Ex Parte Wylie et al

Board of Patent Appeals and Interferences

Nov 3, 2006

10162342 (B.P.A.I. Nov. 3, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DOUGLAS R. WYLIE, JOHN JOSEPH BAIER,
and DAVID MICHAEL CALLAGHAN
__________

Appeal No. 2006-2518
Application No. 10/162,342
___________

HEARD: October 19, 2006
___________

Before KRASS, MACDONALD, and HOMERE, Administrative Patent
Judges.

KRASS, Administrative Patent Judge.

Decision on Appeal

This is a decision on appeal from the final rejection of
claims 1-40.

Appeal No. 2006-2518
Application No. 10/162,342

2

The invention relates to industrial control systems, best
illustrated by reference to representative independent claim 1,
reproduced as follows:
1. An industrial control system, comprising:
an industrial controller that communicates with a network;
an event component associated with the industrial controller
to detect at least one maintenance event;

at least one schema to interface with the industrial
controller in accordance with the maintenance event; and

an action component that maps the maintenance event to an
action to facilitate remote maintenance of the industrial control
system over the network, the action provides temporal data that
describes a sequence of occurrences leading up to the maintenance
event.

The examiner relies on the following references:

Hoth et al. (Hoth) 5,710,723 Jan. 20, 1998

Crater et al. (Crater) 5,805,442 Sep. 08, 1998

Lim et al. (Lim 6,370,582 Apr. 09, 2002

Ogushi et al. (Ogushi) 6,385,497 May 07, 2002

Claims 1-40 stand rejected under 35 U.S.C. § 103 As
evidence of obviousness, the examiner offers Ogushi and Crater
with regard to claims 1-11, 16, 19, 20, 22, 23, 39, and 40,1

adding Lim with regard to claims 24-38. With regard to claims
12-15, 17, and 18, the examiner offers Ogushi, Crater and Hoth,

1 The examiner’s statement of rejection, at page 3 of the answer, omits claims
5 and 20, but it is clear from pages 6 and 7 of the answer that the examiner
Appeal No. 2006-2518
Application No. 10/162,342

3
while the examiner offers only Ogushi and Crater with regard to
claim 21.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION

In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v, John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966). The examiner must articulate reasons for the examiner’s
decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1434
(Fed. Cir. 2002). In particular, the examiner must show that
there is a teaching, motivation, or suggestion of a motivation to
combine references relied on as evidence of obviousness. Id. at
1343, 61 USPQ2d at 1433-34. The examiner cannot simply reach
conclusions based on the examiner’s own understanding or
experience – or on his or her assessment of what would be basic

intended to include these claims in the statement of the rejection.
Appeal No. 2006-2518
Application No. 10/162,342

4
knowledge or common sense. Rather, the examiner must point to
some concrete evidence in the record in support of these
findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697
(Fed. Cir. 2001). Thus the examiner must not only assure that
the requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed
to support the examiner’s conclusion. However, a suggestion,
teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art,
as the teaching, motivation, or suggestion may be implicit from
the prior art as a whole, rather than expressly stated in the
references. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the
art, and the nature of the problem to be solved as a whole would
have suggested to those of ordinary skill in the art. In re
Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17
(Fed. Cir. 2000). See also In re Thrift, 298 F.3d 1357, 1363, 63
USPQ2d 2002, 2008 (Fed. Cir. 2002). These showings by the
examiner are an essential part of complying with the burden of
Appeal No. 2006-2518
Application No. 10/162,342

5
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1040, 228 USPQ
685, 687 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 146-147 (CCPA 1976). Only those
arguments actually made by appellant have been considered in this
decision. Arguments which appellant could have made but chose
not to make in the brief have not been considered and are deemed
to be waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
Taking independent claim 1 as exemplary of independent
claims 1, 39, and 40, the examiner indicates (answer-page 3) that
Ogushi teaches the claimed subject matter but for an action
providing temporal data that describes a sequence of occurrences
leading to the maintenance event. The examiner relies on Crater
for a teaching of a controller capable of gathering sequences of
control function data in which control decisions are made or
Appeal No. 2006-2518
Application No. 10/162,342

6
shifting in states occurs (column 2, lines 57-61) and the display
of a variety of formats (temporal data) (column 4, lines 60-67).
The examiner concludes that it would have been obvious to
incorporate displaying of control function data, as in Crater,
with the system of Ogushi “because it would provide for the
purpose of monitoring the efficiency or overall behavior of the
equipment and/or performing diagnostic checks leading to certain
maintenance operations” (answer-pages 3-4).
Appellants argue that the instant claimed subject matter
relates to an event-driven system for facilitating remote
maintenance in an industrial control environment. Specifically,
appellants point to providing temporal data that describes a
sequence of occurrences leading up to a maintenance event, schema
that describes a sequence of occurrences that caused the
maintenance event, and schema that describes a sequence of
occurrences prior to the maintenance event. It is appellants’
position that neither Ogushi nor Crater describes these features.
Appellants concede that Ogushi teaches a system that
notifies a product vendor when a problem occurs and provides the
vendor with status information, and agree with the examiner that
Ogushi fails to provide temporal data that describes a sequence
of occurrences leading up to the maintenance event.
Appeal No. 2006-2518
Application No. 10/162,342

7
But, argue appellants, Crater does not provide for the
deficiency of Ogushi because Crater does not teach an action that
provides temporal data that describes a sequence of occurrences
leading up to the maintenance event. In fact, contend
appellants, Crater relates to facilitating communication between
multiple programmable controllers for operating industrial
processes, and that the reference allows for a remote controller
to collect primarily sensor data after a control function occurs
for analysis (column 2, line 58, through column 3, line 26).
Appellants also assert that Crater displays images of temperature
and pressure sensor changes to the controller, but does not
additionally provide information to the controller regarding the
occurrences that caused such a change in the temperature and
pressure.
At pages 5-6 of the principal brief, appellants state that
this deficiency of Crater “fails to provide the controller with a
comprehensive data set of the surrounding circumstances of an
adverse event-a deficiency that the claimed invention strives to
mitigate by providing temporal data to a remote controller that
describes a sequence of occurrences leading up to a maintenance
event.”

Appellants also take issue with the examiner’s position that
the skilled artisan would have known that the sensor information
Appeal No. 2006-2518
Application No. 10/162,342

8
provided by Crater entails describing a sequence of occurrences
leading up to an event. In particular, appellants assert that
the sensor data described in Crater provides information to the
controller about the end result of a possible series of
unfavorable events in the form of a graphical representation of a
thermometer or pressure gauge that show the resulting changes to
the temperature or pressure (column 7, lines 35-42). “Since
these graphical representations portray consequences of a series
of occurrences, but not the actual occurrences themselves, the
claimed feature of providing temporal data describing a sequence
of occurrences leading up to a maintenance event would not be
apparent to one of ordinary skill in the art” (principal brief-
page 6).
We agree with appellants for the reasons supra given by
appellants. That is, the examiner has not convincingly pointed
to anything in Crater that indicates temporal data that describes
a sequence of occurrences leading up to a maintenance event.
Crater does allow an operator at a remote terminal to collect and
analyze relevant data upon which control decisions are made from
a current chemical synthesis process, but we agree with
appellants that while the operator can generally analyze control
data from these processes in Crater, the operator is not allowed
to analyze the specific failure/event that caused the resultant
process outputs from the synthesis and previous processes. That
Appeal No. 2006-2518
Application No. 10/162,342

9
is, an operator monitoring the industrial controller in Crater is
not fully informed of what specifically caused an output reading,
while the instant claimed invention mitigates this deficiency by
providing an operator with a sequence of occurrences leading up
to a maintenance event in the form of temporal data, as defined
at page 4, line 8a, of the instant specification.
Thus, we will not sustain the rejection of claims 1-11, 16,
19, 20, 22, 23, 39, and 40 under 35 U.S.C. § 103.
Turning to the rejection of independent claim 28, the
examiner contends that Ogushi teaches the claimed subject matter
but for the schema describing a series of incidents immediately
prior to the maintenance events, and that the schema is in an XML
format. The examiner indicates column 2, lines 57-61, column 4,
lines 60-67, and column 3, lines 36-40, of Crater for the
limitations mentioned supra. In addition, the examiner turns to
Lim, at column 5, lines 4-9, for a teaching of remote computers
Appeal No. 2006-2518
Application No. 10/162,342

10
including languages which permit cross-platform operation over
the internet, including XML, for the purpose of operating at
least one remote controlling and monitoring computer linked to
the cross-platform network computers.
The examiner concludes that it would have been obvious to
incorporate displaying of control function data, as in Crater,
with the system of Ogushi because it would provide for the
purpose of monitoring the efficiency or overall behavior of the
equipment and/or performing diagnostic checks leading to certain
maintenance operations. Further, the examiner concludes that it
would have been obvious to incorporate the communication of Lim
with the system of Ogushi “because it would provide for the
purpose of operating at least one remote controlling and
monitoring computer which linked to the cross-platform network
computers” (answer-page 10).
We will also not sustain the rejection of independent claim
28, and of claims 24-27 and 29-38, under 35 U.S.C. § 103 because
these claims contain the same limitations regarding data that
describes a sequence of occurrences leading up to the maintenance
event, as supra, and Lim does not provide for the deficiencies of
Ogushi and Crater noted supra.

Similarly, since Hoth also does not provide for these
deficiencies, we also will not sustain the rejection of claims
Appeal No. 2006-2518
Application No. 10/162,342

11
12-15, 17, and 18 under 35 U.S.C. § 103.
We also will not sustain the rejection of claim 21 under 35
U.S.C. § 103 over Ogushi and Crater for the reasons supra.

Appeal No. 2006-2518
Application No. 10/162,342

12
Accordingly, the examiner’s decision rejecting claims 1-40
under 35 U.S.C. § 103 is reversed.

REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ALLEN R. MACDONALD )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEAN R. HOMERE )
Administrative Patent Judge )

ERK/ce
Appeal No. 2006-2518
Application No. 10/162,342

13
ROCKWELL AUTOMATION, INC./(AT)
ATTENTION: SUSAN M. DONAHUE
1201 SOUTH SECOND STREET
MILWAUKEE, WI 53204