Ex Parte Rustad et al

Patent Trial and Appeal Board

May 16, 2013

11206881 (P.T.A.B. May. 16, 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.
11/206,881 08/18/2005 James S. Rustad 05AB090 7716
7590 05/16/2013
Susan M. Donahue
Rockwell Automation, Inc.
1201 South Second Street
Milwaukee, WI 53204
EXAMINER
SHEPPERD, ERIC W
ART UNIT PAPER NUMBER
2492
MAIL DATE DELIVERY MODE
05/16/2013 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 JAMES S. RUSTAD, SCOTT D. BRAUN, NEIL W. KNUTSEN,
GREGORY W. MEARS, JOHN H. STUEDEMANN,
and JAMES B. VITRANO

Appeal 2011-000868
1

Application 11/206,881
Technology Center 2400
____________________

Before JEAN R. HOMERE, JOHN A. EVANS, and HUNG H. BUI,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Rockwell Automation Technologies, Inc. (App
Br. 1.)
Appeal 2011-000868
Application 11/206,881

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 8-28. Claims 1-7 have been canceled. (App. Br. 3.)
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a security mechanism for controlling access to a
networked motor host (14) containing a plurality of serial ports (44) through
which the motor host (14) receives/transmits messages to peripheral devices
(20, 22, 26) connected thereto. In particular, upon receiving an access
request from a peripheral device (20, 22 or 26) connected to a first port, and
depending on the stored access rights previously defined for the first port in
the configuration mask (48) of the motor host (14), a configuration bit for
the first port is enabled/disabled to thereby allow/block the peripheral device
to/from transmitting to the motor host (14) a configuration message via the
first port. (Fig. 2, Spec. [0030]-[0032].)
Illustrative Claim
Independent claim 8 further illustrates the invention. It reads as
follows:
8. A motor control system, comprising:
a motor control host including a plurality of ports
including at least one of serial ports,
network interfaces, and Human Interface Module (HIM)
interfaces, wherein the motor control host is configured to
receive configuration messages and control messages via each
of the plurality of ports, store configuration data for at least one
Appeal 2011-000868
Application 11/206,881

3
of a motor and a peripheral, store a configuration mask defining
access rights for each of the ports, broadcast a message over at
least a subset of the ports, the message including the
configuration mask; and
a first peripheral device coupled to a first one of the
plurality of ports of the motor control host and configured to:
receive the message from the motor control host;
transmit control messages to the motor control host
regardless of a content of the configuration mask of the
message; and
when the configuration mask of the message authorizes
the first peripheral device to transmit configuration messages to
the motorcontrol host using the first one of the plurality of
ports, transmitting a first configuration message to the motor
control host to set a configuration parameter of the at least one
of a motor and a peripheral.

Prior Art Relied Upon
Stafford US 3,386,082 May 28, 1968
Braun US 5,455,762 Oct. 3, 1995
Wakefield, II US 5,961,561 Oct. 5, 1999
Malalur US 2005/0076164 A1 Apr. 7, 2005
Hannum US 2005/0152332 A1 Jul. 14, 2005

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 8, 10, 11, 16-25, 27, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Braun and
Stafford.
Appeal 2011-000868
Application 11/206,881

4
2. Claims 15 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Braun, Stafford, and
Hannum.
3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Braun, Stafford, and
Wakefield.
4. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Braun, Stafford, and
Malalur.
5. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Braun, Stafford, Malalur,
and Wakefield.
6. Claim 8 stands rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
2

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 14-19, and the Reply Brief, pages 4-5.

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that the combination of Braun and Stafford teaches or suggests “a
motor control host configured to store a configuration mask defining access

2
Because the Examiner has withdrawn this rejection, we will not reach its
merit in this opinion. (Ans. 3, 20.)
Appeal 2011-000868
Application 11/206,881

5
rights for a plurality of ports, and to broadcast only over an authorized port
a message including a configuration mask to allow a peripheral device to
transmit a configuration message to the host via the authorized port,” as
recited in claim 8?

Appellants argue that the proffered combination does not teach or
suggest the disputed limitations emphasized above. (App. Br. 16-21, Reply
Br. 4-5.) In particular, Appellants argue that Stafford discloses, depending
on the settings of the register of a multiprocessing complex, allowing all or
none of the computing elements thereof to communicate with one another.
According to Appellants, Stafford’s disclosure of an all or nothing
communication mask that blindly allows or blocks all communication
between the computing elements does no teach selectively allowing or
blocking a configuration message from a peripheral device at a particular
port depending on the security rights associated therewith in the
configuration mask. (App. Br. at 17-19.) Further, Appellants argue that the
Examiner has failed to provide a sufficient basis for combining Braun with
Stafford because the references are directed to entirely different
technologies. (Id. at 20.)
In response, the Examiner finds that Appellants’ argument that the
combination of Stafford and Braun does not teach a security mechanism that
distinguishes between different message categories to thereby allow a
peripheral device to transmit one kind of message while blocking another
type of message is not commensurate with the scope of Appellants’ claim.
Appeal 2011-000868
Application 11/206,881

