UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte NORBERT BECKER, GEORG BIEHLER, MATTHIAS DIEZEL, ALBRECHT DONNER, DIETER ECKARDT, HARALD HERBERTH, MANFRED KRAEMER, DIRK LANGKAFEL, RALF LEINS, RONALD LANGE, WALTER MOELLER-NEHRING, JUERGEN SCHMOLL, KARSTEN SCHNEIDER, ULRICH WELZ, and HELMUT WINDL __________ Appeal 2008-2064 Application 09/948,563 Technology Center 2100 __________ Decided: January 26, 2009 __________ Before JAMES D. THOMAS, ST. JOHN COURTENAY III, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge.

Appeal 2008-2064 Application 09/948,563 DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection against claims 7-11 and 13. The Invention According to Appellants the invention is an automation system with at least one automation object having a first component for generating a system functionality, a second component for generating a base functionality, and a third component for managing at least one module. (Abstract). Illustrative Claims Claims 1 and 14-16 are illustrative: 1.

An automation system comprising:

at least one automation object, each automation object having a hierarchy of components, said hierarchy comprising a first component generating system functionality related to internal services of the system, a second component generating base functionality related to generic services that facilitate manipulation of the at least one automation object, and a third component operable to manage at least one module, wherein each module comprises at least a module component operable to generate a technological functionality.

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Appeal 2008-2064 Application 09/948,563 14. The automation system as claimed in claim 1, further comprising at least two engineering systems, each system being operable to request a module list corresponding to a selected automation object, wherein the selected automation object, upon receiving said request, selects a requested module by providing the requesting engineering system with a reference to the requested module, and the engineering system calls the technological functionality of the module using the reference, the selected automation object being operable with the at least two engineering systems. 15. The automation system as claimed in claim 1, further comprising at least two engineering systems of different manufacturers, and wherein each of the automation objects corresponds to a respective engineering system of a different manufacturer. 16. The automation system as claimed in claim 1, wherein the automation system automates at least one of production and assembling of manufactured products. Reference The Examiner relies upon the following reference as evidence in support of the anticipation rejection: Walton

US 5,883,639

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Mar. 16, 1999 (filed Jul. 3, 1997)

Appeal 2008-2064 Application 09/948,563 Rejections 1.

The Examiner rejects claims 14-16 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.

2.

The Examiner rejects claims 1-13 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Walton. ISSUE #1 The Examiner finds that while the Specification discloses “an

example . . . where different automation objects are used across different systems” (Ans. 7), the Specification fails to disclose that “the same object is replicated across two different engineering systems” (id.). Appellants argue that the Specification discloses that “the same automation object A1 is provided to three different engineering systems E1, E2, and E3” (Reply Br. 4) and that “A1’ and A1’’ illustrate instances of the same automation object A1” (Reply Br. 5). Did Appellants demonstrate that the Examiner erred in finding that “the selected automation object being operable with the at least two engineering systems” is not disclosed in the originally filed application? FINDINGS OF FACT The following Findings of Facts (FF) are shown by a preponderance of the evidence. 4

Appeal 2008-2064 Application 09/948,563 Appellants’ Invention 1.

Appellants teach “automation objects are not necessarily restricted by the engineering system in which they are used” (Spec. 2, ll. 1-2).

2.

Appellants teach an “object of the invention is to provide an open and distributed automation solution which . . . allows automation objects of different manufacturers to be used in the same automation system (Spec. 2, ll. 4-5).

3.

Appellants teach “[a] first engineering system E1 uses a first automation module A1’. . . the second engineering system E2 uses an automation object A1’’ . . . the third engineering system E3 uses an automation object A1’’’ (Fig. 4, Spec. 7, ll. 22-25).

4.

Appellants teach “an automation system is used . . . in the field of automation technology” (Spec. 1, ll. 14-15). Walton

5.

Walton teaches “a plurality of VSE composite objects 422, which are object-oriented elements which make it possible for graphical objects to be built in a hierarchical fashion” (col. 10, ll. 3-6). PRINCIPLES OF LAW 35 U.S.C. § 101 “A claimed process is . . . patent-eligible under § 101 if: (1) it is tied

to a particular machine or apparatus, or (2) it transforms a particular article 5

Appeal 2008-2064 Application 09/948,563 into a different state or thing.” In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008). However, “even if a claim recites a specific machine or a particular transformation of a specific article, the recited machine or transformation must not constitute mere ‘insignificant postsolution activity’.” Id. at 957. Written description The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The possession test alone, however, is not always sufficient to meet the written description requirement. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002). Rather, “the written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.’” Id. (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). Anticipation 35 U.S.C. § 102 A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). 6

Appeal 2008-2064 Application 09/948,563 ANALYSIS (ISSUE #1) Appellants’ Specification discloses instances of an automation object A1 (i.e., A1’ or A1’’) operable with different engineering systems (e.g., Engineering System 1, Engineering System 2, and Engineering System 3 – Fig. 4) (FF 1). Appellants demonstrate that each of the different instances of automation object A1 disclosed in the Specification are the same object that operates with different engineering systems while the Examiner has not demonstrated that the different instances of automation object A1 are, in fact, different automation objects. Accordingly, we conclude that Appellants have met their burden of showing that the Examiner erred in rejecting claim 14 with respect to issue #1. ISSUE #2 The Examiner finds “the specification . . . refers to automation objects of different manufacturers, not engineering systems of different manufacturers” (Ans. 8). Appellants argue that the Specification discloses that “automation objects . . . can be used by different engineering systems of different manufacturers” (Reply Br. 6). Did Appellant demonstrate that the Examiner erred in finding that the “at least two engineering systems of different manufacturers” are not disclosed in the originally filed application? 7

