Ex Parte Talanis et alDownload PDFPatent Trial and Appeal BoardAug 9, 201311194931 (P.T.A.B. Aug. 9, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/194,931 08/02/2005 Thomas Talanis 2004P09268US 3105 7590 08/12/2013 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE, SOUTH ISELIN, NJ 08830 EXAMINER RAHIM, MONJUR ART UNIT PAPER NUMBER 2436 MAIL DATE DELIVERY MODE 08/12/2013 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 THOMAS TALANIS, THOMAS TROESTER, and FRANK VOLKMANN ____________________ Appeal 2010-011448 Application 11/194,931 Technology Center 2400 ____________________ Before MAHSHID D. SAADAT, ALLEN R. MACDONALD, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-011448 Application 11/194,931 2 STATEMENT OF THE CASE Appellants request rehearing of our Decision on Appeal entered March 20, 2013 (“Decision”), in which we reversed the Examiner’s rejection of claims 9-17 under 35 U.S.C. § 102 and entered a new ground of rejection under 35 U.S.C. § 103 rejecting those same claims. We summarize Appellants’ principal allegations of error as follows: (1) The claim 9 limitation “automatically generating common secrets for the communication between the ticket agent and automation devices of the automation project” is not described by Callaghan (U.S. Pub. 2005/0229004; Oct. 13, 2005) (Req. Reh’g 5-7), and the record is “devoid of any basis” for finding that it is either disclosed in Callaghan or obvious in view of it (id. at 7); and (2) The new ground of rejection is defective (Req. Reh’g 11-14) and fails to show that “designating one of the automation devices within the automation project as a ticket agent” (claim 9) would have been obvious (id. at 7-11). ANALYSIS First Allegation In our Decision, we reversed the Examiner’s rejection solely on the basis of an erroneous finding that one skilled in the art “could conclude that the certification component is a [sic] automation device because it is located in the Automation network and transmits information with other automation device [sic].” Decision 5, quoting the Examiner’s Answer. We otherwise adopted the Examiner’s findings in the Final Office Action and Answer. Id. at 3. The Examiner found that the limitation disputed in the first allegation Appeal 2010-011448 Application 11/194,931 3 is described at Callaghan, paragraph 34 (see, e.g., Ans. 3), which states that either symmetric or asymmetric cryptography can be used “to facilitate secure communication to and amongst industrial automation devices.” Req. Reh’g 6. The Examiner also found that “[c]ertification component 120 can issue and manage digital certificates utilized to create digital signatures and public-private key pairs.” Ans. 7. Our new ground of rejection included a finding that “it would have been obvious to one skilled in the art that any of Callaghan’s automation devices could include a certification component as described by Callaghan.” Decision 5. Implicit in our finding is that “automatically generating common secrets for the communication between the ticket agent and automation devices of the automation project” is an obvious modification of Callaghan’s teaching at paragraph 34 in view of the Examiner’s findings above regarding the functionality of a certification component. Accordingly, Appellants’ first principal allegation is unpersuasive that the record is “devoid of any basis” for finding the disputed limitation obvious. We are also unpersuaded of any matter our Decision misapprehended or overlooked with respect to this allegation. Second Allegation Appellants make a number of assertions that our new ground of rejection is deficient. Appellants assert, for example, that “more is required to establish obviousness than a mere statement that programming a known functionality into an automation component would have yielded a predictable result.” Req. Reh’g 8. Our new ground of rejection does, however, include more than the “mere statement” to which Appellants refer (see, e.g., Decision 5, citing Examiner’s finding that Callaghan’s automation Appeal 2010-011448 Application 11/194,931 4 devices consist of familiar elements). Moreover, Appellants’ argument is at odds with Federal Circuit precedent. The Federal Circuit has stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be supported by a showing that the claims are directed to a process, machine, manufacture, or composition of matter already known in the prior art that is altered by the mere substitution of one element for another known in the field, and such modification yields a predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 40 (1966)). When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. Our prima facie conclusion of obviousness reasoned that programming familiar elements (i.e., Callaghan’s automation devices that include programmable logic controllers and other familiar components) to function as a certification component was within the capability of a skilled artisan. Decision 5. Appellants’ arguments do not persuade us that our rejection lacked articulated reasoning with rational underpinning or that the Appeal 2010-011448 Application 11/194,931 5 claimed invention is more than the predictable use of prior art elements according to their established functions. Appellants also argue that “[i]t is only with use of appellant’s teachings as hindsight knowledge that one can reconstruct the invention.” Req. Reh’g 8 (emphasis added). Appellants’ argument does not persuade us, however, that “only” Appellants’ teachings could have led from Callaghan to the claimed invention or that any hindsight that might have been used in the rejection was improper. See, e.g., In re McLaughlin, 443 F.2d 1392 1313-1314 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”) Appellants also argue that a specific analytical approach – a genus/species analysis as discussed at MPEP 2144.08 – is necessary to support the obviousness conclusion. Req. Reh’g 8-10, also citing In re Brouwer, 77 F.3d 422, 425 (Fed. Cir. 1996) for the position that “even though a claimed species is encompassed by a prior art genus, this is not sufficient, by itself, to establish a prima facie case of obviousness.” Req. Reh’g 10 (emphasis added). We are unpersuaded that such an analysis is required to support our conclusion of obviousness as discussed infra. Appellants also assert that “[i]f a rejection based on obviousness is to be sustained, it is also incumbent on Office personnel to fully resolve the level of ordinary skill in the art and distinguish this from that of an expert.” Req. Reh’g 10. “A specific finding on the level of skill in the art is not, Appeal 2010-011448 Application 11/194,931 6 however, required where the prior art itself reflects an appropriate level.” Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). We are unpersuaded that Callaghan does not reflect the appropriate level of skill “to program these automation devices to be certification components with predictable results” in accordance with our rejection. Decision 5. Appellants also argue that the new ground of rejection is defective for lack of reference to a prior art motivation for modifying Callaghan’s teachings. Req. Reh’g 11-13. Appellants state, “[t]he new rejection reconstructs the invention without identifying a single motivation for doing so. Rather, the rejection only posits that one skilled in the art is capable of reconstructing that which is only taught by the applicants.” Id. at 13. As we explained above, however, we are unpersuaded that our rejection does not include articulated reasoning with rational underpinning sufficient to support our conclusion of obviousness (Kahn, 441 F.3d at 988). A specific reference to or finding of motivation does not render the rejection defective. We are therefore unpersuaded by Appellants’ arguments in the Request for Rehearing that our new ground of rejection is in error or that we overlooked or misapprehended any matter that would otherwise alter our Decision. DECISION We grant the Request for Rehearing to the extent that we have considered the arguments but otherwise deny the Request. Appeal 2010-011448 Application 11/194,931 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED tj Copy with citationCopy as parenthetical citation