Ex Parte Grass et al

Patent Trial and Appeal Board

Oct 27, 2016

10952625 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/952,625 0912912004 Norbert Grass
7590 10/27/2016
Siemens Corporation
Intellectual Property Department
170 Wood A venue South
Iselin, NJ 08830
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2004Pl3781US 9896
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
MAILDATE DELIVERY MODE
10/27/2016 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 NORBERT GRASS, THORSTEN RIEMER, THEODOR ROSCH,
KLAUS RUINER, MATTHIAS SEIFERT, and GERHARD WELLER
Appeal2014-007387 1
Application 10/952,6252
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
February 4, 2014) and Reply Brief ("Reply Br.," filed June 23, 2014), and
the Examiner's Answer ("Ans.," mailed April 22, 2014), and Final Office
Action ("Final Act.," mailed October 16, 2013).
2 Appellants identify Siemens Aktiengesellschaft of Munich, Germany as
the real party in interest. App. Br. 3.
Appeal2014-007387
Application 10/952,625
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 4, 5, 8, 9, 12, 13, and 16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellants' claimed invention "relates to a method of operating a
monitoring system of a facility" (Spec. 1, 11. 6-7).
Independent claims 1 and 9, reproduced below, are the independent
claims at issue, and are representative of the subject matter on appeal:
1. A method of monitoring a facility including data
having at least a first data set relevant to operational purposes of
the facility and a second data set relevant to entertainment
purposes of an individual within the facility, the method
compnsmg:
providing a processing device in communication with an
output device via a first transmission channel and a second
transmission channel;
receiving as the first data set data relevant to operational
purposes from one or more sensors and controllers to monitor
operation of the facility;
receiving as the second data set data relevant to
entertainment purposes from a data input device;
receiving a selection by the individual of either the first or
the second data set, to allow viewing of either the first or the
second data set by the individual;
assigning by a processor a respective identification
parameter that differentiates between the first and second data
sets;
processing by the processor the selected data set according
to the respective identification parameter;
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evaluating by a control device a current value of a status
parameter related to an operational status of the facility, wherein
the operational status comprises a current operational condition
of the facility, wherein the operational status changes upon
receiving a warning message, an alarm, or a report of critical
status regarding the operational status of the facility, any of
which require immediate attention of the individual, such that if
the current value of the status parameter indicates that data
relevant to operational purposes requires attention, output of the
processed data set is suspended if the processed data set is related
to entertainment purposes and replaced with data relevant to
operational purposes;
after processing by the processor the selected data set
according to the respective identification parameter, assigning
the first data set to a first transmission channel in communication
with an output device based on its respective identification
parameter which predefines its respective transmission channel
and assigning the second data set to a second transmission
channel in communication with the output device based on its
respective identification parameter which pre-defines its
respective transmission channel, thereby separating data streams
of the first and second data sets across two transmission
channels, wherein the first transmission channel is enhanced with
redundancy or encryption for security functionality and reliable
transmission of data relevant to operational purposes; and
outputting the processed data set across the first or the
second transmission channel to the output device based on both
the current value of the status parameter and the respective
identification parameter which pre-defines the respective
transmission channel, wherein the processed data set is
transmitted over the first transmission channel to the output
device if the respective identification parameter of the processed
data set is related to operational purposes of the facility and over
the second transmission channel to the output device if the
respective identification parameter of the processed data set is
relevant to entertainment purposes, thereby avoiding interference
between the first data set and the second data set.
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9. A monitoring system for monitoring a facility
compnsmg:
a processing device in communication with an output
device via two transmission channels comprising a first
transmission channel and a second transmission channel;
at least one data acquisition device capable of acquiring a
first data set relevant to operational purposes of the facility from
one or more sensors and controllers to monitor operation of the
facility;
at least one data input device capable of receiving input of
a second data set relevant to entertainment purposes of an
individual within the facility;
at least one selecting device capable of receiving a
selection by the individual of either the first or the second data
set, to allow viewing of either the first or the second data set by
the individual;
wherein the processing device is capable of assigning a
respective identification parameter to differentiate between the
first and second data sets and processing the selected data set
according to the respective identification parameter, wherein the
processing device is adapted to assign the first data set to the first
transmission channel in communication with the output device
based on its respective identification parameter which pre-
defines its respective transmission channel and assign the second
data set to the second transmission channel in communication
with the output device based on its respective identification
parameter which pre-defines its respective transmission channel,
thereby capable of separating data streams of the first and second
data sets across the two transmission channels, wherein the first
transmission channel is enhanced with redundancy or encryption
for security functionality and reliable transmission of data
relevant to operational purposes;
a control device capable of evaluating a current value of a
status parameter related to an operational status of the facility,
wherein the operational status comprises a current operational
condition of the facility, wherein the operational status changes
upon receiving a warning message, an alarm, or a report of
critical status regarding the operational status of the facility, any
of which require immediate attention of the individual, the
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control device capable of suspending output of the processed
data set if the processed data set is related to entertainment
purposes and replacing it with data relevant to operational
purposes if the current value of the status parameter indicates that
data relevant to operational purposes requires attention;
wherein the two transmission channels are capable of
transmitting the processed data set over the first or the second of
the transmission channels to the output device based on both the
current value of the status parameter and the respective
identification parameter which predefines the respective
transmission channel, wherein the processed data set is adapted
to be transmitted over the first transmission channel to the output
device if the respective identification parameter of the processed
data set is related to operational purposes of the facility and over
the second transmission channel to the output device if the
respective identification parameter of the processed data set is
relevant to entertainment purposes, thereby avoiding interference
between the first data set and the second data set.
