Siemens Aktiengesellschaft

Patent Trials and Appeals Board

Jul 21, 2020

2019002758 (P.T.A.B. Jul. 21, 2020)

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.
15/044,906 02/16/2016 Harald ALBRECHT 5029-1503/381725 6937
27799 7590 07/21/2020
COZEN O'CONNOR
277 PARK AVENUE , 20TH FLOOR
NEW YORK, NY 10172
EXAMINER
ZONG, RUOLEI
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
07/21/2020 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 HARALD ALBRECHT

Appeal 2019-002758
Application 15/044,906
Technology Center 2400
Before ST. JOHN A. COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, 5, and 8–17, which are all the
claims pending in the application. Appellant has canceled claims 4, 6, and 7.
See generally, Appeal Br. 12 et seq. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant(s)” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Siemens
AG. Appeal Br. 2.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to “industrial automation systems and, more
particularly, to a communication device of an industrial automation system
and method for configuring the communication device.” See Spec. ¶ 1. In
particular, one embodiment of the invention is described as:
A communication device of an industrial automation system
and method for configuring the communication device, wherein
a communication network address assigned to the
communication device is independently generated from at least
one prefix communicated via router advertisement messages by
at least one router assigned within a subnetwork and from a
device-specific interface identifier, where the communication
device interrogates at at least one server of a name service
system, in accordance with a name resolution protocol, which
communication network addresses are assigned to its
communication device name, the communication network
addresses interrogated at the at least one server of the name
service system are checked with regard to correspondence to
the prefix, and where the communication device assigns to
itself only those communication network addresses interrogated
at the server of the name service system which have a
correspondence to the prefix communicated by the router.
Spec. ¶ 45 (Abstr.).

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Oct. 1, 2018); Reply Brief (“Reply Br.,” filed Feb. 19, 2019); Examiner’s
Answer (“Ans.,” mailed Dec. 19, 2018); Final Office Action (“Final Act.,”
mailed Mar. 14, 2018); Advisory Action (“Adv. Act.,” mailed July 3, 2018);
and the original Specification (“Spec.,” filed Feb. 16, 2016).
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Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method for configuring a communication device of an
industrial automation system, comprising:
generating, by the communication device independently,
a communication network address assigned to the
communication device of the industrial automation system from
at least one prefix communicated via router advertisement
messages by at least one router assigned within the subnetwork
of said communication device of the industrial automation
system and from a device-specific interface identifier;
interrogating, by the communication device of the
industrial automation system, at at least one server of a name
service system, in accordance with a name resolution protocol,
which communication network addresses are assigned to its
communication device name;
checking, by the communication device of the industrial
automation system, the communication network addresses
interrogated at the at least one server of the name service
system to determine correspondence to the prefix
communicated by the at least one router; and
assigning, by the communication device of the industrial
automation system, only those communication network
addresses interrogated at the at least one server of the name
service system which have a correspondence to the prefix
communicated by the router, said communication addresses
being assigned to the communication device of the industrial
automation system;
wherein the server of the name service system comprises
a domain name system (DNS) server which provides a name
service to DNS clients in accordance with a DNS protocol;
wherein the communication device of the industrial
automation system comprises at least one of (i) a DNS monitor
and (ii) a DNS client; and
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wherein the communication device of the industrial
automation system interrogates via at least one of (i) the DNS
monitor and (ii) the DNS client which communication network
addresses are assigned to its communication device name.
Prior Art
The Examiner relies upon the following non-patent literature as
evidence in rejecting the claims on appeal:
Thomson et al., “IPv6 Stateless Address AutoConfiguration,”
IBM Network Working Group, December 1998 (hereinafter
“Thomson”).
Park et al., “DNS Configuration in IPv6,” IEEE Internet
Computing, 2013 (hereinafter “Park”).
Rejection on Appeal
Claims 1–3, 5, and 8–17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Thomson and Park. Final Act. 2
(rejecting claims 1–17); and see Adv. Act. 2 (acknowledging cancellation of
claims 4, 6, and 7 by Appellant).
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 5–11) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the obviousness
rejection of claims 1–3, 5, and 8–17 on the basis of representative
independent claim 1.3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
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ISSUE
Appellant argues (Appeal Br. 5–11; Reply Br. 2–9) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Thomson and Park is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for configuring a communication device of an
industrial automation system” that includes the step of “assigning, by the
communication device of the industrial automation system, only those
communication network addresses interrogated at the at least one server of
the name service system which have a correspondence to the prefix
communicated by the router, said communication addresses being assigned
to the communication device of the industrial automation system,” wherein,
inter alia:
(a) the server of the name service system comprises a
domain name system (DNS) server which provides a name
service to DNS clients in accordance with a DNS protocol;
(b) the communication device of the industrial
automation system comprises at least one of (i) a DNS monitor
and (ii) a DNS client; and
(c) the communication device of the industrial
automation system interrogates via at least one of (i) the DNS
monitor and (ii) the DNS client which communication network
addresses are assigned to its communication device name,
as recited in claim 1 (emphasis added)?

dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments the Examiner erred. We disagree with Appellant’s conclusions
with respect to the obviousness rejection of claims 1–3, 5, and 8–17, and we
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 and rebuttals
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Arguments. We highlight and address specific findings and
arguments regarding representative claim 1 for emphasis as follows.
Issue: Are the Disputed Limitations Taught or Suggested?
Appellant argues against the Examiner’s reliance upon Park’s
teaching by asserting that Park does not teach or suggest its network is an
“industrial automation system.” Appeal Br. 6–7. In particular, Appellant
contends:
There is nothing in any of these publications with respect to
industrial automation systems. As explained at paragraph
[0002] of the specification as originally filed “[a]n industrial
automation system usually comprises a multiplicity of
automation devices internetworked via an industrial
communication network and serves to control or regulate
installations, machines and/or devices in the context of
manufacturing automation or process automation”. Appellant
believes there is little to suggest the skilled person would have
any reason to implement the teachings of Park and Thompson
[sic] within a system utilizing real-time communication
protocols, such as Profinet, Profibus or real-time Ethernet.
Appeal Br. 8.
The Examiner responds by finding Park’s ISP Network, 3GPP
network, or Enterprise network teaches or at least suggests the disputed
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limitation “industrial automation system.” Ans. 6. The Examiner further
finds, and we agree, Appellant’s Specification does not provide a definition
for “industrial automation system” that would preclude this broad but
reasonable interpretation.4 Ans. 3–6.
We are not persuaded the Examiner erred. We are not persuaded
because the features that Appellant argues, i.e., “a system utilizing real-time
communication protocols, such as Profinet, Profibus or real-time Ethernet”
are not recited in the claim, or commensurate with the scope of the claim.
Furthermore, we find the term “industrial automation system” within
claim 1 is akin to a preamble term that does not limit the claim as it does not
“give life, meaning, and vitality” to the claim even though it is also recited
in the body of the claim.5

4 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). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
5 Our reviewing court guides: “Generally,” we have said, “the preamble does
not limit the claims.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d
1336, 1346 (Fed.Cir. 2002). Nonetheless, the preamble may be construed as
limiting “if it recites essential structure or steps, or if it is ‘necessary to give
life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002), quoting Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
A preamble is not regarded as limiting, however, “when the claim body
describes a structurally complete invention such that deletion of the
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We also conclude the clam term “industrial automation system,” as
claimed and described, is a statement of intended use that does not impart
patentability. Our reviewing Court guides: The intended use of a machine is
not germane to the issue of patentability of the machine itself. In re Casey,
370 F.2d 576, 580 (CCPA 1967). There is an extensive body of precedent
on the question of whether a statement in a claim of purpose or intended use
constitutes a limitation for purposes of patentability. See generally Kropa v.
Robie, 187 F.2d 150, 155–59 (CCPA 1951) (note the authority cited therein,
and cases compiled in Donald S. Chisum, 3 Chisum on Patents § 8.06[1][d]
(2008)). Such statements often, although not necessarily, appear in the
claim’s preamble. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
Here we conclude the term “industrial automation system” is merely a
statement of purpose or environment of use for the claimed “method for
configuring a communication device,” because it does not indicate the
“essence . . . of the . . . invention.” See Vizio, Inc. v. Int’l Trade Comm’n,
605 F.3d 1330, 1340–41 (Fed. Cir. 2010) (“[T]he ‘for decoding’ language
. . . is properly construed as a limitation, and not merely a statement of
purpose or intended use for the invention, because ‘decoding’ is the essence

