Ex Parte Maturana et al

Board of Patent Appeals and Interferences

Apr 13, 2010

11012818 (B.P.A.I. Apr. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANCISCO P. MATURANA, RAYMOND J. STARON,
FREDERICK M. DISCENZO, and KENWOOD H. HALL
____________
Appeal 2009-001342
Application 11/012,8181
Technology Center 2100
____________
Decided: April 13, 2010
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and
JAY P. LUCAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on December 15, 2004. The real party in interest is Rockwell Corp.
(App. Br. 2.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 3 and 5 through 39. (App. Br.
2.) Claim 4 has been cancelled. (Id. at 14.) We have jurisdiction under
35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
According to Appellants, the claimed invention is directed to
components and functionality that facilitate diagnosis, prognosis, planning,
and control in a variety of systems based upon input from individual,
autonomous agents. (Spec 2, para. [0007]; Spec. 6, para. [0030]; spec. 10-
11, para. [0043].)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A system that facilitates analyzing an agent-based network, the
system comprising:
a sensing component that obtains information from an agent;
an interface component that receives the information from the
agent; and
a logic engine component that employs logical reasoning and
algorithms to analyze the agent-based network in accordance with the
information together with information from a disparate agent;
a controller component that receives an output from the logic
engine component and facilitates processing with at least one external
device.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
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Francisco P. Maturana, et al., A Highly Distributed Intelligent Mulit-
agent Architecture for Industrial Automation, CEEMAS, LNAI 2691, 522-
532 (2003) (hereinafter “Maturana”).

Fred M. Discenzo, et al., Next Generation Pump Systems Enable New
Opportunities for Asset Management and Economic Optimization,
Flowserve Corp., Pump Div. (2002) (hereinafter “Discenzo”).

Microsoft Computer Dictionary 5th Edition, Microsoft Press (2002).

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1, 2, 5 through 18, 19, 27, 34, and 37 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claims 1 through 3, 5 through 8, 14, 19 through 24, 26 through 28, 33
through 35, and 37 through 39 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Maturana.
Claims 9 through 13, 15 through 18, 25, 29 through 32, and 36 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Maturana and Discenzo.
Appellants’ Contentions
1. Appellants contend that the claimed invention produces a
useful, concrete, and tangible result pertaining to the control, diagnosis, and
evaluation of one or more units of a manufacturing process in an industrial
system. (App. Br. 4-6; Reply Br. 3-4.) Appellants also argue that
independent claim 1 defines a physical transformation within the claimed
system and, further, software code alone qualifies as patent eligible subject
matter. (App. Br. 6-7; Reply Br. 2-3.) Additionally, Appellants allege that
carrier waves or signals fall within one of the four enumerated categories of
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patentable eligible subject matter because they are not naturally occurring
phenomena, but rather manufactured signals which are both physical and
useful. (App. Br. 7-9; Reply Br. 4-6.)
2. Appellants contend that Maturana’s disclosure of agents
negotiating and utilizing Job Description Language (“JDL”) messages does
not teach an “interface component,” as recited in independent claim 1.
(App. Br. 9-10; Reply Br. 6-7.) Further, Appellants argue that Maturana’s
depiction of a planner does not teach “a logic engine component,” as
claimed. (App. Br. 10; Reply Br. 8.) Additionally, Appellants allege that
Maturana’s disclosure of a logix controller, in conjunction with a passing
reference to diagnostics and reconfiguration, does not teach “a controller
component,” as claimed. (App. Br. 10-11; Reply Br. 8.)
Examiner’s Findings and Conclusions
1. The Examiner finds that Appellants’ contention pertaining to a
physical transformation within the claimed system is not commensurate in
scope with the claim language. (Ans. 13.) Further, the Examiner finds that
the terms “component,” “controller,” and “device” have been clearly defined
in Appellants’ Specification as software and, therefore, independent claim 1
amounts to software per se. (Id. at 13-14.) The Examiner also finds that
since a computer program is merely a set of instructions capable of being
executed by a computer and, further, Appellants fail to claim a computer-
readable medium needed to realize the functionality of each claimed
component, independent claim 1 is non-statutory functional descriptive
material. (Id. at 14.) Additionally, the Examiner finds that under the
guidelines of MPEP § 2106 heading IV (B), a transitory, propagating signal
does not fall within one of the four enumerated categories of patentable
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eligible subject matter. (Id. at 15.) Therefore, since Appellants’
Specification discloses that a computer-readable medium encompasses a
carrier wave, Appellants’ computer-readable medium claims are directed to
non-statutory subject matter. (Id.)
2. The Examiner finds that Maturana’s disclosure of negotiating
or communicating between agents utilizing JDL implies that an “interface
component” exists and, therefore, each agent is capable of receiving
information from other agents. (Id. at 16-17.) Further, the Examiner finds
that Maturana’s disclosure of a planner that analyzes a network based on
information from a disparate agent teaches “a logic engine component,” as
recited in independent claim 1. (Id. at 17.) Additionally, the Examiner finds
that Maturana’s disclosure of control logic that receives execution actions
and controls an external device teaches “a controller component,” as
claimed. (Id. at 18-19.)

