Siemens Akiengesellschaft

Patent Trials and Appeals BoardJan 21, 2021

2020002877 (P.T.A.B. Jan. 21, 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. 15/118,215 08/11/2016 Benjamin LUTZ 5029-1586PUS/390124 1057 27799 7590 01/21/2021 COZEN O''CONNOR 3WTC, 175 Greenwich Street 55th Floor NEW YORK, NY 10007 EXAMINER KABIR, SAAD M ART UNIT PAPER NUMBER 2119 NOTIFICATION DATE DELIVERY MODE 01/21/2021 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): patentdocket@cozen.com patentsecretary@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BENJAMIN LUTZ, HOLGER RACHUT, STEFAN RUNDE, and GERRIT WOLF Appeal 2020-002877 Application 15/118,215 Technology Center 2100 ____________ Before ELENI MANTIS MERCADER, LARRY J. HUME, and CARL L. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 6 and 8–10, which constitute all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Siemens AG. Appeal Br. 2. Appeal 2020-002877 Application 15/118,215 2 STATEMENT OF THE CASE Appellant’s disclosure relates to a method for starting up an industrial automation network with a plurality of field devices that are inter-connected to one another by a network for data communication, where a configuration and parameterization of the field devices located in the automation network is performed by a software tool. Spec. 1, Abstr., Figs. 1–4. A field device integration package includes a user interface plug-in having an extension and a simulation model provided in the extension. Appeal Br., Claims App. (Claim 6); Spec. 9–10 (Summary of the Invention), Figs. 1–4. Claim 6 is illustrative of the invention and reads as follows (emphasis added): 6. A method for starting an industrial automation network with a plurality of field devices which are interconnected to one another by a network for data communication, wherein a configuration and parameterization of the plurality of field devices located in the automation network is performed by a software tool, the method comprising: providing a field device integration package including a user interface plug-in having an extension comprising a simulation model provided in the extension via which access to the simulation model for behavior of at least one field device occurs for the software tool and the software tool is additionally provided with access to the simulation model for a process by the extension of the user interface plug-in; starting the at least one field device virtually via the software tool, the behavior of the at least one field device being simulated via the simulation model during a startup phase of the industrial automation network preceding an operating phase of the industrial automation network to reduce errors during operation of the industrial automation network; and bringing the at least one field device into use in the operating phase of the industrial automation network. Appeal 2020-002877 Application 15/118,215 3 Appeal Br. 8 (Claims App.). REFERENCES AND REJECTION The prior art relied upon by the Examiner is: Name Reference Date Odom et al. US 2003/0163298 A1 Aug. 28, 2003 Giango et al. US 2015/0113423 A1 Apr. 23, 2015 Claims 6 and 8–10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Odom and Giango. Final Act. 6–9. ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s contentions in the Appeal Brief and the Reply Brief that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief. As discussed below, we are persuaded by Appellant’s contentions of Examiner error. Appellant argues, inter alia, the Examiner errs in finding that the combination of Odom and Giango teaches the claim 6 limitation “providing a field device integration package including a user interface plug-in having an extension comprising a simulation model provided in the extension” (also referred to as “disputed limitation”). Appeal Br. 3–6; Reply Br. 1–4. In particular, Appellant argues “[t]he salient point is that the simulation model must be provided in (within) the extension described in Odom.” Appeal Br. 4. With this interpretation, Appellant argues Odom does not teach this disputed limitation. Id. at 3–7; Reply Br. 1–4 In the Final Office Action, the Examiner finds the combination of Odom and Giango teaches the limitations of claim 6. Final Act. 6–7. The Appeal 2020-002877 Application 15/118,215 4 Examiner finds Odom teaches many of the claim limitations, but Odom does not explicitly teach “providing a field device integration device.” Id. at 7. The Examiner finds Giango teaches providing a field device integration package. Id. (citing Giango ¶ 35). In the Answer, the Examiner asserts the broadness of the claim language can be interpreted to mean that the simulation model is contained within the extension (also referred to as “first interpretation”), or can be interpreted to mean that access to the simulation is provided via the extension (also referred to as “second interpretation”). Ans. 10. The Examiner asserts that the second interpretation is the correct interpretation and is taught by Odom. Id. (citing Odom ¶¶ 212, 346). According to the Examiner, the remainder of the claim language recites the extension via which access to the simulation is provided along with access to the simulation model for a process by the extension of the user interface plug-in. Examiner believes that this latter portion of the claim limitation clears up and/or specifies and/or narrows the interpretation of the former portion (which is broader) of the claim