REJECTIONS
Claims 1, 4, 5, 8, 9, 12, 13, and 16 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 1, 4, 5, 8, 9, 12, 13, and 16 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellants regard as the invention.
Claims 1, 4, 8, 9, 12, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beckert (US 5,794,164, iss. Aug. 11, 1998), Gazit
(US 2002/0070879 Al, pub. June 13, 2002), and Jones (US 5,991,271,
iss. Nov. 23, 1999).
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Claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Beckert, Gazit, Jones, and Bossard (US 6,438,359 Bl, iss. Aug. 20,
2002).
ANALYSIS
Written Description
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting claims 1, 4, 5, 8, 9, 12, 13, and 16 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
(App. Br. 8-11 ). Instead, we agree with, and adopt the Examiner's response
to Appellants' argument as set forth at pages 2--4 of the Answer.
Independent claim 1 (and, therefore, dependent claims 4, 5, and 8) is
directed to a computer-implemented method for monitoring a facility and
recites that the method comprises, inter alia, "processing ... the selected
data set according to the respective identification parameter." Independent
claim 9 (including dependent claims 12, 13, and 16) is directed to a
corresponding monitoring system for monitoring a facility and recites a
processing device for performing various functions.
In rejecting claims 1, 4, 5, 8, 9, 12, 13, and 16 under 35 U.S.C. § 112,
first paragraph, the Examiner finds that Appellants' Specification fails to
describe the claimed invention in sufficient detail such that a person of
ordinary skill in the art would reasonably conclude that Appellants had
possession of the claimed subject matter at the time the application was filed
(Final Act. 2--4). More particularly, the Examiner notes that although
independent claim 1 (and, therefore, dependent claims 4, 5, and 8) refers to
"'processing ... the selected data set, as well as other computer-performed
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steps,"' and claims 9, 12, 13, and 16 refer to '"using a processing device' for
accomplishing particular functions," the Specification does not describe how
the processing step is accomplished or disclose the computer and algorithm
that perform the claimed functions (id. at 3--4). Specifically referencing the
wherein clause, i.e., "wherein the first transmission channel is enhanced with
redundancy or encryption for security functionality and reliable transmission
of data relevant to operational purposes," as recited in independent claims 1
and 9, the Examiner further finds that although the Specification provides
"redundancy concepts" and "encryption methods" as examples of ways to
transmit data reliably and/or securely, the Specification fails to provide an
adequate written description of how the enhanced redundancy or encryption
is accomplished, e.g., what particular redundancy concepts/encryption
methods are used, whether the processor performs these methods, or if
additional hardware is involved (id. at 4).
Appellants acknowledge that for computer-implemented inventions, a
determination of the sufficiency of disclosure requires an inquiry into both
the sufficiency of the disclosed hardware as well as the disclosed software
due to the interrelationship and interdependence of computer hardware and
software (App. Br. 8). And Appellants argue that the written description
requirement is satisfied because "one skilled in the art would know how to
program the disclosed processor/processing device or computer system to
process the selected data set according to a respective identification
parameter[,] as claimed" (id. at 9), and also would know how to program the
disclosed computer/processor to enhance a first transmission channel with
redundancy or encryption (id. at 11 ).
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Appellants' argument is not persuasive. As the Examiner observes,
the issue is not whether a person of ordinary skill in the art would know how
to program the processor to perform the recited steps (Ans. 2). Instead, the
issue is whether the Specification describes the claimed invention in
sufficient detail that a person skilled in the art could reasonably conclude
that Appellants had possession of the claimed subject matter as of the filing
date, see Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir.
1991 ), i.e., that Appellants possessed the invention, including how to
program the disclosed computer to perform the claimed functions, at the
time the present application was filed.
We agree with the Examiner that although the claims refer to using a
computer to accomplish the claimed steps (claims 1, 4, 5, and 8) or as part of
a system for performing certain functions (claims 9, 12, 13, and 16), the
Specification discloses, at most, generic computers and processors (Final
Act. 4 ). Thus, for example, although the claims recite "processing ... the
selected data set," there is no explanation of exactly what the step of
"processing ... the selected data set" involves, e.g., the Specification does
not describe "how the processor takes into account the input, including the
selected data set, ... what output the processing of the data would
provide ... [or] how the data is processed" (Ans. 5). The Specification also
fails to describe how the first transmission channel is enhanced with
redundancy or encryption such that it is unclear whether "the processor is
programmed to provide redundancy and encryption, or if additional
hardware is involved" (id. at 6).
The Federal Circuit has held that the written description requirement
may be satisfied when the particular steps, i.e., an algorithm, necessary to
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perform the claimed function, are "described in the specification." See, e.g.,
In re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527,
1533-34 (Fed. Cir. 1992). The Federal Circuit also has acknowledged that
the level of detail required for the written description requirement to be met
is case-specific. Id.
Appellants' Specification does not disclose an algorithm (whether in
the form of a mathematical formula, in prose, as a flow chart, 3 or in any
other manner) for performing the claimed functions, as called for in claims
1, 4, 5, 8, 9, 12, 13, and 16. Nor does the Specification otherwise describe
the claimed invention in sufficient detail that a person skilled in the art could
reasonably conclude that Appellants possessed the invention, including how
to program the disclosed computer to perform the claimed functions, at the
time the application was filed.
Therefore, we sustain the Examiner's rejection of claims 1, 4, 5, 8, 9,
12, 13, and 16 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Indefiniteness
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification. Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). The primary purpose of
35 U.S.C. § 112, second paragraph, is to ensure that the claim language is
3 Figure 1 is a flowchart which, at best, shows a general, non-specific listing
of broad steps without description of how "enhanced with redundancy or
encryption for security functionality and reliable transmission of data
relevant to operational purposes" is effected.
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sufficiently clear such that the public has adequate notice of the metes and
bounds of the claimed invention so that they can reasonably avoid
infringement. See In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970).
Here, we agree with the Examiner that, without any disclosure of the
algorithm, or any other explanation in the Specification of how the disclosed
processor performs the claimed functions, "potential infringers cannot be
sure whether they are infringing the claims or not" (Ans. 6). Claims 1, 4, 5,
and 8 recites a method for monitoring a facility comprises, inter alia,
"processing ... the selected data set"; and all of claims 1, 4, 5, 8, 9, 12, 13,
and 16 recite that the first transmission channel is "enhanced with
redundancy or encryption." Yet without knowing how "processing ... the
selected data set" is accomplished, and how the first transmission channel is
"enhanced with redundancy or encryption," a potential infringer has no way
of knowing the scope of the claims.
Appellants argue that a person skilled in the art would know whether a
data set has been processed or not, and also would be able to recognize
whether a transmission channel is enhanced with redundancy or encryption
(App. Br. 11-13). Yet the phrases, "processing ... the selected data set"
and enhancing the "first transmission channel ... with redundancy or
encryption," merely identify particular functions to be performed and end
results to be obtained.
There is nothing in the Specification which gives assistance to help
limit the scope of the claimed, "enhancing the transmission channel with
redundancy or encryption." Instead, the claim language leaves substantial
room for ambiguity regarding the scope of the claims. And, as such, it
renders the claims indefinite. Cf Ex parte Miyazaki, 89 USPQ2d 1207,
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1215 (BP Al 2008) (precedential) (if claim language is subject to multiple
interpretations, the claim language is ambiguous and, thus, indefinite).
In view of the foregoing, we sustain the Examiner's rejection of
claims 1, 4, 5, 8, 9, 12, 13, and 16 under 35 U.S.C. § 112, second paragraph,
as indefinite.
Obviousness
Independent claim 1 and dependent claims 4 and 8
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting independent claim 1under35 U.S.C. § 103(a) because
Beckert, on which the Examiner relies, does not disclose or suggest that "if
the current value of the status parameter indicates that data relevant to
operational purposes requires attention, output of the processed data set is
suspended if the processed data set is related to entertainment purposes and
replaced with data relevant to operational purposes," as recited in claim 1
(App. Br. 13-14).
Beckert is directed to a vehicle computer system, and discloses at
column 5, lines 26-40, that the system includes a monitor that is adjustable
to different viewing positions so that the monitor can be viewed by the
driver or other passengers in the vehicle. Beckert discloses that data
displayed on the monitor may include information concerning the vehicle's
performance, navigational directions, video movies for in-car entertainment,
etc., and describes that the monitor is equipped with an automatic override
switch that automatically disables the display of non-driving related data,
e.g., video movies, games, when the monitor is positioned for driver
viewing. Beckert discloses that in one implementation, the switch is an
electrical cylindrical switch that closes when the display is capable of being
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viewed by the driver; the software, thus, senses the monitor display position
and only allows permitted information to be displayed.
