Ex Parte Johnston et al

Patent Trial and Appeal Board

Dec 31, 2018

14597811 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/597,811 01/15/2015
42982 7590 01/03/2019
Rockwell Automation, Inc./FY
Attention: Linda H. Kasulke E-7Fl 9
1201 South Second Street
Milwaukee, WI 53204
FIRST NAMED INVENTOR
David Allen Johnston
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.
2013P-225-US
(ALBR:0601)
5213
EXAMINER
GILLIS, BRIAN J
ART UNIT PAPER NUMBER
2446
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
howell@fyiplaw.com
docket@fyiplaw.com
raintellectualproperty@ra.rockwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ALLEN JOHNSTON, ELMORRIS P. DIXON
and KENDAL R. HARRIS
Appeal2018-006126 1
Application 14/597 ,811
Technology Center 2400
Before STEPHEN C. SIU, JENNIFER L. McKEOWN,
and JOHN D. HAMANN, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final
decision to reject claims 1-20.
We AFFIRM.
1 According to Appellants, the real party in interest is Rockwell Automation,
Inc. App. Br. 2.
Appeal 2018-006126
Application 14/597 ,811
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention is directed to
An enhanced transfer of information using an industrial protocol
system and method are disclosed. In one embodiment, an industrial
automation system includes a serving device communicably coupled
with a client device via an industrial data exchange protocol. The client
device is configured to generate a service request in accordance with the
industrial data exchange protocol, compress the service request,
encapsulate the compressed service request in a request packet, and send
the request packet to the serving device. The serving device is
configured to receive the request packet, decompress the compressed
service request, process the service request, gather a service response
payload based on the service request, compress the service response
payload, encapsulate the compressed service response payload into a
response packet, and send the response packet to the client device.
Abstract.
Claim 1 below is illustrative of the claimed invention and reads as
follows:
1. An industrial automation system:
a serving device communicably coupled with a
client device via an industrial data exchange protocol;
wherein the client device is configured to generate
a service request in accordance with the industrial data
exchange protocol, compress the service request,
encapsulate the compressed service request in a request
packet, and send the request packet to the serving device;
and
wherein the serving device is configured to receive
the request packet, decompress the compressed service
request, process the service request, gather a service
response payload based on the service request, compress
the service response payload, encapsulate the compressed
service response payload into a response packet, and send
the response packet to the client device.
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Application 14/597 ,811
THE REJECTIONS
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. Final Act. 11-12.
The Examiner rejected claims 1-20 under 35 U.S.C. § I03(a) as
unpatentable over Bartels (US 2007/0162957 Al; pub. July 12, 2007,
"Bartels") and Callaghan (US 2007/0061018 Al; pub. Mar. 15, 2007,
"Callaghan"). Final Act. 12-18.
ANALYSIS
THE REJECTION UNDER 35 U.S.C. § 101
Claims
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1-20 as directed to patent ineligible subject matter.
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82 (2012), "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). The first step in that analysis
is to "determine whether the claims at issue are directed to one of those
patent-ineligible concepts" (id.), for example, to an abstract idea. If the
claims are directed to one of the patent-ineligible concepts, the inquiry
proceeds to the second step where the elements of the claims are considered
"individually and 'as an ordered combination'" to determine whether there
are additional elements that "'transform the nature of the claim' into a patent-
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eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1297).
With respect to step one of the eligibility analysis, the Examiner finds
that the claims are directed to the abstract idea of "exchanging data between
client and server using an industrial protocol." Final Act. 11. According to
the Examiner, "[t]his concept may reasonably fall under the abstract idea of
data recognition and storage." Final Act. 12. With respect to step two of the
eligibility test, the Examiner determines that the claims "do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception." Final Act. 12. According to the Examiner,
Compression, data transm1ss10n, decompression, and
encapsulation do not provide significantly more than the abstract
idea recited in the claim, since they do not add specific limitations
other than what are well-understood, routine, conventional
activities in the field and do not result in an improvement to the
technology of sending, storing, and receiving data in an industrial
protocol system.
Final Act. 7. Further, the Examiner determines that
It is both conventional and routine in computer network
technology to compress a service response payload based on
service request and encapsulate the compressed service response
payload into a response packet conforming to the industrial data
exchange protocol. The claim at best sends/receives
request/response using data compression between general
purpose computers. Therefore, there are no meaningful
limitations in the claim that transform the exception into a patent-
eligible application, such that the claim does not amount to
significantly more than the exception itself, the claim is not
patent-eligible (Step 2B: NO) and should be rejected under 35
U.S.C. § 101.
Ans. 4.
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Application 14/597 ,811
Appellants argue that the Examiner does not identify factual support
for the conclusory assertion "that the limitations are conventional and
routine. Reply Br. 6. Specifically, Appellants argue
the Examiner has not provided a factual determination, beyond
conclusory statements, that supports the contention that the
present claims are "conventional and routine." See Examiner's
Answer, p. 4 ... .Indeed, as recognized in a recent PTO
memorandum relating to changes in examination procedure
pertaining to subject matter eligibility, the Deputy Commissioner
of Patent Examination Policy clarified that "such a conclusion
must be based upon a factual determination that is supported as
discussed in section III below [ which provides ways for the
Examiner to provide the factual determination]." Memorandum
regarding Change in Examination Procedure Pertaining to Subject
Matter Eligibility Decision of April 19, 2018.
Reply Br. 6-7; see also App. Br. 9; Reply Br. 6 (asserting that compressing
and encapsulating a service response payload based on a service request
conforming to the industrial data exchange protocol is not conventional).
We agree with Appellants. While the Examiner generally finds that
the claimed limitations are routine and conventional, the Examiner provides
no factual support for this determination. See Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018). As such, based on the record before us, we are
persuaded of error in the Examiner's rejection.
Accordingly, we reverse the Examiner's § 101 rejection of claims 1-20
as directed to patent ineligible subject matter.
THE REJECTION UNDER 35 U.S.C. § 103 BASED ON BARTELS AND CALLAGHAN
Claims 1-20
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1-20 as unpatentable over Bartels and Callaghan.
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Appellants argue the combination of Bartels and Callaghan do not
teach or suggest compressing a service response payload and encapsulating
the compressed service response payload into a response packet conforming
to an industrial data exchange protocol. App. Br. 10-12. Namely,
Appellants assert that Bartels' control data packets are not compressed or
encapsulated. App. Br. 11-12. According to Appellants, Bartels
teaches that "[i]f data is simply being passed through the link (i.e.,
from clear interface 202 to secure interface 206, or vice versa)
without being encapsulated in an encrypted packet, then
compression is not applied." [Bartels], ,r 96. That is, [Bartels]
discloses that data, which is not encapsulated in an encrypted
packet, is not compressed.
App. Br. 11-12. Further, Appellants maintain that because Bartels teaches at
paragraph 77 that "information, including control information, status
requests, and other non-sensitive data, may be transmitted without
encryption, even when the device is operating in secure mode," then Bartels'
control data packets, including information such as "control information,
status requests, and the like," are not encrypted or compressed. App. Br. 12.
We disagree with Appellants' interpretation of Bartels. As shown in
Fig. 1 below, Bartels describes a system for communications between a
supervisory control and data acquisition (SCAD A) control host system 101
and remote terminal systems 121, 120. Bartels ,r,r 9, 32, Fig. 1.
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FIG, .1
..... --"·HHl
f
As also shown, Bartels' SCADA control host system 101 includes a SCADA
control host 104 and host security device (HSD) 102. Bartels notes that
while these components are shown separately, the components and functions
may be within the SCAD A host 104. Bartels ,r 3 8. Similarly, each remote
terminal system 121 includes a remote terminal unit (R TU) and a remote
security device (RSD) 116. Bartels Fig. 1. According to Bartels, there is a
need to protect the communications between the host and remote systems
(Bartels ,r,r 7-8) and, thus, the HSD and RSD are used to encapsulate
communications between them. Bartels ,r 32; see also Final Act. 13, Ans. 5.
Bartels also teaches compressing the communications prior to encryption.
Bartels ,r 92; see also Final Act. 13, Ans. 5.
Turning to Appellants' argument, we agree with the Examiner that
Bartels teaches compressing and encapsulating communications, such as
control information, between the SCADA control host system and a remote
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terminal system. Final Act. 13; Ans. 5; Bartels ,r,r 36, 91-92. Notably,
Bartels refers to not only securely transmitting SCADA information, but also
other data. Bartels ,r 91. Further, as Appellants point out, Bartels states that
the control information, status requests and other data may be transmitted
without encryption. In other words, a skilled artisan would understand that
control information may be transmitted without encryption, but alternatively
may be transmitted with encryption. See also, e.g., Ans. 5; Bartels i-f91
(referring to secure transmission of SCAD A and other data between the host
and remote terminals); ,r 92 (noting that both data and control packets are
compressed).
Moreover, Bartels explains that "[ t ]he various data communications
between SCADA host 104 and RTUs 118A-E are referred to herein as
'SCADA information."' Bartels ,r 36; see also ,r 32 (noting that the SCADA
control host system communicates with the remote terminal systems "to
obtain sensor data, provide control instructions, and for other purposes."). A
skilled artisan, thus, would understand that data communications in a
supervisory control and data acquisition (SCADA) system would include
requests and responses. See Ans. 5. As Appellants acknowledge, SCADA
transmissions in Bartels are encrypted and compressed and, thus, these data
communication would also satisfy the claimed limitations.
Then, in the Reply Brief, Appellants argue that Bartels does not teach
"encapsulate[ing] the compressed service response payload into a response
packet" because Bartels' SCADA information is distinct from the control
messages. Reply Br. 7-8. According to Appellants, SCADA information is
sent between the SCADA host 104 and RTU 118, whereas control messages
are only sent between the HSD and RSD. Reply Br. 8. This argument is
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without merit. As discussed above, Bartels describes that the HSD may be
included within SCADA host and RSD may be included within the RTU.
As such, a skilled artisan would understand that both the SCADA
information and the control messages are sent between the SCARA control
host system and the remote terminal system. Therefore, we find Appellants'
arguments unpersuasive.
Similarly unavailing is Appellants' argument that Bartels and
Callaghan combined do not teach a client device that encapsulates a
compressed service request in a request packet, as required by claim 1. App.
Br. 12-14. Appellants, more specifically, contend that Callaghan is silent
regarding encapsulating and that the Examiner concedes that Bartels also
does not teach this limitation. App. Br. 13. However, Appellants do not
address the Examiner's reliance on Figure 3 of Callaghan depicting that the
data request is encapsulated by encapsulating component 308. Ans. 6-7; see
also Callaghan ,r 37. Moreover, as discussed above, Bartels also teaches
encapsulating both request and response packets between the host and the
remote terminals. See Ans. 6; Bartels ,r 91.
Appellants next argue that Bartels lacks the claimed serving device that
receives and processes the service request. Reply Br. 7. According to
Appellants, "[t]he control data packets taught in Bartels are sent by a host
security device (HSD) 102 (allegedly the serving device) and received by
remote security devices (RSDs) 116 ( allegedly the client devices). See
Bartels, ,r,r 59, 66." Reply Br. 7. We understand, though, Bartels' SCADA
control host system, i.e. the client device, sends a request to the remote
terminal system, i.e. the serving device. Ans. 5 (referring to control data
packets that are sent from the SCADA control host system to the remote
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terminal system as the claimed request). As such, it is the remote terminal
system that receives and processes the service request.
Finally, Appellants assert that a skilled artisan would not have been
motivated to combine Bartels and Callaghan. App. Br. 14--15. Namely,
Appellants maintain that
submits that it is unclear why one of skill in the art would
incorporate the XML payload taught in Callaghan with the
control data packets of [Bartels] to include "human readable
meta information about the data provided," when [Bartels] could
simply incorporate the "human readable meta information about
the data provided" directly in the control data packets of [Bartels]
- without using XML format. That is, there appears to be no
motivation to use the XML payload if "human readable meta
information about the data provided" is directly incorporated into
the control data packets of [Bartels].
App. Br. 14; see also Reply Br. 10-11 (asserting that Callaghan and Bartels
both teach compressing communications and, thus, there would be no benefit
from the combination).
The Examiner, though, explains that the combination facilitates
reduction of use of available bandwidth (Ans. 6). Further, the Examiner
determines that
It is important to combine Bartels into Callaghan since XML
payload which may include human readable meta information is,
as one of ordinary skill in the art would know, bandwidth
demanding and is best communicated by industrial automation
protocol using compression technique.
Ans. 7. Moreover, Bartels describes that the SCAD A system may use
conventional protocols. See Bartels ,r,r 36, 66; see also Bartels ,r 85 (stating
that "the techniques described herein may be used with any type of
information and/or any underlying data formats or protocols."). Callaghan
teaches using an industrial automation protocol. Callaghan, Abstract. As
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such, the cited combination simply combines known methods, needing only
routine skill in the art, yielding predictable results and, thus, is an obvious
variation. See KSR International Co. v. Teleflex Inc., 550 U.S. 398,
417(2007) (holding that "when a patent 'simply arranges old elements with
each performing the same function it had been known to perform' and yields
no more than one would expect from such an arrangement, the combination
is obvious.").
Accordingly, based on the record before us, we affirm the Examiner's
rejection of claims 1-20 as unpatentable over Bartels and Callaghan.
DECISION
We reverse the Examiner rejection of claims 1-20 as directed to patent
ineligible subject matter, but affirm the Examiner's decision to reject claims
1-20 as unpatentable over the cited combination of prior art.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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