Ex Parte Berkooz et alDownload PDFPatent Trial and Appeal BoardMay 26, 201611554735 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111554,735 10/31/2006 28395 7590 05/31/2016 BROOKS KUSHMAN P,CJFG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Gahl Berkooz 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 81133141 5876 EXAMINER CRAWLEY, TALIAF ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GAHL BERKOOZ and DAVID WILSON Appeal2013-005718 Application 11/554,735 Technology Center 3600 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and HYUN J. JUNG, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's final decision rejecting claims 1-19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. BACKGROUND Appellants' invention is directed to systems and methods for translating bill of material information for vehicle components (Spec. 1) Appeal2013-005718 Application 11/554,735 Claim 1 is illustrative: 1. A computer-implemented system for translating bill of material information for vehicle components comprising: a computer configured to receive input defining a first component included in a first bill of material, receive input defining a first function of the first component, the first component definition and the first function definition being a first component and function definition for the first bill of material such that another component from the first bill of material having a different function does not satisfy the first component and function definition, receive input defining a second component included in a second bill of material, receive input defining a second function of the second component, the second component definition and the second function definition being a second component and function definition for the second bill of material such that another component from the second bill of material having a different function does not satisfy the second component and function definition, receive input defining a common identifier, associate the first component with the common identifier based on the first component and function definition, and associate the second component with the common identifier based on the second component and function definition thereby translating the first bill of material to the second bill of material. The Examiner relies on the following prior art references as evidence of unpatentability: Chow Chidiac US 2003/0101168 Al US 2008/0215511 Al 2 May 29, 2003 Sept. 4, 2008 Appeal2013-005718 Application 11/554,735 Appellants appeal the following rejection: Claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over Chow and Chidiac. ISSUE Did the Examiner err in rejecting claim 1 because the rejection does not address whether one of ordinary skill would have recognized some underlying issue with the references and formulated some solution on the basis thereof that yields the claimed invention? FACTUAL FINDINGS We adopt the Examiner's findings as our own. Final Act. 3-5. Additional findings of fact may appear in the Analysis that follows. ANALYSIS We are not persuaded of error on the part of the Examiner by Appellants' argument that the Examiner failed to establish a prima facie case of obviousness because the underlying issue with the references was not recognized and a solution formulated on the basis thereof. In Appellants' view, the Examiner completely ignores the very core of the inventive process. The Examiner found that Chow discloses the invention as claimed except that Chow does not disclose receiving input defining the functions of the first and second component as required by claim 1. The Examiner found that Chidiac discloses a system of part mapping that is in part based on part 3 Appeal2013-005718 Application 11/554,735 function and numbering. Fin. Act. 6; Ans. 5. Appellants have not challenged this finding. 1 The Examiner has found that the invention is obvious in view of the combined teachings of Chow and Chidiac concluding that the combination of Chow and Chidiac was obvious because it yielded predictable results. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 41 7. While it is true that there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness, analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In the instant case, the Examiner found the combination would allow more exact part matching via a universal numbering system based on part number and 1 The Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. See, e.g., Ex Parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (citations omitted). Hyatt v. Dudas, 551F.3d1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived); In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider the appellant's new argument regarding the scope of a prior art patent when that argument was not raised before the Board); In re Schreiber, 128 F.3d 1473, 14 79 (Fed. Cir. 1997) (declining to consider whether prior art cited in an obviousness rejection was non-analogous art when that argument was not raised before the Board). Thus, the Board will generally not reach the merits of any issues not contested by an appellant. Cf In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine the claims in greater detail than argued by an appellant .... "). 4 Appeal2013-005718 Application 11/554,735 function. We note that the obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents." Id. at 419. We are not persuaded of error on the part of the Examiner by Appellants' argument that the Examiner did not recognize the underlying issue or problem for which the claimed invention is a solution because any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. In our view, the reason given by the Examiner, i.e., to enable more exact part matching using part numbers and functions is sufficient to support a holding of obviousness. We have considered the other arguments of the Appellants but do not find them persuasive of error by the Examiner. T • I' .i1 I' • •11 ' • .i1 T"""'1 • , • '• I' in view or me roregomg, we w111 susmm me bXammer s reJecuon or claim 1. We will also sustain the Examiner's rejection of the remaining claims because Appellants have not advanced separate arguments regarding the patentability of these claims. DECISION The decision of the Examiner is affirmed. 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)(l) (2009). AFFIRMED 5 Copy with citationCopy as parenthetical citation