Ex Parte Schlüter et al

Patent Trial and Appeal Board

Feb 8, 2017

13130227 (P.T.A.B. Feb. 8, 2017)

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.
13/130,227 06/27/2011 Jochen Schltiter HM-921 5696
7590
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
EXAMINER
MASINICK, MICHAEL D
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOCHEN SCHLUTER, MARKUS REIFFERSCHEID,
and INA HULLEN
Appeal 2016-005518
Application 13/130,227
Technology Center 2100
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 11—14 and 16—22, which constitute all the claims
pending in this application. Claims 1—10 and 15 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our decision as a new ground of rejection
under 37 C.F.R § 41.50(b).
1 The real party in interest identified by Appellants is SMS Siemag
Aktiengesellschaft. App. Br. 2.
Appeal 2016-005518
Application 13/130,227
STATEMENT OF THE CASE
Introduction
Appellants’ described and claimed invention relates generally to “a
device for actively monitoring specific data concerning plants or their
components in a metallurgical plant.” Abstract.2
Claim 11 is representative and reads as follows (with the disputed
limitation emphasized)'.
11. An active data monitoring device of plants or components
in a metallurgical plant, comprising:
at least one central data storage;
at least a central process control unit; and
at least one recordable and readable storage medium for
specific component data concerning the plants or their
components fixedly connected to each component,
wherein the specific component data are changeable
periodically and/or input dependently,
wherein the central data storage and the process control
unit are connected to control units of material supply and/or
replacement part procurement and/or production planning and/or
maintenance economics,
wherein the specific component data describe properties
of the respective component or of the contents thereof
wherein the properties include physical properties and at
least one of the properties selected from the group consisting of:
mechanical properties and chemical properties.
App. Br. 13 (Claims App’x.).
2 Our Decision refers to the Final Office Action mailed Mar. 2, 2015 (“Final
Act.”), Appellants’ Appeal Brief filed Oct. 30, 2015 (“App. Br.”) and Reply
Brief filed Apr. 25, 2016 (“Reply Br.”), the Examiner’s Answer mailed Feb.
24, 2016 (“Ans.”), and the original Specification filed May 19, 2011
(“Spec.”).
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Application 13/130,227
Rejections on Appeal
Claims 11—14, 16—17, and 20—22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Macurek et al.
(US 7,339,476 B2; issued Mar. 4, 2008) (“Macurek”), in view of Moore et
al. (US 2009/0289776 Al; published Nov. 26, 2009) (“Moore”).
Claims 18—19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Macurek, in view of Moore, and further in view of
Tethrake et al. (US 7,213,767 B2; issued May 8, 2007).
ANALYSIS
Appellants argue Macurek and Moore do not teach or suggest storing
data of the components of a manufacturing plant, but instead teach storing
data of the products manufactured by the plant. See App. Br. 8—10.
Appellants further argue Moore’s radio-frequency identification (“RFID”)
tags do not store properties of any component. See App. Br. 10. Instead, as
argued by Appellants, Moore’s RFID tags only store location data and data
of the environment surrounding the component or product being made. See
id. Appellants also argue a person of ordinary skill in the art would
understand, based on the description in Appellants’ specification, that the
claimed “contents thereof’ refer to the contents (i.e., the physical makeup of
the structure/parts) of the component itself and not to whatever product the
component holds during operation of the metallurgical plant. See Reply
Br. 2-3.
Although we do not agree with the Examiner’s analysis of the claim
language and the cited references, we ultimately do not find Appellants
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Application 13/130,227
argument persuasive. More specifically, we agree with Appellants that the
Examiner erred in interpreting “the specific component data describing]
properties of the respective component or of the contents thereof’ as reading
on Macurek’s product data, as we conclude the interpretation of “contents
thereof’ as including products made or held by a plant is unreasonable in
light of the plain language of the claim. Therefore, we, do not agree with the
Examiner’s finding that Macurek’s product data teaches the claimed
“specific component data.”
However, we find Appellants’ specification contains an admission
that the claimed “specific component data concerning the plants or their
components . . . wherein the specific component data describe properties of
the respective component or of the contents thereof, wherein the properties
include physical properties and at least one of the properties selected from
the group consisting of: mechanical properties and chemical properties,” was
already known in the art at the time of the claimed invention. See Spec. p. 2,
11. 6—15, in the “State of the art” section (“[I]t is required that all components
of each subgroup or structural group or of a total system, with all its specific
data Tof] their physical, mechanical and chemical properties ... are regularly
and permanently monitored. . . . [T]here has been the wish for a long time
already to be able to carry out an extensive automation of the above-
described functions.”)(emphasis added). We further find it would have been
obvious for a person of ordinary skill in the art to modify a system as taught
by the combination of Macurek and Moore to replace the product data taught
by Macurek with the claimed “specific component data,” as such a
modification would not yield any unpredictable results. “[W]hen a patent
claims a structure already known in the prior art that is altered by the mere
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Application 13/130,227
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007), citing United States v. Adams, 383 U.S. 39, 50—51
(1966). As Appellants’ argument for patentability does not address the
admission contained in Appellants’ specification, we do not find the
argument persuasive. Thus, we conclude that the claims are obvious in light
of the references cited by the Examiner and the admission contained in
Appellants’ specification.
Accordingly, we sustain the rejection of claims 11,21, and 22 under
35 U.S.C. § 103(a), as well as dependent claims 12—14 and 16—20, not
argued separately. Given that our analysis above differs from the
Examiner’s analysis as to claims 11—14 and 16—22, we designate this a new
ground of rejection.
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
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Application 13/130,227
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
DECISION
We affirm the Examiner’s rejection of claims 11—14 and 16—22 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)(l)(iv).
AFFIRMED
37 C.F.R, $ 41.50(b)
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