ROCKWELL AUTOMATION TECHNOLOGIES, INC.

Patent Trials and Appeals Board

May 10, 2021

2020000122 (P.T.A.B. May. 10, 2021)

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.
14/995,989 01/14/2016 Bijan Sayyarrodsari 2013P-174-
US1_ALBR0560-1
3902
42982 7590 05/10/2021
Rockwell Automation, Inc./FY
Attention: Linda H. Kasulke E-7F19
1201 South Second Street
Milwaukee, WI 53204
EXAMINER
ALMANI, MOHSEN
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
05/10/2021 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):
docket@fyiplaw.com
raintellectualproperty@ra.rockwell.com
todd@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIJAN SAYYARRODSARI, KADIR LIANO, and
ALEXANDER B. SMITH
Appeal 2020-000122
Application 14/995,989
Technology Center 2100
Before JAMES R. HUGHES, SCOTT E. BAIN, and
MICHAEL T. CYGAN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–20 are pending, stand rejected, are appealed by Appellant,
and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act.
1–2; Appeal Br. 19.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Rockwell
Automation Technologies, Inc. See Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed Jan. 14, 2016
(claiming benefit of US 14/077,006, filed Nov. 11, 2013); Appeal Brief
(“Appeal Br.”), filed Mar. 29, 2019; and Reply Brief (“Reply Br.”), filed
Appeal 2020-000122
Application 14/995,989

2
CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, “generally relates
to control systems, and more particularly, to the use of a database within a
control system decision cycle.” Spec. ¶ 2. More specifically, Appellant’s
claimed automation system includes an actuator, a sensor to measure
operational parameters of the actuator, and a control system. The control
system determines automation state data including various inputs and
outputs to the automation process, the relationship between the inputs and
the outputs, and constraints on the inputs. A controller of the control system
(one of multiple controllers in the control system) self-configures an
interconnection with another controller based on the automation system state
data. See Spec. ¶¶ 8–10; Abstract. Claims 1 (directed to a system), 10
(directed to a computer-readable medium), and 17 (directed to a method) are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An automation system comprising:
an actuator configured to implement a control action to
facilitate performing an automation process in the automation
system;
a sensor configured to measure an operational parameter
of the actuator; and
a control system communicatively coupled to the actuator
and the sensor, wherein:
the control system comprises a plurality of
processors and memory implemented in a plurality of
controllers; and

Oct. 3, 2019. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed Oct. 29, 2018; and Answer (“Ans.”) mailed Aug. 6, 2019.
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Application 14/995,989

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the memory is configured to store instructions that,
when executed by one or more processors of the plurality of
processors, cause the one or more processors to:
determine holistic state data comprising a
first field that indicates input variables to the automation process,
a second field that indicates output variables from the automation
process, a third field that indicates a process model that describes
relationship between the input variables and the output variables
of the automation process, a fourth field that indicates constraints
on the input variables of the automation process, and a fifth field
that indicates an objective function, wherein a first controller of
the plurality of controllers is configured to self-configure an
interconnection with a second controller selected from the
plurality of controllers based on the holistic state data;
determine the control action to be
implemented by the actuator based at least in part on the
operational parameter of the actuator measured by the sensor and
the process model, the input variables, the output variables, the
constraints, and the objective function indicated in fields of the
holistic state data; and
instructing the actuator to implement the
control action to facilitate optimizing performance of the
automation process.
Appeal Br. 36 (Claims App.) (emphasis added).
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Application 14/995,989

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bladow US 6,175,770 B1 Jan. 16, 2001
Pietrzyk et al.
(“Pietrzyk”)
US 6,549,034 B1 Apr. 15, 2003
Wojsznis et al.
(“Wojsznis”)
US 2004/0049299 A1 Mar. 11, 2004
Attarwala US 2005/0075738 A1 Apr. 7, 2005
Lawson et al.
(“Lawson”)
US 2013/0212129 A1 Aug. 15, 2013