limitation regarding which Applicant is arguing. Id. at 11. The Examiner finds Odom teaches the second interpretation that access to the simulation is provided via the extension because Odom teaches the user interface plug-in having the extension. Id. at 11 (citing Odom ¶ 212). The Examiner finds Odom teaches that the RIO (Reconfiguable I/O Device) system includes bus interface logic along with the control/data bus, i.e. together comprising at least a user interface plug-in, present a PCI or PXI interface, where PCI or PXI are extensions for Instrumentation. Id. at 11 (citing ¶ 212). The Examiner finds the user interface plug-in as having Appeal 2020-002877 Application 15/118,215 5 an extension is used to access simulation like the simulation program “Lab VIEW.” (Id. at 11 (citing Odom ¶ 346). The Examiner also finds that Odom teaches the first interpretation that the simulation model can be contained within the extension because Odom teaches timing models being included within the RIO configuration (Para. 536), where the RIO system is understood as containing a user interface plug-in having an extension (Para. 212). This is because Odom teaches that the RIO system includes bus interface logic along with the control/data bus, i.e. together comprising at least a user interface plug-in, present a PCI or PXI interface, where PCI or PXI are extensions for Instrumentation (Para. 212). Id. at 10. In the Appeal Brief, Appellant argues the RIO card of Odom does not include (contain) an extension because the Odom extension is located at the PXI bus (i.e., PCI eXtensions) to which the RIO card attaches. Appeal Br. 4 (citing Odom ¶ 212). Appellant argues Odom describes features associated with the RIO card. Id. (citing Odom ¶¶ 346, 348. 536). According to Appellant, with respect to the PXI bus, i.e., PCI eXtensions (which purportedly correspond to the extension of independent claim 6), the RIO card connects/attaches to the PXI bus so the functionality described in the cited paragraphs are all with respect to the RIO card of Odom. Id. In the Reply Brief, Appellant reiterates and argues, consistent with the Specification, the claimed integration package has an extension and within that extension is a simulation package. Reply Br. 3. Appellant argues Odom’s extension is at the PXI bus to which the RIO card attaches. Id. Appellant further argues that Odom does not teach that the PXI bus includes a simulation program. Id. According to Appellant, if a simulation could or would be found in Odom, it would be in the RIO card. Id. at 4. Appeal 2020-002877 Application 15/118,215 6 We now refer to the disputed limitation discussed, supra, which requires, “providing a field device integration package including a user interface plug-in having an extension comprising a simulation model provided in the extension (emphasis added).” During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the Specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret claims broadly but reasonably in light of the Specification, we nonetheless must not import limitations from the Specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court states that “the words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations omitted). However, the broadest reasonable interpretation differs from the broadest possible interpretation. In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is “an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’” Id. at 1382–83 (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). The Examiner’s findings are premised on a claim interpretation (second interpretation) that is unreasonably broad. The ordinary and customary meaning of “including a user interface plug-in having an extension comprising a simulation model provided in the extension” is that the simulation model is within (provided in) the extension (first Appeal 2020-002877 Application 15/118,215 7 interpretation). Appellant points out this interpretation is consistent with the Specification. Appeal Br. 4–5 (citing Spec.2 ¶¶ 24, 25). The Examiner presents no persuasive evidence that the first interpretation (within) is inconsistent with the Specification. On the record before us, we are persuaded by Appellant’s argument because the Examiner provides insufficient evidence to support the finding that Odom teaches the disputed limitation, as broadly and reasonably interpreted. Odom teaches an extension in the PCI bus which attaches to the RIO card, but the simulation model is not identified and, even if it were identified, there is insufficient evidence to support that the simulation model would be in the RIO card. Accordingly, the Examiner does not provide prima facie support for the rejection. “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Therefore, on the record before us, we are constrained to conclude the Examiner errs in rejecting claim 6, as well as dependent claims 8–10. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). CONCLUSION For the reasons stated above, we do not sustain the obviousness rejection of claim 6 and dependent claims 8–10. Because our decision with regard to the disputed limitation is dispositive of the rejections made, we do not address additional arguments raised by Appellant. 2 Appellant is referring to the Published application. Appeal 2020-002877 Application 15/118,215 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 6, 8–10 103(a) Odom, Giango 6, 8–10 REVERSED