8204717 et al.

Patent Trials and Appeals Board

Dec 17, 2019

90020121 - (D) (P.T.A.B. Dec. 17, 2019)

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.
90/020,121 12/01/2017 8204717 H0020842-0104 6023
92723 7590 12/17/2019
HONEYWELL/BANNER
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/17/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HONEYWELL INTERNATIONAL INC.
Patent Owner and Appellant
____________

Appeal 2019-003778
Reexamination Control 90/020,121
United States Patent 8,204,717 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s
decision to reject claims 1–41. We have jurisdiction under 35 U.S.C. §§ 134
and 306, and we heard the appeal on December 2, 2019.
We AFFIRM.

1 Appellant identifies the real party in interest as Honeywell International,
Inc. Appeal Br. 2.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

2
STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on December 1, 2017 of United States Patent 8,204,717 B2 (“the ’717
patent”), issued to McLaughlin et al. on June 19, 2012.
The ’717 patent describes using cloud computing in equipment for
health monitoring applications. To this end, the system includes a
computing cloud, with data storage and processing units, that provides a
service. In one implementation, clients communicate with the computing
cloud and transmit information associated with an industrial automation unit
to the computing cloud so that the computing cloud’s processor can
determine the automation unit’s status. See Abstract. Claim 1 is illustrative
of the invention and is reproduced below:
1. A system comprising:
a computing cloud comprising one or more data storage units and one
or more processing units, wherein the computing cloud is configured to
provide at least one service and shared hardware and software resources; and
a plurality of clients;
wherein the computing cloud is configured to provide the at least one
service and the shared hardware and software resources for use by the
clients;
wherein each client is configured to communicate with the computing
cloud and at least one industrial automation unit and to transmit information
associated with the at least one industrial automation unit to the computing
cloud; and
wherein at least one of the one or more processing units in the
computing cloud is configured to determine a status of the at least one
industrial automation unit using the information provided by the clients.

Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

3
THE REJECTIONS
The Examiner rejected claims 1–23, 25–29, 31–36, and 38–41 under
35 U.S.C. § 102(b) as anticipated by Karasawa (US 7,133,807 B2; issued
Nov. 7, 2006). Final Act. 2–19.2
The Examiner rejected claims 24, 30, and 37 under 35 U.S.C. § 103(a)
as unpatentable over Karasawa and Imai (US 2004/0220778 A1; published
Nov. 4, 2004). Final Act. 19–21.

THE ANTICIPATION REJECTION
The Examiner finds that Karasawa discloses every recited element of
independent claim 1 including a “computing cloud,” namely vendor-side
computer 26, that is configured to provide at least one service, namely
restoration processing, and shared hardware and software resources, which
are said to correspond to (1) storage section 29, databases 32–35, and
communication lines 100 (shared hardware resources), and (2) software
updates (shared software resources). Final Act. 2–4.
Appellant argues that not only is Karasawa’s remote vendor-side
computer not a computing cloud as the term is understood in the art, the
vendor-side computer does not provide shared hardware or software
resources, let alone divide data and processes with the plant-side computer.

2 Throughout this opinion, we refer to (1) the Final Rejection mailed July 17,
2018 (“Final Act.”); (2) the Appeal Brief filed November 19, 2018 (“Appeal
Br.”); (3) the Examiner’s Answer mailed January 29, 2019 (“Ans.”); and (4)
the Reply Brief filed March 29, 2019 (“Reply Br.”).
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

4
Appeal Br. 9–16; Reply Br. 2–11.3 According to Appellant, Karasawa’s
remote vendor-side computer lacks characteristics of a computing cloud that
ordinarily skilled artisans would understand from the term’s plain meaning,
including (1) network access; (2) on-demand self service; (3) elasticity; and
(4) resource pooling. Appeal Br. 17–20; Reply Br. 3–6. Appellant argues
various other recited limitations summarized below.

ISSUES
Under § 102, has the Examiner erred by finding that Karasawa
discloses:
(1) a computing cloud configured to provide at least one service and
shared hardware and software resources for client use as recited in claim 1?
(2) the computing cloud supports a Service Oriented Architecture
(SOA) as recited in claim 21?
(3) the system is configured to identify (1) first information to be
stored locally at a client, and (2) second information to be stored at the
computing cloud as recited in claim 22?
(4) the system is configured to use a model to allocate processes and
data between a client and the computing cloud as recited in claim 23?
(5) a service bus configured to expose a set of service endpoints to
clients, where the service bus is configured to direct, based on a configured

3 Although the Reply Brief is unpaginated (unlike the Appeal Brief), we
nonetheless refer to the Reply Brief’s pages in the order that they appear in
the record.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

5
mapping, a request for service to an appropriate service provider either (a)
locally on a client, or (b) on the computing cloudas recited in claim 25?
(6) the computing cloud comprises a physical database resource
configured to privately store information associated with different
automation units of a respective plurality of locations as recited in claim 26?
(7) at least one processing unit in the computing cloud is configured to
apply a heuristic model to identify potential equipment failure of at least one
industrial automation unit using the information provided by one or more
clients as recited in claim 27?
(8)(a) providing, using a cloud computing node, shared hardware and
software resources for use by plural clients; and (b) analyzing a received set
of information associated an industrial unit, where the analysis comprises
comparing the information set with one or more empirical sets of
information obtained from plural industrial units as recited in claim 10?
(9) a computing cloud comprising a database with empirical
information associated with failures of one or more industrial tools as recited
in claim 16?

ANALYSIS
Claims 1–9
We begin by construing the key disputed limitation of claim 1 which
recites, in pertinent part, a “computing cloud.” The Specification does not
define the term “computing cloud,” unlike other terms whose concrete
definitions leave no doubt as to their meaning. See ’717 patent, col. 3,
ll. 38–44; col. 8, ll. 4–33 (defining various terms explicitly).
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

6
The Specification does, however, note that cloud computing is an
emerging technology in the information technology (IT) industry that allows
for moving applications, services, and data from desktop computers back to
a main server farm. Id., col. 1, ll. 15–18. By relocating applications’
execution, service deployment, and data storage, cloud computing offers a
systematic way to manage costs of open systems, centralize information,
enhance robustness, and reduce energy costs. Id., col. 1, ll. 19–23.
To this end, Appellant’s invention uses a “computing cloud” 108 that
comprises processing unit 110 and data storage unit 112, both of which are
accessible to clients 102, 104, 106 that can include thin clients, individual
computers, or other communication devices. Id., col. 2, ll. 46–50; col. 3,
ll. 20–22; Fig. 1. Computing cloud 108 includes at least one computer that
is accessible from a remote location, and can (1) store information, and (2)
perform data functions on the information. Id., col. 2, ll. 61–64. The
computing cloud, which can be implemented on any general-purpose
computer with sufficient processing power, memory resources, and network
throughput capability, may comprise (1) hardware that is cost prohibitive to
deploy and maintain at the individual clients, and (2) software that is cost
prohibitive to install, deploy, and maintain at individual computing clouds.
Id., col. 3, ll. 1–6; col. 6, ll. 51–55. The computing cloud can, therefore,
provide this hardware and software to the clients via secure connections. Id.,
col. 3, ll. 6–8.
Although this description informs our understanding of the recited
“computing cloud,” the term is not so limited. Rather, we construe the term
as it would have been understood by ordinarily skilled artisans at the time of
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

7
the invention in light of this disclosure. See E.I. du Pont De Nemours & Co.
v. Unifrax I LLC, 921 F.3d 1060, 1068 (Fed. Cir. 2019) ( “The purpose of
claim construction is to give meaning to claim terms according to how
ordinarily skilled artisans would have understood them at the time of the
invention in light of the entire patent, including the claims in which the
terms appear and the specification.”) (emphasis added).
Our emphasis underscores that our construction is based on how
ordinarily skilled artisans would have construed the term “computing cloud”
at the time of Appellant’s invention, namely April 1, 2009. This temporal
qualification is significant where, as here, the term’s meaning in the art has
evolved over time. See Peter Mell & Tim Grance, Draft NIST Working
Definition of Cloud Computing, June 1, 2009 (Appeal Br. Evid. App. Ex. A)
(“NIST Definition”) (noting that “[c]loud computing is still an evolving
paradigm,” and that its “definitions, attributes, and characteristics will
evolve and change over time”); see also Tyrone Grandison et al., Towards a
Formal Definition of a Computing Cloud, SERVICES ’10 PROC. OF THE
2010 6TH WORLD CONG. ON SERVICES 191–92, IEEE Comp. Soc’y (2010)
(Appeal Br. Evid. App. Ex. B) (“IEEE Document”) (noting in the Abstract
that cloud computing “is still on its path to rigor and robustness”—a fact
epitomized by its “numerous fuzzy articulations”). Accord Ans. 8 (“The
IEEE Document actually appears to indicate that a ‘computer [sic] cloud’
was not in fact a term of art, but instead, a term in which there was no
general consensus as to what it meant.”) (emphasis omitted).
Although both the NIST Definition and IEEE Document inform our
understanding of what a “computing cloud” would have meant to ordinarily
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

8
skilled artisans at the time those documents were published, namely June 1,
2009 and July 5, 2010, respectively, they were nevertheless published after
the date of Appellant’s invention, namely April 1, 2009. Accord Declaration
of Rohan McAdam In Support of Response to First Office Action dated
June 4, 2018 (“McAdam Decl.”) ¶ 15 (acknowledging that the NIST
Definition was published two months after the ’717 patent’s effective filing
date). While these temporal inconsistencies are not dispositive here, they
nonetheless reduce these two documents’ probative value, at least regarding
their establishing the ordinary and customary meaning of the term
“computing cloud” at the time of Appellant’s invention, namely April 1,
2009.
We, therefore, construe the term “computing cloud” giving the term
its broadest reasonable interpretation in light of the Specification and
ordinarily skilled artisans’ then-prevailing understanding of the term. To be
sure, there was apparently no consistent definition of the term “cloud
computing” at the time of Appellant’s invention—a lack of consensus
underscored by the different definitions of the term articulated by no fewer
than twenty-one Enterprise IT experts in an article published on January 24,
2009 that attempted to articulate the best definitions of the term at that time.
See Jeremy Geelan, Twenty-One Experts Define Cloud Computing,
CloudEXPO Journal, Jan. 24, 2009, at http://cloudcomputing.sys-
con.com/612375 (“Geelan”), at 1 (noting that the phenomenon of “cloud
computing” “has as many definitions as there are squares on a
chessboard”).4 Nevertheless, the twenty-one definitions articulated by the

4 The IEEE Document cites this article on page 192.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

9
experts in the Geelan article were intended “to bring welcome precision” by
(1) narrowing down numerous attempts to define the term at that time, and
(2) articulating the then-best definitions of the term. Geelan, at 1.
One such expert defines “cloud computing” as “the broad concept of
using the internet to allow people to access technology-enabled services . . .
[that] must be ‘massively scalable’ . . . .” Id. at 2. Another expert, however,
notes that there “are only three types of services that are cloud based:
[“Software as a Service”] SaaS, [“Platform as a Service”], and Cloud
Computing Platforms. I am not sure being massively scalable is a
requirement to fit into any one category.” Id. at 3. Yet another expert notes
that “[c]loud computing really is accessing resources and services needed to
perform functions with dynamically changing needs. An application or
service developer requests access from the cloud rather than a specific
endpoint or named resource.” Id. at 4. Still another expert notes that
“[m]ost computer savvy folks have a pretty good idea of what the term
‘cloud computing’ means: outsourced, pay-as-you-go, on-demand,
somewhere in the Internet, etc.” Id. at 5. Another expert, however, views
“cloud computing as a broad array of web-based services aimed at allowing
users to obtain a wide range of functional capabilities on a ‘pay-as-you-go’
basis that previously required tremendous hardware/software investments
and professional skills to acquire.” Id. at 6.
In addition to these experts’ definitions of “cloud computing” in
January 2009, a noted computer dictionary from that year defines the term as
“computing operations carried out over computers linked to the web. The
users pay for computing as a service rather than pay for hardware
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

10
purchases.” Douglas Downing et al., BARRON’S DICTIONARY OF COMPUTER
& INTERNET TERMS 95 (10th ed. 2009). Another special-purpose dictionary
from 2006 notes that the term “cloud” can be the Internet, and cites a certain
Microsoft initiative that “revolves around creating software programs that do
not reside on any one computer but instead exist in the ‘cloud’ of computers
that make up the Internet.” Harry Newton, NEWTON’S TELECOM
DICTIONARY 235 (22d ed. 2006) (“Newton’s Telecom Dictionary”). Accord
id. (“The cloud is particularly appropriate for illustration of the Internet, as it
is a network of networks of uncertain definition.”). Another technical
dictionary defines the term “cloud” more generally as “an informal
representation of a multi-access link.” DICTIONARY OF COMPUTER SCIENCE,
ENGINEERING, AND TECHNOLOGY 80 (Phillip A. Laplante ed. 2001). This
dictionary adds that the purpose of this representation “is that what goes on
inside is irrelevant to what is being discussed. When a system is connected
to the cloud it can communicate with any other system attached to the
cloud.” Id.
In addition to these technical dictionaries and sources, the term “cloud
computing” has also been considered by courts and other legal authorities as
well, including the U.S. Supreme Court. See Riley v. California, 573 U.S.
373, 397 (2014) (“Cloud computing is the capacity of Internet-connected
devices to display data stored on remote servers rather than on the device
itself.”). Although the Court articulated this definition approximately five
years after Appellant’s invention, the Court’s definition nonetheless informs
our understanding regarding the meaning of cloud computing at that time.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

11
Other courts have also explained what “cloud computing” means,5 as has
this Board,6 albeit after Appellant’s invention.

5 See, e.g., Oracle America, Inc. v. United States, 144 Fed. Cl. 88, 92 n.2
(2019) (quoting the U.S. Department of Defense’s (DoD’s) definition of
“cloud” as “[t]he practice of pooling physical servers and using them to
provide services that can be rapidly provisioned with minimal effort and
time, often over the Internet”); see also id. (noting that, according to DoD,
the term “cloud” “is applied to a variety of different technologies (often
without clarifying modifiers), but, for the purpose of this document, cloud
refers to physical computing and storage resources pooled to provide virtual
computing, storage, or higher-level services”); see also Amazon.com, Inc. v.
Moyer, No. C19-1176 RSM, 2019 WL 5455724, at *1 (W.D. Wash. 2019)
(“Cloud computing is the on-demand delivery of computing power,
software, storage, and other information technology services via the
internet.”); see also id. (“Cloud computing services essentially allow
customers to ‘rent’ hardware and software that they can then access
remotely. . . . This allows customers to avoid upfront computing costs and
better account for fluctuations in their computing needs.”); Google, Inc. v.
United States, 95 Fed. Cl. 661, 664 n.6 (2011) (quoting the U.S.
Government Accountability Office’s definition of “cloud computing” as “an
emerging form of computing where users have access to scalable, on-
demand capabilities that are provided through Internet-based technologies,
[with] the potential to provide information technology services more quickly
and at a lower cost, but also to introduce information security risks”); Kaavo
Inc. v. Amazon.com Inc., No. 14-353-LPS-CJB, 2018 WL 3025040, at *3–4
(D. Del. 2018) (unpublished) (construing the term “initial cloud
environment” as “initial potentially accessible computing resources available
over a network” and noting that “[w]hile a cloud provider may operate the
computing resources, there is no requirement that it do so”); United States v.
Patrakis, 297 F.Supp. 3d 1123, 1124 n.1 (D. Haw. 2017) (“Cloud computing
refers to applications and services offered over the Internet. These services
are offered from data centers all over the world, which collectively are
referred to as the ‘cloud.’”); University Accounting Serv. LLC v.
ScholarChip Card LLC, 2017 WL 4877418, at *2 (E.D. Wis. 2017)
(unpublished) (noting that a company’s cloud-based software platform
means that any employee or customer could access the software remotely
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

12
Nevertheless, courts have also cited a 2009 law review article for
explaining cloud computing, where the “cloud” was characterized as “a
metaphor for the ethereal internet.” See, e.g., In re U.S.’s Application for a
Search Warrant to Seize & Search Elec. Devices from Edward Cunnius, 770
F. Supp. 2d 1138, 1144 n.5 (W.D. Wash. 2011) (internal quotations omitted)
(quoting David A. Couillard, Defogging the Cloud: Applying Fourth
Amendment Principles to Evolving Privacy Expectations in Cloud
Computing, 93 MINN. L. REV. 2205, 2216 (2009)). That article explains:

The term “cloud computing” is based on the industry usage of a
cloud as a metaphor for the ethereal Internet. A cloud platform

from any computer with an internet connection);; IBM Corp. v. Visentin, No.
11 Civ. 399(LAP), at *5 (S.D.N.Y. 2011) (unpublished) (“Cloud computing
allows businesses and individuals to use the Internet to access software
programs, applications, and data from computer data centers managed by
providers . . . .”); Les Fields/C.C.H.I. Insurance Services v. Hines, No. 15-
cv-03728-MEJ, 2016 WL 6873459, at *7 (N.D. Cal. 2016) (unpublished)
(“With cloud computing, businesses access applications via the internet. It’s
called Software As A Service (or SaaS). Businesses are freed up from
having to maintain or upgrade software and hardware. Just log on and get to
work, from anywhere and, in many cases, any device.”). But see Payton v.
Kale Realty, LLC, No. 13 C 8002, 2015 WL 10374103, at *3 (N.D. Ill.
2015) (unpublished) (quoting a deponent’s inability to explain the meaning
of the term “cloud” in connection with cloud hardware and software, but it
was nevertheless said to be “many things,” for example, Internet-related
hardware and software).
6 See SAP America, Inc. v. Lakshmi Arunachalam, IPR2014-00413, 2015
WL 4941752, at *12 (PTAB Aug. 17, 2015) (“[C]loud computing is a type
of Internet-based computing in which different services, such as servers,
storage, and applications, are delivered to an organization’s computers and
devices through the Internet.”); see also id. (“An Internet cloud application
is construed to mean a software application that is never installed on a local
computer, and instead is accessed via the Internet.”).
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

13
can either be external or internal. An external cloud platform is
storage or software access that is essentially rented from (or
outsourced to) a remote public cloud service provider, such as
Amazon or Google. This software-as-a-service allows
individuals and businesses to collaborate on documents,
spreadsheets, and more, even when the collaborators are in
remote locations. By contrast, an internal or private cloud is a
cluster of servers that is networked behind an individual or
company’s own firewall. Cloud platforms give users
“anywhere access” to applications and data stored on the
Internet. Various companies are unveiling such platforms,
allowing users to store backups of important files and access
them from anywhere the Internet is available.

Id. (footnotes omitted).
The clear import of these authorities is that, in 2009, the internet was a
key aspect of cloud computing, thus enabling users to access applications
and data stored on the internet. Thus, under its broadest reasonable
interpretation in light of the Specification and the foregoing authorities that
inform the meaning of the term “computing cloud” at the time of
Appellant’s invention, we construe the term to mean at least one internet-
based computer that enables users to access applications and data from that
computer remotely. Accord ’717 patent, col. 2, ll. 61–64 (“Computing cloud
108 is a computing cloud that is capable of both storing information and
performing data functions on information. A computing cloud comprises at
least one computer that is accessible from a remote location.”).
We reach this conclusion despite the NIST Definition listing five
essential characteristics of cloud computing, four of which, namely (1)
network access, (2) on-demand self-service, (3) elasticity, and (4) resource
pooling, are said to characterize the recited “computing cloud” as Dr.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

14
McAdam declares. See McAdam Decl. ¶¶ 16–23. Leaving aside the fact
that Dr. McAdam is an interested party—a fact that diminishes the
declaration’s probative value7—the term “computing cloud,” as the term was
understood at the time of Appellant’s invention, is not limited to the NIST
definition as noted previously. Not only was this definition published after
Appellant’s invention as Dr. McAdam acknowledges in paragraph 15 of his
declaration, Appellant’s proffered definition does not preclude a broader
reasonable definition based on other sources supporting the agency’s
interpretation. See, e.g., In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(“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.”).
Although we appreciate Dr. McAdam’s insights regarding his view of
what the term “computing cloud” would have meant in light of the
Specification and NIST Definition (see McAdam Decl. ¶¶ 16–23), nothing
on this record precludes a broader reasonable interpretation of “computing
cloud” at the time of Appellant’s invention as at least one internet-based
computer that enables users to access applications and data from that
computer remotely.

7 Dr. McAdam is an Engineering Fellow at Honeywell Process Solutions—
a subsidiary of the Patent Owner, Honeywell, and worked for Honeywell for
over 25 years. See McAdam Decl. ¶¶ 1, 7–8. Because Dr. McAdam is an
interested party, this fact reduces the probative value of his declaration. See
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776, F.2d 281, 294
(Fed. Cir. 1985) (noting that an expert’s interest in the outcome of the case is
a factor in assessing the probative value of an expert opinion).
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

15
With this construction, we see no error in the Examiner’s reliance on
Karasawa for disclosing the recited computing cloud configured to provide
at least one service and shared hardware and software resources for client
use. As noted in Karasawa’s Abstract, Karasawa’s system enables
monitoring an apparatus remotely. As shown in Karasawa’s Figure 1
reproduced below, the system includes (1) a plant 101, such as a
semiconductor manufacturing plant, that uses vendor-supplied apparatuses
10, namely computers (servers) that store data of various semiconductor
manufacturing apparatus; and (2) a remote vendor office 102 that is
connected to the plant via communication line 100. Karasawa, col. 6, ll. 28–
49.

