DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1. This communication is in response to amendments filed on 12/01/2025.
Claims 1-20 have been amended, and claim 21 has been cancelled. Claims 1-20 remain pending.
Response to Arguments
2. Applicant's arguments regarding the previously applied Nixon and Zhang references not teaching the amended limitations of the independent claims have been fully considered but they are only partially persuasive.
Regarding the Nixon reference, Applicant cites portions of Nixon to illustrate that Nixon describes bench provisioning a device with a device tag and a network node manager/DNS service accessing a mapping database that stores an association between the configured device tag and the IP address, but asserts that bench provisioning a device with a device tag is different from registering a MAC address of a field device with a distributed control system, as claimed.
In response, although it is recognized that the device tag in Nixon is not the same as a MAC address, it is noted that the device tag, similarly to the claimed MAC address, is registered with a distributed control system and it is this device tag which is used to monitor and manage the field device. As discussed during the interview on 11/17/2025, it is submitted that a MAC address, such as taught by the newly added Swales reference, would be an obvious modification to the tag in Nixon as both are used to uniquely identify a particular device and, similarly to both Swales and the claimed invention, Nixon discloses a table, or mapping, of these device identifiers and corresponding network addresses associated with respective devices used to detect, configure and manage field devices connected to the network.
Applicant submits that the mapping database in Nixon which stores an association between a tag and an IP address does not teach or suggest a network table that “comprises MAC address and corresponding network addresses associated with respective field devices registered with a network server of a network”, as recited in the independent claims, because accessing a mapping database through a DNS service or network node manager is different from polling a network table directly by a distributed control system “for the MAC address of the field device to recognize a presence of the field device”. It is acknowledged that Nixon does not explicitly disclose the polling limitation, as amended, however it is the newly applied Swales reference, in the same industrial network environment as Nixon and the claimed invention, which is currently relied upon for curing this deficiency. With regards to the polling, the claim limitations are interpreted based on the specification of the claimed invention, which describes polling a table for information using the device identifier/to recognize the device identifier, and recognizing the presence of the field device by its device identifier by accessing the information in the network table. Similarly, Swales expressly teaches a database maintaining a table linking MAC addresses and IP network addresses of field devices, and using this information to continually poll to monitor and confirm device presence on the network.
It is therefore submitted that Swales unambiguously provides support for using a MAC address of a device equivalently to how the device identifier of Nixon is utilized, and that the combination of references teaches each of the limitations of the amended independent claims including polling a network table for the MAC address to recognize a presence of a field device, as claimed.
The rejection is therefore maintained.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
3. Claims 1-4, 7-13, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nixon et al. (US 2022/0075354) in view of Swales (US 2006/0031488).
Regarding claim 1, Nixon teaches a method for automatic discovery of a field device, the method comprising:
registering a device identifier of the field device with a distributed control system for a plant or a process during initial commissioning (Devices should be provisioned before they are installed in the plant. This provisioning is often referred to as onboarding, [0090]; Configurations of the process control loop, the field device 552, and the controller 580 are stored in the configuration database(s) 420, and each of the field device 552 and the controller 580 has been respectively provisioned with its device tag or identification (e.g., as indicated in the configuration database(s) 420) and has been respectively assigned a unique IP address by the DHCP server 562, [0125]);
wherein the network table comprises device identifiers and corresponding network addresses associated with respective field devices registered with a network server of a network (The association between the device's configured identification or tag and the device's IP address/endpoint identity is stored in a mapping database or discovered device data store, such as mapping database 435, which, as previously discussed, is accessible to at least the network node manager/DNS service 560, [0121]); and
in response to a distributed control system recognizing the presence of the field device, authenticating and authorizing the field device to monitor the plant or the process (the DNS service 560 may authenticate the controller 580 and/or the field device 552 by utilizing respective security credentials which have been stored in the discovered device database 435, by querying the security manager 440 to authenticate, validate, verify, etc, [0127]), wherein:
the field device is automatically discoverable via the network server (Upon powering on 505, the device 502 broadcasts a Discover DHCP message (508) via the network 402 to determine or discover any DHCP servers that are servicing the nodal communication network 402 and that would be able to assign an IP address or endpoint identifier to the device 502, [0113]) on an Advanced Physical Layer (APL) link (device 502 may be a legacy field device such as device D5 connected to the APL components 410 and the network 402 via the adapter 415, [0110]); and
a network address assigned to the field device is associated with the device identifier of the field device upon connection of the field device to the network (the discovered device data store 435 stores associations or mappings between device identifications as defined in the process control configuration databases 420 (e.g., device tags of and optionally data tags associated with devices), [0103]; the DHCP server 510 responds to the Discover DHCP message 508 with a DHCP Offer 512 which identifies the DHCP server 510 therein and includes IP addressing information for the device 502. For example, the Offer 512 may include the endpoint identity 306 of the device 502, [0114]).
