SICK AG

Patent Trials and Appeals Board

May 12, 2021

2020006747 (P.T.A.B. May. 12, 2021)

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.
15/726,738 10/06/2017 Bernhard FÜGER 35429U 1986
20529 7590 05/12/2021
NATH, GOLDBERG & MEYER
Joshua Goldberg
112 South West Street
Alexandria, VA 22314
EXAMINER
SKRZYCKI, JONATHAN MICHAEL
ART UNIT PAPER NUMBER
2116
NOTIFICATION DATE DELIVERY MODE
05/12/2021 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):
USPTO@nathlaw.com
tharkins@nathlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BERHARD FÜGER, FABIAN SCHMIDT, and
CHRISTIAN RAPP

____________________

Appeal 2020-006747
Application 15/726,738
Technology Center 2100
____________________

Before, JOHNNY A. KUMAR, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 and 3–13.2 An Oral Hearing was held on May 4,
2021. We will add a transcript to the record in due course. 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. According to Appellant, SICK AG is the real party in
interest. Appeal Br. 3.
2 Claims 2, 14–17 are canceled. Appeal Br. 5.
Appeal 2020-006747
Application 15/726,738

2
Appellant’s Invention
Appellant’s invention relates to a method for the utilization of data
from a plurality of machines. See Spec. ¶ 1.3 The operating data from a
plurality of machines are detected by a plurality of sensors, wherein the
operating data have different first data formats, with the respective first data
format depending on the respective sensor. See id.

Illustrative Claim
Claim 1, reproduced below, are representative of the subject matter on
appeal.

1. A method for the utilization of data from a plurality of
machines, the method comprising the steps of:
detecting operating data from a plurality of
machines by means of a corresponding plurality of
sensors, wherein the operating data have different
first data formats, with each said first data format
depending on a respective one of the sensors, the
operating data being stored in computer readable
memory;
converting the operating data by at least one
abstraction module into abstraction data, wherein
the abstraction data have a uniform second data
format and are stored in a central memory device;
carrying out an analysis of the abstraction
data, wherein the analysis is based on operating
data from at least two of the machines;

[L1] assessing an operating state of a non-
monitored machine based on the analysis of the
abstraction data, wherein the non-monitored

3 We refer to Appellant’s Published Specification, Application No.
2018/0101144 A1 published on April 12, 2018.
Appeal 2020-006747
Application 15/726,738

3
machine is operationally associated with
the plurality of machines, the non-monitored
machine being unmonitored by the plurality of
sensors and the abstraction data being solely
derived from the operating data detected from the
plurality of machines;
outputting the analysis of the abstraction
data and the assessment of the operating state of
the non-monitored machine; and

controlling at least one of the plurality of
machines based on the analysis of the abstraction
data.

Appeal Br. 17 (Claims Appendix) (emphasis added).

REFERENCES AND REJECTIONS

Claims 1 and 3–13 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
Claims 1 and 3–13 are rejected under 35 U.S.C. § 112(b) as
being indefinite.
Claims 1, 3–5, 11, and 12 are rejected under 35 U.S.C. § 103 as
being unpatentable over Wang (US 2015/0323926 A1, published
November 12, 2015) in view of Chand (US 2007/0067458 A1,
published March 22, 2007) and Trumble (US 2012/0154149 A1,
published June 21, 20112).
Claims 6–8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Wang, Chand, and Trumble and further in view of
McHugh (US 2017/0060972 A1, published March 2, 2017).
Appeal 2020-006747
Application 15/726,738

4
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable
over Wang, Chand, and Trumble and further in view of Rasane (US
2013/0169681 A1, published July 4, 2013).
Claim 10 is rejected under 35 U.S.C. § 103 as being
unpatentable over Wang, Chand and Trumble, and further in view of
Hayashi(US 2003/0223374 A1, published December 4, 2003).
Claim 13 is rejected under 35 U.S.C. § 103 as being
unpatentable over Wang, Chand and Trumble, and further in view of
Harrell (US 2007/0177789 A1, published August 2, 2007) and Kessler
(US 2017/0278762 A1, published September 28, 2017).

