Ex Parte Becker et al

Board of Patent Appeals and Interferences

Jan 26, 2009

09948563 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte NORBERT BECKER, GEORG BIEHLER, MATTHIAS DIEZEL,
ALBRECHT DONNER, DIETER ECKARDT, HARALD HERBERTH,
MANFRED KRAEMER, DIRK LANGKAFEL, RALF LEINS,
RONALD LANGE, WALTER MOELLER-NEHRING,
JUERGEN SCHMOLL, KARSTEN SCHNEIDER, ULRICH WELZ,
and HELMUT WINDL
__________

Appeal 2008-2064
Application 09/948,563
Technology Center 2100
__________

Decided: January 26, 2009
__________

Before JAMES D. THOMAS, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.
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DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-16. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part and enter a new ground of rejection against claims
7-11 and 13.
The Invention
According to Appellants the invention is an automation system with at
least one automation object having a first component for generating a system
functionality, a second component for generating a base functionality, and a
third component for managing at least one module. (Abstract).
Illustrative Claims
Claims 1 and 14-16 are illustrative:
1. An automation system comprising:
at least one automation object, each automation object having a
hierarchy of components, said hierarchy comprising a first component
generating system functionality related to internal services of the
system, a second component generating base functionality related to
generic services that facilitate manipulation of the at least one
automation object, and a third component operable to manage at least
one module,
wherein each module comprises at least a module component
operable to generate a technological functionality.

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14. The automation system as claimed in claim 1, further
comprising at least two engineering systems, each system being
operable to request a module list corresponding to a selected
automation object,
wherein the selected automation object, upon receiving said
request, selects a requested module by providing the requesting
engineering system with a reference to the requested module, and the
engineering system calls the technological functionality of the module
using the reference, the selected automation object being operable
with the at least two engineering systems.

15. The automation system as claimed in claim 1, further
comprising at least two engineering systems of different
manufacturers, and wherein each of the automation objects
corresponds to a respective engineering system of a different
manufacturer.

16. The automation system as claimed in claim 1, wherein the
automation system automates at least one of production and
assembling of manufactured products.

Reference
The Examiner relies upon the following reference as evidence in
support of the anticipation rejection:
Walton US 5,883,639 Mar. 16, 1999
(filed Jul. 3, 1997)

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Rejections
1. The Examiner rejects claims 14-16 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written
description requirement.
2. The Examiner rejects claims 1-13 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Walton.

ISSUE #1
The Examiner finds that while the Specification discloses “an
example . . . where different automation objects are used across different
systems” (Ans. 7), the Specification fails to disclose that “the same object is
replicated across two different engineering systems” (id.).
Appellants argue that the Specification discloses that “the same
automation object A1 is provided to three different engineering systems E1,
E2, and E3” (Reply Br. 4) and that “A1’ and A1’’ illustrate instances of the
same automation object A1” (Reply Br. 5).
Did Appellants demonstrate that the Examiner erred in finding that
“the selected automation object being operable with the at least two
engineering systems” is not disclosed in the originally filed application?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
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Appellants’ Invention
1. Appellants teach “automation objects are not necessarily restricted by
the engineering system in which they are used” (Spec. 2, ll. 1-2).
2. Appellants teach an “object of the invention is to provide an open and
distributed automation solution which . . . allows automation objects
of different manufacturers to be used in the same automation system
(Spec. 2, ll. 4-5).
3. Appellants teach “[a] first engineering system E1 uses a first
automation module A1’. . . the second engineering system E2 uses an
automation object A1’’ . . . the third engineering system E3 uses an
automation object A1’’’ (Fig. 4, Spec. 7, ll. 22-25).
4. Appellants teach “an automation system is used . . . in the field of
automation technology” (Spec. 1, ll. 14-15).

Walton
5. Walton teaches “a plurality of VSE composite objects 422, which are
object-oriented elements which make it possible for graphical objects
to be built in a hierarchical fashion” (col. 10, ll. 3-6).

PRINCIPLES OF LAW
35 U.S.C. § 101
“A claimed process is . . . patent-eligible under § 101 if: (1) it is tied
to a particular machine or apparatus, or (2) it transforms a particular article
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into a different state or thing.” In re Bilski, 545 F.3d 943, 954 (Fed. Cir.
2008). However, “even if a claim recites a specific machine or a particular
transformation of a specific article, the recited machine or transformation
must not constitute mere ‘insignificant postsolution activity’.” Id. at 957.

Written description
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The possession test
alone, however, is not always sufficient to meet the written description
requirement. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969
(Fed. Cir. 2002). Rather, “the written description requirement is satisfied by
the patentee’s disclosure of ‘such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.’”
Id. (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997)).

Anticipation
35 U.S.C. § 102
A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
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ANALYSIS (ISSUE #1)
Appellants’ Specification discloses instances of an automation object
A1 (i.e., A1’ or A1’’) operable with different engineering systems (e.g.,
Engineering System 1, Engineering System 2, and Engineering System 3 –
Fig. 4) (FF 1). Appellants demonstrate that each of the different instances of
automation object A1 disclosed in the Specification are the same object that
operates with different engineering systems while the Examiner has not
demonstrated that the different instances of automation object A1 are, in
fact, different automation objects.
Accordingly, we conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting claim 14 with respect to issue
#1.

