Ex Parte Deininger et al

Patent Trial and Appeal Board

Apr 30, 2013

10894624 (P.T.A.B. Apr. 30, 2013)

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.
10/894,624 07/20/2004 Thomas Deininger 2004P00814US01 6407
28524 7590 04/30/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
TANG, JIEYING
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
04/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte THOMAS DEININGER, MICHAEL S. HORN, JUNG MIN OH,
MICHAEL HOGAN, and WILLIAM F. RAINES
________________

Appeal 2010-007806
Application 10/894,624
Technology Center 2100
________________

Before JEAN R. HOMERE, JASON V. MORGAN, and
JOHNNY A. KUMAR, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 18 – 36. Claims 1 – 17 are canceled. See App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm-in-part.
Invention
The invention is directed to an extensible, object-oriented framework
used for porting one or more elements of legacy automation systems to
target automation systems. Objects in the framework adapt information from
the legacy system to a generic representation. Compilers express those
representations in the target system. See Abstract.
Exemplary Claims (Emphases Added)
18. A method for translating configuration information from
a first automation subsystem of a legacy process automation
system to a second automation subsystem and replacing the first
automation subsystem, the method comprising the steps of:
gathering configuration information from a plurality of
automation subsystems of the legacy process automation
system;
storing the configuration information from the plurality
of automation subsystems as generic configuration information;
translating the configuration information from the first
automation subsystem of the legacy process automation system
to the second automation subsystem by expressing the generic
configuration information from the plurality of automation
subsystems as configuration information in the second
automation subsystem; and
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replacing the first automation subsystem of the legacy
process automation system with the second automation
subsystem.
32. The method of claim 18 wherein:
the gathering and storing steps are performed in a first
version of a DBA [database automation]; and
the method further comprises the step of using DBA
plug-ins for converting the generic configuration-information
from the first version of the DBA to generic configuration
information for a second version of the DBA; and
the translating step is performed in the second version of
the DBA.
33. The method of claim 32, wherein the converting step
uses rules that are based on the first automation subsystem.
34. The method of claim 32, wherein the converting step
uses rules that are based on the generic configuration
information from the first version of the DBA.
Rejections
The Examiner rejects claims 18 – 22, 24, 26, and 31 – 36 under
35 U.S.C. § 103(a) as being unpatentable over Walsh (US 6,810,429 B1;
Oct. 26, 2004; filed Feb. 3, 2000) and Johnson (US 7,020,532 B2; Mar. 28,
2006; filed Jan. 13, 2004). Ans. 3 – 9.
The Examiner rejects claims 23, 25, and 27 under 35 U.S.C. § 103(a)
as being unpatentable over Walsh, Johnson, and Jayaram (US 6,996,589 B1;
Feb. 7, 2006; filed Jan. 16, 2002). Ans. 9 – 11.
The Examiner rejects claims 28 – 30 under 35 U.S.C. § 103(a) as
being unpatentable over Walsh, Johnson, and Sant (US 2003/0050969 A1;
Mar. 13, 2003). Ans. 11 – 13.
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ISSUES
1. Did the Examiner err in finding that the combination of Walsh
and Johnson teaches or suggests the gathering, storing, translating, and
replacing steps of claim 18?
2. Did the Examiner err in finding that the combination of Walsh
and Johnson teaches or suggests wherein “the gathering and storing steps are
performed in a first version of a DBA . . . and the translating step is
performed in the second version of the DBA,” as recited in claim 32?
3. Did the Examiner err in finding that the combination of
Johnson and Walsh teaches or suggests “wherein the converting step uses
rules that are based on the first automation subsystem,” as recited in claim
33?
4. Did the Examiner err in finding that the combination of
Johnson and Walsh teaches or suggests “wherein the converting step uses
rules that are based on the generic configuration information from the first
version of the DBA,” as recited in claim 34?
ANALYSIS
Claims 18 – 31, 35, and 36
The Examiner rejects claim 18 as being unpatentable over Walsh,
which is directed to an enterprise integration system, and Johnson, which is
directed to methods and apparatus for control using control devices that
provide a virtual machine environment and that communicate via an IP
(internet protocol) network. See Ans. 3 – 6. The Examiner finds that the
combination of Walsh and Johnson teaches or suggests the gathering,
storing, and translating steps of claim 18. See Ans. 4 – 5 (citing, e.g., Walsh
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fig. 1b, col. 3, ll. 6 – 22, and col. 10, ll. 59 – 64, and Johnson fig. 1, col. 13,
ll. 16 – 23, and col. 20, ll. 1 – 4). The Examiner relies in particular on
Johnson to teach or suggest the replacing step of claim 18. See Ans. 5 – 6
(citing, e.g., Johnson col. 12, ll. 15 – 19).
Appellants contend the Examiner erred in finding that the
