Ex Parte Kelly et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10646685 (B.P.A.I. Sep. 28, 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.
10/646,685 08/25/2003 Thomas J. Kelly 08350.3304-04 9970
58982 7590 09/29/2010
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON, DC 20001-4413
EXAMINER
BROADHEAD, BRIAN J
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
09/29/2010 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 THOMAS J. KELLY, DANIEL C. WOOD, ALAN L.
FERGUSON, PAUL W. BIERDEMAN, BRIAN L. JENKINS, TRENT R.
MEISS, and ANDREW J. SWANSON
__________

Appeal 2009-006563
Application 10/646,685
Technology Center 3600
___________

Before RICHARD E. SCHAFER, RICHARD TORCZON, and SALLY C.
MEDLEY, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal the Final Rejection of Claims 1-6, 8-25, and 27-38.
35 U.S.C. § 134(a). We have jurisdiction. 35 U.S.C. § 6(b). We affirm-in-
part.

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.
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The Rejections
The Examiner finally rejected the claims on the following grounds: 2
1. Claims 1-6, 8-25, 27-29, and 32-35 under 35 U.S.C. § 103(a) as
unpatentable over Pruzan3 and Bray4;
2. Claim 38 under 35 U.S.C. § 103(a) as unpatentable over
Pruzan, Bray, and Elson5;
3. Claims 30, 31, 36, and 37 under 35 U.S.C. § 103(a) as
unpatentable over Pruzan and Klemba6;
4. Claims 30 and 31 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Subject Matter of the Claimed Invention
Applicants claim a method for providing proxy services in a network
of electronic modules connected by data links. The data links may be wired
or wireless. The modules perform certain designated functions on the
network. The proxy services are substitute services that replace some or all
of the functions ordinarily provided by an actual control module. In
Applicants’ method, the proxy services are performed by a gateway
processor. The gateway processor includes “proxy logic elements” –
software programming that emulates functions of a control module. The
gateway processor also includes an address map that correlates certain of the
destination module addresses with proxy logic identifiers. Applicants define
the address map as software logic corresponding one or more replaced

2 App. Br. 17; Ans. 2.
3 U.S. Patent 6,728,603.
4 U.S. Patent 6,865,460.
5 U.S. Publication 2003/0014521.
6 U.S. Publication 2004/0225740.
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control modules to address identifiers for the proxy software logic. Written
Description 14, ¶ 44. Thus, the software/proxy logic identifiers provide the
address in the gateway memory for the substitute software. Messages from a
source, including the address of a destination module, are routed through the
gateway processor. Based upon the address map, the messages destined for
a control module are intercepted and rerouted to the proxy logic element that
emulates the functions associated with that destination module. Thus, the
proxy logic element, rather than the destination module, carries out functions
of the destination module.
Representative Claim 1 is reproduced (paragraphing added):
1. A method for providing proxy services in a network of
modules included in a work machine environment, the
method performed by a gateway and comprising:
detecting a first message sent by a source module
on a first data link, wherein the first message is directed
to a destination module and includes an address identifier
corresponding to the destination module;
retrieving the first message and extracting the
destination address identifier from the message;
routing, based on the destination address and an
address map including proxy logic identifiers, the first
message to a proxy logic element in the gateway that
performs functions associated with the destination
module based on data included in the first message.

App. Br. 30.
The Pruzan Reference
The Pruzan patent describes a network including a number of different
modules connected by data links. Specifically, Pruzan teaches a network for
managing communications between on-board and off-board modules.
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Pruzan 1:11-13. Pruzan’s Fig. 1 schematically illustrates the network in the
environment of an automobile.

