FISHER-ROSEMOUNT SYSTEMS, INC.Download PDFPatent Trials and Appeals BoardOct 25, 20212020003049 (P.T.A.B. Oct. 25, 2021) Copy Citation 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. 14/719,946 05/22/2015 Vinaya S. Rayapeta 06005/593126 1977 45372 7590 10/25/2021 Marshall, Gerstein & Borun LLP (Emerson) 233 South Wacker Drive 6300 Willis Tower Chicago, IL 60606 EXAMINER REZA, MOHAMMAD W ART UNIT PAPER NUMBER 2436 NOTIFICATION DATE DELIVERY MODE 10/25/2021 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VINAYA S. RAYAPETA, JACOB B. PESCHANSKY, and WILLIAM E. BENNETT ____________ Appeal 2020-003049 Application 14/719,946 Technology Center 2400 ____________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–44. See Appeal Br., Claims App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We Reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Fisher- Rosemount Systems, Inc. Appeal Br. 3. Appeal 2020-003049 Application 14/719,946 2 The present invention relates generally to detecting intrusions into control and maintenance communications networks used in industrial control systems. See Spec. ¶ 1. Claim 14, reproduced below with disputed limitations emphasized, is representative: 14. A method of securing message traffic in a communications network of a process control system, comprising: receiving a series of messages at a device connected to the communications network, the series of messages being generated by one or more other devices of the process control system, wherein at least one device of the one or more other devices controls operation of a field device within the process control system; analyzing, via a processor at the device, each of the series of messages to determine one or more message characteristics of each of the messages; and filtering each of the messages, via the processor at the device, based on a set of logic rules stored at the device, the filtering including passing messages with one or more first sets of message characteristics, halting messages with one or more second sets of message characteristics, and counting messages with one or more third sets of message characteristics, and further including halting the messages with the one or more third sets of message characteristics based on counts associated with the one or more third sets of message characteristics exceeding predetermined thresholds. Appeal 2020-003049 Application 14/719,946 3 REFERENCES The references relied upon by the Examiner are: Name Reference Date Lund US 2007/0282952 A1 Dec. 6, 2007 Mikan US 2008//0155693 A1 June 26, 2008 Glasser US 8,224,902 B1 July 17, 2012 REJECTIONS Claims 1–44 are rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Mikan, Lund, and Glasser. Final Act. 5–13. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Issue: Did the Examiner err in not addressing whether Mikan is non- analogous art? Appellant highlights that the claimed invention “is directed to a method of securing message traffic in a communication network of a process control system.” Appeal Br. 12, citing claim 14. Appellant points out that “Mikan does not relate to process control systems nor does Mikan disclose or suggest that [its] techniques are applicable to process control systems. Instead, Mikan relates to ‘methods and systems of filtering spam messages for cellular network subscribers.’” Appeal Br. 12. Thus, Appellant contends that “the filtering techniques taught by Mikan relate to a field of art that is non-analogous and/or not readily adapted to process control systems.” Id. at 14. Appeal 2020-003049 Application 14/719,946 4 In response to Appellant’s aforementioned “non-analogous art” arguments regarding Mikan, the Examiner directs our attention to Lund and discusses how Lund, not Mikan, teaches a process control system. See Ans. 3–8. The Examiner also briefly mentions that the Glasser reference “discusses . . . how the traffic separator/router control the operation of . . . [a] field device.” Id. at 8. However, in reviewing the record, we note that the Examiner’s Answer offers no rebuttal to Appellant’s specific arguments regarding Mikan being non-analogous art. See generally Ans. Significantly, the Examiner’s Answer contains no rebuttal at all regarding Mikan’s teachings, particularly the aforementioned non-analogous art arguments. As a result, the Examiner fails to explain why Appellant’s arguments regarding Mikan are incorrect, and instead simply ignores these arguments. Therefore, we find that the Examiner has not fully developed the record to show whether Mikan is analogous art, mainly because we do not have the benefit of the Examiner’s evaluation of Appellant’s arguments in the responsive Answer. So, even if Lund and Glasser arguably teach what the Examiner proffers, such teachings do not cure the deficiency of ignoring whether Mikan is analogous art or not. We highlight that there are two separate tests for determining whether a prior art reference is analogous as follows: (1) whether the art is from the same field of endeavor, regardless of the problem addressed; and (2) if the reference is not within the inventors’ endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventors are involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appeal 2020-003049 Application 14/719,946 5 Here, the Examiner does not state a determination of Appellant’s field of endeavor, nor does the Examiner cite any evidence in the Specification supporting a conclusion that Appellant’s field of endeavor is the same as Mikan’s. See id. at 1326 (“[T]he PTO must show adequate support for its findings on the scope of the field of endeavor in the application’s written description and claims, including the structure and function of the invention.”). Likewise, the Examiner does not identify the problem with which Appellant is involved, or explain how Mikan is pertinent to that problem. Because the Examiner has not met the burden of establishing that Mikan constitutes analogous art, we are constrained on this record to reverse the Examiner’s § 103 Rejection of claims 1–44. Further, because we agree with at least one of the arguments advanced by Appellant, we do not reach the merits of Appellant’s other arguments. Accordingly, we will not sustain the Examiner’s obviousness rejection of claims 1–44. CONCLUSION The Examiner’s rejection of claims 1–44 as being unpatentable under 35 U.S.C. § 103 over Mikan, Lund, and Glasser is reversed. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–44 103 Mikan, Lund, Glasser 1–44 REVERSED Copy with citationCopy as parenthetical citation