combination of Walsh and Johnson teaches or suggests the gathering and
storing steps of claim 18 because “Walsh describes information related data
sources for different enterprise integration systems and mapping of a legacy
data base schema into different XML [extensible markup language] DTD
[document type definition] formats. However, this information is not
configuration information for automation subsystems, as claimed.” App.
Br. 7 (citation omitted). Appellants also argue that the cited section of
“Johnson does not disclose or suggest any gathering, storing or translating
of configuration information, as claimed.” Id. at 8. However, Appellants
unpersuasively attack Walsh and Johnson individually, even though the
rejection is based on their combined teachings and suggestions. The test for
obviousness is not what the references show individually but what the
combined teachings would have suggested to one of ordinary skill in the art.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the
Examiner correctly relies on Walsh to teach or suggest gathering, storing,
and translating information. See Ans. 4; see also Walsh col. 3, ll. 53 – 54
(XML used as a universal data encoding and interchange format). The
Examiner also correctly relies on Johnson to teach or suggest configuration
information to be imported. See Ans. 4; see also Johnson col. 13, ll. 16 – 17
(importing configurations from legacy systems). Thus, the combination of
Walsh and Johnson teaches or suggests gathering, storing, and translating (as
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taught or suggested by Walsh) configuration information (as taught or
suggested by Johnson). See Ans. 4 – 5. Therefore, we agree with the
Examiner that the combination of Walsh and Johnson teaches or suggests
“gathering configuration information from a plurality of automation
subsystems of the legacy process automation system [and] storing the
configuration information from the plurality of automation subsystems as
generic configuration information,” as recited in claim 18. See id. at 4.
Appellants further contend the Examiner erred in finding the
translating step of claim 18 is taught or suggested by the combination of
Walsh and Johnson because Walsh merely describes “mapping data from a
legacy format to an XML format. There is no description in Walsh of further
expressing the data in the XML format as data in yet another format.” App.
Br. 8; see also Reply Br. 2 – 3. However, Walsh teaches “a back-end
interface configured for converting input data source information to input
XML documents and for converting output XML documents to output data
source information.” Walsh col. 3, ll. 9 – 12 (emphasis added). Walsh also
teaches converting “data into the XML format, and handing the XML
document 113 to an agent 101. . . . The agent delivers the XML to the front-
end 120 for conversion to the HTML [hypertext markup language] form
121.” Walsh col. 10, ll. 8 – 12. Thus, in Walsh the XML format is used as a
generic, intermediary format for storing data before the data is translated
into another format (i.e., output data source information or HTML). As
discussed above, Johnson teaches or suggests that such information can be
configuration information. Therefore, we agree with the Examiner that the
combination of Walsh and Johnson teaches or suggests “translating the
configuration information from the first automation subsystem of the legacy
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process automation system to the second automation subsystem by
expressing the generic configuration information from the plurality of
automation subsystems as configuration information in the second
automation subsystem,” as recited in claim 18.
Appellants also contend the Examiner erred in finding that Johnson
teaches or suggests the replacing step of claim 18 because while “Johnson
describes the process control system supporting online upgrades of
application software. . . . a software upgrade to provide maintenance and
support for the process control system is not the same as replacing a
subsystem in the process control system with a different subsystem.” App.
Br. 5; see also Reply Br. 3. However, Appellants do not persuasively
distinguish between upgrading application software in a process control
system and replacing a subsystem in a process control system. The
Specification broadly describes subsystems as being pieces of automation
systems. See Spec. ¶ [0003]. Johnson teaches upgrading process control
objects (PCOs), part of (i.e., pieces of) the software provided on platform-
defining control devices (i.e., automation systems). See Johnson col. 12, ll.
15 – 19; see also Johnson col. 8, ll. 14 – 30 (platform-defining control
devices include PCO software, station management object software,
messaging service software, and additional software). Thus, the replaced
“first automation subsystem” of claim 18, given a reasonably broad
interpretation in light of the Specification, encompasses Johnson’s pre-
upgrade software. See Ans. 5. Similarly, the “second automation subsystem”
of claim 18, broadly read, encompasses Johnson’s post-upgrade software.
See id.
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Appellants further argue “[t]he upgrading apparently discussed in
Johnson does not involve a replacing operation, as is apparent from the cited
