Ex Parte ReuterDownload PDFPatent Trial and Appeal BoardAug 31, 201612702896 (P.T.A.B. Aug. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121702,896 02/09/2010 27799 7590 09/02/2016 Cozen O'Connor 277 Park A venue, 20th floor NEW YORK, NY 10172 FIRST NAMED INVENTOR Thomas Reuter 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. 5029-599-307205.000 3003 EXAMINER LOPEZ ALVAREZ, OLVIN ART UNIT PAPER NUMBER 2121 NOTIFICATION DATE DELIVERY MODE 09/02/2016 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 THOMAS REUTER Appeal2015-004152 Application 12/702,896 Technology Center 2100 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-004152 Application 12/702,896 1. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-6 and 8-14. Claim 7 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. A. INVENTION According to Appellant, the invention relates to "a method for operating an automation system, a corresponding computer program for implementing the method and a system or device that operates according to the method, in particular by executing the computer pro gram." Spec. i-f 1. B. ILLUSTRATIVE CLAIM 1. A computer implemented method for operating an industrial automation system having an automation solution for a manufacturing process that requires at least one of controlling and monitoring, wherein the automation solution of the industrial automation system comprises a plurality of software modules and a plurality of subprograms, the method comprising: invoking, by a processor of a computer, said plural software modules by said plural subprograms in accordance with a predefined call sequence during an execution of the automation solution for the manufacturing process of the industrial automation system; storing, in a storage medium of said computer, the predefined call sequence permanently configured for said plural software modules in a call specification dataset; and providing the call specification dataset for at least one of said plural subprograms such that said plural software modules are 2 Appeal2015-004152 Application 12/702,896 invokeable in accordance with the call specification dataset during execution of at least one of said plural subprograms. C. REJECTIONS The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Zuraw Karmi y et al. ("Karmiy") Bruecklmayr et al. ("Bruecklmayr") Fax et al. ("Fax") Weatherhead et al. ("Weatherhead") US 2002/0072809 Al US 2003/0069650 Al US 2006/0123403 Al US 2008/0004723 Al US 2008/0097630 Al June 13, 2002 Apr. 10, 2003 June 8, 2006 Jan.3,2008 Apr. 24, 2008 Claim 10 is rejected under 35 U.S.C. § 101 as being directed to non- statutory subject matter. Claims are 1-3 and 8-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of Bruecklmayr and Weatherhead. Claims 4---6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the teachings of Bruecklmayr, Weatherhead, and Zuraw. Claims 4---6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the teachings of Bruecklmayr, Weatherhead, and Karmiy. Claims 4---6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the teachings of Bruecklmayr, Weatherhead, and Fax. II. ISSUES The principal issue before us is whether the Examiner erred in finding that the combination of Bruecklmayr and Weatherhead teaches or would 3 Appeal2015-004152 Application 12/702,896 have suggested "A computer implemented method for operating an industrial automation system having an automation solution for a manufacturing process ... ," and the step of "invoking, by a processor of a computer, said plural software modules by said plural subprograms in accordance with a predefined call sequence during an execution of the automation solution for the manufacturing process of the industrial automation system" (claim 1 ). III. ANALYSIS Appellant contends "[T]his combination fails because Bruecklmayr and Weatherhead have little to do with each other, and there is no substantial reason for the skilled person to modify Bruecklmayr based on the teachings of Weatherhead. (App. Br. 5). Appellant concedes "Bruecklmayr is directed to processing program code in a manner that secures intellectual property contain within that code" and "The object of Bruecklmayr is clearly to prevent the reengineering of program code so that a subsequent user cannot produce the software, etc." (Id.). However, Appellant argues "Bruecklmayr has nothing to do with industrial automation systems having an automation solution for a manufacturing process." (Id.). Appellant also concedes Weatherhead teaches "an industrial automation system" and further admits "a vast number of patents also teach industrial automation systems." (Id.). However, Appellant contends "there is no reason to combine the teachings of Bruecklmayr with the teachings of Weatherhead and, in fact, the skilled person is provided with no substantial reason to incorporate the teachings of Weatherhead into the teachings of Bruecklmayr." (App. Br. 5---6). 4 Appeal2015-004152 Application 12/702,896 We have considered all of Appellant's arguments and evidence presented. However, we disagree with Appellant's contentions regarding the Examiner's rejections of the claims. Instead, we agree with the Examiner's findings, and are unpersuaded of error with the Examiner's conclusion that the claims would have been obvious over the combined teachings. As an initial matter of claim construction, we give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although Appellant argues "Bruecklmayr has nothing to do with industrial automation systems having an automation solution for a manufacturing process" (App. Br. 5), we agree with the Examiner that claim 1 doesn't define a "manufacturing process" or "industrial system," or recite any specific kind thereof (Ans. 17). We note Appellant also does not point to any definition in the Specification. We further agree with the Examiner that the argued claim terms "industrial automation system" and "manufacturing process" are very broad terms. (Id.). Nevertheless, we find no error in the Examiner's finding that the combination of Bruecklmayr and Weatherhead teaches or would have suggested the disputed claim terms. In fact, Appellant concedes Weatherhead teaches "an industrial automation system" and further admits "a vast number of patents also teach industrial automation systems." (App. Br. 5). Furthermore, we disagree with Appellant's argument that "there is no substantial reason for the skilled person to modify Bruecklmayr based on the teachings of Weatherhead" (App. Br. 5) because we find the Examiner set forth sufficient "articulated reasoning with some rational underpinning to 5 Appeal2015-004152 Application 12/702,896 support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). See also 35 U.S.C. § 132. We are not convinced of error with the Examiner's finding that one of ordinary skill in the art would have been motivated to implement the software execution and program code as taught by Bruecklmayr in the automation system of Weatherhead to provide a secured program execution system in the industrial automation system. (Ans. 18). We are guided by the Supreme Court's viewing the prior art as a combination of teachings from different sources and the use of those teachings by a practitioner in the art KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007): (Id.) To determine whether there was an apparent reason to cornbine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art. The Supreme Court further guides: an improved product in the art is obvious if that "product [is] not [one] of innovation but of ordinary skill and common sense." KSR, 550 U.S. at 421. We find this reasoning is applicable here. Thus, we find the Examiner's proffered combination of Bruecklmayr and Weatherhead would have merely been a "predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417. Moreover, Appellant has not provided any evidence that combining the familiar elements and/or practices described in the Examiner's proffered combination of Bruecklmayr and Weatherhead would have been "uniquely challenging or difficult for one of ordinary skill in the art" (Leapfrog 6 Appeal2015-004152 Application 12/702,896 Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), or would have yielded unexpected results. Therefore, on this record, and by the preponderance of evidence, we are not persuaded of error regarding the Examiner's underlying factual findings and ultimate legal conclusion of obviousness. Accordingly, we sustain the Examiner's§ 103(a) rejection of representative independent claim 1 and claims 2, 3, 8-14, not separately argued and rejected on the same basis as claim 1. Appellant advances no substantive, separate arguments regarding the Examiner's three separate rejections of claims 4---6. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). Appellant also does not respond, in the Briefs, to the Examiner's rejection of claim 10 under § 101. Accordingly, we also affirm the three rejections of claims 4--6 under§ 103(a) and the additional rejection of claim 10 under§ 101. IV. CONCLUSION AND DECISION We affirm the Examiner's rejections of claims 1-6 and 8-14 under § 103(a). We also affirm the Examiner's rejection of claim 10 under§ 101. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation