Ex Parte Kaufman et alDownload PDFPatent Trial and Appeal BoardDec 17, 201512429821 (P.T.A.B. Dec. 17, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/429,821 0412412009 42982 7590 12/21/2015 Rockwell Automation, Ine,/FY Attention: Linda H. Kasulke E-7Fl 9 1201 South Second Street Milwaukee, WI 53204 FIRST NAMED INVENTOR Philip John Kaufman 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. 09AB087-US 1809 EXAMINER RAO, SHEELA S ART UNIT PAPER NUMBER 2127 NOTIFICATION DATE DELIVERY MODE 12/21/2015 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): howell@fyiplaw.com docket@fyiplaw.com lhkasulk@ra.rockwell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PHILIP JOHN KAUFMAN, MARCIA ELAINE WALKER, and STEVEN ANTHONY LOMBARDI Appeal2014-000886 Application 12/429,821 Technology Center 2100 Before DEBRA K. STEPHENS, JESSICA C. KAISER, and JOSEPH P. LENTIVECH, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-26, all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm-in-part and enter new grounds of rejection under 37 C.F.R. § 41.50(b). 1 According to Appellants, the real party in interest is Rockwell Automation Technologies, Inc. (App. Br. 2.) Appeal2014-000886 Application 12/429,821 EXEMPLARY CLAIMS Claims 1, 19, 24, and 25 are independent. Those claims are illustrative of the invention and are reproduced below: 1. An industrial control system, comprising: tagged data that is collected from a plurality of sustainability factor data sources across an industrial automation environment, wherein the tagged data is associated with a portion of a process that is attributed to the sources associated with the sustainability factor data; and a manufacturing model that is associated with the tagged data, where the manufacturing model is employed to enhance the energy efficiencies of the process, wherein the manufacturing model includes: associations between components of sustainability factors and components or process steps of the process, or associations between components of sustainability factors and products produced by the process. 19. A method of controlling an industrial process, compnsmg: monitoring a plurality of energy sources across an automated facility; automatically tagging data associated with the energy sources to indicate a portion of a process that is related to the energy sources; adapting a manufacturing specification to record the tagged data, wherein the manufacturing specification includes: associations between energy consumption data and components or process steps of the process, or associations between energy consumption data and products produced by the process; and processing the manufacturing specification to mitigate energy associated with the facility. 2 Appeal2014-000886 Application 12/429,821 24. An industrial control system, comprising: means for monitoring one or more sustainability factor- associated energy sources; means for identifying the sustainability factor-associated energy sources; means for generating a manufacturing specification that reflects at least one sustainability factor-associated energy source; and means for generating a bill of material from the manufacturing specification, wherein the bill of material includes itemized components of sustainability factors associated with components of a process or products produced by the process. 25. A bill of material, comprising: a listing of a discrete component or a process step employed in an industrial manufacturing process; and a listing of at least one sustainability factor-associated energy source that is associated with at least one discrete component employed in a discrete assembly or at least one process step employed in a batch process. REJECTION AT ISSUE The Examiner has rejected claims 1-26 under 35 U.S.C. § 103(a) as being unpatentable over DeMesa (US 2005/0144154 Al; published June 30, 2005). (Final Act. 3-10.) 3 Appeal2014-000886 Application 12/429,821 ANALYSIS Claim 1 Issue: The dispositive issue presented by Appellants' arguments regarding claim 1, is whether the Examiner errs in finding DeMesa teaches or suggests "the manufacturing model is employed to enhance the energy efficiencies of the process," as recited in claim 1. Appellants argue DeMesa teaches collection of "point data" from certain apparatuses that may be used by data acquisition and control systems, but does not teach or suggest that a "manufacturing model is employed to enhance the energy efficiencies of the process," as recited in claim 1. (See App. Br. 7-8.) The Examiner finds DeMesa teaches "the association between components or process steps that help to enhance efficiencies is taught as per the claim language especially since the point data is characterized as current, real-time, or value data associated with one or more instruments, components, or portions of a manufacturing, industrial, commercial or other system." (Ans. 10 (citing DeMesa i-f 34).)2 The Examiner has not adequately explained, however, how any enhancement of efficiencies in DeMesa teaches or suggests the recited enhancement of energy efficiencies. Therefore, the Examiner has not set forth why it would have been obvious to an ordinarily skilled artisan, to achieve the present invention in light of the teachings of DeMesa. Thus, on this record, we are constrained to reverse the 2 The Examiner's Answer is not paginated. Thus, we refer to the Examiner's Answer as if it were paginated consecutively beginning with the cover page. 4 Appeal2014-000886 Application 12/429,821 Examiner's decision to reject claim 1 and claims 2-18 depending directly or indirectly therefrom. We note that we are unpersuaded by Appellants' argument that DeMesa does not teach or suggest the manufacturing model includes the associations recited in claim 