DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Action is non-final and is in response to the claims filed April 15, 2024. Claims 1-20 are currently pending, of which claims 1-20 are currently rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 15, and 20 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites “on a server or a computing device disposed on-premises…” and the metes and bounds of the claim are unclear. Specifically, based on the structure of the claim language, it is unclear if the server also is “on-premises” or if only the computing device are “on-premises”. Claims 15 and 20 recite similar language and are rejected for at least the same reasons therein.
Examiner’s Note
The prior art rejections below cite particular paragraphs, columns, and/or line numbers in the references for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-10, and 12--20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Malakuti et al. (U.S. Publication No. 2021/0405629; hereinafter, “Malakuti”; retrieved from IDS filed August 21, 2025).
As per claim 1, Malakuti teaches a system, comprising:
processing circuitry; and a memory, accessible by the processing circuitry, the memory storing instructions that, when executed by the processing circuitry, cause the processing circuitry to perform operations (See Malakuti paras. [0086-88]) comprising:
receiving discovery data comprising one or more characteristics of an industrial automation device of an industrial automation system configured to perform an industrial automation process, wherein the industrial automation device is communicatively coupled to an operational technology (OT) network (See Malakuti Fig. 1 and paras. [0045-49]: digital representations of physical devices, including “machine-readable semantics of information and discovery mechanisms in distributed, inter-networked automation systems may be used. In the special case that the device itself connects to the network for the first time, the device itself may act as a model provider indicating the presence of the device via the network 300”);
requesting, from a database, catalog data for the industrial automation device (See Malakuti Fig. 2 and paras. [0048-50]: requesting and obtaining descriptions from model providers, including “discover[ing] the device (or its separate model provider) and retriev[ing] the data model(s) of the device as well as its serial number to be used as the master ID for the digital twin of the device”); and
generating, based on the discovery data and the catalog data, a device twin for the industrial automation device, wherein the device twin comprises an interface by which one or more applications may interact with the industrial automation device (See Malakuti Fig. 2 and paras. [0046-48]: “the device provides its data models to the service S1 to generate the digital twin 111 of the device with the provided data models.” This includes an interface included with digital representation service to receive device related data).
As per claim 3, Malakuti further teaches the system of claim 1, wherein the operations comprise receiving metadata for the industrial automation device, wherein the device twin for the industrial automation device is generated based on the received metadata (See Malakuti paras. [0023], [0030], and [0046-50]: semantic metadata provided which is used by the management module to generate the digital twin).
As per claim 4, Malakuti further teaches the system of claim 3, wherein the metadata comprises a data model, one or more policies, or any combination thereof (See Malakuti paras. [0050], [0053], and [0062]: semantic metadata about one or more data models of one or more corresponding information systems. Additionally, policies can be defined by the referenced semantic data).
As per claim 5, Malakuti further teaches the system of claim 1, wherein the operations comprise: requesting update data from the industrial automation device; receiving the update data from the industrial automation device, wherein the update data comprises one or more updates to the one or more characteristics of the industrial automation device; and updating, based on the update data, the device twin for the industrial automation device (See Malakuti Fig. 2 and paras. [0022-23] and [0045-48]: management model can update the digital representation of the device, including model specifications).
As per claim 6, Malakuti further teaches the system of claim 1, wherein the device twin runs in a cloud computing environment (See Malakuti para. [0061]: data models and the digital twin can be stored in the cloud).
As per claim 7, Malakuti further teaches the system of claim 1, wherein the device twin runs at least partially on a server or a computing device disposed on-premises with the industrial automation system (See Malakuti paras. [0085-86] and [0090]: server to execute the process instructions; para. [0061]: data models and the digital twin can be stored in the cloud; paras. [0040], [0055-56], and [0061]: edge devices connected to the network for deployment of the digital twins).
As per claim 8, Malakuti further teaches the system of claim 1, wherein the operations comprise requesting the discovery data from an edge device communicatively coupled to the industrial automation system via the OT network (See Malakuti paras. [0040], [0055-56], and [0061]: edge devices connected to the network for deployment of the digital twins).
As per claim 9, Malakuti further teaches the system of claim 1, wherein the operations comprise requesting the discovery data from the industrial automation system (See Malakuti paras. [0032-34]: manager module retrieves requested data).
As per claims 10, 12, 14, and 15, the claims are directed to a method that implements the same features as the system of claims 1, 5, 6, and 7, respectively, and are therefore rejected for at least the same reasons as discussed therein.
As per claim 13, Malakuti further teaches the method of claim 10, wherein the database is managed by an original equipment manufacturer, a machine builder, a vendor, a distributor, a service provider, an enterprise operating the industrial automation system, or any combination thereof (See Malakuti paras. [0021-23] and [0050]: digital representation services with corresponding device representations. Furthermore, model providers and companies can provide semantic models).
