Ex Parte Cooper et al

Patent Trial and Appeal Board

Oct 22, 2018

13677019 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/677,019 11/14/2012
42981 7590 10/24/2018
ROCKWELL AUTOMATION/ AT&W
ATTENTION: Linda H. Kasulke, E-7F19
1201 SOUTH SECOND STREET
MILWAUKEE, WI 53204
FIRST NAMED INVENTOR
David Cooper
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2012P-023-US1/ALBRP733USA 8342
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
hmckee@thepatentattomeys.com
raintellectualproperty@ra.rockwell.com
docket@thepatentattomeys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID COOPER, KEVIN CHAO, KEITH CHAMBERS,
RICHAR SZE, CRISLER MOOR, BRANDON E. HENNING, and
SURYANARAYANA MURTHY BOBBA
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Application 13/677,019 1
Technology Center 3600
Before JEREMY CURCURI, HUNG H. BUI, and JOSEPH LENTIVECH,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20. Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, ROCKWELL AUTOMATION
TECHNOLOGIES, INC., is the real party in interest. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed March
4, 2016; Examiner's Answer ("Ans.") mailed September 1, 2016; Final
Office Action ("Final Act.") mailed November 3, 2015; and the original
Specification ("Spec.") filed November 14, 2012.
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Application 13/677,019
STATEMENT OF THE CASE
Appellants' invention relates to "a Manufacturing Execution System
(MES) ... that leverages industry-specific workflows to process business
requests." Abstract. According to Appellants, "an MES system can include
a library of generalized activity sets corresponding to executable control
and/or business workflows. These activity sets can be classified according
to industry, process, and any suitable subcategories, thereby allowing
industry-specific rules or standards to be encoded in the activity sets ....
When a message defining a business goal or objective is received by the
MES system from a business-level system (e.g., an ERP system), the
message can be analyzed and matched to an activity set by the MES system,
which can then execute the selected activity set to facilitate satisfaction of
the business objective." Spec. ,r 10.
Claims 1, 12, and 19 are independent. Claim 1 is illustrative of
Appellants' invention, as reproduced below:
1. A Manufacturing and Execution System (MES),
compnsmg:
a processor; and
a memory communicatively coupled to the processor, the
memory having stored therein computer-executable instructions,
compnsmg:
an activity set data store configured to store a plurality of
generalized activity sets that respectively define workflows
capable of implementation by one or more MES systems,
wherein the generalized activity sets do not comprise control
instructions executable on industrial automation equipment to
implement the generalized activity set;
a mapping component configured to:
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receive business objective data that specifies a
business objective with respect to a manufacturing activity in an
industrial environment,
identify a plurality of industrial automation
equipment in the industrial environment capable of meeting the
business objective, and
identify a generalized activity set, of the plurality of
generalized activity sets, that defines a workflow determined to
be capable of achieving the business objective using a particular
set of industrial automation equipment of the identified plurality
of industrial automation equipment m the industrial
environment; and
a translation component configured to:
translate the identified generalized activity set to
control instructions executable in the particular set of industrial
automation equipment in the industrial environment to
implement the generalized activity set,
install the control instructions in the particular set of
industrial automation equipment in the industrial environment,
and
execute the workflow defined by the identified
generalized activity set using the control instructions in the
particular set of industrial automation equipment in the industrial
environment.
App. Br. 39 (Claims App.).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1, 10, 12, and 19 stand rejected under
35 U.S.C. § 112(b) as being indefinite. Final Act. 7-9.
(2) Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea. Final Act. 5-7.
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(3) Claims 1, 3-8, 10, 12, 14--26, and 18-20 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Sudarshan et al. (US
2010/0191579 Al; published on July 29, 2010 ("Sudarshan")) and Moor et
al. (US 2009/0037378 Al; published on February 5, 2009 ("Moor")). Final
Act. 9-27.
(4) Claims 2, 13, and 17 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Sudarshan, Moor, and Thurner (US 2005/0160412
A 1; published July 21, 2005). Final Act. 2 8-31.
(5) Claims 9 and 11 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Sudarshan, Moor, and Moyne et al. (US 7,974,723
B2; issued on July 5, 2011 ("Moyne")). Final Act. 31-33.
DISCUSSION
35 US.C. § l 12(b): Claims 1, 10, 12, and 19
In rejecting claims 1, 12, and 19, the Examiner finds "[t]he activity
sets" recited "as being implemented on the equipment, but they are not
'executable on industrial automation equipment'" to be "contradictory in
nature" and, as such, indefinite. Final Act. 8. According to the Examiner,
"[i]t is unclear how activity sets that do not comprise control instructions
could be translated into control instructions that could be implemented on
industrial automation equipment." Ans. 2. The Examiner also finds the
phrase "a particular set of industrial automation devices" is unclear as to
"what constitutes a particular set of industrial automation devices." Final
Act. 8. According to the Examiner, "[i]t is unclear what would distinguish
an 'activity set' from 'control instructions."' Ans. 3. With respect claim 10,
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the Examiner finds the term "an industry specific rule" in the context of
"business objective data" indefinite. Final Act. 8-9.
Appellants argue the claims clearly recite that "generalized activity
sets do not comprise the control instructions executable on industrial
automation equipment, and that the identified generalized activity set is
translated to the control instructions that are executable on the particular set
of industrial automation equipment" and, as such, "there is no contradiction
in the claim language." App. Br. 12-13. Appellants also argue "[i]t is clear
that the particular set of industrial automation equipment is specifically
usable for achieving the business objective with the workflow in the
identified generalized activity" and paragraphs 55-59, 61, and 72 of the
Specification provide examples of industry specific rules. App. Br. 13-14.
We agree with Appellants. "The legal standard for definiteness is
whether a claim reasonably apprises those of skill in the art of its scope." In
re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). "[T]he definiteness of
the language employed must be analyzed - not in a vacuum, but always in
light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Specification describes "an activity set" as "a series of activities
or a workflow for achieving a particular business goal (e.g., fulfilling a
customer order, minimizing plant energy consumption during indicated
hours, etc.)." Spec. ,r 41. According to the Specification, "the activity set
can define the activities in terms of both control and business functions to be
performed, the order of operation for the steps, the designated machines or
devices required to perform each step, or any other information required to
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fully define the control activity represented by the activity set." Spec. ,r 41.
In addition, "the activity sets can [also] define interactions to be performed
between the MES system and the ERP system relative to the defined
sequence of control instructions." Spec. ,r 42. Once a business objective is
defined, a suitable activity set is selected from a library of activity sets 314,
shown in Figure 3, and selected activity set 312 is passed to translation
component 308 for translation into a set of control instructions 316 for
deployment to appropriate controllers or devices of the control system (e.g.,
sequential function chart, ladder logic, structured text, function block code,
etc.). Spec. ,r 45. "The instructions can comprise any conceivable type of
code used to process input signals read into the controller and to control
output signals generated by the controller, including but not limited to ladder
logic, sequential function charts, function block diagrams, structured text, or
other such platforms. The instructions can also take the form of output
signals generated by the MES system for triggering sequences already stored
on the controllers." Spec. ,r 69.
In light of the Specification, we agree with Appellants that a skilled
artisan would understand that: ( 1) "there is no contradiction in the claim
language;" (2) "a particular set of industrial automation devices" refers to
applicable controllers or devices of the control system; and (3) the industry
specific rules refer to different activity sets categorized according to industry
as described in paragraph 55 of Appellants' Specification. App. Br. 12-14.
As such, we do not sustain the Examiner's section 112 (b) rejection of claims
1, 10, 12, and 19.
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35 USC§ 101: Claims 1-20
In Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S.Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S.Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. ( citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1-20 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to an abstract idea of "executing
workflows" and includes limitations that are "essentially steps for data
gathering and manipulation intended to execute a workflow" and analogous
to those claims discussed in Ultramercial. Final Act. 6-7 ( quoting
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Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (Holding that
"[t]he process of receiving copyrighted media, selecting an ad, offering the
media in exchange for watching the selected ad, displaying the ad, allowing
the consumer access to the media, and receiving payment from the sponsor
of the ad all describe an abstract idea, devoid of a concrete or tangible
application."). The Examiner also finds the steps recited in the claims such
as "receiving," "identifying," and "translating," are merely mental steps that
could also be performed in the human mind or by a human using a pen and
paper. Ans. 5; see also CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1370 (Fed. Cir. 2011).
The Examiner also determines
the claims do not recite an improvement to another technology
or technical field, nor do they recite an improvement to the
functioning of the computer itself. The claims require no more
than a generic computer (a computer readable medium in
independent claim 19) to perform generic computer functions
that are well understood, routine and conventional activities
previously known to the industry. The use of a computer or
software to manipulate data is well known and routine in the
field of manufacturing and operations management.
Final Act. 7.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants do not dispute
the Examiner's determination that claims 1-20 are directed to an abstract
idea of "executing workflows." Instead, Appellants argue the claims are not
directed to an abstract idea because these claims recite the "novel and non-
obvious improvements over existing technological systems ( e.g., existing
automated Manufacturing Execution systems, existing business systems,
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existing automation control systems, etc.)" i.e., "a particular computerized
industrial automation workflow identification, industrial automation
equipment specific translation, and implementation centric problem" - "a
clear improvement over existing computerized technologies." App. Br. 15--
18.
Appellants' arguments are not persuasive. Appellants' Specification
describes "[a] Manufacturing Execution System (MES) ... that leverages
industry-specific workflows to process business requests." See Abstract.
According to Appellants, "an MES system can include a library of
generalized activity sets corresponding to executable control and/or business
workflows. These activity sets can be classified according to industry,
process, and any suitable subcategories, thereby allowing industry-specific
rules or standards to be encoded in the activity sets .... When a message
defining a business goal or objective is received by the MES system from a
business-level system (e.g., an ERP system), the message can be analyzed
and matched to an activity set by the MES system, which can then execute
the selected activity set to facilitate satisfaction of the business objective."
Spec. ,r 10. Embodiments of Appellants' Specification, as shown in Figure
3, describe basic steps of: (1) "identifying ... a plurality of industrial
automation devices in an industrial environment capable of meeting the
business objective;" (2) "selecting ... a generalized activity set, from a set
of stored generalized activity sets, that defines a workflow;" (3) "identified
plurality of industrial automation devices in the industrial environment;" ( 4)
"translating ... the identified generalized activity set to control instructions
executable in the particular set of industrial automation devices in the
industrial environment;" ( 5) "installing ... the control instructions in the
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particular set of industrial automation equipment in the industrial
environment;" and ( 6) "executing ... the workflow defined by the identified
generalized activity set using the control instructions installed in the
particular set of industrial automation devices in the industrial environment"
as recited in Appellants' process claim 12 ( and similarly recited in claims 1
and 18).
As recognized by the Examiner, "[t]he claims merely recite steps to
translate a workflow from one type of workflow to another type of workflow
through a 'translation component."' Ans. 4. These steps are also abstract
processes of receiving, processing, analyzing, and translating data of a
specific content, i.e., "executing a workflow." Information, as such, is
intangible, and data analysis and translation are abstract ideas. See, e.g.,
Microsoft Corp. v. AT & T Corp., 550 U.S. 437,451 n.12 (2007); Alice, 134
S. Ct. at 2355; Parker v. Flook, 437 U.S. 584, 589, 594--95 (1978);
Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972). "[C]ollecting information
and analysis, including when limited to particular content ( which does not
change its character as information)," and "analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more," are "within the realm of abstract ideas." Electric Power Group. 830
F.3d at 1353-54; see also Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource 654 F.3d
at 1370.
As further recognized by the Examiner (Ans. 5), the steps recited in
the claims 1, 12, and 19 such as "receiving," "identifying," and "translating"
are merely mental steps that could also be performed in the human mind or
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by a human using a pen and paper. See CyberSource, 654 F.3d at 1372-73
("[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under [section] 101."); see also In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes-or
processes of human thinking-standing alone are not patentable even if they
have practical application."); Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
("Phenomena of nature,[] mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.") ( emphasis added). Additionally, mental processes
remain unpatentable even when automated to reduce the burden on the user
of what once could have been done with pen and paper. CyberSource, 654
F.3d at 1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
Thus, we agree with the Examiner that claims 1-20 are directed to an
abstract idea of "executing a workflow" which is considered as a
fundamental business practice and "certain methods of organizing human
activities" as identified in Alice and Bilski v. Kappas, 561 U.S. 593 (2010)
- concepts that courts have characterized as abstract ideas. 3 Such activities
are squarely within the realm of abstract ideas.
3 See (1) "The 2014 Interim Guidance on Patent Subject Matter Eligibility,"
published on Dec. 16, 2014 (79 Fed. Reg. 74618); (2) "July 2015 Update:
Subject Matter Eligibility" (July 2015 Update); (3) "May 2016 Subject
Matter Update" (May 4, 2016 Memorandum) at
https://www.uspto.gov/patent/laws-and-regulations/examination-
policy/subject-matter-eligibi1itv; and (4) USPTO June 2017: Interim
Eligibility Guidance Quick Reference Sheet identifying abstract idea
examples of "certain methods of organizing human activity." See In re
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Alice/Mayo-Step 2 (Inventive Concept)
Appellants argue, like DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014), the claims contain an "inventive concept"
that is "novel over existing technologies" and "do not recite a commonplace
business method aimed at processing business information, applying a
known business process to the particular technological environment of the
Internet, or creating or altering contractual relations using generic computer
functions and conventional network operations." App. Br. 15-18.
