Ex Parte Dewitz et al

Patent Trial and Appeal Board

Dec 21, 2016

13553287 (P.T.A.B. Dec. 21, 2016)

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.
13/553,287 07/19/2012 Gerd DEWITZ 0070996-000194 1124
7590129925
ABB Inc.
Taft, Stettinius & Hollister LLP
One Indiana Square
Suite 3500
Indianapolis, IN 46204-2023
12/23/2016 EXAMINER
LE, DAVID
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
taft-ip-docket @ taftlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERD DEWITZ, GUNNAR PRYTZ,
MICHAEL GIENKE, RAGNAR SCHIERHOLZ,
STEFAN BOLLMEYER, and THOMAS PAULY
Appeal 2016-000381
Application 13/553,287
Technology Center 2400
Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN,
STEVEN M. AMUNDSON, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-000381
Application 13/553,287
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—13 and 15—20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Exemplary Claims
Exemplary claim 1 under appeal reads as follows:
1. A computer-implemented process control system,
comprising:
a plurality of spatially distributed interconnected network
subscribers with secure communication between network
nodes, and wherein communication integrity between the
network nodes is based on an interchange of certificates; and
an integrated central certification point, which is an
integral part of the process control system, and where the
integrity of the communication on the interchange of
certificates is based on the process control system having the
central certification point, which assigns and distributes the
certificates; and
wherein existing reporting and logging system of the
process control system is designed, to monitor and record key
management functions using the process control system by
events, which are recorded and stored as system messages.
Rejections1
Claims 1—13 and 15—20 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 4.
1 Separate patentability is not argued for claims 2—13 and 15—20. Except for
our ultimate decision, these claims are not discussed further herein.
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Appeal 2016-000381
Application 13/553,287
Claims 1—3, 5, 11, 13, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable by Gossel (US 2011/0167257 Al, July 7, 2011) in view
of Madoukh (US 2001/0019614 Al, Sept. 6, 2001). Final Act. 4-7.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable by
Gossel and Madoukh, in view of Chang (US 2003/0065921 Al, Apr. 3,
2003). Final Act. 7—8.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable by
Gossel and Madoukh, in view of Baum-Waidner (US 2002/0046335 Al,
Apr. 18, 2002). Final Act. 8—9.
Claim 7 rejected under 35 U.S.C. § 103(a) as being unpatentable by
Gossel and Madoukh, in view of Lee (US 2002/0129024 Al, Sept. 12,
2002). Final Act. 9.
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable by
Gossel and Madoukh, in view of Heinla (US 2005/0122965 Al, June 9,
2005). Final Act. 10.
Claims 9, 10, and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable by Gossel and Madoukh, in view of Guo (US 2010/0115267
Al, May 6, 2010). Final Act. 10—12.
Claims 16—18 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable by Gossel and Madoukh, in view of Frost (US 2004/0225898
Al,Nov. 11,2004). Final Act. 12—14.
Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
by Gossel and Madoukh, in view of Curry (US 6,128,740, Oct. 3, 2000).
Final Act. 14—15.
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Appeal 2016-000381
Application 13/553,287
Appellants ’ Contentions2
1. Appellants contend that the Examiner erred in rejecting claims 1—
13 and 15—20 under 35 U.S.C. § 101 because “[cjlaims 1-13 and 15-20 were
amended as suggested [by the Examiner] in the Final Rejection dated August
22, 2014, to recite a computer-implemented process control system.” App.
Br. 4 ; see also Reply Br. 1—3.
2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because the combination of Gossel and Madoukh
does not teach “wherein existing reporting and logging system of the process
control system is designed, to monitor and record key management functions
using the process control system by events, which are recorded and stored as
system messages.” App. Br. 5—7; Reply Br. 2—3.
Issues on Appeal
Did the Examiner err in rejecting claims 1—13 and 15—20 as being
directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1—13 and 15—20 as being
obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
Appeal Brief arguments (Appeal Brief and Reply Brief) that the Examiner
has erred.
2 The Examiner’s Final Rejection also includes objections to the drawings.
Final Act. 3. However, this is a petitionable, rather than appealable, matter
and we express no opinion as to its propriety as it is not before us. See
37 C.F.R. § 1.181.
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Appeal 2016-000381
Application 13/553,287
As to Appellants’ above contention 1, we agree with Appellants’
arguments.
As to Appellants’ above contention 2, we disagree. We agree with the
Examiner’s reasoning that the prior art renders obvious claim 1. Ans. 3^4.
In particular, we agree with the Examiner’s mapping of the elements of
claim 1 to the disclosures of Gossel and Madoukh (Final Act. 4—5). The
Examiner finds, and we agree, that the disputed language of claim 1 is taught
by Madoukh. Final Act. 5 (citing Madoukh, para. 49).
The Examiner also responds to Appellants’ arguments by describing
the features of Gossel wherein the ordinarily skilled artisan would have
combined with Madoukh, consistent with the guidelines stated in KSR
International Co. v. Teleflex Inc., 550 U.S. 398 (2007). See Ans. 3—6. We
adopt the Examiner’s findings and underlying reasoning, which are
incorporated herein by reference.
The Supreme Court has indicated that:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common
sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
KSR, 550 U.S. at 420 (citation omitted).
Moreover, “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test 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).
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Appeal 2016-000381
Application 13/553,287
Appellants provide additional arguments with respect to the
patentability of dependent claims 4, 6, 7, 9, 10, 12, and 16—21. App. Br. 8—
11. The Examiner has rebutted each of those arguments in the Final Action
(pages 8—15). Therefore, we agree with the Examiner’s findings and
underlying reasoning and adopt them as our own.
Thus, we are not persuaded of Examiner error. Therefore, we sustain
the Examiner’s § 103 rejections of claims 1—13 and 15—20.
DECISION
The Examiner’s rejection of claims 1—13 and 15—20 under 35 U.S.C.
§ 101 is reversed.
The Examiner’s rejection of claims 1—13 and 15—20 under 35 U.S.C.
§ 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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