As per claims 16, Malakuti teaches a non-transitory computer readable medium storing instructions that, when executed by processing circuitry, cause the processing circuitry to perform operations (See Malakuti paras. [0086-88]) comprising:
requesting update data for an industrial automation device of an industrial automation system configured to perform an industrial automation process, wherein the industrial automation device is communicatively coupled to an operational technology (OT) network (See Malakuti Fig. 1 and paras. [0045-49]: digital representations of physical devices, including “machine-readable semantics of information and discovery mechanisms in distributed, inter-networked automation systems may be used. In the special case that the device itself connects to the network for the first time, the device itself may act as a model provider indicating the presence of the device via the network 300”; Fig. 2 and paras. [0022-23] and [0045-48]: management model can update the digital representation of the device, including model specifications);
receiving the update data from the industrial automation device, wherein the update data comprises one or more characteristics of the industrial automation device (See Malakuti Fig. 2 and paras. [0048-50]: requesting and obtaining descriptions from model providers, including “discover[ing] the device (or its separate model provider) and retriev[ing] the data model(s) of the device as well as its serial number to be used as the master ID for the digital twin of the device”; Fig. 2 and paras. [0022-23] and [0045-48]: management model can update the digital representation of the device, including model specifications); and
updating, based on the update data, a device twin for the industrial automation device, wherein the device twin comprises an interface by which one or more applications may interact with the industrial automation device (See Malakuti Fig. 2 and paras. [0046-48]: “the device provides its data models to the service S1 to generate the digital twin 111 of the device with the provided data models.” This includes an interface included with digital representation service to receive device related data; Fig. 2 and paras. [0022-23] and [0045-48]: management model can update the digital representation of the device, including model specifications).
As per claim 17, Malakuti further teaches the non-transitory computer readable medium of claim 16, wherein the operations comprise requesting and receiving, from a database, catalog data for the industrial automation device, wherein the updating the device twin is based on the received catalog data (See Malakuti paras. [0030], [0050], and [0060]: update models, where corresponding information can be obtained from model provider systems/databses).
As per claim 18, Malakuti further teaches the non-transitory computer readable medium of claim 16, wherein the operations comprise: receiving, prior to requesting the update data, discovery data comprising the one or more characteristics of the industrial automation device; requesting, from a database, prior to requesting the update data, catalog data for the industrial automation device; and generating, prior to requesting the update data, based on the discovery data and the catalog data, the device twin for the industrial automation device (See Malakuti Fig. 2 and paras. [0030], [0033], [0046-48], and [0060]: retrieve requested data from information sources via the corresponding model, where a request is made from the information system for respective data. “When the device is initially discovered by the digital representation service S1 (the discovery mechanism is explained further down in the description) the device provides its data models to the service S1 to generate the digital twin 111 of the device with the provided data models.” There are separate options to update the models after the initial retrievals and generation).
As per claims 19 and 20, the claims are directed to a computer readable medium that implements the same features as the system of claims 6 and 7, respectively, and are therefore rejected for at least the same reasons therein.
Claim Rejections - 35 USC § 103
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.
Claim(s) 2 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malakuti, and further in view of Barnard et al. (U.S. Publication No. 2021/0160145; hereinafter, “Barnard”; retrieved from IDS filed August 21, 2025).
As per claim 2, Malakuti further teaches the system of claim 1, wherein the operations comprise:
receiving [additional] discovery data comprising one or more characteristics of an [additional] industrial automation device of the industrial automation system, wherein the [additional] industrial automation device is communicatively coupled to the OT network (See Malakuti Fig. 1 and paras. [0045-49]: digital representations of physical devices, including “machine-readable semantics of information and discovery mechanisms in distributed, inter-networked automation systems may be used. In the special case that the device itself connects to the network for the first time, the device itself may act as a model provider indicating the presence of the device via the network 300”);
requesting and receiving, from the database, [additional] catalog data for the [additional] industrial automation device (See Malakuti Fig. 2 and paras. [0048-50]: requesting and obtaining descriptions from model providers, including “discover[ing] the device (or its separate model provider) and retriev[ing] the data model(s) of the device as well as its serial number to be used as the master ID for the digital twin of the device”); and
generating, based on the [additional] discovery data and the [additional] catalog data, an [additional] device twin for the [additional] industrial automation device, wherein the [additional] device twin comprises an interface by which the one or more applications may interact with the additional industrial automation device (See Malakuti Fig. 2 and paras. [0046-48]: “the device provides its data models to the service S1 to generate the digital twin 111 of the device with the provided data models.” This includes an interface included with digital representation service to receive device related data).
However, while Malakuti teaches the digital twin generation process, Malakuti does not explicitly disclose additional devices after the initial device generation.
Barnard teaches an additional data and model and information that would be enacted by the system of Malakuti after the first digital twin is generated (See Barnard Figs. 5A-6B and paras. [0094-95], [0107], and [0129]: identification and discovery of additional devices, including triggering events to discover new devices).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine, with a reasonable expectation of success, the digital twin generation of Malakuti with the repeated/additional discovery of Barnard. One would have been motivated to combine these references because both references disclose digital modeling of discovered devices, and Barnard further enhances the generation process of Malakuti by ensuring that new devices can be routinely added using common access protocols, thereby ensuring efficient introduction of devices and less errors when introducing said devices (See Barnard paras. [0002-04]).
As per claim 11, the claim is directed to a method that implements the same features as the system of claim 2, and is therefore rejected for at least the same reasons as discussed therein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mukkamala et al. (U.S. 2017/0192414) discloses managing industrial assets and their associated asset models. This includes simulation models for multiple industrial machines; and
Guim Bernat et al. (U.S. 2021/0144517) discloses an edge computing environment for executing workloads, including in industrial automation and manufacturing. This includes device/component metadata and modeling device information (as well as training/updating those models).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Klicos whose telephone number is (571)270-5889. The examiner can normally be reached Mon-Fri 9:00 AM-5:00 PM.
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/NICHOLAS KLICOS/Primary Examiner, Art Unit 2118
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