section of Johnson, which indicates that the upgrade may be performed
‘even during operation.’” App. Br. 6; see also Reply Br. 3 – 4. However,
Appellants do not provide persuasive arguments or evidence showing that
upgrades performed during operation preclude replacement. The Examiner
correctly finds that Johnson’s PCOs are designed to be easily upgraded, even
during operation. See App. Br. 14 (citing Johnson col. 8, ll. 14 – 18 and col.
13, ll. 55 – 57). A new version of a PCO can even be run in parallel with an
old version until control is swapped from the old to the new (i.e., until the
new version replaces the old version). See Johnson col. 13, l. 64 – col. 14, l.
2). Therefore, we agree with the Examiner that Johnson teaches or suggests
“replacing the first automation subsystem of the legacy process automation
system with the second automation subsystem,” as recited in claim 18. See
Ans. 5 – 6 and 13 – 14.
Accordingly, we find the Examiner did not err in rejecting claim 18,
or in rejecting dependent claims 19 – 31, which are not argued separately
with sufficient specificity. See App. Br. 8.
Claims 32, 35, and 36
The Examiner finds that Walsh teaches or suggests wherein “the
gathering and storing steps are performed in a first version of a DBA,” as
recited in dependent claim 32, because legacy data source 111 is converted
into XML in a back-end interface. See Ans. at 7 (citing Walsh fig. 1b, col. 3,
ll. 6 – 15, and col. 4, ll. 43 – 52). The Examiner also finds that Walsh
teaches or suggests wherein “translating performed in a second version of
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the DBA,” as recited in claim 32. See id. at 8 (citing Walsh fig. 1b and col.
3, ll. 9 – 12). In particular, the Examiner finds it would have been obvious to
an artisan of ordinary skill to implement different first and second DBA
versions as separate software modules in a system. See Ans. 17.
Appellants contend the Examiner erred because “there is no
description in Walsh of the back-end interface including different versions
for performing gathering and storing information and translating
information.” Reply Br. 4; see also App. Br. 9. In particular, Appellants
argue “there is no description in Walsh of the back-end interface including
different versions for performing gathering and storing information and
translating information.” Reply Br. 4. However, in Walsh the interfaces that
perform gathering, storing, and translating tasks are composed of one or
more service bridges, which provide access to legacy systems. See Walsh
col. 4, ll. 43 – 44. A service bridge itself uses a run-time hierarchy of objects
having limited responsibilities, such as a document map manager and a
document builder. See Walsh fig. 9 and col. 16, l. 58 – col. 17, l. 3. Because
Walsh teaches or suggests the use of objects with limited responsibilities, the
Examiner correctly finds that the use of separate software modules (i.e.,
different DBA versions) would have been obvious to an artisan of ordinary
skill. See Ans. 17. Therefore, we agree with the Examiner that the
combination of Johnson and Walsh teaches or suggests “the gathering and
storing steps are performed in a first version of a DBA . . . and the
translating step is performed in the second version of the DBA,” as recited in
claim 32. See id. at 7 – 8.
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Accordingly we find the Examiner did not err in rejecting claim 32, or
in rejecting dependent claims 35 and 36, which are not argued separately
with sufficient specificity. See App. Br. 9.
Claims 33 and 34
Claim 33 recites “wherein the converting step uses rules that are based
on the first automation subsystem” and claim 34 recites “wherein the
converting step uses rules that are based on the generic configuration
information from the first version of the DBA.” The Examiner finds that
Walsh, by teaching rules that provide relational mapping from legacy data
formats to XML formats, teaches or suggests these recitations. See Ans. 8
(citing Walsh fig. 1b, col. 3, ll. 48 – 52, and col. 10, ll. 59 – 64); see also
Ans. 18 – 19.
Appellants contend that the Examiner erred in rejecting claim 33
because the rules of in Walsh are stored in a database 132 and are operated
on by rules engine 131, but Walsh does not teach or suggest “the rules being
based on a first automation subsystem.” App. Br. 10. Appellants make
similar arguments with respect to the Examiner’s rejection of claim 34. See
id. We find Appellants’ arguments persuasive of error in the Examiner’s
rejections.
While the Examiner correctly finds that Walsh discloses the use of a
rules engine operating on rules stored in a rules database, the Examiner’s
findings do not show that Walsh, alone or in combination with Johnson,
teaches or suggests rules based on a first automation subsystem or on
generic configuration information from a first version of the DBA. See Ans.
8, 9, and 18. Therefore, we cannot sustain the Examiner’s rejections.
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Accordingly, we find the Examiner erred in rejecting claims 33 and
34.
DECISION
We affirm the Examiner’s decision to reject claims 18 – 32, 35, and
36.
We reverse the Examiner’s decision to reject claims 33 and 34.

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).

AFFIRMED-IN-PART

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