Appellants also argue claims are not directed an abstract idea because these
claims are "computer-centric," i.e., "are directed to the industrial automation
centric problem centric problem of workflow identification, industrial
automation equipment specific translation, and implementation which has
specific industrial network and industrial automation equipment centric
implications." App. Br. 18-20 (quoting Intellectual Ventures I LLC v.
Capital One Financial Corp., 8-14-cv-00111 (MDD May 12, 2015, Order)
(Lupo, Special Master); and Intellectual Ventures I LLC v. Symatec Corp., 1-
10-cv-01067 (DED April 22, 2015, Order) (Stark, J.)).
Appellants' arguments are not persuasive. At the outset, we note that:
(1) "the concept of inventiveness is distinct from that of novelty;" and
(2) "[t]he inventiveness inquiry of [section] 101 should therefore not be
confused with the separate novelty inquiry of [section] 102 or the
obviousness inquiry of§ 103." Amdocs (Israel) Ltd. v. Openet Telecom, Inc.
841 F.3d 1288, 1311 (Fed. Cir. 2016). We may even assume that the
Bilski, 545 F.3d 943, 972 (Fed. Cir. 2008); see also Bilski v. Kappas, 561
U.S. 593 (2010) and Alice, 134 S.Ct. 2361 (Concurrence from Justice Sonia
Sotomayor joined by Justices Ruth Bader Ginsburg and Stephen G. Breyer.).
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techniques claimed are "[g]roundbreaking, innovative, or even brilliant," but
that is not enough for eligibility. Association for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013), accord buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for
subject-matter eligibility that claimed techniques be novel and nonobvious in
light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89--90 (2012);
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) ("[A] claim for a new abstract idea is still an abstract idea. The search
for a [section] 101 inventive concept is thus distinct from demonstrating
[section] 102 novelty."); Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness).
Moreover, we note Appellants' reliance on: (1) Intellectual Ventures
I LLC v. Capital One Financial Corp.; and (2) Intellectual Ventures I LLC v.
Symatec Corp., California Institute of Technology is misplaced because: (1)
district court decisions are not binding legal authority on the Board; and (2)
the district court's holdings in these cases are not analogous to Appellants'
claims directed to "executing a workflow."
According to Alice, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice, 134 S.Ct. at 2355 (quoting
Mayo, 566 U.S. at 72-73). The Federal Circuit cases on point include:
(1) DDR Holdings; and (2) Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841
F.3d 1288 (Fed. Cir. 2016), both of which involved business-centric
inventions.
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In DDR and Amdocs, the Federal Circuit opted to bypass Alice step 1
in favor of step 2. In particular, the Federal Circuit found DDR 's claims
contain an "inventive concept" under Alice step 2 because DDR 's claims:
( 1) do not merely recite "the performance of some business practice known
from the pre-Internet world" previously disclosed in Bilski and Alice but
instead; (2) provide a technical solution to a technical problem unique to the
Internet, i.e., a "solution ... necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also
found Amdocs ' claims contain a sufficient "inventive concept" because like
DDR, Amdocs' claims "entail[] an unconventional technological solution
( enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)" and
"improve the performance of the system itself." Amdocs, 841 F.3d at 1300,
1302.
Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F.3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016)); or
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(3) "entail[] an unconventional technological solution
([ e.g.,] enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1, 12, and 19 that contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept (i.e., "executing a workflow") into a patent-eligible application.
Alice, 134 S.Ct. at 2357. As discussed supra, we are not persuaded the
added computer elements such as a processor and memory in the context of
a MES system can transform the abstract idea into a patent eligible
invention. As our reviewing court has observed, "after Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible." DDR, 773 F.3d at 1256
( citing Alice, 134 S.Ct. at 2358).
Additional Argument
Appellants argue that the claims do not seek to tie up or preempt an
entire field, i.e., an abstract idea of "executing workflows." App. Br. 21-22.
However, this argument is not persuasive because, although "preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a
patent's claims are deemed only to disclose patent ineligible subject matter"
under the Alice/ Mayo framework, "preemption concerns are fully addressed
and made moot." Id.