Plant and vendor office in Karasawa’s Figure 1
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

16

The plant’s central processing unit (CPU) 20 (1) monitors received
operating state data, and (2) informs plant workers and the vendor of
problems when an abnormal operating state is detected. Karasawa, col. 7, ll.
45–48. Operating state data is not only transmitted to the plant-side
computer 11, but also to the vendor via the communication line—a line that
can be the internet. Karasawa, col. 7, ll. 55–58; col. 8, ll. 29–31.
When abnormalities are detected, the plant’s CPU downloads
predetermined software from the vendor-side computer 26 to perform
restoration processing automatically based on response information relating
to the vendor’s coping with the problem. Id., col. 7, ll. 48–53. This
restoration can include updating software. Id., col. 7, ll. 53–54.
Based on this functionality, we see no error in the Examiner’s
mapping Karasawa’s vendor-side computer to the recited “computing cloud”
(Final Act. 2; Ans. 4) given the term’s broadest reasonable interpretation
noted previously, namely at least one internet-based computer that enables
users to access applications and data from that computer remotely. Not only
is Karasawa’s vendor-side computer connected to the plant-side computers
of each plant 101, 110, 120 via an internet-based high-speed communication
line as indicated in column 8, lines 29 to 41 and Figure 1, but the vendor-
side computer also provides at least one service, namely restoration
processing as the Examiner indicates. Final Act. 2; Ans. 10. Moreover,
Karasawa’s vendor-side computer also provides shared (1) hardware
resources, namely those associated with at least storage section 29 that stores
databases 32–35, and communication line 100, and (2) software resources,
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

17
namely those associated with software updates, where these shared resources
are used by clients, namely the plant-side computers at each plant. Final
Act. 2–3; Ans. 10.
Appellant’s contention that Karasawa’s vendor-side computer does
not provide shared hardware resources (Appeal Br. 12–14) is unavailing.
Not only are the Examiner’s particular findings in this regard not
persuasively rebutted as the Examiner indicates (Ans. 10), Appellant’s
contention regarding Karasawa’s plant-side computer not using the vendor-
side computer’s computing capabilities, such as (1) server time; (2)
processor resources; or (3) memory resources (Appeal Br. 12) is not
commensurate with the scope of the claim that lacks these particular
capabilities. And to the extent that Appellant contends that the shared
hardware and software resources claimed must serve a “thin” client (see
Appeal Br. 14), such capabilities are not claimed, nor will we import such
limitations into the claim. See Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments. . . . [C]laims may
embrace different subject matter than is illustrated in the specific
embodiments in the specification.”) (citations and internal quotation marks
omitted). That Appellant’s Specification emphasizes that the described
exemplary embodiments do not define or constrain the disclosed invention,
and that alterations and permutations will be apparent to ordinarily skilled
artisans (see ’717 patent, col. 8, ll. 34–41) only underscores the scope and
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

18
breadth of the claimed invention when read in light of this non-limiting
disclosure.
In short, nothing in the claim precludes the Examiner’s finding that
Karasawa discloses the recited shared hardware resources. See Final Act. 2–
3; Ans. 10. That Karasawa’s vendor-side computer’s storage section 29
stores operating state and maintenance data received from the plant-side
computer in the storage section’s history information database 32 as noted in
column 9, lines 1 to 11 only underscores that the vendor-side computer
shares at least some storage-based resources with the plant-side computers.
We reach this conclusion even if Karasawa’s embodiment of Figure 1
requires a host computer at each plant for monitoring purposes as Appellant
contends. See Appeal Br. 13. Leaving aside the fact that the passage from
column 2, lines 19 to 21 that is relied upon to support this contention is from
Karasawa’s “Background Art” section—not the description of the Figure 1
embodiment on which the Examiner relies—the fact that a computer is used
at each plant for monitoring, such as apparatus 10 in Figure 1, does not mean
that hardware and software resources cannot be shared with a cloud-based
computer, such as Karasawa’s vendor-side computer. To the extent that
Appellant contends otherwise, there is no persuasive evidence on this record
to substantiate such a contention.
Appellant’s contention that Karasawa’s vendor-side computer does
not provide shared software resources (Appeal Br. 14–16; Reply Br. 11–12)
is likewise unavailing. Despite Appellant’s arguments to the contrary, we
see no error in the Examiner’s finding that Karasawa’s software updates that
the plant’s CPU downloads from the vendor-side computer in column 7,
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

19
lines 48 to 54 are shared software resources that are provided by the vendor-
side computer or “computing cloud” under the Examiner’s mapping. See
Final Act. 2–3; Ans. 12–13. Even assuming, without deciding, that these
software updates are only installed and executed locally at the individual
plant-side computers as Appellant contends (Appeal Br. 15–16; Reply
Br. 11–12), the vendor-side computer nevertheless shares the software
resources associated with these updates with the plant-side computers.
Notably, this vendor-side computer functionality comports with the broadest
reasonable interpretation of the term “computing cloud,” namely at least one
internet-based computer that enables users to access applications and data
from that computer remotely, for this access is facilitated via the plant-side
computers downloading software updates from the internet-based vendor-
side computer.
To the extent that Appellant contends that this updated software must
be maintained solely at the vendor-side computer for execution by the plant-
side computers (see Appeal Br. 15–16; Reply Br. 11–12), such an argument
is not commensurate with the scope of the claim that lacks such a
requirement. Nor will we import such a requirement into the claim. See
Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments. . . . [C]laims may
embrace different subject matter than is illustrated in the specific
embodiments in the specification.”) (citations and internal quotation marks
omitted). Although the ’717 patent notes that (1) the computing cloud 108
may comprise software that is cost prohibitive to install, deploy, and
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

20
maintain at individual computing clouds in column 3, lines 3 to 6, and (2) an
advantage of the disclosed systems is to deploy new services or features to
clients without the need to change the clients themselves in column 5, lines 4
to 7 as Appellant indicates (Appeal Br. 15; Reply Br. 11), these particular
features are not claimed, nor will we import them into the claim. See
Phillips, 415 F.3d at 1323. Accord Ans. 13. Although we appreciate Dr.
McAdam’s insights regarding Karasawa’s alleged shortcomings with respect
to the recited computing cloud’s functionality based on his view of what the
term “computing cloud” would have meant at the time of Appellant’s
invention (see McAdam Decl. ¶¶ 24–30), we nevertheless find these
averments unpersuasive and not commensurate with the scope of the claim
for the reasons noted previously.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2–9 not argued separately with particularity.

Claim 21
We also sustain the Examiner’s rejection of claim 21 reciting that the
computing cloud supports an SOA. See Final Act. 13; Ans. 16–17.
The Specification does not define the term “SOA,” unlike other terms
whose concrete definitions leave no doubt as to their meaning. See ’717
patent, col. 3, ll. 38–44; col. 8, ll. 4–33 (defining various terms explicitly).
The Specification does, however, note that, in some embodiments, the
computing cloud 108 may leverage a SOA to abstract consumers of cloud
services from the location services themselves. ’717 patent, col. 3, ll. 45–48.
According to the Specification, when a cloud user at a given client invokes a
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

21
function, such as a manufacturing execution system (MES) function, that
function could be (1) performed by MES components local to that client, or
(2) redirected to MES components running on a server in computing cloud
108. Id., col. 3, ll. 48–52. This redirection is performed by a service bus
that exposes a set of service endpoints to users who interact with these
services as if the services were local. Id., col. 3, ll. 52–54.
Although this description informs our understanding of what
supporting a SOA means in the context of the disclosed invention, the claim
is not so limited, nor does the Specification actually define the term “SOA.”
Despite the Examiner’s characterizing the above disclosure as a “self-
provided definition” of an SOA, the term has a definite meaning in the art,
namely “an architectural style whose goal is to achieve loose coupling
among interacting software agents.” Newton’s Telecom Dictionary, at 839.
That dictionary explains that “[a] service is a unit of work done by a service
provider to achieve desired end results for a service consumer. Both
provider and consumer are roles played by software agents on behalf of their
owners.” Id.
Notably, Newton’s Telecom Dictionary cites one definition of the
term “agent” as “software that runs on a client computer for use by
administrative software running on a server. Agents are typically used to
support administrative actions, such as detecting system information or
running services.” Id. at 94.
Given the broad definition of SOA in the art, namely “an architectural
style whose goal is to achieve loose coupling among interacting software
agents” as noted above, we see no error in the Examiner’s reliance on the
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

