Siemens Aktiengesellschaft

Patent Trials and Appeals Board

Oct 5, 2021

2020002697 (P.T.A.B. Oct. 5, 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.
15/596,269 05/16/2017 Georg KLEIFGES 5029-1677/406075 6827
27799 7590 10/05/2021
COZEN O''CONNOR
3WTC, 175 Greenwich Street
55th Floor
NEW YORK, NY 10007
EXAMINER
SKRZYCKI, JONATHAN MICHAEL
ART UNIT PAPER NUMBER
2116
NOTIFICATION DATE DELIVERY MODE
10/05/2021 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):
patentdocket@cozen.com
patentsecretary@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORG KLEIFGES
and JUERGEN LAFORSCH
____________

Appeal 2020-002697
Application 15/596,269
Technology Center 2100
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU, and
SHARON FENICK, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7–14.2 We have jurisdiction under
35 U.S.C. § 6(b)(1).
We REVERSE.3

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Siemens AG as the real party in
interest. Appeal Br. 2.
2 Claims 1–6 have been cancelled.
3 This Decision refers to the Examiner’s Final Office Action mailed
March 29, 2019 (“Final Act.”); Appellant’s Supplemental Appeal Brief filed
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to “operating a redundant automation
system having two subsystems, where one of the subsystems operates as a
master and assumes process control and the other subsystem operates as a
reserve during redundant operation.” Spec. 1.
Claims 7 and 13 are independent. Claim 7, reproduced below, is
illustrative of the subject matter on appeal:
7. A method for operating a redundant automation system
having a plurality of subsystems, a subsystem of the plurality of
subsystems operating as a master and assuming process control
and another subsystem of the plurality of systems operating as a
reserve during redundant operation, and the master and the
reserve systems being synchronized via communication in an
event of a loss of synchronization, the method comprising:
comparing process inputs of a process image of the master
subsystem with process inputs of a process image of the reserve
subsystem;
adjusting a communication of the reserve subsystem with
additional components of the automation system;
assuming process control as a new master subsystem by
the reserve subsystem immediately if the master subsystem fails
during a predefined period of time;
initiating, by the reserve subsystem, in an event that the
master subsystem does not fail during the predefined period of
time, troubleshooting to determine a cause of loss of
synchronization after the predefined period of time has expired;
providing the reserve subsystem with relevant process
control data in a context of an update after troubleshooting the
master subsystem, if the reserve subsystem is not faulty; and

October 17, 2019 (“Appeal Br.”); the Examiner’s Answer mailed December
23, 2019 (“Ans.”); Appellant’s Supplemental Reply Brief filed March 6,
2020 (“Reply Br.”); and the Specification filed August 24, 2017 (“Spec.”).
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assuming process control by the reserve system as the new
master subsystem and, after the update, initiating by the master
subsystem further troubleshooting as the new reserve subsystem.
Appeal Br. 9 (Claims App.).
REJECTIONS
The Examiner rejects claims 7–9 and 13 under 35 U.S.C. § 103 as
being unpatentable over Flood,4 Shelvik,5 and Shelest.6 Final Act. 7–23.
The Examiner rejects claims 10–12 and 14 under 35 U.S.C. § 103 as
being unpatentable over Flood, Shelvik, Shelest, and Adams.7 Final
Act. 23–30.
OPINION
The Examiner finds that Flood teaches the steps of “assuming process
control as a new master subsystem by the reserve subsystem immediately if
the master subsystem fails” and “initiating, by the reserve subsystem, in an
event that the master subsystem does not fail during the predefined period of
time, troubleshooting to determine a cause of loss of synchronization” as
recited in independent claim 7 and similarly recited in independent claim 13.
Final Act. 9–10, 18. The Examiner further finds that Flood fails to teach
performing the “assuming” step “during a predefined period of time” and
performing the “initiating” step “after the predefined period of time has
expired,” as claimed. Id. at 10, 18. The Examiner then relies upon Shelest

