GROSCH, Thomas et al.

Patent Trials and Appeals Board

Dec 11, 2019

14505179 - (D) (P.T.A.B. Dec. 11, 2019)

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.
14/505,179 10/02/2014 Thomas GROSCH 5029-1294\354342 1016
27799 7590 12/11/2019
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
RUTTEN, JAMES D
ART UNIT PAPER NUMBER
2121
NOTIFICATION DATE DELIVERY MODE
12/11/2019 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):
patentdocket@cozen.com
patentsecretary@cozen.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS GROSCH, JÜRGEN LAFORSCH, and ALBERT
RENSCHLER
Appeal 2019-001124
Application 14/505,179
Technology Center 2100
Before JEAN R. HOMERE, ADAM J. PYONIN, and SCOTT RAEVSKY,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Siemens
AG. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
The claimed subject matter is directed to “provid[ing] an automation
system and a method which makes it possible to provide diagnostic and/or
test data for diagnostic and/or test measures during a control mode.” Spec. ¶
11. Claims 1–7 are pending; claims 1, 4, and 7 are independent. Appeal Br.
10–13. Claim 1 is reproduced below for reference (emphases added):
1. A method for operating an automation system provided
with a first subsystem and a second subsystem which each
process a control program cyclically and synchronously to
control a technical process, one of said first and second
subsystems operating as a master and another of said first and
second subsystems operating as a slave, the method comprising:
providing a slave control program with at least one of (i)
at least one diagnostic instruction and (ii) at least one test
instruction;
utilizing the master to asynchronously transmit releases to
the slave via one of (i) a field bus and (ii) a synchronous
connection, the releases indicating to the slave which processing
sections of the slave control program can be processed by the
slave, these processing sections corresponding to the processing
sections of the master control program which have already been
processed;
utilizing the slave to process in an asynchronous manner
processing sections of the slave control program, which have
been released based on the releases, with temporal trailing;
utilizing the slave to transmit diagnostic data to an
engineering system if one of (i) the at least one diagnostic
instruction and (ii) the at least one test instruction is processed in
the slave control program; and
processing the processing sections of the slave control
program more quickly relative to the processing of the
processing sections of the master control program to reduce the
temporal trailing of the processing to a predefined value.
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References and Rejections
The Examiner relies on the following prior art:
Name Reference Date
Cook
Costin
Huang
US 2002/0095221 A1
US 2009/0024775 A1
US 2012/0096458 A1
July 18, 2002
Jan. 22, 2009
Apr. 19, 2012

Claims 1, 2, 4, 5, and 7 stand rejected under 35 U.S.C. § 103 as being
obvious in view of Cook and Huang. Final Act. 6.
Claims 3 and 6 stand rejected under 35 U.S.C. § 103 as being obvious
in view of Cook, Huang, and Costin. Final Act. 11.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant does
not separately argue the claims. See Appeal Br. 5, 9. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant contends the Examiner’s rejection is in error:
Appellants’ instant invention implements three processing
techniques, i.e., (i) processing of a control program cyclically
and synchronously, (ii) asynchronous transmission by the master
of releases to the slave, and (iii) asynchronous processing by the
slave of processing sections of a slave control program that have
been released based on the releases. Thus, [t]he “utilizing” steps
of independent claim 1 recite, “utilizing the master to
asynchronously transmit releases to the slave via one of (i) a field
bus and (ii) a synchronous connection ...” and “utilizing the slave
to process in an asynchronous manner processing sections of the
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slave control program”. The combination of Cook and Huang
fails to teach or suggest Appellants’ claimed requirement.
Reply Br. 2; see also Appeal Br. 6, 7.
We disagree with Appellant that the Examiner erred and adopt as our
own the findings and reasons set forth by the Examiner, to the extent
consistent with our analysis below. We add the following primarily for
emphasis. We discuss each of the disputed claim techniques, below.
Technique [i]
Regarding claimed technique [i] (including the claim term “processing
. . . cyclically and synchronously”), Appellant’s substantive arguments
consist of repeating the claim language and asserting Cook does not teach
the recitations. See, e.g., Appeal Br. 6, 8 (“That is, the technical process is
controlled cyclically and synchronously during processing of a control
program by first and second subsystems.”). Such a response to the
Examiner’s findings is insufficient to persuade us of Examiner error. See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Moreover, technique [i] is part of the claim preamble, and the “cyclically
and synchronously[2]” language is not referenced in the body of the claim.
We find technique [i] to not be limiting, and does not differentiate over the
prior art. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002) (internal quotation marks and citation omitted) (A

2 We note that, although the preamble of claim 1 recites synchronous
processing, the body of the claim only recites processing that is
asynchronous. See claim 1 technique [iii].
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preamble is not limiting “where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention.”). Accordingly, we do not find the
Examiner’s rejection to be in error. See Final Act. 6.
Techniques [ii] and [iii]
Regarding the utilizing steps of techniques [ii] and [iii], Appellant
contends the “operating states” of Cook’s modules do not teach
“[s]ynchronous and asynchronous communication.” Appeal Br. 5–6; see
also Appeal Br. 6. Appellant argues that Cook’s secondary controller
“compute[s] a correction factor after being awoken from a sleep state,”
whereas “Appellants’ instant invention has no requirement to perform a time
correction in the manner described in Cook, because all releases are
provided from the master to the slave in an asynchronous manner.” Appeal
Br. 6.
We are not persuaded the Examiner errs. Consistent with Appellant’s
Specification, Cook teaches a primary controller transmitting to a secondary
controller “via one of (i) a field bus and (ii) a synchronous connection”3 as
claimed, because Cook discloses a “redundant control system [that] . . .

3 We note the claim, as drafted, may be construed to require the transmission
by both a field bus and a synchronous connection. See SuperGuide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 886 (Fed. Cir. 2004) (“[T]he
patentee used the term “and” to separate the categories of criteria, which
connotes a conjunctive list,” such that “the phrase ‘at least one of’ modifies
each member of the list, i.e., each category in the list” and “require[es] that
the user select at least one value for each category.”). Even pursuant to such
construction, we are not persuaded the Examiner errs in finding the
limitation taught or suggested by the cited references. See, e.g., Cook Fig. 9;
¶ 62.
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includes a primary control chassis [] and a similar secondary control
chassis,” where the primary control chassis “is operatively connected with a
corresponding secondary system redundancy module [] in the secondary
control chassis.” Cook ¶ 62; Final Act. 6, 7; cf. Spec. ¶ 26 (“A
synchronization connection [] is provided in order to synchronize the
subsystems, where the redundancy and monitoring functions are
implemented via this synchronization connection.”).
We are also not persuaded that Cook’s correction factor is evidence of
Examiner error. Cook uses a timing correction factor so that the secondary
controller can schedule a runtime for an assigned task after the task is
performed by the primary controller. Cook ¶¶ 11, 12. The secondary
controller will “receive synchronization information to determine when the
task has completed on the primary.” Cook ¶ 13 (emphasis added). Thus, we
agree with the Examiner that Cook teaches or suggests the primary
controller will “asynchronously transmit”4 releases to the secondary
controller, within the meaning of the claim, because the communication is
transmitted at a different time than the task completion. Final Act. 7; see
also Ans. 4, 5; Cook Fig. 3; ¶¶ 11, 13.
Additionally, we agree with the Examiner that Cook’s operating states
teach or suggest the disputed limitations. See Final Act. 7, 8. Cook teaches
the secondary controller has “intermediate transition states” used to catch up
to the primary controller in the event of switchover. Final Act. 7; Cook ¶ 38

4 We note the Specification does not appear to include the term
“asynchronously transmit.” The portions of the Specification cited by
Appellant to support the term refer to a subsystem transmitting releases for
programs that have already been processed by the subsystem. See Appeal
Br. 2; Spec. ¶¶ 30, 40.
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(“[T]he secondary controller may assume one of several states, reflecting the
current capability to assume control of the process in the event of a
switchover,” and a “possible state may be referred to as ‘synchronizing’,
‘synchronization’, ‘qualifying’, or ‘qualification’, which indicates a
transition between disqualified and qualified status.”). Cook’s intermediate
states teach or suggest the “asynchronous” claim limitations, because a
secondary controller in this state cannot perform the task at the same time as
the primary controller. See Final Act. 7, 8; Advisory Act. 2; Cook Fig. 3
(steps 114–118), ¶¶ 38, 45; see also Cook ¶ 51 (“[T]he completion of
qualification may comprise verifying that the secondary controller has an
updated version of data, connections, and program state, and is capable of
assuming control of the associated process upon a switchover event”)
(emphasis added).
Accordingly, we are not persuaded the Examiner errs in finding the
disputed limitations of claim 1 to be obvious in view of the cited references.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 2, 4, 5, 7 103 Cook, Huang 1, 2, 4, 5, 7
3, 6 103 Cook, Huang, Costin 3, 6
Overall
Outcome
1–7

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED