instructions and
[5)] automatically specify and assign to the instructions both an
execution moment and an application frequency of the
instructions according to the operands and a first type of
instruction.

As detailed in the Findings of Fact section above, Duff discloses that
an operator utilizes a programmer station to change a program running on
the microprocessor of a controller. (FF 1.) Further, Duff discloses that the
process control system, which includes the programmer station, utilizes
software that is capable of being run both on-line or off-line. (FF 2.)
Moreover, at any time the operator desires to monitor, edit, or change the
program running on the microprocessor of the controller, Duff discloses that
the programmer station uploads the program and presents it in a Sequential
Function Chart format on the monitor screen. (FF 3.)
We find Duff’s disclosure teaches that an operator may utilize the
programmer station to monitor, edit, or change a program running on the
microprocessor of a controller while the process control system is on-line.
Thus, we find that Duff teaches or fairly suggests “during commissioning or
operation of the automation system,” as recited in independent claim 1.
Moreover, we find that an ordinarily skilled artisan would have recognized
that Duff’s disclosure of an operator utilizing the programmer station to edit
or change the program running on the microprocessor of the controller
amounts to a user providing input to a programming device in order to edit
or change program instructions. Thus, we find that Duff teaches or fairly
suggests “wherein a user provides input to the programming device to
parameterize the instructions,” as recited in independent claim 1.
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Next, Duff discloses that a programmer utilizes a Chart Control
dialogue box to debug the Sequential Function Chart logic of a controller.
(FF 1.) In particular, after the programmer selects a Sequential Function
Chart, Duff discloses that the programmer can execute the controls located
within the Chart Control dialogue box, which include five possible modes
and the permissible operations that correspond therewith. (Id.)
We find an ordinarily skilled artisan would have appreciated that
Duff’s disclosure of an operator utilizing the Chart Control dialogue box to
select modes and permissible operations for a Sequential Function Chart
amounts to creating and sending program instructions that pertain to the
Sequential Function chart for execution by a controller. Thus, we find that
Duff teaches or fairly suggests “sending instructions to the automation
system for execution by firmware,” as recited in independent claim 1.
Further, we are not persuaded by Appellant’s argument that Duff does
not disclose sending instructions to the controller(s) during commission or
operation. (App. Br. 10; Reply Br. 7-8.) Contrary to Appellant’s argument,
Duff’s disclosure teaches, or at least suggests, that the program instructions
created by the operator utilizing the Chart Control dialogue box are sent to
the controller while the process control system is on-line. Thus, Appellant’s
argument has not persuaded us that the Examiner erred in relying on Duff’s
cited disclosure to teach or fairly suggest “the instructions defining
operands, control values, and types of instructions associated with the
operands in instructions,” as recited in independent claim 1.
Additionally, Fiszman discloses an automated system that includes a
GPAE and a number of tools running on processing nodes, such as a
scheduler. (FF 6.) Fiszman discloses that the scheduler produces a schedule
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containing the date and time the activities which form part of a requested
process instance will execute. (Id.) Moreover, during the request creation
stage, Fiszman discloses determining the desired execution frequency. (FF
7.)
We find that an ordinarily skilled artisan would have readily
appreciated that Fiszman’s automated system is capable of incorporating the
desired execution frequency into a schedule, such that the automated system
can execute the process instance and the multiple activities associated
therewith in accordance with both the date/time and desired frequency
specified by the schedule. Thus, we find that Fiszman teaches or fairly
suggests “automatically specify and assign to the instructions both an
execution moment and an application frequency of the instructions
according to the operands and a first type of instruction,” as recited in
independent claim 1.
Rationale to Combine
We are not persuaded by Appellant’s argument that there is
insufficient rationale to combine Duff and Fiszman. (App. Br. 13-14.) The
U.S. Supreme Court has held that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated teachings
of multiple patents; . . . and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine
whether there was an apparent reason for combining the known
elements in a the fashion claimed by the patent at issue.

Id. at 418. Additionally, the Court instructs that:
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‘rejections on obviousness grounds cannot be sustained by mere
conclusory statements. Instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness’… however, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.

Id. (citation omitted).
Upon reviewing the record before us, we find that the Examiner’s
suggestion for the proposed modification in the prior art suffices as an
articulated reason to establish the prima facie case of obviousness. In
summary, we find that an ordinarily skilled artisan in the art of automated
systems, at the time of the claimed invention, would have combined Duff’s
disclosure of an operator utilizing the programmer station to monitor, edit, or
change a program running on the microprocessor of a controller while the
process control system is on-line (FFs 1-4), with Fiszman’s disclosure of an
automated system that executes a process instance and multiple activities
associated therewith in accordance with both the date/time and desired
frequency specified in a schedule. (FFs 6 and 7). This proffered
combination would result in an automated system that is capable of running
processes in an automated fashion, such that it makes efficient use of
resources and satisfies various time constraints. (FF 5.)
Further, as prescribed by the controlling case law, while it is often
necessary for an Examiner to identify a reason for combining the familiar
elements obtained from the prior art in establishing a prima facie case of
obviousness, the identification of such a reason is not a sine qua non
requirement. So long as the Examiner provides an articulated reasoning
with some kind of a rational underpinning to substantiate the obviousness
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rejection, such a conclusion is proper. In this case, the Examiner provided
more than just a mere conclusory statement. The Examiner noted that it
would have been obvious to an ordinary skilled artisan at the time of the
claimed invention to incorporate the teaching of Fiszman into the teaching of
Duff in order to execute the instructions in an automated fashion. (Ans. 6.)
In our view, such a statement suffices as an articulated reason with a rational
underpinning to support the cited combination. As noted above, the case
law allows the Examiner to look to the state of the prior art, including the
knowledge of the ordinarily skilled artisan, to surmise such a reason for
combining the known elements of the prior art. Consequently, the
Examiner’s reliance upon Duff and Fiszman in order to arrive at an
articulated reason with a rational underpinning to support the proffered
combination is proper. It follows that Appellant has not shown that the
Examiner erred in concluding that the combination of Duff and Fiszman
renders independent claim 1 unpatentable.
Claim 13
Appellant offers the same arguments set forth in response to the
obviousness rejection of independent claim 1 to rebut the obviousness
rejections of independent claim 13. (App. Br. 15-17.) We have already
addressed these arguments in our discussion of independent claim 1, and we
found them unpersuasive. Consequently, Appellant has not shown that the
Examiner erred in concluding that the combination of Duff and Fiszman
renders independent claim 13 unpatentable.
Claims 2-12 and 14-24
Appellant merely reiterates what the disputed claim limitations recite
and makes a general allegation as to the teachings of the prior art references.
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(App. Br. 17-27.) These reiterations and general allegations do not amount
to separate patentability arguments. See Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative); see
also 37 C.F.R. § 41.37(c)(1)(vii). Appellant’s argument “do not … explain
why the Examiner's explicit fact finding is in error.” Belinne, 2009 WL
2477843 at *4. Therefore, Appellant’s arguments are not persuasive. It
follows that Appellant has not shown that the Examiner erred in concluding
that: 1) the combination of Duff and Fiszman renders dependent claim 2-8,
10-12, 14-20, and 22-24 unpatentable; and 2) the combination Duff,
Fiszman, and Bennett renders dependent claims 9 and 21 unpatentable.

V. CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-24 as being unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
We affirm the Examiner’s decision to reject claims 1-24 as being
unpatentable under 35 U.S.C. § 103(a).
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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