Ex Parte Talanis et al

Patent Trial and Appeal BoardMar 20, 2013

11194931 (P.T.A.B. Mar. 20, 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. 11/194,931 08/02/2005 INV001Thomas Talanis 2004P09268US 3105 7590 03/20/2013 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE, SOUTH ISELIN, NJ 08830 EXAMINER RAHIM, MONJUR ART UNIT PAPER NUMBER 2436 MAIL DATE DELIVERY MODE 03/20/2013 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 TALANIS, THOMAS TROESTER, and FRANK VOLKMANN ________________ Appeal 2010-011448 Application 11/194,931 Technology Center 2400 ________________ Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011448 Application 11/194,931 2 STATEMENT OF THE CASE Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 9-17, all the claims pending in the application. Claims 1-8 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse but enter a new ground of rejection under 37 C.F.R. § 41.50(b). BACKGROUND The invention relates to systems and methods for authenticating a user during access to an automation device in an automation system. Abs. Claim 9 is illustrative of the issue on appeal and is reproduced below with disputed limitations emphasized: 9. A method for project planning an automation system, comprising: generating an automation project including provision of a plurality of controllers and automation devices, wherein the automation devices include one or more programmable logic controllers; generating a user database for the automation project; designating one of the automation devices within the automation project as a ticket agent; automatically generating common secrets for the communication between the ticket agent and automation devices of the automation project; upon an effort by a user to access one of the automation devices, performing a determination with an authentication module as to whether the user has a valid ticket; and if the authentication module validates a ticket for the user, then permitting the user repeated access to the one automation device during a predetermined time period without requiring renewed validation of the ticket or authentication of the user each time the user again accesses the one automation device during the predetermined time period. Appeal 2010-011448 Application 11/194,931 3 THE REJECTIONS Claims 9-17 stand rejected under 35 U.S.C. § 102(e) as anticipated by Callaghan (US Pub. 2005/0229004 A1; Filed Oct. 13, 2005). Ans. 5. ISSUE Did the Examiner err in rejecting claims 9-17 under 35 U.S.C. § 102(e), finding that Callaghan describes an “automation device” being designated a “ticket agent” with associated functionality as recited in the claims? ANALYSIS We have reviewed the Appellants’ Reply Brief and the Examiner's Answer in light of Appellants’ arguments in the Appeal Brief presented in response to the Final Office Action. We find that the Examiner erred in concluding that one of ordinary skill in the art could conclude that the certification component is an automation device. Ans. 7. We otherwise adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken; and (2) the reasons set forth by the Examiner in the Answer in response to the Appeal Brief. We highlight and address specific findings and arguments below for emphasis and enter a new ground of rejection under 35 U.S.C. Sec. 103(a), finding that one skilled in the art would find it obvious that one or more of Callaghan’s automation devices could include the certification component and associated functionality of a ticket agent. Appeal 2010-011448 Application 11/194,931 4 Claims 9-17 Claims 9-17 stand finally rejection as being anticipated by Callaghan. In the Final Office Action, the Examiner cited the Abstract and paragraph [0034] of Callaghan in support of the rejection of claim 9 as to the disputed elements. Final Office Action, 3. In rejecting independent claim 13, the Examiner also cited paragraph [0038] of Callaghan with respect to the same elements and also with respect to “validating the ticket by the one automation device and allowing the access as a function of the validation result.” Appellants argued that Callaghan has no disclosure of an automation device being designated a ticket agent nor communication between the ticket agent and automation devices. App. Br. 7-10. The Examiner’s response does not further the Examiner’s position as to this point (Ans. 7), and in reply, Appellants summarize their argument as follows: There is no basis to argue that the control component 110 of Figure 1 (or the certificate component 120 of Figure 5) is an automation device. Although the first quoted statement indicates that an automation device may be a ‘computer utilized to program and otherwise transmit information to logic controllers with in [sic] an industrial automation environment’ neither the component 110 nor the component 120 can meet this criterion. Appellants’ position is supported by the fact that the reference separately refers to the certification component 120 without referring to it as an automation device. See again paragraph 38 of Callaghan which states, in part, that the system 500 (of Figure 5) includes ‘a certification component 120’ and "automation devices 140" without at all referring to the component 120 as an automation device. Paragraph 38 also explains that the automation devices (device l and device2) can request and receive the ‘appropriate certificate from the Appeal 2010-011448 Application 11/194,931 5 certification component 120’ without referring to the component as an automation device. Reply Br., 3 (emphasis added). We are persuaded that the Examiner erred in concluding in the Examiner’s Answer that one skilled in the art “could conclude that the certification component is a [sic] automation device because it is located in the Automation network and transmits information with other automation device [sic].” We therefore reverse the rejection of claims 9-17 on this basis. Instead, we enter a new ground of rejection under 35 U.S.C. § 103(a) finding that it would have been obvious to one skilled in the art that any of Callaghan’s automation devices could include a certification component as described by Callaghan. Such a modification is “a combination of familiar elements according to known methods.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). In finding that one skilled in the art would have found it obvious to include the certification component in any of the automation devices, since programming that functionality into an automation device would have yielded a predictable result, we note that the Examiner pointed out Callaghan’s statement that, “automation devices 140 can include but are not limited to programmable logic controllers, I/O devices, and communication adapters . . . [and] can also refer to one or more computers utilized to program and otherwise transmit information to logic controllers with in an industrial automation environment.” One skilled in the art of automation systems would know how to program these automation devices to be certification components with predictable results in view of Callaghan. Appeal 2010-011448 Application 11/194,931 6 We further note that while Callaghan’s statement that “allowing direct access [by automation components] to certificates is not as secure as going though [sic, through] an intermediary such as certification component 120” highlights a possible disadvantage to including the certification component in automation devices, the statement does not discourage following this path. See In re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994). (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”) Indeed, Callaghan goes on to describe that an automation device “could retrieve [a] certificate from a certificate database” despite the possible disadvantage of doing so. Para [0038]. Accordingly, we find that the Examiner erred in finding that Callaghan describes an “automation device” being designated a “ticket agent,” but deem this to be obvious. DECISION We REVERSE the rejection of claims 9-17 under 35 U.S.C. § 102(b) as anticipated by Callaghan but enter a new ground of rejection for claims 9-17 under 35 U.S.C. § 103. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) for clams 9-17. This section provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” TIME PERIOD 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise Appeal 2010-011448 Application 11/194,931 7 one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . REVERSED 37 C.F.R. § 41.50(b) ke