Ex Parte Clinton

Board of Patent Appeals and Interferences

Apr 22, 2010

10179624 (B.P.A.I. Apr. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GREG C. CLINTON
____________
Appeal 2009-012376
Application 10/179,6241
Technology Center 2100
____________
Decided: April 22, 2010
____________
Before LEE E. BARRETT, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
non-final rejection of claims 1-20. We have jurisdiction pursuant to
35 U.S.C. § 6(b).
A telephonic hearing was held on April 15, 2010.
We reverse.

1 Filed June 24, 2002, titled "Process Control Script Development and
Execution Facility Supporting Multiple User-Side Programming
Languages." The real party in interest is Invensys Systems, Inc.
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STATEMENT OF THE CASE
The invention
The invention relates to a supervisory process control and
manufacturing information application development and execution system
that supports the execution of application object scripts derived from
multiple different scripting languages. Scripts are simple, interpreted, text-
based program instructions that bridge the gap between functionality
provided in a base system and its associated development tools, and a
desired customized system configured for a particular process control
application. Spec. 3, ll. 18-21. Script languages include Quick Script,
IEC 1131 Structured Text, Visual Basic, Functional Block Charts, and
Sequential Function Charts. Spec. 47, ll. 24-26.
A "user side" of the system includes scripting languages utilized by
developers in an integrated design environment (IDE) and an "execution
side" includes a scripting language for presenting instructions to a scripting
engine when application objects are processed in a runtime environment.
Spec. 46, ll. 15-19. "In accordance with an embodiment of the present
invention script instructions from two or more distinct user-side scripting
languages are translated/mapped/compiled down to a same execution-side
scripting language." Spec. 46, ll. 19-21; see also Spec. 48, ll. 22-23 ("the
term translator is intended to be interpreted broadly to include compilers and
interpreters"). For example, a script editor output includes script language
tags indicating a particular one of the multiple user-side scripting languages,
which tags operate as switches to invoke a particular one of the script
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translators. Spec. 48, ll. 13-18. The output of the script translators is code
executable by a scripting engine. Spec. 48, ll. 24-25.

Illustrative claim
Claim 1 is reproduced below for illustration:

1. A supervisory process control and manufacturing
information application development and execution system supporting
the execution of application object scripts derived from multiple
different scripting languages, the system comprising:

a script editor interface facilitating specifying scripts for
application objects, and wherein the script editor interface supports
multiple distinct user-side script languages;

a script translation component including routines for rendering
execution-side script of a single execution-side scripting language
from source script rendered by the script editor and written according
to any of a set of user-side script languages, the set of user-side script
languages including at least:

a first scripting language, and

a second scripting language; and

a scripting engine for executing the execution-side script of the
single execution-side scripting language generated by the script
translation component for the first scripting language and the second
scripting language.

The references

Nixon 5,801,942 Sept. 1, 1998
Irwin US 6,385,496 B1 May 7, 2002
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Konstantinos Tourlas, Diagrammatic Representations in Domain-
Specific Languages (2001) (doctorate dissertation, University of
Edinburgh) ("Tourlas").

Steven Holzner, JavaScript Complete (1998 McGraw-Hill), pages i, ii,
13, 70, 75-78, 311-328 ("Holzner").

The rejections
Claims 1, 12, and 18 stand rejected under 35 U.S.C. § 112 ¶ 2 as
indefinite.
Claims 1, 2, 7, 12, 13, 15, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nixon and Tourlas.
Claims 3-6, 10, 11, 14, 16, 17, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nixon and Tourlas, further in view of Holzner.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nixon and Tourlas, further in view of Irwin.

35 U.S.C. § 112 ¶ 2
Issue
The Examiner considers it unclear whether the "multiple distinct user-
side script languages" is intended to be the same as or different from the
"multiple different scripting languages" in the preamble and that is unclear
what relation the "set of user-side script languages" has to the "multiple
different scripting languages." Non-Final Office Action (NFOA) 2.2

2 The appeal is taken from Office Action entered May 22, 2007,
which is indicated to be final and non-final. We term the action non-final
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The issue is:
Are the terms "multiple different scripting languages," "multiple
distinct user-side script languages," and the "set of user-side script
languages" indefinite?

Principles of law
Claims must be interpreted in light of the specification. See
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) ("[I]t would be
unreasonable for the PTO to ignore any interpretive guidance afforded by
the applicant's written description . . . .").
The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986). If the claims read in light of the specification reasonably apprise
those skilled in the art of the scope of the invention, § 112 demands no more.
Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993)
(citation omitted).

Analysis
Appellant argues that the "multiple different scripting languages" in
the preamble, the "multiple distinct user-side script languages," and the "set
of user-side script languages" do not necessarily refer to the same exact
thing, except that "[t]he sets supported by the editor and translator will, of

but this does not affect the appeal in any way since the claims have been
twice rejected.
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course, overlap with regard to at least the recited 'first' and 'second' scripting
languages." Br. 6.
We do not see any problem of indefiniteness with the claim language.
The Examiner does not say whether the problem is that the limitation
"multiple different scripting languages" uses the term "different" and
"multiple distinct user-side script languages" uses the term "distinct" and
how that creates an uncertainty, or whether the Examiner is criticizing the
presence of the term "user-side" in the latter limitation and, if so, how that
makes the claims indefinite. We see no indefiniteness created from the use
of "distinct" instead of "different," nor any reason why the terms should be
construed to refer to the exact same thing. Similarly, it is clear that the "set
of user-side script languages" refers to a set of languages from the "multiple
distinct user-side script languages." The Examiner does not explain how the
terminology creates ambiguity or uncertainty in the scope of the claims.

Conclusion
The terms "multiple different scripting languages," "multiple distinct
user-side script languages," and the "set of user-side script languages" have
not been shown to be indefinite. Accordingly, the rejection of claims 1, 12,
and 18 is reversed.

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35 U.S.C. § 103(a)
Issue
Does the combination of Nixon and Tourlas disclose or suggest the
claimed "script translation component"? This limitation is present in all the
independent claims.

Principles of law
"[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art."
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
"[T]he best defense against the subtle but powerful attraction of a
hindsight-based obviousness analysis is rigorous application of the
requirement for a showing of the teaching or motivation to combine prior art
references." In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). The
motivation, suggestion or teaching may come explicitly from statements in
the prior art, the knowledge of one of ordinary skill in the art, or, in some
cases the nature of the problem to be solved. Id. In analyzing whether it
would have been obvious to one of ordinary skill in the art to make a
modification or combination, there does not have to be an express teaching,
suggestion, or motivation (TSM) in a published article or issued patent. KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) ("The obviousness
analysis cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents.").
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Findings of fact
Nixon
Nixon relates to a process control system including a graphical user
interface which programs a control strategy using a control language
selected from multiple standard control languages. Col. 2, ll. 5-8. The
control languages may be IEC-1131 standard control languages. Col. 3,
ll. 58-61. From a single application routine, a user selects a control language
from among a plurality of control languages including, for example,
Function Blocks, Sequential Function Charts, Ladder Logic and Structured
Text, to implement a control strategy. Col. 3, ll. 61-65.
Figure 22 show a block diagram of a program for defining a process
configuration from a plurality of control languages. Using the module editor
2220, a user activates one language editor of multiple control language
editors including an attribute editor program 2230, a Function Block
Edit/View/Debug program 2240, a Sequential Function Chart program 2250,
a Ladder Logic program 2270 and a Structured Text program 2290. The
multiple control language editors operate with compatible databases and
interfaces so that a common control strategy is defined using the different
control language editors. Col. 30, l. 66 to col. 31, l. 16.
"The control strategy is transferred from the editors into runtime
engines using an install script. A plurality of control language execution
engines execute the control strategy on one or more
controller/multiplexers 110." Col. 31, ll. 37-41. For example, a Function
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Block program is implemented in a function block execution engine (col. 32,
ll. 14-16), a Sequential Function Chart (SFC) program is implemented in a
SFC execution engine (col. 33, ll. 8-11), and a Ladder Logic program is
implemented in a Ladder Logic engine (col. 33, ll. 65-67).

Tourlas
Tourlas describes: "For the purposes of machine interpretation . . .
function blocks are also given a textual representation in . . . Structured
Text (ST)." P. 21.
Tourlas describes that IEC 1131-3 function block "diagrams are
internally translated into a textual form and are interpreted by
microprocessors." P. 52.

Analysis
The "script translation component" limitation requires a routine for
translating source script written in one of at least two scripting languages
into a "single execution-side scripting language."
The Examiner now admits that Nixon does not disclose the "script
translation component" and relies on Tourlas. Ans. 14.
Although we are not bound by an examiner's admissions, we agree
with Appellant that Nixon does not describe a script translation component
as claimed. Nixon teaches that that scripts in potentially many languages are
incorporated into a control strategy, and the control strategy comprising
modules written in potentially multiple control languages is transferred (for
execution) to a plurality of control language execution engines. That is, a
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"plurality of control language execution engines execute the control strategy
on one or more controller/multiplexers 110" (col. 31, ll. 39-41). For
example, a Function Block program is implemented in a function block
execution engine (col. 32, ll. 14-16), a Sequential Function Chart (SFC)
program is implemented in a SFC execution engine (col. 33, ll. 8-11), and a
Ladder Logic program is implemented in a Ladder Logic engine (col. 33,
ll. 65-67). Therefore, the control strategy is described as comprised of
several languages and is not a "single execution-side scripting language."
Nixon is silent as to whether the multiple languages are "translated."
The Examiner finds that "Nixon does not explicitly disclose a script
translation component rendering execution-side script of a single execution-
side scripting language." NFOA 3. The Examiner finds and concludes:
Tourlas teaches "For the purposes of machine interpretation . . .
function blocks are also given a textual representation in . . .
Structured Text (ST)." (see pg. 21 under the heading 2.3.1 Function
Blocks and their diagrams).

It would have been obvious to a person of ordinary skill in the art at
the time of the invention to represent scripts developed in Nixon's
second scripting language (col. 31, lines 4-10 'Function Block . . .
program') in the Structured Text Language as taught by Tourlas
(pg. 21) in order to simplify Nixon's system by providing a single
control language library and execution engine (Nixon col. 31, line 39-
41; col. 31, lines 10-14 'language editors operate with compatible
databases') and further "so that a user easily and efficiently may use
different editors for different purposes to best take advantage of
different aspects of the languages" (Nixon col. 31, 13-16) regardless
of the language the script was originally developed in.

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NFOA 3-4; Ans. 5-6. It is clearer in the Response to Arguments section of
the Answer that the Examiner considers that the statement at page 21
describes a "translation." Ans. 14. The Examiner also refers (Ans. 14) to
page 52 of Tourlas which states that "the diagrams are internally translated
into textual form and are interpreted by microprocessor" and to section 4.6
which states that "[t]he system comprises seventeen equational laws which
provide the means to link diagrams to the textual form of the language."
Appellant notes that this is the first time the Examiner refers to
page 52, but, in any case, page 52 merely states that each of the
diagrammatic representations of control functions is eventually converted
into machine-executable scripts and does not disclose a "script translation
component" that converts at least first and second user-side scripting
languages into a single execution-side scripting language. Reply Br. 6-7. It
is argued that Tourlas describes the substantial challenges of translating a
single diagram into machine-executable instructions, so one skilled in the art
would not be inclined to take on the more formidable task of providing a
script translation component that handles at least two distinct user-side script
languages and Tourlas thus teaches away. Reply Br. 7.
Appellant traverses the Examiner's assertion that translating scripts
from multiple user-side script languages into a single execution-side script
simplifies Nixon's system. Br. 8. It is argued that Nixon does not have a
script translation component and incorporating such a component would not
simplify Nixon since it would involve creating two interfaces and a
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translation component that supports at least two languages, and multiple
distinct execution engines already exist in Nixon. Br. 8; Reply Br. 7.
The Examiner responds that fewer script engines to implement and
maintain would simplify the requirements for the execution environment
"thus making the change a matter of engineering choice." Ans. 15. The
Examiner further states that Nixon and Tourlas describe systems for editing
and running scripts in the IEC 1131 specification, and one of ordinary skill
in the art would have been capable of combining the various methods in
Nixon and Tourlas without producing unexpected results. Id.
Tourlas describes that IEC 1131-3 function block "diagrams are
internally translated into a textual form and are interpreted by
microprocessors." P. 52. Assuming that the function block diagrams are a
form of "scripting language" and that the "textual form" is a form of
"scripting language" because it is "interpreted" by a microprocessor, this
suggests that a function block diagram scripting language is "translated" into
an executable "scripting language." As disclosed by Appellant, any process
by which programs written by a user and converted to a form that can be
executed by a processor is a "translation"; see, e.g., Spec. 46, ll. 19-21;
Spec. 48, ll. 22-23. However, it was noted at the oral hearing that the script
must be translated to a "scripting language." In view of Tourlas, which
teaches "translation" of Structured Text into executable script and the fact
that Nixon gives Structured Text as an example of a scripting language, it
would have been obvious to one of ordinary skill in the art that it the various
scripting languages in Nixon could be separately translated into executable
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script to be executed on separate execution engines. However, more than
mere translation is necessary to meet the claim language.
Tourlas does not describe or suggest translating source script written
in at least two scripting languages into a "single execution-side scripting
language," but only teaches separate translation and separate execution.
Nixon teaches that each language is interpreted by its own interpreter. The
Examiner concludes that it would have been obvious to translate the
scripting languages into a single language instead of separate languages to
simplify Nixon. While this is logical, the Examiner points to no factual
support for this motivation in Nixon or Tourlas, or in the knowledge of one
skilled in the art. Conclusions of obviousness must be based on facts
supported by evidence, so that the Board and any court reviewing our
decision can make its own decision as to whether the facts support the
conclusion. It is always possible to think of a reason why something would
have been done after it has been disclosed. While we do not require an
express teaching, suggestion, or motivation in a reference, there must be
something more than a bare conclusion especially where, as here, the
conclusion is just to do what Appellant has done. The Specification does not
appear to describe more than the concept of translating multiple scripting
languages to a single execution-side scripting language, but the Examiner
has not shown any evidence of this multiple-to-one feature.
We conclude that Appellant has shown error in the rejection.

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Conclusion
The combination of Nixon and Tourlas has not been shown to disclose
or suggest the claimed "script translation component." The rejection of
claims 1, 2, 7, 12, 13, 15, 18, and 20 is reversed.
The Examiner does not rely on Holzner or Irwin for the limitations
found to be missing from Nixon and Tourlas. Accordingly, the rejections of
claims 3-6, 8-11, 14, 16, 17, and 19 are reversed.

CONCLUSION
The rejection of claims 1, 12, and 18 under 35 U.S.C. § 112 ¶ 2 is
reversed.
The rejections of claims 1-20 under 35 U.S.C. § 103(a) are reversed.

REVERSED

erc

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