Ex Parte Fischer et al

Board of Patent Appeals and Interferences

Oct 29, 2009

10763786 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DETKEF FISCHER, MARTIN GLASER, OLIVER KAISER,
HANS-JURGEN SAUER, THOMAS SCHOCH, RAINER SPEH,
MICHAEL UNKELBACH, STEFFEN WAGNER, and HORST WALZ
____________________

Appeal 2009-006549
Application 10/763,7861
Technology Center 2100
____________________

Decided: October 29, 2009
____________________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed January 23, 2004. Appellants claim the benefit under
35 U.S.C. § 119 of European Patent Office (EPO) application 01119041.0,
filed 08/07/2001. The real party in interest is Siemens.
Appeal 2009-006549
Application 10/763,786

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1-14 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

Appellants’ invention relates to a process control system that
determines a fee based on system use (Spec. 2, ll. 15-21). In the words of
Appellants:
[The] system can be adapted flexibly to the customer’s
requirements and … is especially designed to reduce the given
initial high investment costs, especially the investment costs for
the software components of the process control system and the
license payments to be made for them.
(Spec. 2, ll. 6-10).
This is a way of guaranteeing that the customer … must
in practice only pay (extra) for those functions of process
control system that he is really using.
(Spec. 2, ll. 22-27).

Claim 1 and claim 14 are exemplary:
1. A process control system, comprising:

a processor unit adapted to determine a payment figure
from operations running in the process control system regarding
the creation or removal of a process control function or
regarding a user activity or regarding an execution of an
automation function.

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14. A method for determining a payment figure in a process
control system, comprising:

providing a processor unit adapted to record the creation
and/or removal of a process control function and an execution
of an automation function;

providing a device adapted to record a user activity; and

determining a payment figure by the processor unit using
recorded data of the preceding steps.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mori US 5,103,392 A1 Apr. 07, 1992
Papadopoulos US 6,282,454 B1 Aug. 28, 2001
Baker US 7,035,898 B1 Apr. 25, 2006
(Aug. 9, 2000)

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1-13 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Papadopoulos in view of Mori.
R2: Claim 14 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Papadopoulos in view of Mori and further in view of Baker.
Claims 1 and claim 14 are representative. See 37 C.F.R. § 41.37 (c)
(vii).

Appellants contend that the claimed subject matter is not rendered
obvious by Papadopoulos in combination with Mori and Baker because
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Mori’s proprietors (people who are charging users a fee for using their
proprietary software) determine Appellants’ claimed “payment figure.”
(App. Br. 6, bottom to 7, top). Appellants further contend that since these
proprietors are not computer parts in Mori’s system, the claims are not
rendered obvious by the combination of references. (See id.) The Examiner
contends that each of the claims is properly rejected (Ans. 12, bottom).
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments that Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
Mori discloses Appellants’ claim limitation “to determine a payment figure.”
More specifically, we consider Appellants’ contention that proprietors
(humans) set a fee to be charged for using software, instead of computer
components of Mori’s system determining the fee. (See App. Br. 6, middle
to 7, top.)

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
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1. Appellants have invented a system and method of determining a fee (the
claimed “payment figure”) for use of a process control system based on
usage. (See Spec. 2, ll. 15-18 and 25-28.)
Papadopoulos
2. The Papadopoulos reference discloses an industrial control system
(col. 2, ll. 34-35), referred to as “process control system 6” (col. 4, l. 4).
Mori
3. The Mori reference discloses a system containing computer components
that generate a fee based on system usage. (See col. 6, ll. 47-49.) Mori
discloses a “timer portion 133,” “I/O processing 132,” “use history
storage 131,” and “payable charge storage.” (col. 3, ll. 43-49; Fig. 2).
Mori further discloses tables for calculating charges based on usage.
(See col. 9, 54-62; Fig. 5, elements 411b and 411c.)

Baker
4. The Baker reference discloses a web-based operating program that allows
a user to rearrange components of a programmable logic controller (PLC)
and save the results for later access and use. (See col. 6, ll. 41-43 and
55-60.)

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PRINCIPLE OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under 35 U.S.C. § 103] by showing insufficient evidence of prima
facie obviousness or by rebutting the prima facie case with evidence of
secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellants’
claims under 35 U.S.C. § 103(a). The prima facie case is presented on pages
3 to 9 of the Examiner’s Answer. In opposition, Appellants present a
number of arguments.

Arguments with respect to the rejection
of claims 1 to 13
under 35 U.S.C. § 103(a) [R1]
Appellants contend that Mori does not disclose the claim limitation
“to determine a payment figure,” as recited in exemplary claim 1, because
proprietors (people, and not computer components of Mori’s system) enter a
payment figure (i.e., a fee for software use). (See App. Br. 6, middle to 7,
top.) More particularly, Appellants contend: “[Mori’s] proprietors are not
part of the system disclosed by Mori. Rather, … the proprietors ‘register
their programs … [and] obtain accounts of the use of their programs …’ …
[T]here is no support for contending that the system of Mori would
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determine a payment figure.” (App. Br. 6, bottom to 7, top; Board’s
emphasis).
We disagree with Appellants’ argument, noting that in the Answer,
the Examiner did not cite Mori’s proprietors as disclosing the claim
limitation “to determine a payment figure.” (See Ans. 3-9.) We find that the
Mori reference discloses a system containing computer components that
generate a fee based on system usage (FF#3). Mori discloses a “timer
portion 133,” “I/O processing 132,” “use history storage 131,” and “payable
charge storage.” (id.). We find that Mori further discloses tables for
calculating charges based on usage (id.). Mori’s tables disclose that use time
data is associated with cost, resulting in a charge similar to the claimed
“payment figure.” (See e.g., Fig. 5A, elements 411b and 411c.) In light of
Mori’s disclosures of these elements (e.g., “timer portion 133” and tables)
that calculate a fee for software usage, we find unconvincing Appellants’
arguments that Mori’s proprietors determine Mori’s usage fee, as argued
above by Appellants. Since Mori discloses a system containing computer
components that generate a usage fee (FF#3) (i.e., human proprietors do not
determine the fee), the claim limitation “to determine a payment figure” is
met. Accordingly, we decline to find error in the Examiner’s analysis of
claim 1.

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Argument with respect to the rejection
of claim 14
under 35 U.S.C. § 103(a) [R2]

Independent claim 14 recites “[a] method for determining a payment
figure.”
Regarding exemplary claim 14, Appellants argue: “[T]here is no
support for contending that … Mori would determine a payment figure.”
(App. Br. 6, bottom to 7, top).
For the same reasons stated above, we find unconvincing Appellants’
argument for claim 14. As we stated, since Mori discloses computer
components (e.g., “timer portion 133” and tables) for calculating a software
usage fee (FF#3) (i.e., a fee not determined by human proprietors), the claim
limitation “to determine a payment figure” is met. Accordingly, we find no
error.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-14 under rejections [R1 and
R2].

DECISION
The Examiner’s rejections [R1 and R2] of claims 1-14, respectively,
are 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)(1)(iv).
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AFFIRMED

peb

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPT.
170 WOOD AVENUE SOUTH
ISELIN, NY 08830
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