Ex Parte Sadana

Patent Trial and Appeal Board

Sep 30, 2016

11893744 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111893,744 08/17/2007
92720 7590
HONEYWELL/MUN CK
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
10/04/2016
FIRST NAMED INVENTOR
Rajat Sadana
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.
H0014797-0103 6079
EXAMINER
MORTELL, JOHN F
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
patentservices-us@honeywell.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJAT SADANA
Appeal2012-007750
Application No. 11/893,744
Technology Center 2600
Before STEVEN D. A. MCCARTHY, DENISE M. POTHIER, and
BRETT C. MARTIN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge, DENISE M.
POTHIER.
Opinion Concurring filed by Administrative Patent Judge, STEVEN D. A.
MCCARTHY.
DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellant has submitted a timely Request for
Rehearing dated March 30, 2015 (hereafter the "Request"), requesting rehearing of
the February 19, 2015 opinion (hereafter the "Opinion") affirming the Examiner's
rejections of claims 1, 2, 4, 5, 7-9, 11, 12, 14--16, 18, 19, and21-27. Op. 1.
Appeal2012-007750
Application 11/893,744
We have reconsidered our February 19, 2015 opinion in light of Appellant's
comments in the Request. We decline to change our prior decision that claims 1,
2, 4, 5, 7-9, 11, 12, 14--16, 18, 19, and 21-27 are rendered obvious over the cited
prior art.
We consider the Request to address any arguments in the Briefs Appellant
believes we have misapprehended or overlooked. See 37 C.F.R. § 41.52(a)(l)
(stating "[t]he request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board.")
Appellant first contends that we misconstrued the recitations "the processor
is further configured to perform a plurality of analysis functions to analyze the
plurality of vibration measurements" and "the processor is further configured to
receive a configuration message specifying one or more of the plurality of analysis
functions and, in response, to perform only the one or more specified analysis
functions" in claim 1. Request 2-3. Specifically, Appellant asserts we
misconstrued the plain meaning of the term "configured" in claim 1. Id.
Appellant argues the latter-quoted recitation has a temporal requirement, requiring
the processor to be programmed with analysis functions prior to receiving a
configuration message identifying one of the analysis functions. Id.
Our decision states "there is no temporal requirement in claim 1 that the
configuration message is received after the processor is programmed with multiple
uses." Op. 6 (italics added). We did not state that the processor in claim 1 is not
configured to receive a configuration message that specifies one or more already
existing analysis functions. That is, given the claim language "the processor is
further configured to receive a configuration message specifying one or more of
the plurality of analysis functions" (italics added) and the antecedent basis for "the
plurality of analysis functions" in this recitation (App. Br. 21, Claims App'x), we
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agree that the analysis functions already exist in order for the processor to be
further configured to receive a configuration message specifying one of the
analysis functions as recited.
We further agree with Appellant that the processor as claimed is
programmed with a plurality of analysis functions in order for the processor to be
configured to perform "the plurality of analysis functions" as recited. See
Request 3. As such, although the disclosure supports that the recited
"'configuration message specifying one or more of the plurality of analysis
functions" [] include[ s] a communication that contains routines or software to
perform an analysis function" as stated in the Opinion (Op. 5 (citing Spec. i-f 25)),
we clarify that, as claimed, the processor in independent claims 1, 8, and 15 is
programmed with the routines to perform the plurality of analysis functions,
including "the one or more of the plurality of analysis functions" specified in the
configuration message. Even so, we maintain that claim 1 as recited does not
require the processor to be programmed with multiple uses. Op. 6. We thus did not
overlook that the phrase concerning the configuration message is specifically tied
to the prior recitation of the analysis functions (Request 3) or misapprehend
Appellant's argument in this regard.
The recitations of "the processor is further configured to perform a plurality
of analysis functions to analyze the plurality of vibration measurements" and "the
processor is further configured to receive a configuration message specifying one
or more of the plurality of analysis functions" also do not require the performance
of an analysis function prior to receiving a configuration message. Rather, the
analysis function need only be specified in the configuration message prior to the
processor being configured to receive the recited configuration message and
respond accordingly.
