Ex Parte Babu et al

Board of Patent Appeals and Interferences

May 29, 2009

10327547 (B.P.A.I. May. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PRAKASH BABU, DOYLE G. HEYVELD,
and ROBERT H.YONKER
____________

Appeal 2008-4851
Application 10/327,547
Technology Center 2100
____________

Decided:1 May 29, 2009
____________

Before MAHSHID D. SAADAT, CARLA M. KRIVAK, and KARL D.
EASTHOM, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-4851
Application 10/327,547

Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4, and 6-16. Claims 3, 5, and 17-23 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection, pursuant to our
authority under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants’ invention relates to a system and method for establishing
a reliability characteristic associated with a part (Spec. ¶ [01]). According to
Appellants, reliability characteristics associated with a part type is
established in response to the information collected with regard to the use of
a particular part of a part type, the amount of usage, and the service
characteristics associated with that part (Spec. ¶¶ [33] – [40]).
Independent claim 1 is illustrative of the invention:
1. A method of establishing a reliability characteristic
associated with a part type, comprising the steps of:

establishing a use associated with a part, said part being of said
part type;

establishing an amount of usage associated with said part
including determining an estimated amount of said part usage,
wherein determining the estimated amount of said part usage includes
the steps of: determining the user of the part, and determining said
estimated part usage in response to said part user;

establishing a service characteristic associated with said part;

receiving one or more search criteria from a user; and

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establishing said reliability characteristic associated with said
part type in response to said search criteria, said part use, said part
usage, and said part service characteristic.
The Examiner relies on the following prior art references in rejecting
the claims:
Gullo US 2002/0078403 A1 Jun. 20, 2002
Hoffberg US 2002/0151992 A1 Oct. 17, 2002
Nicholson US 6,557,120 B1 Apr. 29, 2003
(filed Mar. 31, 2000)
Dragomir-Daescu US 2004/0123179 A1 Jun. 24, 2004
(filed Dec. 19, 2002)

Claims 1, 2, 4, 6-9, and 12-15 stand rejected as being unpatentable
under 35 U.S.C. § 103(a) over Gullo in view of Nicholson.
Claims 10 and 11 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over Gullo and Nicholson in view of Dragomir-Daescu.
Claim 16 stands rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Gullo and Nicholson in view of Hoffberg.2
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer3 for the respective positions of Appellants and the
Examiner.

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103. The issue on appeal turns on
whether substantial evidence before us shows that under 35 U.S.C. § 103,

2 The final rejection of the claims is repeated in pages 3-22 of the
Examiner’s Answer.
3 We refer to the Appeal Brief filed July 16, 2007, the Reply Brief filed
November 19, 2007, and the Answer mailed October 1, 2007.
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the combination of Gullo and Nicholson teaches or suggests the claimed
subject matter. Specifically, Appellants and the Examiner disagree as to
whether Gullo and Nicholson disclose “determining an estimated amount of
said part usage, wherein determining the estimated amount of said part usage
includes the steps of: determining the user of the part, and determining said
estimated part usage in response to said part user,” As recited in claim 1.
(Emphasis added.)

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
Gullo
1. Gullo uses reliability predictions “to assist management in
deciding appropriate maintenance schedules, replacement parts needs for
immediate use, end-item estimated lifetime, end-item projected costs, and
safety analyses.” (¶ [0002].)
2. Gullo describes a parts count reliability prediction process
which is based on internally developed component failure rates. The failure
rates are calculated from millions of device operating hours on commercial
aircraft. (¶ [0006].)
3. Gullo further describes mean-time-between-failure (MTBF)
which is “an estimate of the average time, generally in unit operating hours,
that a component or part works without failure, i.e., the length of time a user
may reasonably expect a device, system, or part to work before an
incapacitating fault occurs.” (¶ [0030].)
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4. Gullo discloses Quality Data System (QDS) as “a database
storing raw field data relating to parts, components, and devices received
from various sources, e.g., airline service reports.” (¶ [0032].)
5. “The QDS database may be accessed using the internet or a
company intranet to obtain customer information, aircraft information about
field failures, part information associated with repairs and repair locations.”
(¶ [0048].)
6. In the aircraft and avionics industry, field flight hour data
collection using available software may be used to extract the flight hours
used for reliability calculations and to correlate aircraft operator removals.
(¶ [0055].)
7. “The failure rate and MTBF of the new design may then be
predicted (calculated) using any appropriate method, such as, but not limited
to, software programs, algorithms, equations, mathematical tools, and
manual calculations and comparisons.” (¶ [0073].)
8. Gullo suggests using Weibull distribution or Weibull failure
rate model in situations when failure rates are not constant over time, such as
(1) when the manufacturing and design failure rates are expected to have a
failure rate which reduces over time; and (2) certain mechanisms which are
expected to wear out during the aircraft's life will have a failure rate which
increases over time (e.g., systems including light bulbs will have failure
rates which increase over time). (¶ [0075].)
Nicholson
9. Nicholson relates to reliability testing that “includes random
scheduling of tasks and sleep intervals reflecting expected usage patterns,
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but at a faster pace to efficiently sample the state space to detect sequence of
operations that are likely to result in failures in actual use.” (Abstract.)
10. Tracking and reporting reliability data requires “estimating
actual product reliability over a long period of time, and not necessarily just
heavy use. Furthermore, measuring different kinds of failures expected over
extensive periods of simulated operation allows more accurate pricing and
estimated support costs.” (Col. 3, ll. 24-31.)

