Ex Parte Rustad et alDownload PDFPatent Trial and Appeal BoardMay 16, 201311206881 (P.T.A.B. May. 16, 2013) Copy Citation 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 Copy with citationCopy as parenthetical citation