REJECTIONS3, 4
1. The Examiner rejects claims 17–20 under 35 U.S.C. § 102(a)(2)
as being anticipated by Attarwala. See Final Act. 5–8.
2. The Examiner rejects claims 1 and 5–15 under 35 U.S.C. § 103
as being unpatentable over Wojsznis and Bladow. See Final Act. 8–16.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 102. Because the present application
has an effective filing date after the AIA’s effective date (March 16, 2013),
this decision refers to 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103.
4 The Examiner withdrew a subject matter eligibility rejection under
35 U.S.C. § 101. See Ans. 3. We do not address Appellant’s arguments
directed to the withdrawn rejection. The Examiner also rejected claim 7
under 35 U.S.C. § 112(b) as being indefinite. See Final Act. 4–5. Appellant
amended claim 7 (see Amendment filed Dec. 21, 2018 at 4, 8) and the
Examiner entered the amendment (see Advisory Action (“Adv. Act.”)
mailed Jan. 14, 2019). The Examiner did not explicitly withdraw the
rejection (in the Adv. Act. or the Examiner’s Answer), nor did the Examiner
renew the rejection in the Answer. We deem the indefiniteness rejection to
be withdrawn.
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3. The Examiner rejects claims 2–4 under 35 U.S.C. § 103 as
being unpatentable over Wojsznis, Bladow, and Pietrzyk. See Final Act. 16–
19.
4. The Examiner rejects claim 16 under 35 U.S.C. § 103 as being
unpatentable over Wojsznis, Bladow, and Lawson. See Final Act. 19–20.
ANALYSIS
Anticipation Rejection of Claims 17–20
The Examiner rejects independent claim 17 (as well as dependent
claims 18–20) as anticipated by Attarwala. See Final Act. 5–7; Ans. 4–5.
Specifically, the Examiner finds that Attarwala discloses every feature of
claim 17, including the disputed limitation of “simulating, using the one or
more processors, operation of the controller based at least in part on the
holistic state data while the controller performs one or more other
operations.” Final Act. 6 (quoting claim 17 (Appeal Br. 40 (Claim App.))).
Appellant contends that Attarwala does not disclose the disputed limitations
of claim 17. See Appeal Br. 26–28; Reply Br. 2. Specifically, Appellant
contends, inter alia, that
[C]ontrary to the Examiner’s understanding, Appellants
respectfully submit that the simulation package described in
Attarwala merely appears to simulate the process responses, but
not actually determining the processes responses resulting from
actually performing the process.
. . . .
Attarwala explicitly describes that the simulation “package
utilizes two sets of response models, one for simulating actual
process responses and another for prediction of actual process
responses used in the controller.” Attarwala, paragraph 262. In
other words, the simulation package described in Attarwala
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appears to simulate operation of the controller by simulating
predictions of process responses that would be made by the
controller. Additionally, the simulation package described in
Attarwala appears to simulate the process by simulating process
responses of the process.
With this understanding, Appellants emphasize that the
“actual process responses” used in the simulation package of
Attarwala appear to be simulated and, thus, not determined from
actually performing the process. In other words . . . the
simulation package described in Attarwala does not appear to
[disclose] operating a controller to control a process while its
operation is concurrently being simulated by the simulation
package, as contended by the Examiner. As such . . . Attarwala
does not . . . disclose using one or more processors to simulate
operation of a controller, while the controller performs one or
more other operations . . . as . . . recited in independent claim
17.
Reply Br. 2; see Appeal Br. 26–28.
We agree with Appellant that the Examiner-cited portions of
Attarwala (Final Act. 6; Ans. 4–5 (citing Attarwala ¶¶ 261, 262, 268)) do not
disclose a processor of a controller implemented in a control system,
simulating operation of the controller while the controller performs other
operations (i.e., concurrently or in parallel with the simulation). Here,
according to Appellant’s Specification, the “operation” or “operations” refer
to the controller performing control operations of the automation system and
process under control. See Spec. ¶¶ 28, 29, 62, 63. Appellant’s
Specification distinguishes performing a simulation (by a processor in a
control system) from a controller performing actual control operations.
The Examiner, however, equates simulating operations with actual
operations, and maintains that Attarwala discloses performing a simulation
concurrently with other operations.
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Claim 17 stimulates a controller action while the controller
performs at least one other operation. The one at least on other
operation in the cited paragraph is the operation that is based on
“actual process responses” and simulating operation of the
controller based at least on the holistic state data is an operation
that is based on “the prediction of actual responses[.”] These
operations are independent operations whose results are
compared for optimizing the operation of a controller through
“Model Mismatch error”; the operation based on “actual process
responses” is based on what controller actually does using certain
parameters while the operation based on “the prediction of actual
responses” is based on different set of parameters according to
different control models because it is based on “the response
models used in the prediction of actual process response in the
controller[.”]
Ans. 4–5. The Examiner misconstrues the required nature of the claimed
operation(s). Claim 17 explicitly requires “while the controller performs one
or more other operations.” (Emphasis added). In the context of claim 17,
based on Appellant’s disclosure (in the Specification), operations are not
merely operations of a processor, but rather are operations of a controller
while controlling a process under control (i.e., actual rather than simulated
operations). At best, the Examiner-cited portions of Attarwala describe
concurrent simulated operations. See Appeal Br. 26–28; Reply Br. 2;
Attarwala ¶¶ 261, 262, 268.
The Examiner has not shown Attarwala discloses the disputed features
of claim 17. To anticipate a prior art reference must “disclose all elements
of the claim within the four corners of the document, and it must disclose
those elements arranged as in the claim.” Microsoft Corp. v. Biscotti, Inc.,
878 F.3d 1052, 1068 (Fed. Cir. 2017) (internal quotation marks omitted).
See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989);
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Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987); Manual Patent Examining Procedure (“MPEP”) § 2131.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Attarwala anticipates Appellant’s claim 17.
Dependent claims 18–20 depend from and stand with claim 17.
Accordingly, Appellant’s contentions persuade us of error in the Examiner’s
anticipation rejection of representative independent claim 17 and we reverse
the Examiner’s rejection of claims 17–20.
Obviousness Rejection of Claims 1 and 5–15
The Examiner rejects independent claim 1 (as well as independent
claim 10 and dependent claims 5–9 and 11–15) as obvious in view of
Wojsznis and Bladow. See Final Act. 8–11; Ans. 6–8. Specifically, the
Examiner relies on Bladow to teach the feature of “a first controller of the
plurality of controllers is configured to self-configure an interconnection
with a second controller selected from the plurality of controllers based on
the holistic state data” (Appeal Br. 36 (Claim App.) (claim 1)). See Final
Act. 11; Ans. 6–8. Appellant contends that Bladow does not disclose the
disputed limitations of claim 1. See Appeal Br. 28–32; Reply Br. 3–4.
Specifically, Appellant contends, inter alia, that Bladow does not teach a
controller “that self-configures an interconnection with another controller”
because Bladow describes controllers “connected via fixed
interconnections.” Appeal Br. 30; see Appeal Br. 31; Reply Br. 3–4.
We agree with Appellant that the Examiner-cited portions of Bladow
(in combination with Wojsznis) do not disclose a controller self-configuring
an interconnection with a second controller. The Examiner-cited portions of
Bladow (see Bladow col. 3, l. 53–col. 4, l. 40; col. 4, ll. 52–59; col. 5, ll. 2–
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Application 14/995,989