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
Further, a rejection based on § 103 must rest upon a factual basis
rather than conjecture or speculation. “Where the legal conclusion [of
obviousness] is not supported by facts it cannot stand.” In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). See also In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).

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ANALYSIS
With respect to the rejection of claims 1, 2, 4, 6-9, and 12-15,
Appellants argue that neither of the cited portions of Gullo discloses the
claimed step of “determining an estimated amount of part usage” (App. Br.
13). Appellants further assert that Nicholson, rather than teaching the
missing limitation, merely suggests estimating product reliability and
support costs (App. Br. 14). Appellants particularly disagree (App. Br. 14-
15) with the Examiner’s conclusion that one of ordinary skill in the art
would have determined the estimated amount of part usage by determining
the user of the part and determining the estimated part usage.
The Examiner characterizes estimating the future failure rates for
reliability predictions of Gullo as the claimed establishing a reliability
characteristic and argues (Ans. 26) that the teachings of Gullo imply that the
failure rates depend on the usage. The Examiner further finds (id.) that
increasing failure rates over time, as described by Gullo, implies that the
failure rates depend on the usage. The Examiner concludes (id.) that the
operating hours represent the usage of the parts and the system since the
failure rates determine the parts reliability prediction process and the failure
rates are calculated from the device operating hours.
We disagree with the Examiner’s conclusion that the usage of the part
is determined based on determining the user of the part. In that regard, we
find the Examiner’s reasoning to be based on speculation rather than
supported by evidence. While Gullo uses component failure rates for
reliability predictions (FF 1-2), the Examiner has not shown that the part
usage is established based on the user information and the amount of usage
in response to the user. We agree with the Examiner’s findings to the extent
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that Gullo describes different aspects of the failure rate based on the part
information, such as the hours of operation (FF 3), and repair information
from various sources (FF 4-6) in order to model the failure rate of a design
(FF 7-8). However, the evidence provided by the Examiner does not
precisely define the part usage in terms of “determining the user of the part,
and determining said estimated part usage in response to said part user,” as
recited in claim 1. In that regard, we find the Examiner’s conclusion to be
based on speculation when the Examiner “treats the operating hours and the
flight hours to represent the usage of the parts and system” (emphasis
original) (Ans. 26).
We also agree with Appellants (Reply Br. 2-3) that the Examiner’s
reference to the customer information as well as the type of operation of an
aircraft as the user of the part (Ans. 27) is unclear and confuses the terms
“use” and “user.” Additionally, we observe that the Examiner has not
identified the missing limitations in the portions of Nicholson’s disclosure
that were relied on in the proposed rejection. As argued by Appellants
(Reply Br. 4), since the Examiner did not identify in the cited art the steps of
establishing reliability characteristics based on both the “use” of a part and a
“user” of a part, a prima facie case of obviousness has not been established.
NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection.
We reject method claims 1, 2, 4, and 6-11 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. The Federal Circuit has recently
clarified the law in the area of patent-eligible subject matter for process
claims in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), petition for
cert. filed, 77 USLW 3442 (U.S. Jan. 28, 2009) (No. 08-964).
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Claim 1 recites a method of establishing reliability characteristic
which includes the steps of: 1) establishing a use; 2) establishing an amount
of usage; 3) establishing a service characteristic; 4) receiving one or more
search criteria; and 5) establishing said reliability characteristic. While the
recited method steps nominally relate to a process, claim 1 does not recite a
particular machine or apparatus, nor does it transform any article into a
different state or thing. Therefore, even if claim 1 recites “physical steps,” it
is not drawn to patent-eligible subject matter since the claimed process steps
are not limited to any machine, apparatus, or an eligible transformation. See
In re Bilski, 545 F.3d at 961.

CONCLUSION
On the record before us, we find that the Examiner fails to make a
prima facie case that the combination of Gullo and Nicholson would have
taught or suggested “determining an estimated amount of said part usage,
wherein determining the estimated amount of said part usage includes the
steps of: determining the user of the part, and determining said estimated
part usage in response to said part user,” as recited in claims 1 and 12.
Therefore, in view of our analysis above, the 35 U.S.C. § 103 rejection of
claims 1, 2, 4, 6-9, and 12-15 over Gullo in view of Nicholson cannot be
sustained. Additionally, we do not sustain the 35 U.S.C. § 103 rejections of
the remaining claims as the Examiner has not identified any teachings in
Dragomir-Daescu or Hoffberg related to the claimed step of determining the
estimated amount of said part usage to overcome the deficiencies of the
combination of Gullo and Nicholson discussed above. We also enter a new
ground of rejection for claims 1, 2, 4, and 6-11.
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DECISION
The decision of the Examiner rejecting claims 1, 2, 4, 6-16 under
35 U.S.C. § 103 is reversed and a new ground of rejection of claims 1, 2, 4,
and 6-11 under 35 U.S.C. § 101 as being directed to patent ineligible subject
matter is entered.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

REVERSED
37 C.F.R. § 41.50(b)
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gvw

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