ISSUE #2
The Examiner finds “the specification . . . refers to automation objects
of different manufacturers, not engineering systems of different
manufacturers” (Ans. 8).
Appellants argue that the Specification discloses that “automation
objects . . . can be used by different engineering systems of different
manufacturers” (Reply Br. 6).
Did Appellant demonstrate that the Examiner erred in finding that the
“at least two engineering systems of different manufacturers” are not
disclosed in the originally filed application?
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ANALYSIS (ISSUE #2)
Appellants’ Specification discloses different engineering systems
containing automation objects made by different manufacturers (FF 2 and 3).
Because different engineering systems contain components (i.e., automation
objects) that are made by different manufacturers, the different engineering
systems are, at least in part, made by different manufacturers.
Accordingly, we conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting claim 15 with respect to issue
#2.

ISSUE #3
The Examiner finds that the Specification “contains no mention
whatsoever of manufacturing anything” (Ans. 8).
Appellants argue that “one of ordinary skill in the art would readily
understand that an automation system is a system that enables the automatic
operation of machines . . . which would include manufacture, assembly and
other aspects related to the production of products” (Reply Br. 7-8).
Did Appellants demonstrate that the Examiner erred in finding that
“the automation system automates at least one of production and assembling
of manufactured products” is not disclosed in the as filed application?

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ANALYSIS (ISSUE #3)
While the Specification discloses an automation system, we find no
disclosure, and Appellants have not indicated a disclosure in the
Specification that the automation system automates the production and
assembly of manufactured products.
Appellants argue that an automation system “would include
manufacture [and] assembly [of] . . . products” (Reply Br. 7-8). However,
“the written description requirement is satisfied by the patentee’s disclosure
of ‘such descriptive means as words, structures, figures, diagrams, formulas,
etc., that fully set forth the claimed invention.’” Enzo Biochem, Inc., 323
F.3d at 969. Appellants fail to indicate any words, structures, figures,
diagrams, or other such indication in the Specification demonstrating that
Appellants had possession of the claimed invention of an automation system
automating the production or assembly of manufactured products.
Accordingly, we conclude that Appellants have not met their burden
of showing that the Examiner erred in rejecting claim 16 with respect to
issue #3.

ISSUE #4
The Examiner finds that “the objects [the “move” function, the “size”
function, and the “connect objects” function] exist in a hierarchy” (Ans. 11).
Appellants argue that “there is no disclosure or even remote
suggestion that these functions form a hierarchy” (Reply Br. 12).
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Did Appellants demonstrate that the Examiner erred in finding that
Walton teaches an automation object having a hierarchy of a first component
generating system functionality, a second component generating base
function, and a third component operable to manage at least one module?

ANALYSIS (ISSUE #4)
The Examiner finds that Walton discloses a “move” function, “size”
function, and “connection objects” function (Ans. 11) in a hierarchy.
However, the Examiner does not demonstrate that any of the “move”
function, “size” function, or “connection objects” function either generates
system functionality related to internal services of the system, generates base
functionality related to generic services that facilitate manipulation of an
automation object, or is operable to manage a module.
Accordingly, we conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting claims 1-13 with respect to
issue #4.

NEW GROUND OF REJECTION
35 U.S.C. § 101
Using our authority under 37 C.F.R. § 41.50(b), we reject claims 7-11
and 13 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
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The Court of Appeals for the Federal Circuit recently held that “the
applicable test to determine whether a claim is drawn to a patent-eligible
process under §101 is the machine-or-transformation test set forth by the
Supreme Court and clarified herein . . . .” In re Bilski, 545 F.3d at 966.
Claims 7-11 and 13 do not transform physical subject matter. To the extent
that Appellants’ claims may transform data, we note that transformation of
data, without a machine, is insufficient to establish patent-eligibility under §
101. See In re Bilski, at 961 (“[E]ven a claim that recites ‘physical steps’ but
neither recites a particular machine or apparatus, nor transforms any article
into a different state or thing, is not drawn to patent-eligible subject
matter.”).
We conclude that Appellants’ claimed “method for creating a
hierarchically structured automation object and embedding said automation
object into an engineering system” (see preamble, claim 7) does not require
a particular machine or apparatus, nor do these claims transform any article
into a different state or thing. According, we conclude that independent
claim 7, and associated dependent claims 8-11 and 13 are not directed to
statutory subject matter under 35 U.S.C. § 101.

CONCLUSIONS OF LAW
We conclude that Appellants have failed to demonstrate that the
Examiner erred in finding that “the automation system automates at least one
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of production and assembling of manufactured products” is not disclosed in
the as filed application (issue #3).
However, Appellants have demonstrated that the Examiner erred in
finding that the Specification fails to disclose that the selected automation
object is operable with the at least two engineering system (issue #1), that at
least two engineering systems are of different manufacturers (issue #2), and
that Walton teaches an automation object having a hierarchy of a first
component generating system functionality, a second component generating
base function, and a third component operable to manage at least one
module (issue #4).

DECISION
We reverse the Examiner’s decisions rejecting claims 1-13 under 35
U.S.C. § 102(e) and rejecting claims 14-15 under 35 U.S.C. § 112, first
paragraph.
We affirm the Examiner’s decision rejecting claim 16 under 35 U.S.C.
§ 112, first paragraph.
As noted supra, 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 that “[a]
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review.”

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37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM DATE OF THE DECISION, must exercise one of 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)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

pgc

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