22
functionality of Karasawa’s vendor-side computer as a computing cloud that
at least supports an SOA. Because Karasawa’s vendor-side computer
performs various services on behalf of clients associated with plant-side
computers, such as (1) automatically performing restoration processing,
including updating client software based on received information from the
client, and (2) providing part replacement period information to the clients
responsive to maintenance data received from the clients (see, e.g.,
Karasawa col. 7, ll. 45–54; col. 10, ll. 49–60; col. 13, ll. 20–52; Fig. 10), this
functionality at least supports an architectural style whose goal is to achieve
loose coupling among interacting software agents, namely software that runs
on a client computer for use by administrative software running on a server
and that supports administrative actions. Accord Final Act. 13 (noting that
the vendor-side computer provides services to the plant-side computer
clients).
We reach this conclusion emphasizing the claim’s high level of
generality regarding the computing cloud’s SOA support. Notably, claim 21
does not specify how an SOA is supported, let alone in the particular manner
detailed in column 3, lines 45 to 63 of the ’717 patent that merely states that,
in some embodiments, the computing cloud may leverage an SOA to abstract
consumers of cloud services from the location services themselves,
including using a service bus to redirect clients to MES components running
on a computing cloud server by exposing a set of service endpoints to users
interacting with those services. To the extent that Appellant contends that
the claim requires that the computing cloud must support an SOA in this
particular way (see Appeal Br. 23–24; Reply Br. 16), there is no persuasive
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

23
evidence on this record that the claim must be so limited, nor will we import
such details into the claim. See Phillips, 415 F.3d at 1323. Appellant’s
arguments are, therefore, unavailing and not commensurate with the scope
of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21.

Claim 22
We also sustain the Examiner’s rejection of claim 22 reciting that the
system is configured to identify (1) first information to be stored locally at a
client, and (2) second information to be stored at the computing cloud.
Despite Appellant’s arguments to the contrary (Appeal Br. 25–29; Reply
Br. 16–17), Appellant does not persuasively rebut the Examiner’s finding
that Karasawa’s system identifies (1) “first information”, namely
temperature data that is detected by temperature sensors S1–S5 and stored
temporarily on the plant side, and (2) “second information,” namely
operation state data that is stored on the vendor-side computer’s history
information database 32. See Final Act. 13; Ans. 17 (citing Karasawa,
Figs. 9, 13); see also Karasawa, col. 11, ll. 35–40; col. 14, l. 56 – col. 15,
l. 12.
Our emphasis on Karasawa’s temporary storage of detected
temperature data above underscores that nothing in the claim precludes the
temporary storage of temperature data on the plant side—transitory storage
that Appellant acknowledges. See Appeal Br. 29 (acknowledging that
Karasawa’s data storage at the plant-side is “just temporary”). So even if all
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

24
such data is ultimately transmitted to the vendor-side computer as Appellant
contends, nothing in the claim precludes its temporary local storage on the
plant side and its associated identification. Nor does Appellant squarely
address—let alone persuasively rebut—the Examiner’s finding that
Karasawa’s detecting and storing temperature data effectively identifies that
data. See Ans. 17 (finding that detecting and storing are both acts of
identifying data). In short, Appellant’s contentions are unpersuasive and not
commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 22.

Claim 23
We also sustain the Examiner’s rejection of claim 23 reciting that the
system is configured to use a model to allocate processes and data between a
client and the computing cloud. Despite Appellant’s arguments to the
contrary (Appeal Br. 30–31; Reply Br. 17–18), we see no error in the
Examiner’s finding that Karasawa’s system uses a client-server model to
allocate (1) processes, such as temperature measurement with sensors S1–S5
in Figure 13 performed at the plant-side computer (client), and (2) data
exchanged between the plant-side and vendor-side computer (server). See
Final Act. 14; Ans. 17–18.
As the Examiner indicates (Ans. 18), not only does the claim fail to
specify what particular kind of model is used apart to achieve the desired
allocation result, the Specification likewise does not define the term
“model,” unlike other terms whose concrete definitions leave no doubt as to
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

25
their meaning. See ’717 patent, col. 3, ll. 38–44; col. 8, ll. 4–33 (defining
various terms explicitly). To the extent that Appellant contends that the
model noted in column 5, lines 54 to 57 and step 402 of Figure 4, as well as
the “new model of providing equipment health services” that is provided by
cloud computing noted in column 5, lines 50 to 57 somehow define the term
“model” to so limit its interpretation (see Reply Br. 17–18), we disagree.
On this record, we see no error in the Examiner’s interpreting the term
“model” broadly, but reasonably, to include a client-server model (Final
Act. 14; Ans. 17–18). We reach this conclusion noting that the Examiner’s
finding comports reasonably with the commonly-understood meaning of
term “client server model” in the art where “[i]n most cases, the ‘client’ is a
desktop computing device or program ‘served’ by another networked
computing device. Computers are integrated over the network by an
application, which provides a single system image. The server can be a
minicomputer, workstation, or microcomputer with attached storage
devices.” Newton’s Telecom Dictionary, at 232.
So even if the Specification distinguishes the recited allocation model
from a cloud computing network architecture model as Appellant contends
(Reply Br. 17–18), nothing in the claim precludes the recited model from
reading on a client-server model under the Examiner’s interpretation. In
short, Appellant’s contentions are unpersuasive and not commensurate with
the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 23.

Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

26

Claim 25
We also sustain the Examiner’s rejection of claim 25 reciting a service
bus configured to expose a set of service endpoints to clients, where the
service bus is configured to direct, based on a configured mapping, a request
for service to an appropriate service provider either (1) locally on a client, or
(2) on the computing cloud.
Appellant’s Specification does not define the term “service,” let alone
“service bus” or “service endpoints,” unlike other terms whose concrete
definitions leave no doubt as to their meaning. See ’717 patent, col. 3, ll.
38–44; col. 8, ll. 4–33 (defining various terms explicitly). Appellant’s
Specification does, however, note that when a cloud user at a given client
invokes a function, such as an MES function, that function could be (1)
performed by MES components local to that client, or (2) redirected to MES
components running on a server in computing cloud 108. Id., col. 3, ll. 48–
52. This redirection is performed by a plant- or cloud-based service bus that
exposes a set of service endpoints to users who interact with these services
as if the services were local. ’717 patent, col. 3, ll. 52–54, 58–60. The
service bus directs requests for those services to the appropriate service
providers either locally or in the cloud based on configured mapping. Id.,
col. 3, ll. 54–57. Moreover, mapping can be done on a per service basis,
allowing a mix of local and cloud-based services to be used. Id., col. 3,
ll. 57–58.
Although this description informs our understanding of what the
recited “service bus” and exposed “service endpoints” mean in the context of
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

