Siemens AktiengesellschaftDownload PDFPatent Trials and Appeals BoardJul 21, 20202019002758 (P.T.A.B. Jul. 21, 2020) 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. 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. Appeal 2019-002758 Application 15/044,906 2 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). Appeal 2019-002758 Application 15/044,906 3 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 Appeal 2019-002758 Application 15/044,906 4 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 Appeal 2019-002758 Application 15/044,906 5 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). Appeal 2019-002758 Application 15/044,906 6 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 Appeal 2019-002758 Application 15/044,906 7 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 Appeal 2019-002758 Application 15/044,906 8 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). Appeal 2019-002758 Application 15/044,906 9 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. Appeal 2019-002758 Application 15/044,906 10 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. Appeal 2019-002758 Application 15/044,906 11 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 Appeal 2019-002758 Application 15/044,906 12 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 Appeal 2019-002758 Application 15/044,906 13 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 Appeal 2019-002758 Application 15/044,906 14 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 Copy with citationCopy as parenthetical citation