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Moreover, Appellant in the Briefs did not contend that claim 1 has the
now-argued temporal component. See App. Br. 14--17; Reply Br. 4--9. Thus, any
argument concerning "configured to" limitation in claim 1 being in the past-tense
or requiring steps to be performed in a specific order (Request 2-3) was not
misapprehended or overlooked. Rather, Appellant's argument focused on Eryurek
failing to teach a monitoring device programmed for multiple uses and then altered
"on the fly" by configuration messages as well as there being no teaching or
suggestion to modify Eryurek's device to arrive at claim 1. App. Br. 14--17;
Request 4--5.
In contrast with Appellant's contentions (Request 4--5), we additionally
maintain the recited phrase, "configuration message," is not a message that
requires reprogramming while in use. See Op. 6. In fact, as noted in the Opinion
(Op. 5), the disclosure supports embodiments where the program code that
performs the specified analysis functions are already present. See Spec. i-f 25.
Furthermore, claim 1 does not recite "a 'new configuration message' containing
code ... that the processor (52) of Eryurek is not yet programmed to perform can
be provided to and stored in the memory (50)." Request 6 (italics added).
Also, we considered the reprogrammable "on the fly" argument (see Request
4--7) in the Opinion, noting
Op. 6.
Although claim 1 states the configuration message specifies one
or more of the plurality of analysis functions, there is no restriction in
the claim that the processor is programmed for multiple uses and then
"altered 'on the fly' by configuration messages." App. Br. 15.
Specifically, the limitation of "the processor is further configured to
receive a configuration message" in claim 1 does not require
programming alterations or instantaneous changes in its programming.
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Accordingly, we did not overlook Appellant's argument contending Eryurek
is not programmed "on the fly" or "dynamically reprogrammed." Request 4, 5.
Rather, we stated and maintain that such limitations are not found in claim 1.
Op. 6. Additionally, our decision uses the language of "the second diagnostic
level" (see Request 4), which is not recited in claim 1, to illustrate that one skilled
in the art would have recognized how Eryurek's processor teaches and suggests the
recited "processor is ... configured to receive a configuration message specifying
one or more of the plurality of analysis functions and, in response, to perform only
the one or more specified analysis functions" as recited. Op. 7.
For the above reasons, we are not persuaded that we misapprehended any
argument Appellant presented concerning Eryurek failing to teach a processor that
is dynamically reprogrammed while in use or "on the fly." Request 4--7.
Lastly, concerning the disputed limitation "the processor is further
configured to receive a configuration message specifying one or more of the
plurality of analysis functions and, in response, to perform only the one or more
specified analysis functions" (Request 4--7), we reiterate that claim 1 does not
recite a monitoring device that is reprogrammable or can be altered on the fly. 1
See App. Br. 21, Claims App'x. Additionally, we disagree with Appellant that
Eryurek does not teach or suggest the above-quoted limitation. Request 4--7. As
explained in the Opinion and above, the phrase, "configuration message" is not
1 Although not required by the claims, we noted in the Opinion that Eryurek states
that the monitoring device (e.g., 40) "has 'a generally applicable platform that can
be programmed differently depending on the use and level and types of diagnostics
desired' (Eryurek 7:20-23)" and will be programmed differently "depending on the
equipment being monitored." Op. 7; see also Op. 7-8 (discussing an example of
how Eryurek suggests the ability to perform specified analysis functions once
reprogrammed).
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defined in the disclosure and, as such, a "configuration message specifying one or
more of the plurality of analysis functions" as broadly recited includes a
communication that specifies the analysis function(s) to perform.
We therefore disagree that a processor receiving a message to perform a
stored function cannot be a configuration message specifying an analysis function
as recited. See Request 3. Additionally, as noted in the Opinion, the breadth of
claim 1 includes embodiments where the recited "one or more of the plurality of
analysis functions" include all analysis functions or diagnostic routines in memory.
Op. 8-9. From this perspective, one skilled in the art would have recognized that a
communication to execute such diagnostic routines, including one that initiates the
execution of such diagnostics routines, is a configuration message specifying the
recited "one or more of the plurality of analysis functions" as recited.
Also, although not explicitly stated in Eryurek, we indicated in the Opinion
Eryurek teaches or suggests to one skilled in art that the processor performs
different analysis functions (e.g., different diagnostic routines) depending on the
equipment monitored as well as the level/accuracy desired. Op. 6-7 (citing
Eryurek 4:54---65, 7:19-27, 8:54--56). That is, we stated Eryurek's routines
performed by the processor can differ depending on the equipment, the use, and
level/accuracy desired (Op. 7) and that Eryurek suggests such routines (e.g., 54)
that perform these functions can be stored in memory 50 (Op. 8).
For example, as explained, we stated that Eryurek suggests to one skilled in
the art that when a user desires to switch from a first desired diagnostic level to a
second diagnostic level, Eryurek's processor receives a configuration message
(e.g., a communication) specifying the desired analysis functions to perform (e.g.,
the analysis functions for the second, new level or accuracy). Op. 6-7 (stating
"[a]n ordinarily skilled artisan would have recognized that code of the desired
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software program that performs the desired diagnostics (e.g., analysis functions) in
Eryurek will not be executed by the processor until receiving a communication ...
[and g]iven these teachings and the knowledge of an ordinary artisan, we agree
with the Examiner that one skilled in the art would have recognized that Eryurek's
processor receives communications in order to perform the desired diagnostic
routine.") We additionally noted in the Opinion that "[a]cknowledging an ordinary
artisan's background and employing an ordinary artisan's creative steps," Eryurek
suggests that its processor can be perform differently "when the monitoring device
is switched from a first desired diagnostic level to a second, different diagnostic
level (e.g., receiving new communications that will achieve the second diagnostic,
such as the desired programming code)." Op. 7.
To these determinations, Appellant provides insufficient rebuttal. See
generally Request. Appellant argues that receiving measurements from the sensors
in Eryurek are not configuration messages. Request 3 (citing Eryurek 4:17-18,
42--48). Yet, as discussed above, our discussion of the recited configuration
message does not map the sensor data signals themselves to the configuration
message. Op. 6-7.
Rather, the Opinion states that one skilled in the art would have recognized
that the code to perform the desired, designated tasks taught and suggested by
Eryurek will not be executed and performed until the processor is so programmed
and a communication is received. Op. 6. That is, one skilled in the art would have
appreciated that such a communication to execute the desired diagnostic routines in
Eryurek would have specified what routines are to be performed in order to
achieve the desired result, such as the level or accuracy of diagnostic desired. See
Eryurek 4:54--59, 62---65, cited in Op. 7. Moreover, in the embodiment where the
"one or more of the plurality of analysis functions" includes all the "analysis
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functions" or routines, the "configuration message" that specifically executes such
routines also specifies the "one or more of the plurality of analysis functions" to
perform. See Op. 8-9. Eryurek also incorporates by reference various other
patents concerning implementing diagnostic routines to perform diagnostics and
further discusses sending requests for information, further suggesting to one skilled
in the art other messages that Eryurek's processor is configured to receive that
specify analysis functions to perform. See Eryurek 5:45---60.
As such, we did not overlook or misapprehend any of Appellant's arguments
raised in the Briefs.
We have considered the arguments raised by Owner in the Request, but the
arguments are not persuasive to find that the original decision was in error. Based
on the record before us now and in the original appeal, we are still of the view that
the Examiner did not err in rejecting the claims 1, 2, 4, 5, 7-9, 11, 12, 14--16, 18,
19, and 21-27.
We have granted the Request to the extent that we have reconsidered our
decision of February 19, 2015, but we deny the Request with respect to making
any changes therein.
REHEARING DENIED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJAT SADANA
Appeal2012-007750
Application No. 11/893,744
Technology Center 2600
McCARTHY, Administrative Patent Judge, concurring.