However, Nixon does not explicitly disclose the device identifier is a MAC address, or the distributed control system polling the network table for the MAC address of the field device to recognize a presence of the field device.
Swales teaches registering a Media Access Control (MAC) address of a field device with a distributed control system for a plant or a process during initial commissioning (Maintaining a list of MAC addresses for each of the plurality of networked devices on the monitor agent, [0072]; The managed switch 20 reports all MAC addresses and port assignments associated with the hubs and devices connected to the monitor agent 10. The monitor agent 10 maintains a list of all port assignments and MAC addresses, [0094]; the monitor agent 10 maintains a database of all MAC addresses for each device on the network. This BOOTP database is built and maintained automatically, by the monitor agent 10 that takes advantage of the MAC address detection scheme built into modern Ethernet switch devices, [0098]);
polling, by the distributed control system, a network table for the MAC address of the field device to recognize a presence of the field device, wherein the network table comprises MAC addresses and corresponding network addresses associated with respective field devices (The confirm presence sequence interrogates the target units at periodic intervals, whereby a non-responsive unit indicates the target is `down` or failed, [0110]; The use of unicast ARP requests during the repetitive `poll` of the device confirm whether the device is still alive, [0114]); and
a network address assigned to the field device is associated with the MAC address of the field device (the monitor agent issues an IP address to each of the networked devices and records a MAC address for each of the networked devices and wherein the monitor agent maintains a list of each IP address and each MAC address, [0077]; The MAC addresses were previously detected and recorded by the monitor agent 10. The monitor agent 10 also records and issues the IP addresses for each device, [0101]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize a MAC address as a device identifier in the system/method of Nixon as suggested by Swales given that MAC addresses provide a unique and consistent identifier associated with particular hardware. One would be motivated to combine these teachings in order to reliably recognize and distinguish between equipment on an industrial network, allowing for efficient monitoring and management of network device configurations and functionalities.
Regarding claim 2, Nixon teaches the method of claim 1, wherein the network table comprises the device identifier and the network address assigned for the device identifier of the field device (the mapping database 435 to be updated accordingly with an indication of the association(s) between the device identifier(s) (e.g., tags) and the assigned IP address, e.g., by directly updating the mapping database 435, [0104]).
However, Nixon does not explicitly disclose the device identifier is a MAC address.
Swales teaches wherein a network table comprises the MAC address and the network address assigned for the MAC address of the field device (The MAC addresses were previously detected and recorded by the monitor agent 10. The monitor agent 10 also records and issues the IP addresses for each device, [0101]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize a MAC address as a device identifier in the system/method of Nixon as suggested by Swales given that MAC addresses provide a unique and consistent identifier associated with particular hardware. One would be motivated to combine these teachings in order to reliably recognize and distinguish between equipment on an industrial network, allowing for efficient monitoring and management of network device configurations and functionalities.
Regarding claim 3, Nixon teaches the method of claim 1, wherein the network table is a Dynamic Host Configuration Protocol (DHCP) client table (Upon assigning an IP address to a device, the DHCP server 430 and/or the device itself may cause the mapping database 435 to be updated accordingly with an indication of the association(s) between the device identifier(s) (e.g., tags) and the assigned IP address, [0104]).
However, Nixon does not explicitly disclose wherein the network table is asynchronously polled by the distributed control system to recognize the MAC address of the field device.
Swales teaches wherein the network table is asynchronously polled by the distributed control system to recognize the MAC address of the field device (each of the working devices 70, 80 connected to the hub 40 has a MAC address and an IP address. The failed or malfunctioning unit 100 also had a MAC address and IP Address. Based on periodic device polling, the information of a failed unit has already been communicated to the monitor agent 10 through the managed switch 20, [0096]; The use of unicast ARP requests during the repetitive `poll` of the device confirm whether the device is still alive, [0114]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize a MAC address as a device identifier in the system/method of Nixon as suggested by Swales given that MAC addresses provide a unique and consistent identifier associated with particular hardware. One would be motivated to combine these teachings and to use a MAC address when polling for the status of a particular device in order to reliably recognize and distinguish between equipment on an industrial network.
Regarding claim 4, Nixon teaches the method of claim 1, further comprising:
connecting to the network server via Ethernet to poll the network table (the network 80 of FIG. 2 can use any communication protocol supported by the APL, such as any protocol supported by an Ethernet connection, [0062]; The plant 100 of FIG. 3 includes both process automation (PA) and factory automation (FA) components and control devices which are connected through a communication network backbone, such as an Ethernet communication network, to one or more process and factory automation controllers, [0066]; the communication network 80 is implemented as an IP-based network, using an APL network architecture 892 that includes APL power switches 84 and APL field switches 86 coupled by the APL bus 88 (e.g., Ethernet) to one another and to various highly versatile field devices 82, adaptor devices 130, controllers 140, workstations 206, 145, 202, 204, edge gateways 166, and/or the cloud 168, [0152]); and
controlling, based at least in part on authenticating and authorizing the field device, an industrial operation comprising a plurality of industrial equipment, wherein an industrial equipment of the plurality of industrial equipment comprises the field device (the network 80 includes an APL power switch 84 connected via, for example, an Ethernet or other bus 85, to the control system (e.g., a process controller) and/or to a cloud or other applications 90 within a cloud or other network. The cloud applications 90 may be or may include any or all of the applications of various different systems, such as control applications (controllers) associated with control systems, maintenance applications, associated with maintenance systems, monitoring application and devices (servers) associated with monitoring systems, [0059]; Devices D1-Dn may include one or more field devices, each of which performs a respective physical function during run-time operations of the plant or network to thereby control an industrial process, [0095]; upon reception of the query 582, the DNS service 560 may authenticate the controller 580 and the field device 552 using their respective security credentials (e.g., keys, certificates, etc.), [0127]).
Regarding claim 7, Nixon teaches the method of claim 1, further comprising:
preloading a predefined device identifier into a replacement field device, the predefined device identifier of the replacement field device corresponding to the device identifier of the field device based at least in part on the field device being replaced by the replacement field device on the network (a physical replacement device need only be bench-provisioned with the security credentials that had been provisioned into the device that it is replacing, [0134]); and
in response to the distributed control system recognizing the presence of the replacement field device, authenticating and authorizing the replacement field device to monitor the plant or the process (the network node manager 432 may verify or validate the device credentials of a host device that is attempting to connect to the nodal communication network L15, the network node manager 432 may verify or validate the device credentials of a client device (such as in conjunction with the client device's query for a host device's IP address, e.g., as per reference 582), the network node manager 432 may verify or validate device credentials in conjunction with polling a device for its status (e.g., reference 578 of FIG. 11), etc, [0132]).
However, Nixon does not explicitly disclose the device identifier is a MAC address, or polling, by the distributed control system, the network table for the predefined device identifier of the replacement field device to recognize a presence of the replacement field device, wherein the replacement field device is pre-registered or is registered with the network server based at least in part on being connected to the network.
Swales teaches a predefined device identifier of a replacement field device corresponding to the MAC address of the field device (The supervisor/monitor agent 200 issues an ARP request 210 as a broadcast message to inquire the MAC address of the IP address. The target IP unit 220 receives the request and issues an ARP response 230 containing the MAC address of the requested IP address, [0106]); and
polling, by the distributed control system, the network table for the predefined device identifier of the replacement field device to recognize a presence of the replacement field device (Once the device has been detected using the probe, it is added to a list of devices whose operability is to be continuously monitored. This may be done in a variety of ways such as checking on a frequent basis that the device is still responding, and confirming the MAC/location data, [0123]), wherein the replacement field device is pre-registered or is registered with a network server based at least in part on being connected to the network (all devices are set to request their network assignment, or IP Address, at power up using the standard BOOTP protocol, [0099]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize MAC addresses as device identifiers in the system/method of Nixon as suggested by Swales given that MAC addresses provide a unique and consistent identifier associated with particular hardware. One would be motivated to combine these teachings and to use a MAC address when polling status of devices and replacing failed devices in order to reliably recognize and distinguish between equipment on an industrial network.