4 Flood et al., US 5,777,874 (iss. July 7, 1998).
5 Shelvik et al., US 2008/0155318 A1 (pub. June 26, 2008).
6 Shelest et al., US 2006/0174318 A1 (pub. Aug. 3, 2006).
7 Adams, US 5,099,153 (iss. Mar. 24, 1992).
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for the limitations “during a predefined period of time” and “after the
predefined period of time has expired.” Id. at 10–12, 19–21 (citing
Shelest ¶¶ 9, 30, Fig. 6).
Appellant argues that one of ordinary skill in the art would not have
combined Shelest with Flood and Shelvik, absent impermissible hindsight,
because Shelest is non-analogous to the claimed invention. Appeal Br. 5–6;
Reply Br. 7. A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention,
regardless of the problem addressed, or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). According to Appellant, the claimed invention
relates to “operating a redundant automation so as to increase availability of
that system,” while “[t]he overall field of endeavor of Shelest is network
security and safeguarding the network from hackers.” Appeal Br. 6
(emphasis omitted); see Reply Br. 2–3, 7. Appellant further argues that
Shelest “is not reasonably pertinent to the problem faced by the instant
inventors, i.e., preventing the total failure of an automation system” (Appeal
Br. 6) and “address[ing] synchronization problems caused when transient
errors occur in one of two subsystems operating in a master/slave
configuration” (Reply Br. 2). Rather, argues Appellant, Shelest “address[es]
a completely different problem, i.e., trouble-shooting the adverse impacts of
a security policy” (Appeal Br. 6) and “provid[ing] a way to allow for only
limited disabling of a security [policy] in [a] way that does not open all
programs to exploitation (i.e., hacking) of vulnerabilities covered by the
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security policy” (Reply Br. 2). Thus, Appellant argues that Shelest fails both
prongs of the test for analogous prior art. Appeal Br. 6.
The Examiner responds that Shelest is both from the same field of
endeavor as the claimed invention and reasonably pertinent to the problem
faced by the inventor. Ans. 4. Specifically, the Examiner finds that Shelest
and the claimed invention are both in the field of “computer controlled
system[s], and more specifically [] how a computer controlled system reacts
when an error (i.e. failure) occurs, specifically when that error is of an
unknown origin,” and that “both the [inventor] and Shelest are attempting to
avoid the problem of a complete shutdown of a computer controlled
system.” Id. at 4–5.
We agree with Appellant that Shelest is non-analogous to the claimed
invention. With respect to the first prong of the test for analogous prior art,
we find the Examiner’s characterization of Shelest and the claimed invention
as being in “the same field of computer controlled system[s]” or “how a
computer controlled system reacts” to an error of unknown origin (Ans. 4–5)
to be overly broad. As explained by Appellant, Shelest’s general field of
endeavor is network security, i.e., security policies for computer systems.
See Shelest ¶¶ 2–8; Appeal Br. 6. In contrast, the claimed invention is in the
field of redundant automation systems. Spec. 1.
With respect to the second prong of the analogous art test, we do not
find Shelest to be reasonably pertinent to the inventor’s problem of
preventing total failure of redundant automation systems due to transient
errors. See Spec. 1–2. According to the Specification, initiating
troubleshooting in the reserve subsystem immediately after a loss of
synchronization may result in total failure if the master subsystem fails due
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to a transient error. Id. at 2. The claimed invention thus imposes a time
delay (“predefined period of time”) before initiating troubleshooting in the
reserve subsystem, “such that in the event of the master subsystem failing
during this period of time, the reserve can assume process control” because
it is not in troubleshooting mode. Id. Shelest uses a timer in a different way.
Shelest teaches troubleshooting to determine whether a security policy is
causing a problem with a computer program. Shelest ¶¶ 2, 7, 16. This is
accomplished by temporarily adding selected programs to a “problem list”
of programs to be excluded from the security policy. Id. ¶¶ 16–18, 23. “If
the problem appears to be resolved as a result of excluding the program from
the security policy, then the user may assume that a conflict with the security
policy is the cause of the problem.” Id. ¶ 16. After expiration of a time
period set by a “troubleshoot timer,” the security system removes the
temporarily added programs from the problem list. Id. ¶¶ 18, 23, 30. Thus,
Shelest uses the troubleshoot timer to remove programs from a
troubleshooting list, in contrast with the claimed invention’s predefined
period of time for delaying troubleshooting. While the Examiner finds that
Shelest is similar to the claimed invention “because it uses a timer period to
delay an action so that a determination on the cause of the error can be
made” (Ans. 6), we find the Examiner’s reasoning to be strained.
Furthermore, while the Examiner finds that incorporating Shelest’s
troubleshooting timer into Flood would allow for “synchronization faults
that occur after a software update [to] be traced back to the update due to a
fault occurring within the timer, or traced to some other problem which can
be further troubleshot when the timer expires” (Final Act. 11–12), the
Examiner does not explain, and we do not discern, how the proposed
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combination would result in performing the “assuming” step “during a
predefined period time” and performing the “initiating” step “after the
predefined period of time has expired,” as claimed.
For the foregoing reasons, we reverse the Examiner’s § 103 rejections
of independent claims 7 and 13 and claims 8–12 and 14 dependent from
them.
CONCLUSION
The Examiner’s rejections of claims 7–14 under 35 U.S.C. § 103 are
reversed.
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
7–9, 13 103 Flood,
Shelvik,
Shelest
7–9, 13
10–12, 14 103 Flood,
Shelvik,
Shelest,
Adams
10–12, 14
Overall
Outcome
7–14

REVERSED