27
the disclosed invention, the claim is not so limited, nor does the
Specification detail the particulars of these elements apart from their
intended function. We, therefore, construe these terms under their plain
meaning in light of this disclosure. The term “service” is defined in a
networking context as “specialized, software-based functionality provided
by network servers—for example, directory services that provide the
network equivalent of ‘phone books’ needed for locating users and
resources.” MICROSOFT COMPUTER DICTIONARY 475 (5th ed. 2002)
(“Microsoft Computer Dictionary”). Another computer dictionary defines
the term “service,” quite broadly, as “any computation performed, or offered
to be performed, by a server process on behalf of a separate client process.”
Dick Pountain, THE PENGUIN CONCISE DICTIONARY OF COMPUTING 395
(2003) (small capital letters changed to lower case). And, as noted
previously, another special-purpose dictionary explains that “[a] service is a
unit of work done by a service provider to achieve desired end results for a
service consumer.” Newton’s Telecom Dictionary, at 839.
The term “bus” is defined as “a data path shared by many devices
such as the input/output bus in a computer.” Gilbert Held, DICTIONARY OF
COMMUNICATIONS TECHNOLOGY 73 (3d ed. 1998). Another special-purpose
dictionary defines the term “bus” as “a common pathway, or channel,
between multiple devices.” Alan Freedman, THE COMPUTER GLOSSARY 40
(9th ed. 2001) (“Computer Glossary”).
Given these definitions considered in light of the Specification, a
“service bus” is a common path for providing software-based functionality
or computations on behalf of devices connected to that path.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

28
The term “end point” is defined as “a network element (component) at
the end of the network. In other words, a transmitter or receiver, or an
originating or terminating device.” Newton’s Telecom Dictionary, at 354.
Another special-purpose dictionary defines the term “end point” as “[t]he
point at which a process, operation, interval, path, or sequence ends. For
instance, a terminal of a communication channel, [or] the end of a series of
computations . . . .” Steven M. Kaplan, WILEY ELECTRICAL & ELECTRONICS
ENGINEERING DICTIONARY 257 (2004).
Given these definitions considered in light of the Specification, a
“service endpoint” is the point at which (1) a service, including software-
based functionality or computations performed on behalf of another device,
or (2) a device providing such a service, ends.
With this interpretation, we see no error in the Examiner’s reliance on
Karasawa’s vendor-side computer’s CPU 27 and history information
database in Figure 3 for collectively disclosing a “service bus,” namely a
common path for providing software-based functionality or computations on
behalf of devices connected to that path. See Final Act. 14; Ans. 18–19.
As shown in Karasawa’s Figure 1, the vendor-side computer includes
CPU 27 and storage section 29 containing history information database 32
that stores operating state data and maintenance data received from the
plant-side computer. Karasawa, col. 9, ll. 1–11, 27–39. Karasawa’s Figure
3 shows exemplary maintenance data stored in the history information
database, where this data is (1) transmitted from a plant-side apparatus 10
every time a part is replaced, and (2) stored for each delivery destination,
plant, and serial number. Karasawa, col. 9, ll. 27–33.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

29
Based on this received maintenance data, the CPU 27 not only
calculates an optimal part replacement period that is transmitted to the plants
periodically, but also orders replacement parts for the plants when needed.
See Karasawa, col. 10, ll. 10–13, 49–60; col. 12, l. 61 – col. 14, l. 3; Fig. 10.
After a part is replaced in a plant apparatus 10, a worker enters maintenance
data, such as the kind of replaced part, date/time, period of use, etc., and this
data is (1) stored in the apparatus’ storage section 17; (2) transmitted to the
plant-side computer; and then (3) transmitted to the vendor-side computer
via communication line 10. Karasawa, col. 13, ll. 4–20.
As shown in steps S21 and S22 of Karasawa’s Figure 10, after the
vendor-side computer receives the maintenance data from the plant, the data
is stored in the history information database. Karasawa, col. 13, ll. 21–28.
The vendor-side computer then reads (1) the particular kind of replaced part
from the stored maintenance data from the history information database, and
(2) the corresponding part supplier’s contact information from the contact
information database 34 in Figure 6 to transmit order information to the
relevant supplier. Karasawa, col. 13, ll. 29–34; Fig. 10 (step S23).
Based on this functionality, we see no error in the Examiner’s finding
that Karasawa’s vendor-side computer’s CPU 27 and history information
database collectively disclose a “service bus.” See Final Act. 14; Ans. 18–
19. We reach this conclusion noting that these vendor-side computer
components collectively provide a common path for providing software-
based functionality or computations, including, among other things, part
replacement and optimal part replacement period determinations, on behalf
of devices, namely the plants and their associated apparatuses, connected to
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

30
that path as shown in Karasawa’s Figure 1. Appellant’s contentions that
Karasawa lacks a “service bus” (Appeal Br. 32–35; Reply Br. 18) are
unavailing and not commensurate with the scope of the claim.
Nor are we persuaded of error in the Examiner’s finding that
Karasawa’s “service bus” is configured to expose a set of “service
endpoints,” namely the points at which (1) services, including software-
based functionality or computations performed on behalf of another device,
or (2) devices providing such services, end consistent with our interpretation
above. That the vendor-side computer and its “service bus” provide various
services to plant-based clients including, among other things, part
replacement and optimal part replacement period determinations, restoration
processing involving software updates, etc., effectively exposes associated
“service endpoints” at the vendor-side computer to those clients, at least in
that sense.
The vendor-side computer “service bus” is also configured to direct a
request for service, namely a part replacement request, to an appropriate
vendor-based service provider based on a configured mapping despite
Appellant’s arguments to the contrary (Appeal Br. 32–35; Reply Br. 18).
Although replacement part order information is transmitted from the vendor-
side computer to the part supplier in step S23 of Karasawa’s Figure 10, a key
aspect of the Examiner’s finding in this regard is that the service request
associated with this replacement part order originates from the plant client.
Final Act. 14; Ans. 18. This service request reasonably comports with the
maintenance data that is transmitted from the plant to the vendor-side
computer indicating that a part was replaced at a given plant apparatus. See
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

31
Karasawa, col. 13, ll. 4–34. Notably, the received maintenance data’s part
replacement indication effectively functions as a service request by
triggering the vendor-side computer to order a replacement part from a
supplier responsive to this received data. See id. Therefore, to the extent
that Appellant contends that Karasawa’s processor and history information
database are used only to derive or calculate optimal replacement periods for
an apparatus part (see Reply Br. 18), such an argument ignores other
services provided by these components, including ordering replacement
parts when needed as noted above.
Nor are we persuaded of error in the Examiner’s finding that
Karasawa’s “service bus” is configured to direct Karasawa’s part-
replacement-based service request to a vendor-based service provider on the
computing cloud, namely the vendor-side computer, where this direction is
based on a configured mapping. We reach this conclusion noting that the
term “configured mapping” is, like other disputed terms, not defined in the
Specification.
According to the Specification, the service bus directs requests for
those services to the appropriate service providers either locally or in the
cloud based on configured mapping. ’717 patent, col. 3, ll. 54–57. The
Specification adds that mapping can be done on a per service basis, allowing
a mix of local and cloud-based services to be used. Id., col. 3, ll. 57–58.
But apart from this disclosure, the Specification does not further explain
what “configured mapping” means in the context of the disclosed invention,
let alone define the term to so limit its interpretation.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

32
We, therefore, interpret the term “configured mapping” with its plain
meaning in the art. One special purpose dictionary defines the term “map,”
in pertinent part, as “[t]o make logical connections between two entities.”
John Daintith & Edmund Wright, THE FACTS ON FILE DICTIONARY OF
COMPUTER SCIENCE 239 (Revised ed. 2006). The term “configure” is also
defined, quite broadly, as “[t]o design, arrange, set up, or shape with a view
to specific applications or uses.” THE AMERICAN HERITAGE DICTIONARY OF
THE ENGLISH LANGUAGE 386 (4th ed. 2006) (“American Heritage
Dictionary”). Based on these definitions considered in light of the
Specification, we interpret the term “configured mapping” as logical
connections between two entities that were set up, designed, or arranged.
Given this interpretation, we are not persuaded of error in the
Examiner’s finding that Karasawa’s “service bus” is configured to direct
Karasawa’s part-replacement-based service request to a vendor-based
service provider on the computing cloud, namely the vendor-side computer,
where this direction is based on a configured mapping. That is, sending this
request from the plant to the vendor-side computer via the communication
line would involve relational mapping between at least associated plants and
delivery destinations as the Examiner indicates. Ans. 19. In short, directing
the service request to the vendor-side computer would involve logical
connections between two entities, namely the plant-side and vendor-side
computers and associated components, where these logical connections were
at least set up, designed, or arranged. To the extent that Appellant contends
that claim 25 requires directing service requests to both a local client and
computing cloud (see Appeal Br. 35; Reply Br. 18), such an argument is not
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

33
commensurate with the scope of the claim that does not preclude directing
such requests to a service provider associated with the vendor-side
computer, namely on the computing cloud. We reach this conclusion
emphasizing that the claim’s alternative recitation in this regard, namely that
that the request is directed to a service provider that is either (1) locally on a
client, or (2) on the computing cloud.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 25.