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Because Appellants' claims 1, 12, and 19 are directed to a patent-
ineligible abstract concept and does not recite something "significantly
more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of claims 1-20 under 35 U.S.C. § 101.
35 USC§ 103(b): Claims 1-20
In support of the obviousness rejection of claim 1 and, similarly,
claims 12 and 19, the Examiner finds Sudarshan teaches, inter alia: "an
activity set data store configured to store a plurality of generalized activity
sets that respectively define workflows capable of implementation by one or
more MES systems, wherein the generalized activity sets do not comprise
control instructions executable on industrial automation equipment to
implement the generalized activity set." Final Act. 10 (citing Sudarshan
,r,r 37, 57) (emphasis omitted). The Examiner also finds Sudarshan and
Moor also teach a translation component to "translate the identified
generalized activity set to control instructions executable in the particular set
of industrial automation equipment in the industrial environment to
implement the generalized activity set." Final Act. 11-12 (citing Sudarshan
,r,r 31, 37, 41; Moor ,r,r 1, 2, and 21-23).
Appellants acknowledge Sudarshan teaches a MES system to execute
a workflow using libraries of activity sets to perform various functions,
including: project prioritization, strategic segmentation, product mix
allocation, risk assessment, sensitivity analytics, portfolio optimization, and
portfolio NPV evaluation. App. Br. 25 ( citing Sudarshan ,r 57). However,
Appellants argue the combination of Sudarshan and Moor does not teach or
suggest: ( 1) "wherein the generalized activity sets do not comprise control
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instructions executable on industrial automation equipment to implement the
generalized activity set;" and (2) the MES system configured to "translate
the identified generalized activity set to control instructions executable in the
particular set of industrial automation equipment in the industrial
environment to implement the generalized activity set" as recited in claims
1, 12, and 19. App. Br. 23-33. According to Appellants, the workflow
functions described by Sudarshan are not equivalent to Appellants' claimed
translation component configured to translate the activity set to control
instructions. App. Br. 25.
Appellants' arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellants' arguments
supported by evidence. Ans. 5-7. As such, we adopt the Examiner's
findings and explanations provided therein. Id. At the outset, we note claim
terms are given their broadest reasonable interpretation consistent with the
Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004 ). Under the broadest reasonable interpretation, claim terms are
given their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
The term "activity set" is broadly defined as "a series of activities or a
workflow for achieving a particular business goal (e.g., fulfilling a customer
order, minimizing plant energy consumption during indicated hours, etc.)."
Spec. ,r 41. Similarly, "control instructions 316 can comprise analog, digital,
or networked control outputs directed to the appropriate controllers." Spec.
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As recognized by the Examiner, "workflows and libraries" include
data that is equivalent to the generalized activity set using a MES and these
workflows must be inherently translated into control instructions. Ans. 6
( citing Sudarshan ,r,r 3, 31 ). Moreover, Moor teaches a MES system, shown
in Figures 1-3, configured to evaluate, modify and/or output modified
information (form) based on actions and/or activities or sets of such actions
and/or activities (e.g., steps in a workflow), shown in Figure 9. According
to Moor, "[t]he actions and/or activities (or sets) can be tasks or other
procedures, including work procedures or processes" and "[t]he activities or
set of activities can, likewise be part of a service" and "can be a configured
component that performs an MES function." Moor ,r,r 25-26.
For these reasons, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 1, 12, and 19 and dependent claims 2, 4--11, 13-14, 15,
17, and 18, which Appellants do not argue separately.
With respect to claims 3, 16, and 20, Appellants argue the
combination of Sudarshan and Moor does not teach or suggest "bind[ing] a
set of parameters in the activity set to specific controller tags." App. Br. 33-
34. We disagree and adopt the Examiner's explanation provided on page 7
of the Examiner's Answer, i.e., Moor teaches mapping "controller tags" to
data to control, via controllers. See Moor ,r,r 2, 5, and 52. As such, we also
sustain the Examiner's obviousness rejection of dependent claim 3, 16, and
20.
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Application 13/677,019
CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 1, 10, 12, and 19 under
35 U.S.C. § 112(b), but not claims 1-20 under 35 U.S.C. § 101 and
35 U.S.C. § 103(a).
DECISION
As such, we reverse the Examiner's Final Rejection of claims 1, 10,
12, and 19 under 35 U.S.C. § 112(b). However, we affirm the Examiner's
Final Rejection of claims 1-20 under 35 U.S.C. § 101 and
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1-20. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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