I agree with my colleagues that the Examiner correctly rejects claims 1, 5, 8,
12, 15, 19, 23 and 25-27 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Eryurek (US 6,839,660 B2, issued Jan. 4, 2005) and Robinson (US 7,424,403
B2, issued Sept. 9, 2008); and claims 2, 4, 7, 9, 11, 14, 16, 18, 21, 22 and 24 under
§103(a) as being unpatentable over Eryurek, Robinson and Carle (US 7,479,876
B2, issued Jan. 20, 2009). Both independent claim 1 and independent claim 8
recites systems. Each recited systems includes a processor,
wherein the processor is further configured to perform a plurality
of analysis functions to analyze [a] plurality of vibration measurements,
each analysis function configured to generate corresponding
information representing a characteristic of the vibration of [a] rotating
mechanism, the information having a smaller volume of data than the
plurality of vibration measurements; [and]
wherein the processor is further configured to receive a
configuration message specifying one or more of the plurality of
analysis functions and, in response, to perform only the one or more
specified analysis functions.
Appeal2012-007750
Application 11/893,744
Claim 15 recites a method including the steps of:
receiving, at a processor configured to perform a plurality of
analysis functions, a plurality of vibration measurements of a vibration
of a rotating mechanism;
receiving at the processor a configuration message specifying
one or more of the plurality of analysis functions[; and]
performing one or more specified analysis functions using the
vibration measurements, each specified analysis function generating
corresponding information representing a characteristic of the vibration
of the rotating mechanism, the information having a smaller volume of
data than the plurality of vibration measurements.
The Appellant correctly characterizes the teachings of Eryurek as follows:
Eryurek discloses a rotating equipment monitoring device ( 40). The
monitoring device (40) includes a diagnostic unit (44) connected to
numerous sensors ( 46) via communication lines ( 48). The Diagnostic
unit (44) includes a memory (50) and a processor (52). The processor
(52) executes diagnostic routines (54) stored in the memory (52) using
data collected by the sensors( 46) to detect actual or potential conditions
associated with the rotating equipment.
(App. Br. 14, citing Eryurek, col. 4, 11. 10-18 & col. 4, l. 42- col. 5, l. 35). The
Examiner finds that Eryurek describes a system including each of these limitations
except "the information having a smaller volume of data than the plurality of
vibration measurements." The Examiner finds that Robinson teaches this and
concludes that it would have been obvious to modify Eryurek' s system, to the
extent necessary, to satisfy this limitation. (See Final Off. Act. 4, 5, 7 & 9).
Concerning the recitations of "wherein the processor is further configured to
perform a plurality of analysis functions" and "wherein the processor is further
configured to receive a configuration message specifying one or more of the
plurality of analysis functions," I additionally observe that the subject and verb in
the sentence completed by claim 1 is: "I claim:" The verb in each of the two
"wherein" clauses is a form of "be," namely, "is." The words "further configured"
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act as a participle modifying the noun "processor" and an adverb modifying the
participle. Appellant's argument (see Request 2) notwithstanding, "configured"
does not function as a past tense verb injecting a temporal limitation into the claim.
The first two "wherein" clauses of claim 1 (and claim 8) are functional
limitations in an apparatus claim and not method steps. As such, the two clauses
do not define an order in which separate configurations are to be performed on the
processor. So long as the processor is both "configured to perform a plurality of
analysis function to analyze the plurality of vibration measurements" and
"configured to receive a configuration message specifying one or more of the
plurality of analysis functions," the claim is satisfied, regardless if or when a
configuration message might be received. Appellant's Specification itself teaches
that the processor need not be "configured to perform [the] plurality of analysis
functions" at the time a configuration message is received: "The program code to
perform the specified analysis functions may already be present in the wireless
device 104 or may be provided as part of the configuration message received from
the process controller 116." (Spec., para. 25).
Claim 15 recites a method. Nevertheless, 11 although a method claim
necessarily recites the steps of the method in a particular order, as a general rule
the claim is not limited to performance of the steps in the order recited, unless the
claim explicitly or implicitly requires a specific order. 11 Baldwin Graphic Systems,
Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir 2008). The last sentence of
paragraph 25 of the Specification implies that, although the recited "analysis
functions" must be extant or ascertainable, they need not be in storage in a memory
associated with the processor when the processor receives a configuration message.
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