Ex Parte Gruhn et al

Board of Patent Appeals and Interferences

Nov 24, 2010

10501725 (B.P.A.I. Nov. 24, 2010)

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.
10/501,725 07/15/2004 Michael Gruhn 2002P02987WOUS 4372
7590 11/24/2010
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
CHARIOUI, MOHAMED
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
11/24/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL GRUHN, ULRICH KUNZE, and NORBERT
SCHILLER
____________

Appeal 2009-007154
Application 10/501,725
Technology Center 2800
____________

DECISION ON APPEAL1

Before KARL D. EASTHOM, THOMAS S. HAHN, and ELENI MANTIS
MERCADER, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007154
Application 10/501,725

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
6-13, 15, and 16. Claims 1-5, 14, and 17 have been cancelled. (Br. 2.) We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Disclosed Invention2
The disclosed invention includes a diagnostic system configured to
diagnose a plurality of power stations 5 including a server at each power
station, a memory unit 20 that includes an acquisition unit 17 and a server
unit 21, a diagnostic unit 25 including a server, and a client computer 15
having a communications link 10 to the Internet. (Spec. ¶¶ [0058-0063];
Fig. 2.) The acquisition unit 17 in the memory unit 20 collects data about
the power stations 5 from the server at the power station 5 through the
Internet. (Spec. ¶¶ [0059-0060].) The diagnostic unit 25 receives
measurement data from the Internet and classifies the data. (Spec. ¶ [0062].)
A client computer 15 can retrieve data stored in the memory unit 20 via the
communications link 10 to the Internet. (Spec. ¶ [0063].)
Exemplary claim 6 follows:
6. A diagnostics system configured to access and
diagnose a plurality of remote stationary power stations,
comprising:

2 The ensuing description constitutes Findings of Fact.
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an acquisition unit remote from at least one of the
stationary power stations for collecting measurement data
detected by sensors in the power stations;
a diagnostics unit connected to the acquisition unit for
classification of operating states of the power stations that are
represented by the measurement data;
a memory unit connected to the acquisition unit and the
diagnostics unit and the measurement data is centrally stored in
the memory unit; and
a server unit connected to the memory unit that generates
machine–readable data based on an HTML language.
The Examiner relies on the following prior art reference:
Reid US 6,298,308 Oct. 2, 2001

Claims 6-13, 15, and 16 stand rejected under 35 U.S.C. 102(e) as
anticipated by Reid.
ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in finding that Reid anticipates claim 6?
2. Did the Examiner err in finding that Reid anticipates claim 7?
3. Did the Examiner err in finding that Reid discloses “a server at
each power station” and “a memory unit comprising an acquisition unit and
a server unit receiving the collected measurement data via the internet from
each power station server” as recited by claim 12?
FINDINGS OF FACT (FF)
Reid
1. Reid discloses a system to collect and analyze data from one or
more machines 14. (Col. 2, ll. 37-41; Fig.1.)
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2. The system includes a local expert 16 that “receives vibration data
from each of the machines 14 or a subset thereof.” (Col. 5, ll. 1-3; Fig.1.)
“[T]he local expert 16 may be mounted … away from the vibration, dirt,
debris, etc. which may be found near the machines 14.” (Col. 5, ll. 35-38.)
3. The system also includes “an expert analyzer module 80 designed
to analyze the vibration data collected from each of the machines 14
connected thereto in order to diagnose the condition of the machines 14.”
(Col. 9, ll. 12-15.)
4. “The local expert 16 includes a database which stores information
on the particular machines 14 from which it receives vibration data as well
as a library of data on machines of the same type.” (Col. 5, ll. 6-9.)
5. The system further includes “[o]ne or more control panel OPC
interfaces 28 . . . for allowing personnel located remote from the local
experts 16 to . . . view data collected and/or analyzed by the local experts
16.” (Col. 6, ll. 15-20.)
6. The system further includes devices with “web based clients 22 for
requesting information from the local experts 16 in a web-based format (e.g.,
html files).” (Col. 5, ll. 60-61; Fig.1.)
PRINCIPLES OF LAW
The Examiner bears an initial burden of factually supporting an
articulated rejection. In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992). “It is
axiomatic that anticipation of a claim under § 102 can be found only if the
prior art reference discloses every element of the claim . . . .” In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986). On appeal, Appellants may rebut the
Examiner’s findings and reasoning with opposing evidence or argument.
Failure to do so may constitute a waiver of potential arguments. See Ex
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parte Frye, 94 USPQ2d 1072, 1075 (precedential) (BPAI 2010) (“If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”); Hyatt v.
Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (The Board may treat
arguments appellant failed to make for a given ground of rejection as
waived); 37 C.F.R. § 41.37(c)(1)(vii).
ANALYSIS
Issue 1- Claims 6 and 9-11
Appellants argue that Reid does not anticipate claim 6 because the
local expert 16 of Reid cannot qualify as the “acquisition unit” of claim 6
due to it not being “remote from at least one of the stationary power
stations” as required by claim 6. (Br. 4.) As found by the Examiner,
however, the local expert 16 is remote from at least one plant machine 14
because it is not integral to the machine and the specification fails to define
the term. (Ans. 5-6.) Reid supports this interpretation because the local
expert is removed sufficiently “from the vibration, dirt, debris, etc. which
may be found near the machines 14.” (FF 2.) See Brookhill-Wilk 1, LLC. v.
Intuitive Surgical, Inc., 334 F.3d 1294, 1304 (Fed. Cir. 2003)( holding that
“remote” includes the same room pursuant to the disclosure, claims, and file
history).
Appellants also argue that Reid does not disclose a central memory
unit. (Br. 5.) As found by the Examiner, however, Reid does disclose a
database which stores information about the machines 14. (Ans. 3; accord
FF 4.)
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Therefore, we will sustain the Examiner’s rejection of claim 6. We
will also sustain the Examiner’s rejection of claims 9-11 which depend from
claim 6 because Appellants did not present separate patentability arguments
for these dependent claims. (See Br. 3-5.)
Issue 2 – Claims 7 and 8
Appellants argue that claim 7 is not anticipated by Reid because claim
7 “recites an Internet communication between a client computer 15 and the
server unit 21” which “means that the client computer 15 is remote from the
central memory unit 20 where measurement data MD is collected by a data
acquisition unit 17 and is centrally stored.” (Br. 5.) As found by the
Examiner, Reid also discloses an Internet connection between a client
computer (i.e., the control panel OPC interface) and a server unit of the
diagnostics system, as required by claim 7. (Ans. 3, 6; accord FF 5.) In
addition, Reid discloses an internet connection between other client
computers (i.e., the web-based clients 22) and a server unit of the diagnostics
system. (Ans. 3; accord FF 6.) In addition, as explained above in the
analysis of claim 6, Reid discloses a memory unit that stores measurement
data about the machines 14. The memory unit is in the local expert 16,
which is remote from the client computers. (FF 4-6.)
Appellants further argue that the rejection of claim 7 is not proper
because “Reid does not teach a remote data acquisition unit 17 or a central
memory unit 20 for a plurality of power stations.” (Br. 5.) These limitations
are recited by independent claim 6. As explained above in the analysis of
claim 6, Reid discloses these limitations.
Therefore, we will sustain the Examiner’s rejection of claim 7. We
will also sustain the Examiner’s rejection of claim 8 which depends from
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claim 7 because Appellants did not present separate patentability arguments
for claim 8. (See Br. 5.)
Issue 3 – Claims 12, 13, 15, and 16
Appellants argue that Reid does not anticipate claim 12 because Reid
does not disclose “a memory unit comprising an acquisition unit and a server
unit receiving the collected measurement data via the Internet from each
power station server.” (Br. 4.) The Examiner argues that Reid discloses a
local expert 16 which includes a memory unit, an acquisition unit, and a
server unit. (Ans. 3, 4-6.) But the Examiner’s argument fails to demonstrate
that the local expert 16 receives “collected measurement data via the Internet
from each power station server,” as recited in claim 12. Indeed, the
Examiner’s argument fails to identify the power station server in Reid.
Therefore, we will not sustain Examiner’s rejection of independent
claim 12 and claims 13, 15, and 16 dependent therefrom.
CONCLUSION
The Examiner did not err in finding that Reid anticipates claims 6 and
7. Appellants did not present separate arguments for claims 8-11 and
therefore, we will also sustain the Examiner’s rejections of those claims.
The Examiner did err in finding that Reid discloses “a server at each
power station” and “a memory unit comprising an acquisition unit and a
server unit receiving the collected measurement data via the internet from
each power station server” as recited in claim 12.
DECISION
We affirm the Examiner's decision rejecting claims 6-11. We reverse
the Examiner’s decision rejecting claims 12, 13, 15, and 16.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).
AFFIRMED-IN-PART

KMF

Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830