The illustrated network includes three exemplary modules: brake
controller 22a, transmission controller 22b, and engine controller 22c
connected to bus 24. These controllers monitor or control the specified
vehicle component. Pruzan 1:31-36. The controllers may be
microprocessors, or any other type of logical device for controlling and/or
monitoring a function and/or component of the vehicle. Pruzan 5:11-16.
The network also includes a diagnostic system module 40. The
diagnostic system communicates with the controllers via protocol converter
30. Pruzan 3:43-46. The protocol converter is also linked to the controllers.
The protocol converter acts as a gateway that generally facilitates
communication (1) between controllers and (2) between the diagnostic
system and the controllers. Pruzan 3:40-42. The protocol converter
monitors the messages traveling on bus 24 between the controllers and
exchanges messages with the controllers and the diagnostic system. Pruzan
3:50-55.
The protocol converter includes a computer 70 having a processor 74.
Pruzan Fig. 2. The processor evaluates messages using, inter alia, the
message destination address to determine whether it is directed to one of the
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controllers. Pruzan 7:58-62. Where the message is directed to a controller,
the processor takes certain steps including formatting the message, sending it
to an appropriate protocol transceiver which in turn, sends the message in
the appropriate protocol for communication over bus 24 and on to the
addressed controller. Pruzan 7:63 – 8:7. Pruzan also teaches that the
protocol converter computer (70) can emulate the functions of modules on
bus 24 thus teaching the use of proxy logic elements that perform the
function of the controller. Pruzan 9:10-23.
Claims 1-6, 8-25, 27-29, and 38
The examiner rejected Claims 1-6, 8-25, and 27-29 under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Pruzan and Bray.
Claim 38 was rejected over the combined teachings of those references and
Elson.
Applicants argue that the claims have not been shown to be
unpatentable because Pruzan does not expressly describe that the protocol
converter includes an address map that correlates the controller address in
the message with the address of the emulation software. App. Br. 21-22.
The examiner answers that the concept of routing the message based
on the destination address and an address map including proxy logic
identifiers is present in Pruzan’s teachings. Ex. Ans. 4 and 10-11. For
support, the examiner references Pruzan at 4:5-39; 7:1-10, 54-55 and 57-67;
8:8-28; and 9:10-23. The examiner further references the Bray patent at
4:23-28 and 9:1-15. Ex. Ans. 11.
The referenced sections of Pruzan teach that the protocol converter
evaluates messages, including the destination address, to determine its
destination before passing it on and that the protocol converter may include
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emulation software that perform the functions of the network modules
(nodes). Bray teaches that modules on a network may be implemented by,
inter alia, virtual software modules. Bray also teaches the benefits of using
a network of modules. These benefits include easy updating of the modules.
The person having ordinary skill in the art would fully understand the
principles of operation of the system and methods described by Pruzan and
Bray. These principles of operation include message addressing and the
techniques for directing those messages to a specified destination using the
address. In our view, one having ordinary skill in the art would have
recognized that in order for Pruzan’s computer 70 to emulate the function
associated with, for example, controlling the vehicle transmission, the
messages ordinarily addressed to that controller would necessarily have to
be rerouted to the emulated controller. One having ordinary skill in the art
would further recognize that one way for the message to be rerouted to the
appropriate emulation software, would be by means of software correlating
the original destination address with the memory address of the emulation
software –i.e., routing the message by means of the destination address and
an address map including emulation/proxy logic address identifiers.
The subject matter of Claim 1 would have been obvious. We affirm
the rejection of that claim over the combined teachings of Pruzan and Bray.
With respect to the rejections of Claims 2-6, 8-25, 27-29, and 38,
Applicants have not explained how the additional subject matter of those
claims would have rendered their subject matter separately patentable.
Rather, they argue that they are patentable for the same reasons as Claim 1.
App. Br. 24 and 28. We affirm the rejection of those claims also. 37 C.F.R.
§ 41.37(c)(vii).
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Claims 32-35
Claims 32-35 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Pruzan and Bray.
Claims 32-35 include the requirement that the gateway includes
software emulating two network modules and routing messages between the
modules based upon information in the message and an address map. The
italicized portions of representative Claim 32, reproduced below, highlight
these requirements:
32. A method for providing proxy services in a work
machine including modules interconnected by a data link
and a gateway, the gateway including first program logic
and second program logic serving as proxies for modules
in the work machine, the method performed by the
gateway comprising:
processing a message in the first program logic,
wherein the message includes information identifying a
destination module that is configured to perform an
operation using data included in the message;
routing, based on an address map and the
information included in the message, the message from
the first program logic to the second program logic; and
performing, by the second program logic, the
operation on the data included in the message.
App. Br. 38-39.
The examiner succinctly stated his position:
As Pruzan discloses, the computer (70) is able to emulate
any node on the bus and take over the functions of the
node. This would include handling the communications
of the node. Pruzan is capable of emulating more than
one node at a time. If this is the case, then the computer
(70) will answer all the bus traffic for the node that is
being emulated and perform whatever function the node
would normally perform. So if the computer (70) is now
emulating the engine and transmission controller, any
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messages that were before being routed to the physical
nodes of the transmission controller and the engine
controller would instead be intercepted and acted upon
by the computer (70). Otherwise, the vehicle would fail
to function correctly. We already know from Pruzan et
al. that these controllers are constantly exchanging
messages (see lines 21-23, on column 1). Now the
emulated nodes would be exchanging information.
Ex. Ans. 11-12.
Applicants respond arguing that the Examiner’s statement is an
unsupported assumption:
The Examiner concludes that because Pruzan teaches that
controllers 22 can exchange information, computer 70
(performs the emulation), would somehow "[route],
based on an address map and the information included in
the message, the message from the first program logic to
the second program logic," and the second logic would
"[perform] the operation on the data included in the
message" during emulation. The Examiner justifies this
assertion by stating that "this communication would have
to continue even if two controllers were being emulated."
Office Action at 9. This is not a Pruzan teaching, but
rather an unsupported assumption about the functionality
of the emulation feature. As discussed above in
connection with claim 1, Pruzan does not disclose such
routing with respect to even a single logic element. In
fact, Pruzan does not teach that emulation involves
routing of any kind.
App. Br. 25.
We disagree with Applicants’ characterization that the examiner has
made an unwarranted assumption. We think the examiner has drawn
reasonable inferences based on Pruzan’s and Bray’s teachings and the level
of ordinary skill in the art as represented by the cited prior art. As we noted
above, the level of ordinary skill in the art includes knowledge of how
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messages are addressed and techniques for directing messages to the
destination address in a network. Pruzan teaches that the modules
communicate with each other and that computer 70 can emulate the
functions of the modules. See Pruzan 3:40-42. It is reasonable to infer that
multiple emulated modules would also communicate with each other and
that messages from an emulated module directed to a second module would
be rerouted to the second module’s emulation software. One having
ordinary skill in the art would recognize that an address map – a correlation
between the address of the original destination module and the address of the
emulation software—would be a way of rerouting the message from the first
emulated module to the second emulation module.
The subject matter of Claim 32 would have been obvious. We affirm
the rejection of that claim. As Applicants have relied upon the same
arguments for Claims 33-35 and has not otherwise argued for their separate
patentability, we affirm the rejection of these claims also. 37 C.F.R.
§ 41.37(c)(vii).
Claims 30, 31, 36, and 37
Claims 30, 31, 36, and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pruzan and Klemba. These claims are directed to a
system and method that includes two work machines each having a gateway
processor. Additionally, one of the gateway processors is configured so that
if that processor “determines” based upon the identification of a destination
module that it can not process the message, the message gets routed to the
second gateway. Representative Claim 30 highlighting the limitations
argued by Appellants is reproduced below (paragraphing added):
30. A system for processing messages in a work
machine environment, comprising:
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a first work machine including a first gateway and a first
destination module; and
a second work machine including a second gateway and
a second destination module,
wherein the first gateway is configured to:
receive a first message having an identifier that
identifies a destination module as a target for the first
message, and
determine, based on the identifier, whether to
process the first message with the first gateway or to
route the first message from the first gateway, wherein:
when the first gateway can process the first
message, it performs functions similar to those of
the first destination module using data included in
the first message, and
when the first gateway cannot process the
first message, it routes the first message to the
second gateway.
App. Br. 37-38.
Applicants argue that the applied art does not teach or suggest the
emphasized routing feature; i.e., routing a message from a first gateway to a
second gateway of another work machine “when the first gateway cannot
process the message.” App. Br. 26. The Examiner views Klemba as
teaching this feature, stating: “In Klemba, if a message is not addressed to a
current machine, the message is passed on. This can be interpreted as unable
to process the message.” Ans. 12.
Klemba teaches a “multi-hop” network, in which messages are
transmitted through intermediary service points (“SPs”). Klemba 5-6, ¶¶
0050 and 0054; Fig. 11. In a multi-hop network, the message is received by
an intermediate service point and, if that service point is not the addressed
destination service point, passes the message on to another service point.
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Applicant argues that Klemba’s multi-hop system does not “determine,
based on the identifier,” whether to process the message or pass it on.
We disagree that Klemba’s multi-hop network does not perform this
function. A message traveling in a multi-hop network includes a destination
identifier --the address of the destination service point. The message will
ultimately be processed by the destination service point. Each intermediate
service point along the route to the destination determines, based upon the
destination address, whether it should process the message (it is the
destination service point) or pass it on (the service point is not the
destination).
Notwithstanding our understanding of Klemba’s teaching, we reverse
the rejection. While we agree with the examiner that a multi-hop network of
the type disclosed by Klemba could be incorporated into Pruzan’s network
to expand the network’s reach, the examiner has not provided an adequate
reason why one skilled in the art would want to expand the reach of Pruzan’s
network using a multi-hop network. There must be an apparent reason to
combine the known elements in the fashion claimed by applicants. KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
A prima facie case of obviousness has not been established with
respect to the subject matter of Claim 30 and we reverse the rejection of that
claim. Since our rationale is also applicable to the subject matter of Claims
31, 36, and 37, we reverse the rejection of Claims 36 and 37 under 35 U.S.C.
§ 103(a) as well.
Claims 30 and 31
Claims 30 and 31 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
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Claims 30 and 31 require a work machine environment including two
work machines, each including a gateway. One of the gateways must be
configured to receive a message that identifies a destination module and
determines, based on the identifier, whether to process the message or to
route the message from the first module. If the gateway can process the
message it does so. If it can not, it routes the message to a second gateway.
The examiner says the subject matter of these claims is not described.
Specifically, the examiner says that the “specification consistently discloses
the invention as replacing the modules and it never discloses that the proxy
logic and destination modules that the proxy logic represents are present at
the same time.” Ex. Ans. 3.
We disagree. The application describes a work machine (720) having
a gateway (715) and destination module. Written Description 24 ¶ 64. The
gateway (715) receives messages addressed to the module. Written
Description 24 ¶ 64. The gateway (715) then determines whether to route
the messages to the module or process them as the proxy for the module.
Written Description 24 ¶ 64. The cited portions of the written description
reasonably convey that the proxy logic and the module it emulates are
present at the same time.
The Examiner has failed to demonstrate that the subject matter of
Claims 30 and 31 is not described.7 We reverse the rejection of those
claims.

7 Our review of the Examiner’s rejection of Claims 30 and 31 is limited to
the reasons stated by the examiner. Our reversal should not be construed as
holding that the subject matter of Claims 30 and 31 is supported by the
written description. We hold only that the examiner’s rationale does not
satisfy his burden of establishing that the subject matter is not described.
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DECISIONS
We affirm the rejections of Claims 1-6, 8-25, 27-31, and 35-38 under
35 U.S.C. § 103(a). We reverse the rejections of Claims 32-34 under 35
U.S.C. § 103(a); and Claims 30 and 31 under 35 U.S.C. § 112, first
paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

CATERPILLAR/FINNEGAN, HENDERSON, LLP
901 NEW YORK AVENUE, N.W.
WASHINGTON, D.C. 20001-4413