Claim 26
We also sustain the Examiner’s rejection of claim 26 reciting that the
computing cloud comprises a physical database resource configured to
privately store information associated with different automation units of a
respective plurality of locations. Final Act. 14; Ans. 19.
According to Appellant, Karasawa stores information non-privately
by mixing information from different plants together in the same database
without any provision for that data’s privacy. Appeal Br. 36–40; Reply Br.
19. But despite Appellant’s arguments, we see no error in the Examiner’s
finding that Karasawa’s data storage section 29 stores the recited
information privately, at least with respect to its limited access within the
dedicated network of plants and the vendor office as the Examiner indicates.
Final Act. 14; Ans. 19.
Notably, Appellant’s Specification does not define the term “private,”
unlike other terms whose concrete definitions leave no doubt as to their
meaning. See ’717 patent, col. 3, ll. 38–44; col. 8, ll. 4–33 (defining various
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

34
terms explicitly). Appellant’s Specification does, however, note that the
disclosed invention can be designed for multi-tenancy such that many
companies can share the same physical database resources, but keep their
data entirely private. ’717 patent, col. 3, ll. 60–63.
But apart from this non-limiting description, the Specification does
not specify the particular way or means by which the data is kept private, let
alone define the term to so limit its interpretation. Nor does the claim
specify the particular way or means by which the recited information is
stored privately.
We, therefore, construe the term “private” with its plain meaning,
namely “[b]elonging to a particular person or persons, as opposed to the
public or the government.” American Heritage Dictionary, at 1396.
With this construction, we see no error in the Examiner’s reliance on
Karasawa’s data storage section 29 that stores databases 32–35 as shown in
Figure 1 is a “physical database resource” configured to store the recited
information privately, at least with respect to its limited access within the
dedicated network of plants and the vendor office as the Examiner indicates.
Final Act. 14; Ans. 19. That data can be exchanged between the plants and
vendor office using a dedicated circuit as noted in Karasawa’s column 8,
lines 32 and 33 only further bolsters the Examiner’s findings in this regard,
for dedicated circuits are private—not public—communication lines. See
Microsoft Computer Dictionary, at 150 (defining “dedicated line” as “[a]
communications channel that permanently connects two or more locations.
Dedicated lines are private or leased lines.”) (emphasis added).
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

35
That Karasawa’s history information database includes data from
different plants as Appellant indicates (Appeal Br. 40; Reply Br. 19) does
not change our conclusion, for this storage is still private given the term’s
scope and breadth. Not only is the stored information private with respect to
its limited accessibility within the dedicated vendor/plant network as the
Examiner indicates (Final Act. 14; Ans. 19), but the information is also
stored privately in that the stored information belongs to the particular
entities involved, namely the respective plants and vendor, as opposed to the
public or government under the term’s plain meaning. To the extent that
Appellant contends that the claim requires a particular way or means by
which information is stored privately, including using encryption,
authentication, or otherwise, such specific privacy implementations are not
claimed, nor will we import such limitations into the claim. See Phillips,
415 F.3d at 1323.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 26.

Claim 27
We also sustain the Examiner’s rejection of claim 27 reciting that at
least one processing unit in the computing cloud is configured to apply a
heuristic model to identify potential equipment failure of at least one
industrial automation unit using the information provided by one or more
clients. Final Act. 15; Ans. 20–21.
Notably, Appellant’s Specification does not define the term “heuristic
model,” unlike other terms whose concrete definitions leave no doubt as to
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

36
their meaning. See ’717 patent, col. 3, ll. 38–44; col. 8, ll. 4–33 (defining
various terms explicitly). Accord Ans. 20–21 (noting that the term “heuristic
model” is not defined in the Specification). Appellant’s Specification does,
however, note that the computing cloud may apply a model, such as a
heuristic model, to identify potential equipment failure, thus allowing for
proactive preventative equipment maintenance. ’717 patent, col. 5, ll. 21–
24.
But apart from this non-limiting description, the Specification does
not specify any particulars regarding the heuristic model, let alone define the
term to so limit its interpretation. We, therefore, construe the term “heuristic
model” with its plain meaning in the art. The term “model” is defined, quite
broadly, as “[a] mathematical or graphical representation of something.”
John Daintith & Edmund Wright, THE FACTS ON FILE DICTIONARY OF
COMPUTER SCIENCE 140 (Revised ed. 2006). Another computer dictionary
likewise defines the term broadly as “[a] mathematical representation of a
device or process used for analysis and planning.” Computer Glossary, at
252.
The term “heuristic” is defined as “[a] method of solving a problem
by using rules of thumb acquired from experience.” Bryan Pfaffenberger,
QUE’S COMPUTER & INTERNET DICTIONARY 237 (6th ed. 1995). Therefore, a
“heuristic model” is a mathematical or graphical representation that solves a
problem by using rules of thumb or useful principles acquired from
experience. Accord MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 1024
(10th ed. 1993) (defining “rule of thumb” in pertinent part as “[a] useful
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

37
principle having wide application but not intended to be strictly accurate or
reliable in every situation”). American Heritage Dictionary, at 1522.
Based on this interpretation, we see no error in the Examiner’s
finding that Karasawa’s calculating an optimal replacement period for each
part in step S24 of Figure 10 by calculating (1) an “average using time,” and
(2) a “margin” is a heuristic model under the term’s broadest reasonable
interpretation, particularly since this model is updated and refined
continually with new data. See Ans. 20–21. Accord Karasawa, col. 13, ll.
43–49 (noting that the derived optimal part replacement period is updated
and stored so that the stored replacement periods are optimized every time
new maintenance data is obtained). This iterative replacement period
optimization technique based on a mathematical calculation is, therefore, a
“heuristic model,” for it is a mathematical representation that solves a
problem, namely determining the optimum replacement period, by using
rules of thumb or useful principles acquired from experience consistent with
the term’s broadest reasonable interpretation. Appellant’s arguments to the
contrary (Appeal Br. 40–42) are unavailing and not commensurate with the
scope of the claim.
Although Appellant argues for the first time on page 20 of the Reply
Brief that Karasawa’s optimal replacement period does not meet the recited
“potential equipment failure,” these arguments were not raised in the Appeal
Brief. Compare Appeal Br. 40–42 with Reply Br. 20. Therefore,
Appellant’s new arguments in the Reply Brief are waived as untimely. See
37 C.F.R. § 41.41(b)(2). Nor has good cause been shown to raise these new
arguments in the first instance in the Reply Brief.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

38
Nevertheless, even if these arguments were timely presented (which
they were not), we still find them unpersuasive, for Karasawa’s optimal part
replacement period itself indicates at least a potential equipment failure if a
part were not replaced—a part whose effective life cycle is determined by
this calculation. See Karasawa, col. 13, l. 39–45. That this calculation is
based on parts that were repaired or replaced as noted on Karasawa’s
column 13, lines 38 to 42 only underscores the model’s potential equipment
failure identification.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 27.

Claims 10–15 and 28–34
We also sustain the Examiner’s rejection of independent claim 10
reciting, in pertinent part, (1) providing, using a cloud computing node,
shared hardware and software resources for use by plural clients; and (2)
analyzing a received set of information associated an industrial unit, where
the analysis comprises comparing the information set with one or more
empirical sets of information obtained from plural industrial units.
First, Appellant does not persuasively rebut the Examiner’s finding
regarding the recited cloud computing node functionality for the reasons
noted previously in connection with claim 1.
Second, our emphasis on “one or more” in the analysis limitation
above underscores that, to satisfy the claim, the prior art need only compare
the received information set with one empirical information set obtained
from plural industrial units. As shown in steps S11 and S12 of Karasawa’s
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

39
Figure 9, operating state data is (1) received in real time from an apparatus
10, and (2) stored in the history information database. Karasawa, col. 11, ll.
36–40. After reading a parameter, for example, data based on temperature
(change profile) in the operating state data received from the history
information database, the vendor-side computer compares the reference
profile relating to the temperature stored in the profile information database
33 with the profile of read or measured data. Id., col. 11, ll. 41–48; Fig. 9
(steps S13 and S14). If the difference between the measured and reference
profiles is not within a predetermined error range, the vendor-side computer
determines that trouble occurred in the apparatus 10, and reports this
occurrence to plant- and vendor-side workers. Id., col. 11, ll. 53 – col. 12,
l. 11; Fig. 9 (step S15 and S16).
Based on this functionality, we see no error in the Examiner’s
rejection. In the rejection, the Examiner maps the recited industrial units to
the elements associated with numerals 361 to 41j in Karasawa’s Figure 11—
a finding that is undisputed. See Final Act. 8 (referring to “industrial
automation units” 361 through 41j). As shown in Karasawa’s Figure 11,
these elements include Chemical Vapor Deposition (CVD) devices 36 and
measuring devices 41. See Karasawa, col. 14, ll. 12–15. As shown in
Karasawa’s Figure 13, the CVD device 36 includes controller 400 that, as
shown in Figure 14, includes a monitoring device 18 with temperature
sensors S1–S5. See Karasawa, col. 14, ll. 56–66.
Based on this disclosure, the recited “industrial units” include the (1)
CVD devices and their associated temperature sensors; (2) oxidizing devices
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

40
371 to 37m; and (3) measuring devices 411 to 41j for a single plant apparatus
10 consistent with the Examiner’s mapping. See Final Act. 8.
Given this mapping, nothing in the claim precludes comparing the
received information set associated with an industrial unit, namely the CVD
apparatus with its associated temperature sensors, with a single set of
information, namely temperature data, from the sets of information obtained
from plural industrial units, namely the CVD, oxidizing, and measuring
devices 361 to 41j in Karasawa’s Figure 11. That is, these respective devices
provide their own information sets that collectively constitute empirical sets
of information obtained from plural industrial units. One of those sets,
namely the temperature data associated with a CVD device noted above, is
used as a basis for comparison consistent with the Examiner’s mapping. See
Final Act. 7–8. Notably, this set would be an empirical information set
obtained from plural industrial units, for it is a subset of the set of
information provided by the industrial units 361 to 41j. For this reason alone,
we are not persuaded of error in the Examiner’s reliance on Karasawa for
disclosing the recited information set comparison.
In addition, the operating state data on which the temperature profile
comparison is made in Karasawa’s Figure 11 can include physical quantities
based on temperature, pressure, etc., collected for each (1) delivery
destination, (2) plant to be used, and (3) individual serial number. See
Karasawa, col. 9, ll. 13–26; col. 9, ll. 8–11 (noting that operating state data
stored in the history information database is obtained from respective
apparatuses 10 operating in plants 101, 110, and 120).
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

41
As shown in Karasawa’s Figure 2, the operating state data includes
data from different plants 101, 110, and 120, including stored temperature
data. Accord Ans. 15 (noting that the measured data is derived from
multiple plants, such as plants 110 or 120). Although Karasawa’s
temperature profile comparison in Karasawa’s Figure 11 is for a single plant,
this process nonetheless compares the received information set with one
empirical set of information obtained from plural industrial units, namely
those associated with different plants as shown in Figure 2. As with the
respective information sets obtained from the same plant’s industrial units
361 to 41j noted above, the temperature-based subset on which the
comparison is based is also a subset of the set of information provided by the
different plants’ industrial units. In short, the claim does not preclude either
subset. Appellant’s arguments are, therefore, unavailing and not
commensurate with the scope of the claim.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 10, and claims 11–15 and 28–34 not argued separately with
particularity.

Claims 16–20, 35, 36, and 38–41
We also sustain the Examiner’s rejection of independent claim 16
reciting, in pertinent part, a computing cloud comprising a database with
empirical information associated with failures of one or more industrial
tools. Final Act. 10–11; Ans. 14–15.
Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

42
First, Appellant’s contention that Karasawa fails to disclose a
computing cloud (Appeal Br. 22–23; Reply Br. 15) is unpersuasive for the
reasons noted previously in connection with claim 1.
Second, although Appellants argue for the first time on page 15 of the
Reply Brief that Karasawa does not also disclose a database with empirical
information associated with failures of one or more industrial tools as
claimed, these arguments were not raised in the Appeal Brief and are,
therefore, waived as untimely. See 37 C.F.R. § 41.41(b)(2). Nor has good
cause been shown to raise these new arguments in the first instance in the
Reply Brief, particularly given the striking similarity between the
Examiner’s response to arguments in the Answer for claim 16 and the
rejection. Compare Final Act. 10–11 with Ans. 15–16.
Nevertheless, we are still unpersuaded by Appellant’s new arguments
in the Reply Brief even if they were timely presented—which they were not.
On this record, nothing in the claim precludes the Examiner’s reliance on
Karasawa’s stored optimal replacement period information as being at least
associated with an industrial tool failure, for this information conveys the
timing for part replacement to avoid failure as the Examiner indicates. Final
Act. 10; Ans. 16.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 16, and claims 17–20, 35, 36, and 38–41 not argued separately with
particularity.

Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

43
THE OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 24,
30, and 37. Final Act. 19–21. Because this rejection is not argued
separately with particularity, we are not persuaded of error in this rejection
for the reasons previously discussed.

CONCLUSION
The Examiner’s decision to reject claims 1–41 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–23, 25–
29, 31–36,
38–41
102(b) Karasawa 1–23, 25–
29, 31–36,
38–41

24, 30, 37 103 Karasawa, Imai 24, 30, 37

Overall
Outcome
1–41

REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

Appeal 2019-003778
Reexamination Control 90/020,121
Patent US 8,204,717 B2

44

Ssc

PATENT OWNER:

HONEYWELL/BANNER
Patent Services
115 Tabor Road
P.O. Box 377
Morris Plains, NJ 07950

THIRD PARTY REQUESTER:

Bruce A. Johnson
JOHNSON & ASSOCIATES (GENERAL)
106 E 6TH ST., STE 9001
AUSTIN, TX 7871-3659