1. (App. Br. 7 .) Appellants argue the point data in DeMesa does not teach the recited sustainability factors. (Id. (citing DeMesa i-f 35, Fig. 7; Spec. i-f 30).) We disagree because Appellants' Specification does not include a limiting definition of sustainability factors. The Specification does, however, provide examples of sustainability factors at paragraph 30. In particular, such sustainability factors include those relating to planet, people, and profit; and regarding profit, sustainability factors include "[a ]ny financial measurement impacting the cost or profitability of a product or service." (Spec. i-f 30.) Given the breadth of the examples of sustainability factors in Appellants' Specification, we agree with the Examiner (see Ans. 10) that the broadest reasonable interpretation of sustainability factors encompasses point data, as taught in DeMesa. We enter a new ground of rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over DeMesa. In addition to the findings of the Examiner, which we adopt as our own, we find that applying the efficiency enhancement taught in DeMesa (see DeMesa i-f 48) to the enhancement of energy efficiencies as recited would have been obvious. Specifically, DeMesa's point data is used "to provide information relating to the operation of a selected system." (DeMesa i-f 34.) We conclude it would have been obvious to a person of ordinary skill in the art at the time of Appellants' invention to apply DeMesa's point data to enhance the energy efficiency of a process because doing so would be no more than using known data (i.e., 5 Appeal2014-000886 Application 12/429,821 operating parameters) to yield a predictable result (i.e., improving a process in a desirable way, namely, the energy efficiency). Because our rationale differs from that of the Examiner regarding "the manufacturing model is employed to enhance the energy efficiencies of the process," we enter a new ground of rejection. Although we have rejected claim 1under37 C.F.R. § 41.50(b), we have not reviewed its dependent claims to the extent necessary to determine whether those claims are unpatentable under 35 U.S.C. § 103(a). We emphasize that our decision should not be interpreted to mean the remaining claims are patentable. Rather, we leave it to the Examiner to determine the appropriateness of any further rejections based thereon. See MPEP § 1213.02. Claim 19 Issue: The dispositive issue presented by Appellants' arguments regarding claim 19 is whether the Examiner errs in finding DeMesa teaches or suggests "energy consumption data," as recited in claim 19. Appellants argue the portions of DeMesa cited by the Examiner do not teach or suggest "a manufacturing specification that includes associations between energy consumption data and components (or process steps) of a process or products produced by the process is adapted to record tagged data." (App. Br. 9.) Specifically, Appellants argue that DeMesa's data "includes operating parameters such as 'current temperature, pressure, speed, voltage, current, etc.,"' but not energy consumption data. (Id. (citing DeMesa ,-r 35, Fig. 7).) 6 Appeal2014-000886 Application 12/429,821 In the Answer, the Examiner addresses claim 19 together with claim 1, and although the Examiner acknowledges that in claim 19, sustainability data is replaced by consumption data, the Examiner does not explain how energy consumption data is taught or suggested by DeMesa or why such data as recited in claim 19 would have been obvious in light of DeMesa's teaching. (See Ans. 9--11.) In the absence of such articulated reasoning, as with claim 1, we are constrained by the record to reverse the Examiner's decision to reject claim 19 and claims 20-23 depending directly or indirectly therefrom. We note that we are unpersuaded by Appellants' argument that DeMesa fails to teach or suggest that "a manufacturing specification is adapted to record tagged data." (App. Br. 8.) DeMesa teaches that its point data is tagged data. (DeMesa i-f 5.) DeMesa further teaches that its point data is associated with components or process steps of the process (e.g., an operating temperature associated with a certain motor). (See DeMesa i-f 34.) Thus, we find DeMesa teaches or suggests "a manufacturing specification is adapted to record tagged data." (See also DeMesa i-fi-15, 120 (plant data historian discussed further infra).) We enter a new ground of rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over DeMesa. In addition to the findings of the Examiner, which we adopt as our own, we find that although DeMesa does not explicitly mention "energy consumption data" as one of the monitored operating parameters, it would have been obvious to a person of ordinary skill in the art that such data could be among the DeMesa's operating parameters. In addition, a person of ordinary skill in the art would have been motivated to include an association between energy consumption data 7 Appeal2014-000886 Application 12/429,821 and a component or process step to reduce energy costs or improve energy efficiency of that component or step or of the overall process. Because our rationale differs from that of the Examiner, we enter a new ground of rejection. Although we have rejected claims 19 under 37 C.F.R. § 41.50(b), we have not reviewed its dependent claims to the extent necessary to determine whether those claims are unpatentable under 35 U.S.C. § 103(a). We emphasize that our decision should not be interpreted to mean the remaining claims are patentable. Rather, we leave it to the Examiner to determine the appropriateness of any further rejections based thereon. See MPEP § 1213.02. Claim 24 Issue: The dispositive issue presented by Appellants' arguments regarding claim 24 is whether the Examiner errs in