Appeal 2008-2064 Application 09/948,563 ANALYSIS (ISSUE #2) Appellants’ Specification discloses different engineering systems containing automation objects made by different manufacturers (FF 2 and 3). Because different engineering systems contain components (i.e., automation objects) that are made by different manufacturers, the different engineering systems are, at least in part, made by different manufacturers. Accordingly, we conclude that Appellants have met their burden of showing that the Examiner erred in rejecting claim 15 with respect to issue #2. ISSUE #3 The Examiner finds that the Specification “contains no mention whatsoever of manufacturing anything” (Ans. 8). Appellants argue that “one of ordinary skill in the art would readily understand that an automation system is a system that enables the automatic operation of machines . . . which would include manufacture, assembly and other aspects related to the production of products” (Reply Br. 7-8). Did Appellants demonstrate that the Examiner erred in finding that “the automation system automates at least one of production and assembling of manufactured products” is not disclosed in the as filed application?

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Appeal 2008-2064 Application 09/948,563 ANALYSIS (ISSUE #3) While the Specification discloses an automation system, we find no disclosure, and Appellants have not indicated a disclosure in the Specification that the automation system automates the production and assembly of manufactured products. Appellants argue that an automation system “would include manufacture [and] assembly [of] . . . products” (Reply Br. 7-8). However, “the written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem, Inc., 323 F.3d at 969. Appellants fail to indicate any words, structures, figures, diagrams, or other such indication in the Specification demonstrating that Appellants had possession of the claimed invention of an automation system automating the production or assembly of manufactured products. Accordingly, we conclude that Appellants have not met their burden of showing that the Examiner erred in rejecting claim 16 with respect to issue #3. ISSUE #4 The Examiner finds that “the objects [the “move” function, the “size” function, and the “connect objects” function] exist in a hierarchy” (Ans. 11). Appellants argue that “there is no disclosure or even remote suggestion that these functions form a hierarchy” (Reply Br. 12). 9

Appeal 2008-2064 Application 09/948,563 Did Appellants demonstrate that the Examiner erred in finding that Walton teaches an automation object having a hierarchy of a first component generating system functionality, a second component generating base function, and a third component operable to manage at least one module? ANALYSIS (ISSUE #4) The Examiner finds that Walton discloses a “move” function, “size” function, and “connection objects” function (Ans. 11) in a hierarchy. However, the Examiner does not demonstrate that any of the “move” function, “size” function, or “connection objects” function either generates system functionality related to internal services of the system, generates base functionality related to generic services that facilitate manipulation of an automation object, or is operable to manage a module. Accordingly, we conclude that Appellants have met their burden of showing that the Examiner erred in rejecting claims 1-13 with respect to issue #4. NEW GROUND OF REJECTION 35 U.S.C. § 101 Using our authority under 37 C.F.R. § 41.50(b), we reject claims 7-11 and 13 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.

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Appeal 2008-2064 Application 09/948,563 The Court of Appeals for the Federal Circuit recently held that “the applicable test to determine whether a claim is drawn to a patent-eligible process under §101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein . . . .” In re Bilski, 545 F.3d at 966. Claims 7-11 and 13 do not transform physical subject matter. To the extent that Appellants’ claims may transform data, we note that transformation of data, without a machine, is insufficient to establish patent-eligibility under § 101. See In re Bilski, at 961 (“[E]ven a claim that recites ‘physical steps’ but neither recites a particular machine or apparatus, nor transforms any article into a different state or thing, is not drawn to patent-eligible subject matter.”). We conclude that Appellants’ claimed “method for creating a hierarchically structured automation object and embedding said automation object into an engineering system” (see preamble, claim 7) does not require a particular machine or apparatus, nor do these claims transform any article into a different state or thing. According, we conclude that independent claim 7, and associated dependent claims 8-11 and 13 are not directed to statutory subject matter under 35 U.S.C. § 101. CONCLUSIONS OF LAW We conclude that Appellants have failed to demonstrate that the Examiner erred in finding that “the automation system automates at least one

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Appeal 2008-2064 Application 09/948,563 of production and assembling of manufactured products” is not disclosed in the as filed application (issue #3). However, Appellants have demonstrated that the Examiner erred in finding that the Specification fails to disclose that the selected automation object is operable with the at least two engineering system (issue #1), that at least two engineering systems are of different manufacturers (issue #2), and that Walton teaches an automation object having a hierarchy of a first component generating system functionality, a second component generating base function, and a third component operable to manage at least one module (issue #4). DECISION We reverse the Examiner’s decisions rejecting claims 1-13 under 35 U.S.C. § 102(e) and rejecting claims 14-15 under 35 U.S.C. § 112, first paragraph. We affirm the Examiner’s decision rejecting claim 16 under 35 U.S.C. § 112, first paragraph. As noted supra, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.”

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Appeal 2008-2064 Application 09/948,563 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . (2) Request Rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b)

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