preamble phrase does not affect the structure or steps of the claimed
invention.” Catalina, 289 F.3d at 809. Furthermore, the preamble has no
separate limiting effect if, for example, “the preamble merely gives a
descriptive name to the set of limitations in the body of the claim that
completely set forth the invention.” IMS Tech., Inc. v. Haas Automation,
Inc., 206 F.3d 1422, 1434–35 (Fed. Cir. 2000). See also Am. Med. Sys., Inc.
v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010). “When limitations in
the body of the claim rely upon and derive antecedent basis from the
preamble, then the preamble may act as a necessary component of the
claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332,
1339 (Fed. Cir. 2003).
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or a fundamental characteristic of the claimed invention.”). Accordingly, the
term “industrial automation system” does not serve to further define the
method for configuring a communication device, nor does it further define
the structure of the communication device that is being configured. Kropa,
187 F.2d at 152. This term is not structural, but rather is an environment of
use.
We are also unpersuaded by Appellant’s arguments because the term
“industrial automation system” is not explicitly defined in the Specification.
Although Appellant points to paragraph 2 in their Specification for a
purported definition of the claim term “industrial automation system,” this
section provides examples rather than an express definition. See Spec. ¶ 2.
When the Specification does not contain an express definition, a reasonable,
supported interpretation of the appealed claims that differs from that urged
by applicants can be used to determine the patentability of the claims.
Morris, 127 F.3d at 1055–56 (“Absent an express definition in their
specification, the fact that appellants can point to definitions or usages that
conform to their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that support its
interpretation.”). Indeed, “[i]t is the applicants’ burden to precisely define
the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 (statute omitted).”
Morris, 127 F.3d at 1055–56.
Therefore, under the broadest reasonable interpretation, Appellant
does not identify reversible error in the Examiner’s finding that Park’s
teaching of applications to an ISP Network, a 3GPP network, or an
enterprise network teaches or at least suggests an “industrial automation
system.” Ans. 6.
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Motivation to Combine
Appellant contends, regarding claim 1’s three “wherein” clauses:
In accordance with Appellant’s instant invention, it is
essential that the communication devices query, from the
respective DNS server, which IPv6 addresses are already
associated with their respective device names in the Domain
Name System or the DNS server, respectively. If the respective
communication device is still in the same sub-network as the
“older” communication device which it replaces, then the
communication device self-assigns the IPv6 address formerly
associated with the “older” communication device, in order to
be still reachable via the “old” IPv6 address and to provide for
seamless connectivity of the communication device despite its
replacement. In order to determine whether the sub-network is
still the same the IPv6 prefix is checked, because the IPv6
prefix is indicative of the respective sub-network.
Moreover, it is a peculiarity unique to industrial
automation systems that a replacement communication device
inherits the name of the “older” communication device which it
replaces in a replacement scenario. In ordinary IT or
communications systems this is quite unusual, because new
devices are associated with a new and unique name. For this
reason, the problem Appellant’s claimed invention seeks to
solve simply does not exist outside industrial automation
systems. As such, the skilled person is provided with no
motivation or reason whatsoever to modify the teachings of
Park or the teachings known from any other reference (e.g.,
Thompson [sic]) in an attempt to arrive at Appellant’s instant
claimed invention.
Appeal Br. 9–10.

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As mentioned above, Appellant argues “Appellant believes there is
little to suggest the skilled person would have any reason to implement the
teachings of Park and Thompson [sic] within a system utilizing real-time
communication protocols, such as Profinet, Profibus or real-time Ethernet.”
Appeal Br. 8.
The Examiner concludes “[i]t would have been obvious to one having
ordinary skill in the art at the time the application of the invention was filed
to use Duplicate Address Detection disclosed by Thomson to modify the
method of Park so that a host name is an alias that is assigned to an IP node
to uniquely identify it as a TCP/IP host.” Final Act. 5. We agree with the
Examiner’s motivation to combine the cited references in the manner
suggested because we find the claimed invention is merely a combination of
old elements according to known methods that would yield predictable
results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). In KSR, the
Court stated “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill. . . . [A] court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.
To the extent that the Examiner relies on the knowledge of one of
ordinary skill in the art to combine the teachings of the references, this
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practice is consistent with current case law. For example, the Supreme
Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis
should be made explicit. See In re Kahn, 441 F.3d 977, 988
(C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must
be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.”). As our
precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.
KSR, 550 U.S. at 418.
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Final Act. 5. Thus, we find a preponderance of
the evidence supports the Examiner’s findings and conclusions.
Moreover, Appellant has not demonstrated that the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides “operates as a beneficial
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check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys.,
725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness Rejection of
independent claim 1, and grouped claims 2–3, 5, and 8–17, which fall
therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–9) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1–3, 5, and 8–17 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C
§
Basis/
References
Affirmed Reversed
1–3, 5, 8–17 103 Obviousness Thomson, Park 1–3, 5, 8–17
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FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED