Ex Parte Rhodes et al

Patent Trial and Appeal Board

Apr 23, 2013

10671234 (P.T.A.B. Apr. 23, 2013)

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.
10/671,234 09/25/2003 Neil Rhodes 2003P14811US 8197
28524 7590 04/24/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
BATES, KEVIN T
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
04/24/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEIL RHODES and TOM RULE
____________

Appeal 2011-000407
Application 10/671,234
Technology Center 2400
____________

Before KRISTEN L. DROESCH, DANIEL N. FISHMAN,
and GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ invention is a data transmission system for a facility
comprising a first network having a number of fire control devices disposed
within a facility. The operation of the fire control devices cannot be
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interrupted or compromised because they form essential components of a
life and property safety system. A second network may be a building
automation network including a number of workstations that provide
communication and control for a number of building control devices, such as
HVAC controllers. In order to integrate the fire control network with at
least one other network, like the building automation network, the present
invention contemplates the provision of an isolating router coupling the first
fire control network to the second network. This router is operable to isolate
the fire control network from data transmission traffic in the second
network. See generally Spec. 5-6. Claim 1 is illustrative:
1. A data transmission system for a facility comprising:
a first network including;
a number of critical devices disposed within the facility;
and at least one first computer workstation operably
coupled to said number of critical devices via said first
network;
a second network including at least one second computer
workstation; and
an isolating router coupling said first network to said
second network and operable to isolate said first network from
data transmission traffic in said second network, the isolating
router comprising a router configured to receive and store data
packets, and to forward the received data packets.

THE REJECTIONS
1. The Examiner rejected claims 1, 2, 7, and 14-17 under 35 U.S.C. §
103(a) as being unpatentable over Prokupets (US 2003/0023874 A1,
published Jan. 30, 2003) and Asano (US Patent No. 5,815,664, issued Sep.
29, 1998). Ans. 4-6.
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2. The Examiner rejected claims 3, 4, and 8-13 under 35 U.S.C. §
103(a) as being unpatentable over Prokupets, Asano, Miyamoto (US
2006/0114842 A1, filed May 18, 2001), and Koenig (US Patent No.
6,144,736, issued Nov. 7, 2000). Ans. 6-10.
3. The Examiner rejected claims 5, 6, and 20 under 35 U.S.C. §
103(a) as being unpatentable over Prokupets, Asano, and Miyamoto. Ans.
10-11.
4. The Examiner rejected claims 18 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Prokupets, Asano, and Koenig. Ans. 11-12.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that: (a) Prokupets’ teaching of a security server is functionally similar
enough to combine with the IP router of Asano; or (b) assuming the
combination of (a), does Asano teach an isolation router “operable to isolate
a first network from data transmission traffic in a second network”?

ANALYSIS
Claims 1-7 and 20
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 1 which recites, in pertinent part, “an
isolating router coupling said first network to said second network and
operable to isolate said first network from data transmission traffic in said
second network.”
As is relevant here, the Examiner finds that Prokupets teaches all the
elements of claim 1 save the “isolating router” coupling a first network to a
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second network. Ans. 4. The Examiner acknowledges that Prokupets does
not explicitly teach a second network. Ans. 12-13. Based on the definition
from the Microsoft Press Computer Dictionary1, the communications
between various output devices and the security server 12 of Prokupets
constitute a second network. Ans. 12-13 (citing Prokupets, ¶¶ [0036],
[0037]).
The Examiner also acknowledges Prokupets does not teach arouter.
Ans. 4. For the isolating router interconnecting first and second networks,
the Examiner relies on Asano. Id. (citing Asano, col. 17, ll. 1-11).
However, the Examiner finds the security server of Prokupets is primarily
used to route and process messages between devices such as the “alarm
monitoring client systems” and the devices on the network. Ans. 14 (citing
Prokupets, ¶¶ [0034], [0036]). In terms of functionality and use, these two
devices, the security server and IP router of Asano, are similar. Id.
The Examiner finds the isolating router taught by Asano receives,
stores, and forwards data packets, as claimed. Ans. 4 (citing Asano, col. 16,
l. 58–col. 17, l. 11). The Examiner finds Asano’s router selectively enables
communication between different networks. Id. (citing Asano, col. 4, ll. 25-
33). The Examiner concludes it would be obvious from what is taught by
Prokupets to include an isolating router that processes packets as taught by
Asano in order to selectively enable communication between different
networks. Ans. 5.

