Siemens Aktiengesellschaft

Patent Trials and Appeals Board

Dec 21, 2021

2020005514 (P.T.A.B. Dec. 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.
14/994,380 01/13/2016 Harald Albrecht 5029-1495/380822 8776
27799 7590 12/21/2021
COZEN O''CONNOR
3WTC, 175 Greenwich Street
55th Floor
NEW YORK, NY 10007
EXAMINER
MUNDUR, PADMAVATHI V
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
12/21/2021 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 HARALD ALBRECHT

Appeal 2020-005514
Application 14/994,380
Technology Center 2400

Before JOHN A. EVANS, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–19, which are all of the claims
pending in the application. See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2019). Appellant identifies Siemens AG as the real party in interest.
Appeal Br. 2.
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Application 14/994,380
2
CLAIMED SUBJECT MATTER
The claims are directed to a communication device and method for
setting up an uninterrupted communication connection to a communication
device that is allocated to an industrial automation system. Spec. ¶ 10. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A method for setting up an uninterrupted
communication connection with a communication device
allocated to an industrial automation system including an
engineering system, comprising:
setting up a first communication connection between a
first communication device and a programmable logic device
(PLC) in accordance with a transmission control protocol using
a first communication network address allocated to the first
communication device;
checking, by a monitoring unit within the engineering
system of the industrial automation system allocated to the first
communication device, based on a name resolution protocol,
whether a second communication network address allocated to
the first communication device is valid;
initiating, by the monitoring unit within the engineering
system of the industrial automation system a set-up of an
additional second communication connection between a
transport and switching function unit allocated to the first
communication device and the PLC in cases of an allocation of
a second valid communication network address and an existing
first communication connection;
setting up, by the transport and switching function unit
allocated to the first communication device, the second
communication connection using the second communication
network address allocated to the first communication device; and
clearing the first communication connection if the second
communication connection is successfully set-up.