finding DeMesa teaches or suggests "means for generating a bill of material from the manufacturing specification," as recited in claim 24. Appellants point out that the Examiner did not address this limitation in the Final Office Action. (App. Br. 9-10 (citing Final Act. 7-8).) In the Answer, the Examiner acknowledges this oversight, but finds that DeMesa's data historian teaches or suggests the disputed limitation of claim 24. (Ans. 11 (citing DeMesa i-fi-15, 120).) DeMesa's data historian does not teach means for generating the recited a bill of material from a generated manufacturing specification, as recited in claim 24. Although the Examiner has shown DeMesa teaches generating a bill of material, in the absence of such articulated reasoning as 8 Appeal2014-000886 Application 12/429,821 to why an ordinarily skilled artisan would have found it obvious to generate a second document (bill of material) from a first document (manufacturing specification), we are constrained by the record to reverse the Examiner's decision to reject claim 24. Nevertheless, we enter a new ground of rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over DeMesa. In addition to the findings of the Examiner, which we adopt as our own, we find that DeMesa teaches a model-based approach to component definition of a tag representation. (See DeMesa i-f 111.) Based on this teaching, we find that it would have been obvious to a person of ordinary skill in the art to generate a bill of material from the manufacturing specification, as recited in claim 24. In addition, we find Appellants' argument regarding "sustainability factors" (App. Br. 10) unpersuasive for the reasons discussed above with respect to claim 1. Because our rationale discussed supra differs from that of the Examiner, we enter a new ground of rejection. Claim 25 Issue: The dispositive issue presented by Appellants' arguments regarding claim 25 is whether the Examiner errs in finding DeMesa teaches or suggests the limitations of that claim. Appellants argue DeMesa does not teach the limitations of claim 25. (App. Br. 10-11.) Specifically, Appellants argue: [T]he mere fact that the general concept of bills of material was known at the time of the filing of the present application does not render obvious the claim language directed toward a "bill of material, comprising: a listing of a discrete component or a 9 Appeal2014-000886 Application 12/429,821 process step employed in an industrial manufacturing process; and a listing of at least one sustainabilitv factor-associated energy source that is associated with at least one discrete component employed in a discrete assembly or at least one process step employed in a batch process," as recited by independent claim 25. (Id. at 11.) We observe that claim 25 recites a bill of material that comprises a listing of a discrete component or process step and a listing of at least one "sustainability factor-associated energy source" that is associated with at least one discrete component or process step. In other words, claim 25's bill of materials requires listings of two associated pieces of data. The Examiner finds that the disputed limitations are taught or suggested by DeMesa's data historian. (Ans. 12 (citing DeMesa i-fi-15, 120).) In particular, the Examiner finds DeMesa's point data sources (which the data historian monitors, collects, controls, and reports) teach or suggest the recited sustainability factor-associated energy sources. 3 (See id.) In the Reply Brief, Appellants argue "there is no suggestion that the point and non-point data of DeMesa includes data relating to sustainability factors associated with components of a process or products produced by a process, as would be appreciated by one skilled in the art." (Reply Br. 5-6.) We disagree with Appellants. As discussed above, Appellants' Specification does not include a limiting definition of sustainability factors, and it also does not include a limiting definition of sustainability factor-associated energy source. Given the breadth of the examples of sustainability factors in Appellants' 3 Although the Examiner's Answer refers to "sustainability factors" (Ans. 12), we understand the Examiner's finding to be as described above. 10 Appeal2014-000886 Application 12/429,821 Specification as discussed above, we agree with the Examiner that the broadest reasonable interpretation of sustainability factor-associated energy source encompasses the point data sources in DeMesa. Consistent with that interpretation, we agree with the Examiner (Ans. 12) that DeMesa's data historian teaches or suggests the recited listings in the bill of materials. (See DeMesa i-fi-15, 120.) Accordingly, we affirm the Examiner's decision to reject independent claim 25 and dependent claim 26 not argued separately (App. Br. 11). 4 DECISION The Examiner's decision to reject claims 1-24 is reversed. The Examiner's decision to reject claims 25 and 26 is affirmed. We enter new grounds of rejection of claims 1, 19, and 24 under 35 U.S.C. § 103(a), pursuant to our authority under 37 C.F.R. § 41.50(b). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of 4 In the event of further prosecution, we recommend the Examiner consider whether the claims recite patent eligible subject matter under 35 U.S.C. § 101. Specifically, the Examiner should consider whether a document (bill of material) is not a process, machine, article of manufacture, or composition of matter, but instead, is a mere arrangement of printed matter (the recited listings). See In re Miller 418 F. 2d 1392, 1396 (CCPA 1969. 11 Appeal2014-000886 Application 12/429,821 the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Jagr AFFIRMED-IN-PART 37 C.F.R. § 41.50(B) 12 Copy with citationCopy as parenthetical citation