FISHER-ROSEMOUNT SYSTEMS, INC.

Patent Trials and Appeals Board

Dec 14, 2020

2019005492 (P.T.A.B. Dec. 14, 2020)

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.
14/549,909 11/21/2014 Lee A. Neitzel 06005/593094 2081
45372 7590 12/14/2020
Marshall, Gerstein & Borun LLP (Emerson)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606
EXAMINER
SPARKS, JONATHAN A
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
12/14/2020 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEE A. NEITZEL and DAN H. USSING
____________

Appeal 2019-005492
Application 14/549,909
Technology Center 2400
____________

Before JOHNNY A. KUMAR, BARBARA A PARVIS, and
LINZY T. McCARTNEY, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4–22, and 24–40. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). According to Appellant, the real party in interest is
FISHER-ROSEMOUNT SYSTEMS, INC. See Appeal Br. 2.

Appeal 2019-005492
Application 14/549,909

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STATEMENT OF THE CASE
Invention
The disclosed and claimed invention on appeal “relates generally to
process plant communications systems and, more particularly, to securing
process plant control and maintenance systems while allowing for external
access to data from these systems.” Spec. ¶ 1.

Illustrative Claim 1
1. A communication system, comprising:
a process control network including a plurality of process
control devices communicatively connected together;
an external data server disposed within the process
control network;
an external communications network disposed outside of
the process control network;
a gateway device communicatively coupled between the
external data server and the external communications network,
wherein the gateway device (i) is disposed outside the process
control network and (ii) is disposed outside the external
communications network; and
a configuration application stored on a computer memory
within a device within the process control network, that
executes on a processor within the device within the process
control network to configure the external data server to publish
data to the external communications network according to one
or more data views, wherein each of the one or more data views
defines a set of process control data to be published and
wherein the external data server is configured to be unable to
respond to read calls from the gateway device or the external
communications network.
See Claims Appendix.
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Rejection
Claims 1, 2, 4–22, and 24–40 are rejected under 35 U.S.C. § 103 as
being unpatentable over Maturana (US 2014/0047107 A1; published
February 13, 2014) in view of Fries (US 2008/0320127 A1; published
December 25, 2008) and further in view of Batke (US 2007/0186011 A1;
published August 9, 2007). Final Act. 6–14.

ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.

Combinability of the Maturana, Fries, and Batke References
Appellant urges that the Examiner has erred by improperly combining
the cited references. See Appeal Br. 13. Therefore, we begin our analysis
by reviewing the motivation statements and the evidence relied upon by the
Examiner to support the combination of Maturana, Fries, and Batke in the
rejection of independent claims 1, 18, 28, 39, and 40.
Our reviewing courts provide guidance: “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
Here, regarding the motivation to combine Maturana and Fries, the
Examiner finds:
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Application 14/549,909

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The suggestion/motivation for doing so would have been
to allow the internal network to publish data safely to the
Internet using a DMZ computer that has no connection to the
internal network for which attackers can exploit (Fries,
Paragraph [0003]). Additionally, this reduces security risks to
the internal network, and reduces the difficulty/errors that are
prone to happen when configuring the system to publish
according to the traditional methods (Fries, Paragraph [0001]).
See Final Act. 8 (emphasis omitted).
As to the motivation to combine Maturana with Fries and Batke, the
Examiner finds: “[t]he suggestion/motivation for doing so would have been
to further secure the plant process network and data, by blocking potential
attacks and threats, originating from the external network.” Final Act. 9.
Maturana depicts bi-directional coordination (i.e., bidirectional
arrow) between on-premise agent 1212 and cloud agents 1202, as shown in
Maturana’s Figure 12, and as reproduced below:

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Maturana’s Figure 12 is depicted above showing the bidirectional
arrow between on-premise agent 1212 and cloud agents 1202.
Appellant contends:
Maturana’s teachings of bi-directional, agent-to-agent
coordination are contrary to Batke’s teachings of disabling TCP
communication ports (see Batke at [0007], [0034]-[0037]),
where combination of the teachings would cause
communication failure between Maturana’s cloud-based agent
1202 and on-premise cloud agent 1212. For example, if TCP
communication ports on Maturana’s cloud-based agent 1202 (or
a device on which it was implemented) were disabled per the
teachings of Batke, then such cloud-based agent 1202/device
would no longer be able to communicate with Maturana cloud-
based agent 1202 for the purpose of facilitating “coordinated
analytics at both the plant level and the cloud level.” Maturana
at [0085]. See also Maturana’s Figure 12.
See Appeal Br. 15.
The Examiner responds:
The main focus in Maturana is to provide remote Clients
with an analysis of Industrial data utilizing a cloud
infrastructure. Maturana’s firewall/gateway settings were
modified with the teachings of Fries, specifically the use of a
DMZ network to which internal devices can publish data to the
Internet. This allows the internal network in Maturana to
publish data safe to the Cloud based Infrastructure using a
DMZ computer that has no connection to the Industrial network
for which attackers can exploit (See Fries, Paragraph [0003]).
The firewall settings of the internal data server, in
Maturana/Fries, was modified by the teachings of Batke,
specifically the methods of enabling/disabling ports on a device
in order to further protect the device and internal/industrial data.
This combination further secures the plant process network and
data, by blocking potential attacks and threats, originating from
the external network/Internet.
See Ans. 9–10 (original emphasis omitted, panel’s emphases added).
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Appellant further explains, and we agree:
[A] person of ordinary skill in the art, reading the full
disclosure of Maturana, would understand that that Maturana’s
network of agents includes both on-premise and cloud agents
that communicate with one another (and Maturana’s plant
facility in general) to carry out operations and/or facilitate the
bi-directional communication as expressly described by
Maturana. . . .
. . . [But] Fries and/or Batke, . . . expressly [require]
disable[ing the] bi-directional communication by disabling or
blocking ports.
See Reply Br. 12–13 (original emphases omitted, panel’s emphasis added).
In other words, an artisan would not have been motivated to modify
Maturana as taught by Batke. Accordingly, the Examiner’s proffered
motivation statements (Final Act. 8, 9) are unconvincing, for the same
reasons as provided by Appellant.
CONCLUSION
For at least the aforementioned reasons, and on this record, we are
persuaded the Examiner erred. We find a preponderance of the evidence
supports the Appellant’s contentions for the reasons discussed above.
Therefore, we are constrained on this record to reverse the rejection
under 35 U.S.C. § 103.

Appeal 2019-005492
Application 14/549,909

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DECISION SUMMARY

REVERSED

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–22,
24–40
103 Maturana, Fries,
Batke
1, 2, 4–22,
24–40