Appeal Br. 10 (Claims App.).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Goto et al. (“Goto”) US 2003/0177236 A1 Sept. 18, 2003
Schmirler et al.
(“Schmirler”)
US 2015/0372823 A1 Dec. 24, 2015
Liu et al. (“Liu”) US 2016/0183129 A1 June 23, 2016
REJECTION
Claims 1–19 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Liu, Goto, and Schmirler. Final Act. 2–12.
ANALYSIS
Based on Appellant’s arguments, we select claim 1 as representative
of claims 1–19. See 37 C.F.R. § 41.37(c)(1)(iv) (2013).
Appellant argues that the combined teachings of Liu, Goto, and
Schmirler do not teach the limitation “setting up a first communication
connection between a first communication device and a programmable logic
device (PLC) in accordance with a transmission control protocol using a first
communication network address allocated to the first communication
device,” as recited in claim 1. Appeal Br. 4. In particular, Appellant argues
that “there is no description in Schmirler with respect to the operation of
programmable logic controllers.” Id. at 6. Appellant argues that “Schmirler
fails to teach or suggest the setup of a first communication between a
communication device and a PLC, and therefore fails to cure the deficiency
of Liu and Goto.” Id. at 7.
Appellant has not persuaded us that the Examiner erred at least
because Appellant attacks Schmirler individually, even though the Examiner
relied on the combination of Lui, Goto, and Schmirler in rejecting claim 1.
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In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)) (“The test for obviousness is what the
combined teachings of the references would have suggested to those having
ordinary skill in the art.”). The Examiner found that Liu teaches the disputed
“setting up” step, except for “a programmable logic device (PLC),” for
which the Examiner relied on Schmirler. Final Act. 5. The Examiner also
relied on Schmirler as teaching an industrial automation system context,
which would modify the type of communication devices in Liu to operate in
an industrial automation environment. Id. As the Examiner explained, “Liu
is modified to incorporate a PLC as a second communication device as
recited in the claim based on a combination with Schmirler’s teachings.
Schmirler need not show what Liu teaches.” Ans. 4.
Because Appellant has not persuasively addressed what the combined
teachings of Liu, Goto, and Schmirler would have suggested to an artisan of
ordinary skill, Appellant’s arguments are not commensurate in scope with
the Examiner’s rejection.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Liu, Goto, and Schmirler teaches or suggests
the disputed “setting up” limitation, as recited in claim 1.
Appellant argues for the first time in the Reply Brief that the preamble
of claim 1 requires the “‘checking’ and ‘initiating . . . to occur within the
‘industrial automation system.’” Reply Br. 2. Appellant, however, has
waived this argument because Appellant presented it for the first time in the
Reply Brief, without a showing of good cause. See 37 C.F.R. § 41.41(b)(2)
(2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473–74 (BPAI 2010
(informative opinion) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
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rebut the Examiner’s rejections, but were not.”). Appellant’s new argument
is not in response to the Examiner’s Answer and, therefore, is untimely and
not considered. We note, however, that the Examiner relied on Schmirler as
teaching “the engineering system of the industrial automation system
allocated to the first communication device” as well as a PLC. See Final Act.
6–7.
Appellant next argues that the Examiner erred in combining Liu and
Goto with Schmirler. Appeal Br. 8–9. Appellant argues that Liu does not
include devices that are similar or analogous to a PLC, the field of endeavor
of Liu differs from the field of endeavor of Appellant’s invention, and the
Examiner’s rejection is based merely on hindsight. Id. at 9.
We are not persuaded that the Examiner erred. Appellant’s arguments
are conclusory, and do not persuasively explain why Liu does not include
devices that are similar or analogous to a PLC or why Liu’s field of
endeavor differs from the field of endeavor of Appellant’s invention. Indeed,
Appellant does not provide sufficient bases for these arguments. It is well
settled that mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence).
The Examiner has set forth articulated reasoning with rational
underpinnings for the combination. Final Act. 5–7. Appellant has not
identified any knowledge relied upon by the Examiner that was gleaned only
from Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971). Nor has Appellant provided objective
evidence of secondary considerations, which “operates as a beneficial check
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on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc.,
725 F.3d 1341, 1352 (Fed. Cir. 2013).
Appellant argues for the first time in the Reply Brief that Liu and
Goto are not analogous art to the claimed invention because the “teachings
of Liu and Goto address completely different problems,” “Liu is directed to
cellular technologies and has nothing to do with industrial automation
technologies,” and “Goto is directed to maintaining privacy protection for a
terminal that is dynamically assigned a global IP address by an ISP using
DHCP, which also has nothing to do with industrial automation
technologies.” Reply Brief 4. Appellant also argues for the first time in the
Reply Brief that “modifying the teachings of Liu and Goto based on the
teachings of Schmirler would render each of these systems inoperative and
no longer fit for their intended purposes.” Id. at 4–5. Appellant further
argues for the first time in the Reply Brief that “modifying the teachings of
Liu and Goto based on the teachings of Schmirler would cause a change in
the principle of operation of the systems depicted in Liu, Goto and
Schmirler.” Id. at 8.
Appellant, however, has waived these arguments because Appellant
presented them for the first time in the Reply Brief, without a showing of
good cause. See 37 C.F.R. § 41.41(b)(2) (2012); accord Borden, 93 USPQ2d
at 1473–74. We note, however, that even if Appellant’s arguments were
timely, they are unpersuasive at least because they are conclusory in nature
and lack the support of persuasive argument or objective evidence. For
example, Appellant argues that modifying the teachings of Liu and Goto
based on the teachings of Schmirler would render each of these systems
inoperative and no longer fit for their intended purposes, but Appellant does
not explain how or why that would happen. The same deficiencies are
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apparent in Appellant’s arguments regarding the principle of operation and
undue experimentation. See Reply Br. 4–8.
It is well settled that “a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements.” Mouttet, 686 F.3d at 1332 (citations omitted). Nor
is the test for obviousness whether a secondary reference’s features can be
bodily incorporated into the structure of the primary reference. See Keller,
642 F.2d at 425. The Supreme Court has held that “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 Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
We agree with the Examiner that it would have been within the skill
of an ordinarily skilled artisan to modify the second/mobile device in Liu to
operate as, or take the form of, a PLC. See Ans. 4; KSR, 550 U.S. at 417
(“[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” (citations omitted)). Appellant has not
persuaded us that combining the respective familiar elements of the cited
references in the manner proffered by the Examiner would have been
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellant’s invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
For these reasons, we are not persuaded that the Examiner erred in
combining the cited teachings of Lui, Goto, and Schmirler.
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Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, as well as independent claim 19 and dependent claims
2–18, grouped therewith.
CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–19.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 103 Liu, Goto, and
Schmirler
1–19
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2013).
AFFIRMED