6
(Ans. 20.) Further, the Examiner finds that Appellants have attacked the
references separately, and not as the proffered combination. In particular,
the Examiner finds that Stafford’s disclosure of storing in a configuration
mask defined access rights for a plurality of ports that are selectively
enabled or disabled to allow or block a configuration message complements
Braun’s disclosure of a motor control host including of ports controlled via
defined access rights stored in a masking table to teach the disputed
limitations. (Id. at 21-25.)
Based upon our review of the record before us, we find no error with
the Examiner’s findings and conclusion of obviousness regarding claim 8.
First, we agree with the Examiner that Appellants’ argument that the
combination of Braun and Stafford does not teach a configuration mask for
allowing the control messages to be communicated while blocking
configuration messages is not commensurate with the scope of Appellants’
claim. While the claim recites that a peripheral device is configured to
transmit control messages to the motor host irrespective of the content of the
configuration mask associated therewith, it does not require blocking the
peripheral device from transmitting a configuration message when the
control message is transmitted.
Second, we note that the claim recitation that the motor control host
and peripheral devices are configured to store or transmit data is a statement
of intended use. That is, the claim language “configured to” merely
indicates the capability or intent to perform certain action as opposed to
actually performing the action. Our reviewing court has held that a
Appeal 2011-000868
Application 11/206,881

7
statement of intended use in an apparatus claim cannot distinguish over a
prior art apparatus that discloses all the recited structural limitations and is
capable of performing the recited function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). We also note that “[a]n intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320
F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . .
appear in the claim’s preamble,” a statement of intended use or purpose can
appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
1987).
Further, we find that the recited intended use limitation is met fully by
an equivalent prior art structure disclosed in the combination of Braun and
Stafford, which appears to be capable of performing the recited functions.
In particular, Braun discloses a motor controller (10) that receives various
types of commands from peripheral devices (28, 30) connected thereto via a
plurality of ports (26a-f) to thereby control a motor (16). (Col. 3, ll. 34-61.)
The motor controller includes a memory (22) that stores an ownership table
(fig. 4) designating whether a command type is owned by a command
source, and a masking table (fig. 5) designating whether commands
originating from a source should be blocked or transmitted to the motor.
(Col. 2, ll. 54-65; col. 7, ll. 11-32.) Furthermore, Stafford discloses a system
for controlling the interconnection between elements of a multiprocessor.
(Col. 1, ll. 43-45.) The multiprocessor includes a memory that stores a
Appeal 2011-000868
Application 11/206,881

8
configuration program for executing instructions issued by each element as a
configuration mask. (Col. 3, ll. 44-48, ll. 59-63.) The configuration mask
includes binary bits indicating the different states that each corresponding
configuration control register will either accept or reject. (Col. 6, ll. 43-50.)
We find that Stafford’s disclosure of utilizing predefined configuration mask
to determine which types of elements within a multiprocessor can
communicate with one another complements Braun’s disclosure of utilizing
a table mask to determine which types of source commands should be
forwarded to a motor.
Third, we agree with the Examiner that Appellants’ individual attack
against the references separately, as opposed to the proffered combination, is
unavailing. That is, while Braun discloses a table mask for regulating the
transmission of control messages between the source devices and the motor
controller, Stafford’s disclosure teaches the missing limitation of using such
a table mask for configuration purposes (i.e. to handle configuration
messages issued by the peripheral device in a similar fashion.) Further, we
find unresponsive Appellants’ argument for being misdirected to Stafford,
whereas the Examiner relied on specific portions of Braun for the teaching
of a peripheral device that transmits a message to a motor controller.
Finally, we find unpersuasive Appellants’ argument that the
references do not pertain to Appellants’ field of endeavor, namely safety
control systems for electronic motor controllers. (App. Br. 20.) It is
undisputed that Braun pertains directly to the field of enhancing the security
of a motor controller to determine which messages received from peripheral
Appeal 2011-000868
Application 11/206,881

9
devices connected thereto should be forwarded to the motor. As discussed
above, Stafford’s disclosure of using a configuration mask to determine
which elements of a multiprocessor should be allowed to exchange messages
to one another complements Braun’s teachings to predictably result in a
combined system that determines which control and/or configuration
messages received from peripheral elements should be forwarded to the
motor based on a configuration mask and a table mask associated therewith.
It therefore follows that Appellants have failed to show error in the
Examiner’s obviousness rejection of claim 8.
Regarding claims 9-28, Appellants reiterate substantially the same
arguments submitted for patentability of claim 8 above. (App. Br. 21-27.)
As discussed above, these arguments are not persuasive. See 37 C.F.R.
§ 1.37(c)(1)(vii). Further, while Appellants raised additional arguments for
patentability of the cited claims, we find that the Examiner has rebutted in
the Answer each of those arguments by a preponderance of the evidence.
(Ans. 25-29.) Therefore, we adopt the Examiner’s findings and underlying
reasoning, which are incorporated herein by reference. Consequently,
Appellants have failed to show error in the Examiner’s rejections of claims
9-28.

Appeal 2011-000868
Application 11/206,881

10
DECISION
We affirm the Examiner’s rejections of claims 8-28 as set forth above.
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

ELD