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8; Fig. 2) describe self-configuring controllers, in that Bladow describes that
“the controller can identify its assigned tasks and functions and
automatically adopt the appropriate one of the plurality of operating
programs stored therein for execution” (Bladow col. 4, ll. 22–25), but
Bladow does not describe a controller capable of self-configuring which
controllers it is interconnected with. Appellant’s Specification explains that
such self-configuration involves determining other controllers to be used in
computations and performing control operations using the determined
configuration of controllers (e.g., a first controller interconnecting with a
second controller and utilizing data determined by the second controller).
See Spec. ¶ 61; Fig. 8. The Examiner-cited portions of Bladow do not
describe a similar self-configuration. As shown on Bladow’s Figure 2, the
controllers have fixed connections with one another, and self-configure the
programs that they execute. Bladow’s controllers do not choose which
controllers they interconnect with, and do not utilize information computed
by other controllers.
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding Bladow (in combination with Wojsznis)
teaches a controller that self-configures its interconnections with other
controllers. Wojsznis and Bladow do not teach the disputed features of
claim 1. Independent claim 10 includes limitations of commensurate scope.
Dependent claims 5–9 and 11–15 depend from and stand with claims 1 and
10, respectively. Accordingly, Appellant’s contentions persuade us of error
in the Examiner’s obviousness rejection of representative independent claim
1 and we reverse the Examiner’s rejection of claims 1 and 5–15.

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Obviousness Rejection of Claims 2–4 and 16
The Examiner rejects claims 2–4 as obvious over Wojsznis, Bladow,
and Pietrzyk. See Final Act. 16–19. The Examiner also rejects claim 16 as
obvious over Wojsznis, Bladow, and Lawson. See Final Act. 19–20. The
Examiner does not suggest, and we do not find, that the additional cited
references (Pietrzyk and Lawson) cure the deficiencies of Bladow (in
combination with Wojsznis) (supra). Therefore, we do not sustain the
Examiner’s obviousness rejections of claims 2–4, and 16 for the same
reasons set forth for claim 1 (supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 17–
20 under 35 U.S.C. § 102(a)(2). Appellant has also shown that the Examiner
erred in rejecting claims 1–16 under 35 U.S.C. § 103. We, therefore, do not
sustain the Examiner’s rejection of claims 1–20.
Appeal 2020-000122
Application 14/995,989

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–20 102(a)(2) Attarwala 17–20
1, 5–15 103 Wojsznis, Bladow 1, 5–15
2–4 103 Wojsznis, Bladow,
Pietrzyk
2–4
16 103 Wojsznis, Bladow,
Lawson
16
Overall
Outcome
1–20

REVERSED