II. ISSUES
1. Have Appellants shown that the Examiner erred in finding that:
(a) the system of independent claim 1 is directed to software per
se?
(b) the “computer readable medium,” as recited in dependent
claims 19, 27, 34, and 37, is directed to non-statutory subject matter?
2. Have Appellants shown that the Examiner erred in finding that
Maturana anticipates independent claim 1? In particular, the issue turns on
whether Maturana teaches:
(a) “an interface component that receives the information from the
agent,” as recited in independent claim 1;
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(b) “a logic engine component that employs logical reasoning and
algorithms to analyze the agent-based network in accordance with the
information together with information from a disparate agent,” as recited in
independent claim 1; and
(c) “a controller component that receives an output from the logic
engine component and facilitates processing with at least one external
device,” as recited in independent claim 1.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Appellants’ Specification
1. Appellants’ Specification states that:
[a]s utilized in the application, terms “component,” “agent,”
“module,” “system,” “controller,” “device,” and variants thereof are
intended to refer to [] computer-related entities, either hardware, a
combination of hardware and software, software, or software in
execution. For example, a component can be, but is not limited to
being, a process running on a processor, a processor, an object, an
executable, a thread of execution, a program, and/or a computer.

(Spec. 5, para. [0026].) (emphasis added)
2. Appellant’s Specification states that:
[c]ommunication media typically embodies computer-readable
instructions, data structures, program modules or other data in a
modulated signal such as a carrier wave or other transport
mechanism, and includes any information media. The term
“modulated signal” means a signal that has one or more of its
characteristics set or changed in such a manner as to encode
information in the signal. By way of example, and not limitation,
communication media includes wired media such as a wired network
or direct-wired connection, and wireless media such as acoustic,
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[radio frequency] RF, infrared and other wireless media.
Combinations of [ ] any of the above should also be included within
the scope of computer-readable media.

(Spec. 17-18, para. [0067].) (emphasis added)

Maturana
3. Maturana generally relates to multi-agent systems that provide
flexible and scalable ways to integrate the different parts of industrial
automation. (522: Abst.)
4. Maturana discloses that “[a]n intelligent agent is an
autonomous unit that encapsulates application knowledge and is able to
interact with its environment in an intelligent manner.” (523: ll. 4-5.)
Further, Maturana discloses that intelligent agents communicate utilizing a
common language. (525: l. 10.) In particular, “intelligent agents can
contact any device in the network via a Job Description language (JDL)
message.” (Id. at ll. 29-30.)
5. Maturana’s Figure 3 depicts an automation control device that
includes logix controllers, Distributed Control Agent (“DCA”)
infrastructure, and intelligent agents. (525: ll. 26-27.) In particular,
Maturana discloses extending the automation controller to enable the
creation of intelligent agents. (525: ll. 23-24.)
6. Maturana’s Figure 5 depicts the architecture of an intelligent
agent. (527: ll. 1-2.) The four main components of an intelligent agent are:
a planner, equipment model, execution control, and diagnostic. (Id. at ll. 3-
13.) A planner “is the brain of the intelligent agent. It reasons about plans
and event emerging from the physical domain.” (Id. at ll. 3-4.) The
execution control component “acts as a control proxy and translates
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committed plans into execution control actions. It also monitors events from
the control logic and translates them into response-context events to be
processed by the [p]lanner component.” (Id. at 7-10.) The diagnostic
component “monitors the health of [a] physical device.” (Id. at l. 11.)
Further, “[t]he diagnostic component includes a suite of data acquisition,
signal processing, diagnostic, and prognostic algorithms.” (Id. at ll. 15-16.)
Additionally, “[t]he diagnostic component…can interrogate the diagnostic
component of other agents to validate a fault hypothesis or to establish the
viability of operating under extreme, possibly never anticipated, conditions.”
(Id. at ll. 22-24.)

IV. PRINCIPLES OF LAW
Statutory Subject Matter
“The four categories [of § 101] together describe the exclusive reach
of patentable subject matter. If a claim covers material not found in any of
the four statutory categories, that claim falls outside the plainly expressed
scope of § 101 even if the subject matter is otherwise new and useful.” In re
Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). A claim to a data structure
per se is nonstatutory. See In re Warmerdam, 33 F.3d 1354, 1360-61 (Fed.
Cir. 1994). “Data structures not claimed as embodied in computer-readable
media are descriptive material per se and are not statutory because they
are not capable of causing functional change in the computer.” MPEP
§ 2106.01, heading I (8th ed., Rev. 6, Sept. 2007) (citing Warmerdam, 33
F.3d at 1361). Similarly, a claim to a computer listing per se is nonstatutory.
Id. “[C]omputer programs claimed as computer listings per se, i.e., the
descriptions or expressions of the programs, are not physical ‘things.’ They
are neither computer components nor statutory processes, as they are not
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‘acts’ being performed. Such claimed computer programs do not define any
structural and functional interrelationships between the computer program
and other claimed elements of a computer which permit the computer
program’s functionality to be realized.” Id.
Further, transitory, propagating signals, such as carrier waves, are not
within any of the four statutory categories (e.g., process, machine,
manufacture or composition of matter) of patentable eligible subject matter.
Therefore, a claim directed to computer instructions embodied in a signal is
not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007).

Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue “reads on” a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(internal citations omitted).

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Obviousness
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998))
(citation omitted).
ANALYSIS
35 U.S.C. § 101 Rejection
Independent claim 1 recites, in relevant part, “[a] system that
facilitates analyzing an agent-based network, the system comprising: a
sensing component…an interface component…a logic engine
component…and a controller component…”.
As set forth in Appellants’ Specification, the term “component” may
refer to software or software in execution. (FF 1.) Further, Appellants’
Specification discloses that a “component” can be an executable, a thread of
execution, or a program. (Id.) We find that the claimed components may be
directed solely to software. In particular, since the claimed components are
not embodied in a computer-readable media, they represent computer
listings per se and, therefore, are non-statutory because they are not capable
of causing functional change in a computer. See MPEP § 2106.01, heading
I; see also Warmerdam, 33 F.3d at 1361. It follows that Appellants have not
shown that the Examiner erred in rejecting independent claim 1 as being
directed to non-statutory subject matter.
Because dependent claims 2 and 5 through 18 also incorporate the
limitations discussed above, we find that these claims are also directed to
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non-statutory subject matter as set forth in our discussion of independent
claim 1.
Dependent claim 19 recites, in relevant part, “a computer readable
medium having stored thereon the components of claim 1.”
As set forth above, Appellants’ Specification discloses that computer-
readable media includes data in a modulated signal, such as a carrier wave.
(FF 2.) We find that dependent claim 19 encompasses the use of a computer
data signal embodied in a carrier wave. A computer data signal embodied in
a carrier wave is a transitory, propagating signal not within any of the four
statutory categories and, therefore, non-statutory. See In re Nuijten, 500
F.3d at 1357. It follows that Appellants have not shown that the Examiner
erred in rejecting dependent claim 9 as being directed to non-statutory
subject matter.
Because dependent claims 27, 34, and 37 also incorporate the
limitation discussed above, we find that these claims are also directed to
non-statutory subject matter as set forth in our discussion of dependent
claim 9.
35 U.S.C. § 102(b) Rejection
Claim 1
Independent claim 1 recites, in relevant part:
1) an interface component that receives the information from the
agent; 2) a logic engine component that employs logical reasoning and
algorithms to analyze the agent-based network in accordance with the
information together with information from a disparate agent; and 3) a
controller component that receives an output from the logic engine
component and facilitates processing with at least one external device.