The Examiner equates the "value of the status parameter," as called
for in claim 1, to whether the Beckert switch is open or closed (Final Act. 9).
And the Examiner reasons that Beckert, thus, discloses that the
entertainment information is suspended based on the value of the status
parameter switch, i.e., when the switch is closed (id.).
Appellants argue rather than suspending the output of data related to
entertainment purposes based on an indication that data relevant to
operational purposes require attention, as called for in claim 1, Beckert
switches to driving-related data based on the viewing position of the system
monitor. That argument is not persuasive at least because it is not
commensurate with the language of claim 1.
Claim 1 recites that output of data related to entertainment purposes is
suspended "if the current value of the status parameter indicates that data
relevant to operational purposes requires attention." We agree with the
Examiner that when the "value" of the Beckert switch is "closed," i.e., when
the driver has positioned the monitor for driver viewer, this indicates that
"data relevant to operational purposes requires attention," and in that
situation, output of data related to entertainment purposes, e.g., video
movies, games, is suspended. Beckert, thus, discloses "if the current value
of the status parameter indicates that data relevant to operational purposes
requires attention, output of the processed data set is suspended if the
processed data set is related to entertainment purposes and replaced with
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data relevant to operational purposes," as recited in claim 1, under a
broadest, reasonable interpretation. 4
In rejecting claim 1 under§ 103(a), the Examiner acknowledges that
Beckert does not explicitly disclose "wherein the operational status changes
upon receiving a warning message, an alarm, or a report of critical status
regarding the operational status of the facility, any of which require
immediate attention of the individual," as recited in claim 1 (Final Act. 10).
The Examiner cites Gazit to cure the deficiency of Beckert, and the
Examiner concludes that it would have been obvious to a person of ordinary
skill at the time of Appellants' invention to use the "report-based override
concept of Gazit in combination with the in-vehicle system of Beckert, such
that the override switch can be based upon either a particular orientation of
the display or upon receipt of a critical report, because it would promote
better vehicle safety habits" (id. at 11 ).
4 Appellants argue, for the first time, in their Reply Brief that Beckert does
not disclose or suggest the argued limitation because claim 1 "requires that
the status parameter is related to an operational status of the facility and that
the operational status comprises a current operational condition of a facility"
and the Beckert monitor/switch position does not comprise a current
operational condition of a facility (Reply Br. 7). That argument is untimely,
and is considered waived in the absence of any showing of good cause why
the argument could not have been timely presented in Appellants' Appeal
Brief. See In re Hyatt, 211F.3d1367, 1373 (Fed. Cir. 2000) (noting that an
argument not first raised in the brief to the Board is waived on appeal); Ex
parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative)
(explaining that arguments and evidence not timely presented in the
Principal Brief, will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief).
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We are not persuaded of Examiner error by Appellants' arguments
that no rational reasoning exists to combine the teachings of Beckert with
those of Gazit and that modifying Beckert in light of Gazit, as the Examiner
proposes, would change the principle of operation of Beckert (App. Br. 14--
17). Instead, we agree with, and adopt the Examiner's response to
Appellants' arguments as set forth at pages 8-9 of the Answer.
In view of the foregoing, we sustain the Examiner's rejection of
claim 1 under 3 5 U.S. C. § 1 0 3 (a). For the same reasons, we also sustain the
rejection of dependent claims 4 and 8, which are not argued separately
except based on their dependence from claim 1 (App. Br. 17).
Independent claim 9 and dependent claims 12 and 16
Appellants argue that claim 9 is allowable with reference to
Appellants' arguments with respect to claim 1. We found those arguments
unpersuasive with respect to claim 1, and we find them equally unpersuasive
with respect to claim 9. Therefore, we sustain the Examiner's rejection of
claim 9 under 3 5 U.S. C. § 1 0 3 (a). For the same reasons, we also sustain the
rejection of dependent claims 12 and 16, which are not argued separately
except based on their dependence from claim 9 (App. Br. 18).
Dependent claims 5 and 13
Claims 5 and 13 depend from independent claims 1 and 9,
respectively. Appellants do not present any arguments in support of the
patentability of claims 5 and 13 except to assert that the claims are allowable
based on their dependence on claims 1 and 9. We are not persuaded for the
reasons set forth above that the Examiner erred in rejecting claims 1 and 9
under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner's rejection of
claims 5 and 13 under 35 U.S.C. § 103(a).
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DECISION
The Examiner's rejection of claims 1, 4, 5, 8, 9, 12, 13, and 16 under
35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner's rejection of claims 1, 4, 5, 8, 9, 12, 13, and 16 under
35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner's rejections of claims 1, 4, 5, 8, 9, 12, 13, and 16 under
35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
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