1 A network is “a group of computers and associated devices that are
connected by communication facilities.” MICROSOFT PRESS COMPUTER
DICTIONARY, at 456 (2002).
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Appellants agree that Prokupets fails to teach an isolating router that
couples the first network to a second network, further agreeing the fire
system 22c is a network, i.e., the first network. App. Br. 9. Appellants
argue the Examiner is inconsistent on whether or not Prokupets teaches a
second network. App. Br. 8-9. Appellants’ disagreement with what they
consider the Examiner’s position is born out in their argument that Prokupets
discloses a security system 12 connected via an interface to a single network
20 to which the fire system 22 and information systems 18 are also
connected. App. Br. 7.
Concerning the isolating router feature, Appellants’ arguments are
based largely on the premise that Prokupets teaches only a single network.
Appellants acknowledge the security server 12 of Prokupets sends and
receives communications through its interface to the network 20. App. Br.
10 (citing Prokupets, ¶ [0021]). Though the security server has an interface
with the network, Appellants’ contention is that the security server is not a
router and, because Prokupets shows only a single network, the security
server 12 is not capable of coupling two different networks in the same
manner as a router, let alone in the same manner as the claimed isolating
router. App. Br. 11. Appellants also acknowledge the Prokupets security
server is required to process packets by storing event information,
determining actions in response to event information, and forwarding
information to other devices, etc. App. Br. 12 (citing Prokupets, ¶¶ [0011],
[0034], [0039]). Appellants conclude a person of ordinary skill in the art
would not be led to include the functionality of an isolating router in the
security server to route packets between networks because such functionality
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would limit the ability of the security server to perform its intended function.
Id.
Initially, as to claim 1, we point out that the Examiner does not rely on
Prokupets to show two networks. Asano, as Appellants admit, clearly does
show interconnecting two networks as well as a router. Asano, Fig. 2,
networks 10 and 20 and router 30. Absent any specific definition in the
Specification, the broadest reasonable interpretation of network must be
applied. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). The Examiner applied a broad definition to network, which
Appellants do not contest. While Prokupets does not “explicitly teach” a
second network, the teaching of connections to different devices is, broadly,
a network. This is shown in Prokupets. Such interconnections would, as the
Examiner found, lead the person of ordinary skill to look to other art which
does explicitly teach a second network, e.g., Asano. Ans. 13.
As with network, “router” is given its broadest reasonable
interpretation consistent with the specification. Appellants acknowledge the
Prokupets security server is required to process packets containing
information (App. Br. 12), which is what a router does.2 The fact that the
disclosure of Prokupets does not literally say the security server is a router
does not alter its function in acting as a router. In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990).
Based on the foregoing, we find the Examiner had a reasonable basis
for determining that it would have been obvious to a person of ordinary

2 A router is “an intermediary device on a communications network that
expedites message delivery.” MICROSOFT PRESS COMPUTER DICTIONARY at
575 (2002).
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skill in the art at the time of the invention to combine prior art elements from
Prokupets and Asano. Ans. 14-15. Specifically, isolating routers are known
per Asano. Asano, col. 17, ll. 1-11. Appellants do not argue this point. The
teachings of Prokupets regarding interconnecting devices, i.e., networks, and
message delivery through a security server would suggest consulting other
teachings regarding multiple networks and routers, including the restriction
addressing between networks as taught by Asano. Id. Appellants’
arguments to the contrary are not persuasive, including but not limited to the
argument asserting the security server is not a router. Reply Br. 4-5.
The rejection of claim 1 is sustained. Claims 2-7 and 20 depend on
claim 1 and are not separately argued apart from claim 1, so the findings and
conclusion of obviousness of the Examiner are sustained for the same
reasons already stated.

Claim 14, 15, and 17-19
Claim 14 is alleged to have additional limitations beyond claim 1,
specifically “a first and a second network in which first network includes a
plurality of only building system workstations.” App. Br. 14.
For purposes of showing the first and second network in the rejection,
the Examiner relies on Prokupets. For reasons stated above, this finding is
reasonable given the breadth of “network.”
The Examiner finds Prokupets teaches a first plurality of workstations
including only building system workstations, the second plurality of
workstations including only non-fire safety related building system
workstations and non-building system workstations. Ans. 5 (citing
Prokupets, Fig. 1, tag 12; ¶¶ [0021], [0024]). Again, giving the broadest
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reasonable interpretation to “workstations,”3 we agree with the Examiner’s
findings.
The rejection of claim 14 is sustained. Claims 15 and 17-19 are not
separately argued apart from claim 14, so the findings and conclusion of
obviousness of the Examiner are sustained for the same reasons already
stated.

Claim 16
Claim 16 depends on claim 14 and includes the limitation that “the
first plurality of workstations includes at least one fire safety system
workstation and at least one non-fire building system work station.”
Appellants urge it is patentable as a result. App. Br. 15. The Examiner cites
Prokupets to show workstations include at least one fire safety system
workstation and at least one non-fire building system work station. Ans. 6
(citing Prokupets, Fig. 1, tags 18a, 30, and 24; ¶ [0028]). The network 20 of
Prokupets interconnects various devices, i.e., workstations. Ans. 12. The
Examiner’s additional finding is reasonable and we are not persuaded by the
conclusory argument of Appellants to the contrary.

Claims 8-13
Claim 8 is an independent claim argued as patentable because it
includes “a first fire control Ethernet sub-network including a number of fire
control devices” and “a second building control Ethernet sub-network

3 A workstation is “a combination of input, output and computing hardware
that can be used for work by an individual.” MICROSOFT PRESS COMPUTER
DICTIONARY at 722 (2002).
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including a number of building control devices” connected by “an isolating
IP router” operable to isolate said first network from data transmission
traffic in said second network. App. Br. 16-17. Claims 9-13 depend on
claim 8 and are not separately argued. Though this distinction over claim 1
is set out, no argument is made as to why the Examiner’s findings and
rejection should be reversed. The Examiner’s prima facie showing of
obviousness has not been overcome. Ans. 7-8. Accordingly, the rejection of
claims 8-13 is sustained.

CONCLUSION
The Examiner did not err in rejecting claims 1-20 under 35 U.S.C. §
103(a).

ORDER
The Examiner’s decision rejecting claims 1-20 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)(1)(iv).

AFFIRMED

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