As detailed in the Findings of Fact section above, Maturana discloses
a multi-agent system that integrates different parts of industrial automation.
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(FF 3.) In particular, Maturana discloses autonomous, intelligent agents that
interact with the industrial environment. (FF 4.) The intelligent agents
communicate utilizing a common language and, further, can contact any
device in the industrial network via a JDL message. (Id.) We find that
Maturana’s disclosure teaches that agents communicate with other agents
and are capable of contacting any device in a network. In particular, we find
that in order for an intelligent agent to communicate with other agents and
contact devices within a network, the intelligent agent must possess
sufficient functionality to interface with other agents and devices. Thus, we
find that Maturana’s disclosure of intelligent agents that interface with other
agents and devices in order to send and receive communications teaches “an
interface component that receives the information from the agent,” as recited
in independent claim 1.
Next, Maturana discloses that an intelligent agent contains four main
components: a planner, equipment model, execution control, and diagnostic.
(FF 6). In particular, Maturana’s discloses that the planner, or the brain of
the intelligent agent, works in conjunction with the diagnostic component,
which includes both diagnostic and prognostic algorithms, to facilitate
diagnosis and prognosis of faults within the network or to establish viable
operating conditions. (Id.) We find that Maturana’s disclosure teaches that
the planner and diagnostic components of an intelligent agent employ logical
reasoning and algorithms to analyze a network. In summary, we find that
Maturana’s disclosure of an intelligent agent that sends and receives
communications, in conjunction with planner and diagnostic components
that employ logical reasoning and algorithms to analyze a network, teaches
that an intelligent agent employs planner and diagnostic components that
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utilize logical reasoning and algorithms to analyze a network together with
communications received from other agents. Thus, we find that Maturana
teaches “a logic engine component that employs logical reasoning and
algorithms to analyze the agent-based network in accordance with the
information together with information from a disparate agent,” as recited in
independent claim 1.
Further, Maturana discloses an automation control device that
includes a logix or automation controller. (FF 5.) In particular, Maturana
discloses extending the automation controller’s programs and structures to
enable the creation of intelligent agents. (Id.) Additionally, Maturana
discloses that intelligent agents contain an execution control component that
controls and translates plans into execution control actions and, further,
monitors events within the network. (FF 6.) Maturana also discloses that
the execution control component works in conjunction with the diagnostic
component to monitor a physical device. (Id.) We find that Maturana’s
disclosure teaches an automation controller that works in conjunction with
the execution control and diagnostic components of an intelligent agent in
order to monitor and control an external, physical device. Thus, we find that
Maturana teaches “a controller component that receives an output from the
logic engine component and facilitates processing with at least one external
device,” as recited in independent claim 1. It follows that Appellants have
not shown that the Examiner erred in finding that Maturana anticipates
independent claim 1.

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Claims 2, 3, 5 through 8, 14, 19 through 24, 26 through 28, 33 through 35,
and 37 through 39

Appellants do not provide separate arguments for patentability with
respect to independent claims 20, 28, and 35, and dependent claims 2, 3, 5
through 8, 14, 19, 21 through 24, 26, 27, 33, 34, and 37 through 39.
Therefore, we select independent claim 1 as representative of the cited
claims. Consequently, Appellants have not shown error in the Examiner’s
rejection of independent claims 20, 28, and 35, and dependent claims 2, 3, 5
through 8, 14, 19, 21 through 24, 26, 27, 33, 34, and 37 through 39, for the
reasons set forth in our discussion of independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).

35 U.S.C. § 103(a) Rejection
Claims 9 through 13, 15 through 18, 25, 29 through 32, and 36
Appellants offer the same arguments set forth in response to the
anticipation rejection to rebut the obviousness rejection of claims 9 through
13, 15 through 18, 25, 29 through 32, and 36. (App. Br. 11-12.) We have
already addressed these arguments in our discussion of independent claim 1,
and we found them unpersuasive. Consequently, Appellants have not shown
that the Examiner erred in concluding that claims 9 through 13, 15 through
18, 25, 29 through 32, and 36 are unpatentable over the combination of
Maturana and Discenzo.

VI. CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in rejecting
claims 1, 2, 5 through 18, 19, 27, 34 and 37 as being directed to non-
statutory subject matter under 35 U.S.C. § 101.
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2. Appellants have not shown that the Examiner erred in rejecting
claims 1 through 3, 5 through 8, 14, 19 through 24, 26 through 28, 33
through 35, and 37 through 39 as being anticipated under 35 U.S.C.
§ 102(b).
3. Appellants have not shown that the Examiner erred in rejecting
claims 9 through 13, 15 through 18, 25, 29 through 32, and 36 as being
unpatentable under 35 U.S.C. § 103(a).

VII. DECISION
1. We affirm the Examiner’s decision to reject claims 1, 2, 5
through 18, 19, 27, 34 and 37 under 35 U.S.C. § 101.
2. We affirm the Examiner’s decision to reject claims 1 through 3,
5 through 8, 14, 19 through 24, 26 through 28, 33 through 35, and 37
through 39 under 35 U.S.C. § 102(b).
3. We affirm the Examiner’s decision to reject claims 9 through
13, 15 through 18, 25, 29 through 32, and 36 under 35 U.S.C. § 103(a).
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

Vsh

ROCKWELL AUTOMATION
for Turocy & Watson LLP
1201 SOUTH SECOND STREET
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MILWAUKEE, WI 53204