Issues
1. Did the Examiner err in rejecting claim 1 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement
because the Specification as originally filed does not reasonably convey to a
person having ordinary skill in the art that the inventor had possession at that
time of the later claimed subject matter?
2. Did the Examiner err in rejecting claim 1 under 35 U.S.C.
§ 112(b) as being indefinite?
3. Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103
as being obvious because the combination of Wang, Chand and Trumble
fails to teach or suggest the argued limitation?
Appeal 2020-006747
Application 15/726,738

5
Analysis4
35 U.S.C. § 112 (a)-(b) Rejections of Claims 1 and 3–13
The Examiner rejects claims 1 and 3–13 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Non-Final Act.
10–13. The Examiner also rejects claims 1 and 3–13 under 35 U.S.C.
§ 112(b) as being indefinite. Id. at 13–15. Appellant requests that the
rejections of claims 1 and 3–13 under 35 U.S.C. § 112(a) and 35 U.S.C. §
112(b) be held in abeyance until the rejections of claims 1 and 3–13 under
35 U.S.C. § 103 are reversed. Appeal Br. 7.
Any arguments not raised by Appellant in the Appeal Brief are
waived. See 37 C.F.R. § 41.37(c)(iv). Accordingly,
we summarily affirm the Examiner’s rejection of claims 1 and 3–13 as
failing to comply with the written description requirement, and the
Examiner’s rejection of claims 1 and 3–13 as being indefinite.

35 U.S.C. § 103 Rejection of Exemplary Claim 15
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. The Examiner has provided a comprehensive response,
supported by sufficient evidence, to each of the contentions raised by
Appellant. We adopt as our own the findings and reasons set forth by the
Examiner in the Answer in response to Appellant’s Appeal Brief (see

4 Throughout this Decision, we refer to the Appeal Brief filed April 2, 2020
(“Appeal Br.”); Non-Final Office Action mailed January 17, 2020 (“Non-
Final Act.”); and the Examiner’s Answer mailed June 2, 2020 (“Ans.”).
5 Claims 3–13 are not argued separately from claim 1 in Appeal Brief and
will not be addressed separately.
Appeal 2020-006747
Application 15/726,738

6
Ans. 3–17). Among other things, although a Reply Brief is not required, we
note that Appellant does not respond to the Examiner’s additional findings
and explanations in the Answer. We highlight and address specific findings
and arguments regarding representative claim 1 for emphasis as follows.
Appellant contends that the Examiner erred in rejecting claims 1
under 35 U.S.C. § 103, because the combination of Wang, Chand and
Trumble fails to establish a sufficient case of obviousness with respect to the
required limitation L1 of independent claim 1. Appeal Br. 8.
The Examiner finds that Trumble teaches the limitation L1 because
Trumble teaches accessing an operation state of non-monitored stations
OP20–OP60 through abstraction data from a plurality of machines such as
IPV, OP10, and OP 80–OP90, and none of OP20–OP60 has a sensor for
monitoring measurement data. Ans. 15; Non-Final Act. 3–4 (citing Trumble
¶¶ 44–48).
The Examiner concludes that Appellant fails to define explicitly the
limitation “non-monitored machine” so that a person having ordinary skill in
the art at the time of the invention would be appraised to the scope and
meaning of the limitation, and there is no mention of “non-monitored
machine” or any version of the phrases “non-monitored,” unmonitored” or
“not monitored” in the Specification. Ans. 6. The Examiner finds that
Trumble teaches the limitation “non-monitored machine” because Trumble’s
OP20–OP60, which are machines without a sensor, teaches the limitation
“non-monitored machine” based on broadest reasonable interpretation. Id. at
11–12; Non-Final Act. 3–4 (citing Trumble ¶¶ 44–48).
Appeal 2020-006747
Application 15/726,738

7
Appellant argues that Wang and Chand do not teach the limitation L1
because they do not describe an operational state of an additional non-
monitored machine. Appeal Br. 10–11.
Appellant also argues that Trumble does not teach the limitation L1
because Trumble does not teach non-monitored operation station and
abstraction data solely derived from operating data detected from a plurality
of monitored machines. Appeal Br. 13. According to Appellant, Trumble’s
operation stations OP20–OP60 are monitored through a gauging station IPV.
Id. at 12.
In addition, Appellant argues that Trumble teaches away from making
assessment of a non-monitored machine based on abstraction data from a
plurality of monitored machines because there are no non-monitored
machines in Trumble, and Trumble specifically states the measurement data
is assigned to “each upstream operation.” Appeal Br. 13.
Based on the record before us, Appellant’s arguments do not apprise
us that the Examiner erred in finding that the combination of Wang, Chand
and Trumble teach the disputed limitation L1. More particularly,
Appellant’s arguments with respect to Wang, Chand and Trumble do not
reflect the specific findings made by the Examiner.
Appellant’s arguments that Wang and Chand do not describe an
operational state of an additional non-monitored machine, are arguments that
Wang and Chand do not teach L1. But, the Examiner finds that Trumble,
rather than Wang and Chand, teaches L1. See Non-Final Act. 21–23.
Therefore, Appellant’s arguments amount to a misplaced attack on Wang
and Chand, where the Examiner relies upon the combination of references to
teach L1. One cannot show nonobviousness by attacking references
Appeal 2020-006747
Application 15/726,738

