ROCKWELL AUTOMATION TECHNOLOGIES, INC.

Patent Trials and Appeals Board

Apr 28, 2020

14937399 - (D) (P.T.A.B. Apr. 28, 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.
14/937,399 11/10/2015 Wayne R. Davis 2011P-025-
US2_ALBR0433-2
1758
42982 7590 04/28/2020
Rockwell Automation, Inc./FY
Attention: Linda H. Kasulke E-7F19
1201 South Second Street
Milwaukee, WI 53204
EXAMINER
NICHOLAS, WENDY K
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
04/28/2020 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):
docket@fyiplaw.com
howell@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 WAYNE R. DAVIS
____________________

Appeal 2019-001974
Application 14/937,399
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
MICHAEL J. ENGLE, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–22. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

1 Appellant identifies Rockwell Automation Technologies, Inc., as the real
party in interest. Appeal Br. 1. This application is a continuation of
U.S. patent application 13/428,742, filed March 23, 2012, now abandoned.
Appeal 2019-001974
Application 14/937,399

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. An industrial automation method, comprising:
[A.] storing, on an industrial automation component, a
user interface comprising an executable program;
[B.] receiving, on the industrial automation component, a
communication from a remote computer system in
communication with the industrial automation
component via a network;
[C.] sending, from the industrial automation component to
the remote computer system, a representation of the
industrial automation component for display on the
remote computer system;
[D.] receiving a request, on the industrial automation
component from the remote computer system; and
[E.] in response to the request, serving from the user
interface the executable program to permit access by
the remote computer system to automation data stored
on the industrial automation system, wherein the
executable program is configured to be executed via
a browser running on the remote computer system
that, without the executable program is incapable of
accessing data from the industrial automation
component.
Appeal 2019-001974
Application 14/937,399

3
REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Jurisch US 2005/0021705 A1 Jan. 27, 2005
Davis US 2007/0185969 A1 Aug. 9, 2007
Hermes US 2008/0294771 A1 Nov. 27, 2008
Kodosky US 2010/0011311 A1 Jan. 14, 2010

REJECTIONS
A.
The Examiner rejects claims 1–22 under 35 U.S.C. § 101 “because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.” Final
Act. 2–5.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant does not separately argue claims 2–22. Except for our ultimate
decision, we do not discuss the merits of the § 101 rejection of claims 2–22
further herein.
B.
The Examiner rejects claims 1, 4, 13, and 21, under 35 U.S.C.
§ 102(b) as being anticipated by Jurisch. Final Act. 5–8. We select claim 1
as the representative claim for this rejection. Appellant does not present
separate arguments for claims 4, 13, and 21.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
Appeal 2019-001974
Application 14/937,399

4
Except for our ultimate decision, we do not address the merits of the
§ 102(b) rejection of claims 4, 13, and 21 further herein.

C.
The Examiner rejects claims 2, 3, 5–12, 14–20, and 22 under
35 U.S.C. § 103(a) as being unpatentable over Jurisch in various
combinations with Kodosky, Davis, and Hermes. Final Act. 10–30.
Appellant does not present arguments for claims 2, 3, 5–12, 14–20, and 22.
Thus, the rejections of these claims turn on our decision as to claim 1.
Except for our ultimate decision, we do not address the merits of the
§ 103(a) rejections of claims 2, 3, 5–12, 14–20, and 22 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief arguments.
A. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
Appeal 2019-001974
Application 14/937,399

5
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. at 54–55.
Appeal 2019-001974
Application 14/937,399

6
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
B. Examiner’s § 101 Rejection - Alice/Mayo - Part 1
2019 Revised Guidance Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines that
claim 1 recites an abstract idea:
Claim 1 recites, in part[:]
An industrial automation method, comprising:
storing, on an industrial automation component, a user
interface comprising an executable program;
receiving, on the industrial automation component, a
communication from a remote computer system in
communication with the industrial automation component via a
network;
sending, from the industrial automation component to the
remote computer system, a representation of the industrial
automation component for display on the remote computer
system;
receiving a request, on the industrial automation
component from the remote computer system;
and in response to the request, serving from the user
interface the executable program to permit access by the remote
computer system to automation data stored on the industrial
automation system, wherein the executable program is
configured to be executed via a browser running on the remote
computer system that, without the executable program is
incapable of accessing data from the industrial automation
component.
Final Act. 2 (formatting added).
The highlighted steps describe the abstract concept of
retrieving user specified user interface components and code
from a remote device. The concept described in claim 1 is not
meaningfully different than those ‘idea itself’ concepts found
by the courts to be abstract ideas, such as in Int. Ventures v. Erie
Appeal 2019-001974
Application 14/937,399