Regarding claim 8, Nixon teaches the method of claim 7, wherein the network table comprises the predefined device identifier and the network address assigned for the predefined device identifier of the replacement field device (a physical replacement device need only be bench-provisioned with the security credentials that had been provisioned into the device that it is replacing, [0134]);
assigning the assigned network address to the replacement field device using the network server (the physical replacement device will automatically be configured with the same settings as the device it is replacing, and can be plugged-and-played, [0134]; Upon assigning an IP address to a device, the DHCP server 430 and/or the device itself may cause the mapping database 435 to be updated accordingly with an indication of the association(s) between the device identifier(s) (e.g., tags) and the assigned IP address, e.g., by directly updating the mapping database 435, [0104]).
Regarding claim 9, Nixon teaches the method of claim 7, wherein the replacement field device is pre-registered with the network server based at least in part on the network table comprising the device identifier of the field device (a physical replacement device need only be bench-provisioned with the security credentials that had been provisioned into the device that it is replacing. Accordingly, when the physical replacement device is identified within the process control system by using the device tag and security credentials of the previous device, by using the techniques described herein, the physical replacement device will automatically be configured with the same settings as the device it is replacing, [0134]).
However, Nixon does not explicitly disclose wherein the predefined device identifier comprises a MAC address.
Swales teaches wherein a predefined device identifier comprises the MAC address (the replacement device 110 with a MAC address of HIJ issues a BOOTP request which is transmitted through the hub 40 port 3 and through the managed switch 20 port 1 to the monitor agent 10, [0104]), and the network table comprising the MAC address of the field device (the monitor agent 10 maintains a database of all MAC addresses for each device on the network, [0098]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize MAC addresses as device identifiers in the system/method of Nixon as suggested by Swales given that MAC addresses provide a unique and consistent identifier associated with particular hardware. One would be motivated to combine these teachings in order to reliably recognize and distinguish between equipment on an industrial network, allowing for efficient monitoring and management of network device configurations and functionalities.
The limitations of claim 10 are equivalent to those in claim 1, and therefore claim 10 is rejected in view of the same rationale.
Regarding claim 11, Nixon teaches the system of claim 10, wherein the network server is configured to:
register the field device with the network (the discovered device data store 435 stores associations or mappings between device identifications as defined in the process control configuration databases 420 (e.g., device tags of and optionally data tags associated with devices) and respective IP addresses/endpoint identities which have been assigned to the devices by the DHCP server 430, [0103]; By implementing the device registration component 804, all discovered devices are known by the network resource management component 800, which may also implement the DHCP server and/or the DNS server for registering devices, [0172]);
assign the network address to the field device (The DHCP server 430 assigns an IP address A1B2 to the device D1, [0103]); and
update the network table with the network address for the device identifier of the field device (Upon assigning an IP address to a device, the DHCP server 430 and/or the device itself may cause the mapping database 435 to be updated accordingly with an indication of the association(s) between the device identifier(s) (e.g., tags) and the assigned IP address, [0104]; the DHCP server 510 and/or the device 502 may update a discovered device/mapping data store or database 522 with the new association(s) or mapping(s), [0116]).
However, Nixon does not explicitly disclose the device identifier is a MAC address of the field device.
Swales teaches the MAC address of the field device (the monitor agent 10 maintains a database of all MAC addresses for each device on the network. This BOOTP database is built and maintained automatically, by the monitor agent 10 that takes advantage of the MAC address detection scheme built into modern Ethernet switch devices, [0098]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize a MAC address as a device identifier in the system/method of Nixon as suggested by Swales given that MAC addresses provide a unique and consistent identifier associated with particular hardware. One would be motivated to combine these teachings in order to reliably recognize and distinguish between equipment on an industrial network, allowing for efficient monitoring and management of network device configurations and functionalities.
The limitations of claim 12 are equivalent to those in claim 3, and therefore claim 12 is rejected in view of the same rationale.
The limitations of claim 13 are equivalent to those in claim 4, and therefore claim 13 is rejected in view of the same rationale.
The limitations of claim 16 are equivalent to those in claim 7, and therefore claim 16 is rejected in view of the same rationale.
Regarding claim 17, Nixon teaches the system of claim 16, wherein the network server is further configured to:
register the replacement field device with the network (a physical replacement device need only be bench-provisioned with the security credentials that had been provisioned into the device that it is replacing, [0134]);
assign an additional network address to the replacement field device (the physical replacement device will automatically be configured with the same settings as the device it is replacing, and can be plugged-and-played, [0134]); and
update the network table with the additional network address for the predefined device identifier of the replacement field device (Upon assigning an IP address to a device, the DHCP server 430 and/or the device itself may cause the mapping database 435 to be updated accordingly with an indication of the association(s) between the device identifier(s) (e.g., tags) and the assigned IP address, e.g., by directly updating the mapping database 435, [0104]).
The limitations of claim 18 are equivalent to those in claim 9, and therefore claim 18 is rejected in view of the same rationale.
The limitations of claim 19 are equivalent to those in claim 1, and therefore claim 19 is rejected in view of the same rationale.
The limitations of claim 20 are equivalent to those in claim 7, and therefore claim 20 is rejected in view of the same rationale.
4. Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nixon-Swales in view of Fu et al. (US 2016/0125516).
Regarding claim 5, Nixon-Swales do not explicitly disclose the method of claim 1, wherein registering the MAC address of the field device with the distributed control system further comprises receiving, by the distributed control system, the MAC address via a user interface to the distributed control system.
Fu teaches wherein registering a MAC address of a field device with a distributed control system further comprises receiving, by the distributed control system, the MAC address via a user interface to the distributed control system (the terminal may provide the user an interface to manually register a smart appliance, such as by entering an identifier, such as a serial number, a MAC address, an IP address, or a Bluetooth code, associated with the smart appliance, [0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a user interface allowing manual registration of devices in the system/method of Nixon-Swales as suggested by Fu in order to enable an administrator or operator of a network to specify and install particular devices. One would be motivated to combine these teachings to offer additional user control over device connections and network configurations.
The limitations of claim 14 are equivalent to those in claim 5, and therefore claim 14 is rejected in view of the same rationale.
5. Claims 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Nixon-Swales in view of Dannemann (US 2022/0387912).
Regarding claim 6, Nixon teaches the method of claim 1, wherein the field device is commissioned in an intrinsically safe region for the plant or the process (APL extends 10BASE-T1L for use in hazardous areas which enables the development of standards associated with typical protection methods, especially intrinsic safety, [0061]; metering can be a critical process in large-scale distributed systems such oil and gas fields, pipelines, chemical storage, and finished product storage, [0077]; managing nodes of a nodal communication network of an industrial process control or automation system, where the system 650 includes multiple, distributed network node managers 652, 655, 658, [0145]) based at least in part on an available energy (condition-based monitoring which is typically used for energy monitoring, equipment and device monitoring, and process monitoring, [0071]; collect energy and monitoring data in a central manner for analyzing and establishing an alarm management system, e.g., if a water leakage is detected or energy is being lost due to a leak or break in piping, [0077]), the method further comprising communicating, by the distributed control system, with the field device over the network via the APL link (the network 80 includes an APL power switch 84 connected via, for example, an Ethernet or other bus 85, to the control system (e.g., a process controller) and/or to a cloud or other applications 90 within a cloud or other network, [0059]).
However, Nixon-Swales do not explicitly disclose the available energy of the field device being below a level.
Dannemann teaches a field device is commissioned in an intrinsically safe region for a plant or a process based at least in part on an available energy of the field device being below a level (By “intrinsically safe” is meant the definition of intrinsic safety used in the relevant IEC apparatus standard IEC 60079-11, defined as a type of protection based on the restriction of electrical energy within apparatus and of interconnecting wiring exposed to a potentially explosive atmosphere to a level below that which can cause ignition by either sparking or heating effects, [0139]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize energy level as a metric for intrinsic safely in the system/method of Nixon-Swales as suggested by Dannemann to maintain a save environment in an industrial plant network. One would be motivated to combine these teachings to avoid ignition by either sparking or heating effects.
The limitations of claim 15 are equivalent to those in claim 6, and therefore claim 15 is rejected in view of the same rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fukushima US 2005/0280862 – registering MAC address identification information of a device to which an IP address has been allocated.
Xu et al. US 2018/0083917 – an industrial controller initiating an automatic device IP addressing process and determining a MAC address device ID.
Kishida US 2019/0139553 – finding an IP addresses corresponding to a registered terminal device from a MAC address and repeatedly checking whether or not a registered terminal is present.
Ando et al. US 2023/0291599 – determining whether a MAC address value for a device has been registered, and inputting an IP address value to a table.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADHU WOOLCOCK whose telephone number is (571)270-3629. The examiner can normally be reached Tuesday, Thursday 9-6 ET.
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MADHU WOOLCOCK
Examiner
Art Unit 2451
/MADHU WOOLCOCK/Primary Examiner, Art Unit 2451