8
individually where the rejections are based on combinations of references. In
re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
We agree with the Examiner as our interpretation of the disclosure of
Trumble coincides with that of the Examiner. See Ans. 12–15. We agree
with the Examiner because given the claim’s broadest reasonable
interpretation consistent with the Specification, the Examiner has found
correctly that the claimed “non-monitored machine” limitation is met by
Trumble’s stations OP20–60 since none of OP20–OP60 has a sensor for
monitoring measurement data. Id. (citing Trumble ¶ 45). In addition, we
agree with the Examiner that Trumble teaches the limitation L1 because
Trumble teaches accessing an operation state of non-monitored stations
OP20–OP60 through abstraction data from a plurality of machines such as
IPV, OP10, and OP80–OP90. Ans. 15; Non-Final Act. 21–23 (citing
Trumble ¶¶ 2, 7, 36, 44–48, 52, 55, 57, 58).
We disagree with Appellant’s teaching away argument. “A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d
1325, 1332 (Fed. Cir. 2008) (citations and internal quotation marks omitted)
(emphasis added). Teaching an alternative or equivalent method, however,
does not teach away from the use of a claimed method. See In re Dunn, 349
F.2d 433, 438 (CCPA 1965). A reference does not teach away if it merely
expresses a general preference for an alternative invention from amongst
options available to the ordinarily skilled artisan, and the reference does not
Appeal 2020-006747
Application 15/726,738

9
discredit or discourage investigation into the invention claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
However, Appellant’s teaching away arguments are misplaced for the
following reasons. Here, we agree with the Examiner that Trumble teaches
the limitation “non-monitored machine.” Ans. 12–15 (citing Trumble
¶¶ 44–45, 47–48). Additionally, Trumble teaches accessing an operation
state of non-monitored stations OP20–OP60 through abstraction data from a
plurality of machines such as IPV, OP10, and OP80–OP90. Ans. 15; Non-
Final Act. 21–23 (citing Trumble ¶¶ 2, 7, 36, 44–48, 52, 55, 57, 58). As
such, Appellant’s arguments are not persuasive.
Based on this record, Appellant does not persuade us of error in the
Examiner’s rejection of independent claim 1, and claims 3–5, 11 and 12
falling therewith (Appeal Br. 5) over Wang, Chand and Trumble. Appellant
does not argue the other pending claims separately with particularity.
Accordingly, we affirm the rejection of claims 6–8 over Wang, Chand,
Trumble and McHugh, the rejection of claim 9 over Wang, Chand, Trumble
and Rasane, the rejection of claim 10 over Wang, Chand, Trumble and
Hayashi, and the rejection of claim 13 over Wang, Chand, Trumble Harrell
and Kessler.

CONCLUSION

We summarily affirm the Examiner’s rejection of claims 1 and 3–13
under 35 U.S.C. §§ 112(a) and (b).
We affirm the Examiner’s rejection of claims 1 and 3–13 under
35 U.S.C. § 103 over the combined teachings and suggestions of the cited
references.
Appeal 2020-006747
Application 15/726,738

10

DECISION

In summary:
Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3–13 112(a)

Written
Description
1, 3–13
1, 3–13 112(b)

Indefiniteness 1, 3–13
1, 3–5, 11,
12
103 Wang, Chand,
Trumble
1, 3–5, 11,
12

6–8 103 Wang, Chand,
Trumble, McHugh
6–8
9 103 Wang, Chand,
Trumble, Rasane
9
10 103 Wang, Chand,
Trumble, Hayashi
10
13 103 Wang, Chand,
Trumble, Harrell,
Kessler
13
Overall
Outcome
1, 3–13

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

AFFIRMED