7
Indemnity I: ’002 patent (Remotely accessing and retrieving
user-specified information) or Cyber Source (Obtaining and
comparing intangible data). As such, the description in claim 1
of retrieving an executable program and representation of an
industrial automation component from an industrial automation
component using a remote computer system is an abstract idea.
Final Act. 2–3 (additional emphasis added).
C. Appellant’s § 101 Arguments & Panel’s Analysis
2019 Revised Guidance Step 2A – Prong 1
Appellant contends:
[T]he claimed techniques are not simply abstract ideas, because
the claims do not relate to fundamental economic practices,
certain methods of organizing human activities, “[a]n idea of
itself,” or mathematical relationships/formulas.
Appeal Br. 6.
Even though the Examiner’s Final Action was issued prior to the 2019
Revised Guidance, the Board follows the 2019 Revised Guidance in its
review to determine whether the Final Action provides sufficient articulated
reasoning as to why claim 1 recites an abstract idea or other patent-ineligible
concept (e.g., a law of nature). Under the Revised Guidance:
To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) identify the specific limitation(s)
in the claim under examination (individually or in combination)
that the examiner believes recites an abstract idea; and
(b) determine whether the identified limitation(s) falls within the
subject matter groupings of abstract ideas enumerated in Section
I of the 2019 Revised Patent Subject Matter Eligibility Guidance.
2019 Revised Guidance, 84 Fed. Reg. at 54. The Board reviews whether the
rejection adequately address both (a) and (b) supra.
We conclude, the § 101 rejection on appeal does not sufficiently
articulate how any claim limitation(s) fall within one of the subject matter
Appeal 2019-001974
Application 14/937,399

8
groupings of abstract ideas enumerated in Section I of the 2019 Revised
Patent Subject Matter Eligibility Guidance. Appellant’s arguments persuade
us the Examiner fails to provide sufficient articulated reasoning to support a
conclusion that the specific claim limitations that the Examiner labels as
included in the abstract idea are actually an abstract idea. Therefore, we do
not sustain the rejection of claim 1 under 35 U.S.C. § 101.
D. § 102(b) – Claim 1
D. 1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b).
The rejections are all based upon the assumption that
Jurisch serves an executable program that permits access by a
remote computer to automation data stored on an automation
system, where the served program is executed via a browser on
the remote computer that, without the served program is
incapable of accessing the data. To support this point, the
examiner referred to paragraphs 44 and 47 of Jurisch.
. . .
To satisfy the requirements of the claims, []the Jurisch
field device must serve an executable program to the user
personal computer to allow access to data stored on the field
device that the personal computer could not otherwise access
(without execution of the served program).
The appellant submits that is simply not the case. On the
contrary, Jurisch is quite clear that the field device merely serves
an HTML page that references raw data on the field device.
Software and capabilities already present on the user personal
computer establish a parallel connection and use a protocol (also
already present on the user personal computer) to reach out to the
field device and access the raw data.
Appeal Br. 10–11.
Appeal 2019-001974
Application 14/937,399

9
The Examiner responds to Appellant’s argument and expands her
reasoning as follows:
Examiner . . . disagrees that the HTML pages do not
include an executable program which the personal computer uses
to access data from the field device.
The examiner has mapped the HTML pages comprising
“Java code” taught by Jurisch to the claimed “executable
program.” Without this browser executable Java code, the
personal computer would not be able to set up the “further
connection” used to access raw data. Paragraph 0044 also cited
by Applicant on page 10 of the Appeal Brief recites:
“The HTML pages stored in the field devices FG1
. . . FGN, i.e. including the HTML page 25 used to
generate the representation shown in FIG. 3, can
comprise Java code which prompts the browser
facility in the respective user facility Nl . . . NN to
set up a further connection to the field devices
FG1 . . . FGN, in parallel with the existing HTTP
connection, in order to display the HTML page
loaded from the field devices FG1 . . . FGN.”
To clarify, the HTML pages comprise Java code which is
an executable program. This code runs in the browser prompting
the browser to set up the additional connection. Therefore
without the java code found in the HTML page the browser
would not set up the further connection. Further support for the
argument that the served HTML includes an executable program
is found in paragraph [00]67. Paragraph [00]67 of Jurisch
recites:
“The field device 33 includes a memory facility 35a,
storing control software in the form of HTML
pages 35, and a Java archive or data from which
HTML pages can be generated. The control
software is tailored specifically to the field device
33. Input of the URL address of the field device 33
by the user starts an HTTP download, which
downloads the control software from the HTTP
Appeal 2019-001974
Application 14/937,399

10
server 34 in the field device 33 to the user personal
computer 30.”
This paragraph further clarifies that the “control software”
in the form of HTML Pages is tailored specifically to the field
device. Thus this the software is needs to be downloaded to the
personal computer to specifically connect to the field device to
acquire specific data.
Ans. 6–7; see also Final Act. 7.
Appellant does not further dispute the Examiner’s expanded reasoning
as to the claimed executable program, nor does Appellant further address the
Examiner’s reliance on Java code. Therefore, as to Appellant’s argument,
we are unpersuaded.
CONCLUSION
Appellant has shown the Examiner erred in rejecting claims 1–22
under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
Appellant has not shown that the Examiner erred in rejecting claims 1,
4, 13, and 21 as being anticipated under 35 U.S.C. § 102(b).
Appellant has not shown that the Examiner erred in rejecting claims 2,
3, 5–12, 14–20, and 22 as being unpatentable under 35 U.S.C. § 103(a).
The Examiner’s rejection of claims 1–22 as patent ineligible under
35 U.S.C. § 101 is reversed.
The Examiner’s rejection of claims 1, 4, 13, and 21 as being
anticipated under 35 U.S.C. § 102(b) is affirmed.
The Examiner’s rejection of claims 2, 3, 5–12, 14–20, and 22 as being
unpatentable under 35 U.S.C. § 103(a) is affirmed.

Appeal 2019-001974
Application 14/937,399

11
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 101 Eligibility 1–22
1, 4, 13, 21 102 Jurisch 1, 4, 13, 21
2, 3, 5–12,
14–20, 22
103(a) Jurisch, Kodosky,
Davis, Hermes
2, 3, 5–12,
14–20, 22

Overall
Outcome

1–22
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED