ABB Technology AG

Patent Trials and Appeals BoardNov 25, 2020

2019003238 (P.T.A.B. Nov. 25, 2020)

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. 15/075,577 03/21/2016 Matus Harvan ABBVP-3 1459 129925 7590 11/25/2020 ABB Inc. Taft, Stettinius & Hollister LLP One Indiana Square Suite 3500 Indianapolis, IN 46204-2023 EXAMINER GUNDRY, STEPHEN T ART UNIT PAPER NUMBER 2435 NOTIFICATION DATE DELIVERY MODE 11/25/2020 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): taft-ip-docket@taftlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MATUS HARVAN, ROMAN SCHLEGEL, SEBASTIAN OBERMEIER, and THOMAS LOCHER ____________________ Appeal 2019-003238 Application 15/075,577 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, JUSTIN BUSCH, and JAMES W. DEJMEK, Administrative Patent Judges. BUSCH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing under 37 C.F.R. § 41.52 of our Decision, mailed August 21, 2020 (“Decision”). In the Decision we, in part, entered a new ground of rejection under 35 U.S.C. § 103 of claims 1, 11, and 15. Appellant timely filed a Request for Rehearing (“Req. Reh’g” or “Request”) on October 13, 2020. We have reconsidered our Decision in light of Appellant’s Request for Rehearing, but we decline to change the final disposition of the Decision for the reasons discussed, infra. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § l.42(a) (2018). Appellant identifies ABB Schweiz AG as the real party in interest. Appeal Br. 2. Appeal 2019-003238 Application 15/075,577 2 DISCUSSION On August 21, 2020, we issued our Decision in which we, in part, entered a new ground of rejection of claims 1, 11, and 15 under 35 U.S.C. § 103 as obvious in view of Wood and Onno. See Decision 17–20. Appellant seeks rehearing of our Decision with respect to this new ground of rejection under 35 U.S.C. § 103. Req. Reh’g 1 (“Applicant respectfully requests that the Board reconsider the new ground of rejection on pages 17- 20 of the August 21, 2020 Decision.”). In general, Appellant argues Onno’s secure state 503, which we find teaches or suggests the recited access disabled state, “does not disable access.” Req. Reh’g 2–3. More specifically, Appellant asserts Onno’s secure state 503 enables access because Onno discloses that, in secure state 503, “those who have been granted access ‘have access to them.’” Req. Reh’g 2 (quoting Onno ¶ 83); see also Req. Reh’g 3 (arguing “Onno’s secure state 503 is only a state where access is controlled but is not disabled by any means” because “[a]nyone who has been granted access in step 512 can access the device, and additional access can be granted and/or rights modified within the secure state 503 itself.”). Although it is true that some users have access to the device or its services in secure state 503, Onno makes clear that “only users who have been granted access to the services have access to them.” Onno ¶ 83 (emphasis added). Appellant omits this emphasized portion of Onno when asserting that Onno’s secure state 503 does not disable access because that state provides access to users to whom an administrator has explicitly granted access. The Specification explains that alleged differences over the prior art include that the claimed “solution enables secure access for one Appeal 2019-003238 Application 15/075,577 3 party even if there is no authentication mechanism for the other party” and the claimed “method protects access to a specific part of the functionality, whereas all other functionality may be available without any authentication.” Spec. 12:23–33. Similarly, Onno’s secure state 503 enables access to one party even if another party is not able to access the device or function and Onno provides the ability to limit access to the entire device or just some of its functions. Onno ¶¶ 82–83. The Specification also describes the disabled state as one in which the customer must explicitly grant temporary access to another party in order for that other party to access the device/service. Spec. 11:10–25. Similarly, Onno’s administrator must explicitly grant access to another party in order for that other party to have access to Onno’s device or its services. Onno ¶¶ 82–84. We see no difference between Appellant’s claimed disabled state and Onno’s secure state 503. Accordingly, we disagree with Appellant’s contention that Onno’s secure state 503 does not teach or suggest the claimed disabled state. Appellant further contends our conclusion that incorporating Onno’s device states into Wood’s system is merely a simple substitution yielding predictable results is insufficient. Req. Reh’g 3–4. Appellant argues “only hindsight reasoning would result in a combination of Wood and Onno in the manner argued by the Board” because Onno’s states are not related to whether a device is operable. Reg. Reh’g 3–4. We disagree. First, we note we did not find Onno teaches the limitation regarding the device being operable only when access rights have been set; Wood teaches or suggests that aspect of the claims. Moreover, Onno is relied on merely to teach the particularly recited states and state Appeal 2019-003238 Application 15/075,577 4 transition rules. Onno’s states and transitions are merely used as an alternative set of states and transitions to those already disclosed in Wood. Accordingly, no additional “motivation” is necessary to render the independent claims obvious over Wood and Onno because the rationale for modifying Wood is a simple substitution of Onno’s known states and transitions into Wood’s known device/system that yields predictable results. See Dec. 19 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)); see also KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”), 419 (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.”). Regarding Appellant’s allegation of reliance upon impermissible hindsight (Reg. Reh’g 3–4), Appellant has not identified knowledge gleaned only from the present application that was not within the level of ordinary skill at the time the claimed invention was made. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Moreover, Appellant has not provided any objective evidence of secondary considerations (e.g., unexpected results), which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Appeal 2019-003238 Application 15/075,577 5 CONCLUSION We have considered Appellant’s Request, but we maintain our Decision entering the new ground of rejection of claims 1, 11, and 15 under 35 U.S.C. § 103 as obvious in view of Wood and Onno. DECISION SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C § Reference Denied Granted 1, 11, 15 103 Wood, Onno 1, 11, 15 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § References/ Basis Affirmed Reversed New Ground 1–7, 10, 16–20 112(a) Written Description 1–7, 10, 16–20 1–7, 10– 20 112(b) Indefinite 1–7, 10, 16–20 11–15 1–7, 10– 20 103 Wood, Onno, Dinker 1–7, 10– 20 1, 11, 15 103 Wood, Onno 1, 11, 15 Overall Outcome 1–7, 10, 16–20 11–15 1, 11, 15 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). REHEARING DENIED