Ex Parte Bolton

Patent Trial and Appeal Board

Feb 21, 2017

13732646 (P.T.A.B. Feb. 21, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/732,646 01/02/2013 Roger K. Bolton 12-1209-US-NP 5052
122219 7590 02/23/2017
Miller, Matthias & Hull LLP/ The Boeing Company
One North Franklin, Suite 2350
Chicago, IL 60606
EXAMINER
TRAN, KIM THANH THI
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
bmatthias @ millermatthiashull. com
patentadmin @ boeing. com
mloye @ millermatthiashull. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER K. BOLTON
Appeal 2016-008223
Application 13/732,646
Technology Center 2600
Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
JOHN R. KENNY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008223
Application 13/732,646
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—33. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1 and 17 under appeal read as follows (emphasis
and formatting added):
1. A method comprising:
characterizing a complex mechanical system in terms of
functions; and
using a computer system to display and fill in bowtie charts to
identify problems and solutions with respect to the functions.
17. A graphical bowtie chart for analyzing a complex
mechanical system, the chart generated by a computer, the chart
comprising:
a name of a persistent function of the system at a knot,
a set of causes on a first side of the knot,
a corresponding set of results on a second side of the knot,
a corresponding set of results on a second side of the knot,
at least one reason entry between each cause and the knot, and
at least one solution entry between each result and the knot.
2
Appeal 2016-008223
Application 13/732,646
Rejections on Appeal
1. The Examiner rejected claims 1—4, 17, 19, 26, and 27 under
35 U.S.C. § 102(b) as being anticipated by Vinnem (Offshore Risk
Assessment, Principle, Modelling and Applications of QRA Studies, 2nd
Edition 2007, (Section 6.1.4 Bow-tie), pp 160-169).1
2. The Examiner rejected dependent claim 5 as being unpatentable
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Vinnem and Philley (“Collar hazards with a Bow-Tie,” Chemical
Processing, Jan. 23, 2006, http://www.chemicalprocessing.com/articles
/2005/612/).
3. The Examiner rejected claims 6—13, 18, 20—25, and 28—32
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Vinnem, Philley, and Yuan et al. (US 2006/0288261 Al; Dec. 21, 2006).2
4. The Examiner rejected claims 14, 25, and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Vinnem and Romer
(US 2008/0280280 Al; Nov. 13, 2008).
1 Separate patentability is not argued for claims 2—4, 17, 19, 26, and 27. To
the extent that claims 17, 19, and 26 are discussed, Appellant merely repeats
for claims 17, 19, and 26 the argument directed to claim 1. Such a repeated
argument is not an argument for “separate patentability.” As to claims 2—A
and 27, these claims are argued by virtue of their dependence from claim 1.
App. Br. 18, 22. Thus, the rejections of these claims turns on our decision as
to claim 1. Except for our ultimate decision, claims 2-4, 17, 19, 26, and 27
are not further addressed herein.
2 Separate patentability is not argued for claims 7—13, 21—24, and 29-32.
Thus, the rejection of these claims turns on our decision as to the claims
from which they depend. Except for our ultimate decision, these claims are
not further addressed herein.
3
Appeal 2016-008223
Application 13/732,646
5. The Examiner rejected claims 15 and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Vinnem and McCall
(US 2008/0059291 Al; Mar. 6, 2008).3
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1,
under 35 U.S.C. § 102(b) because “Vinnem fails to expressly or inherently
describe ‘characterizing a complex mechanical system in terms of
functions’.”
Characterizing the complex mechanical system 110 in terms of
functions is known in the art as “functional modeling.”
App. Br. 11, emphasis added.
[Cjlaim 1 is directed to a method for functionally modeling a
complex mechanical system. Furthermore, utilizing extrinsic
evidence as is allowed under the broadest reasonable
interpretation standard, functional modeling is a structured
representation of the functions (e.g., activities, actions, processes
and operations) of the modeled system.
App. Br. 12, emphasis added.
Appellant submits that a person of ordinary skill in the art would
interpret the phrase “characterizing a complex mechanical
system in terms of functions” to mean modeling a complex
mechanical system in terms of what it, and its corresponding
subsystems, does and/or its purpose.
On the other hand, Vinnem, as described in its Chapters 5,
is directed to describing methodologies for undertaking
quantified risk assessments (hereinafter “QRA”) for offshore rigs
and vessels. At a general level, the QRA described by Vinnem
is focused on identifying hazards for an off shore rig or vessel
3 We treat claim 15 as representative. Separate patentability is not argued
for claim 16. Except for our ultimate decision, claim 16 is not discussed
further herein.
4
Appeal 2016-008223
Application 13/732,646
and associating causes of the hazard to consequences of the
hazard through an initiating event. . .
App. Br. 12.
“Vinnem characterizes events in terms of hazards, causes of the hazards and
consequences of the hazards,” not what something does and/or its purpose.
App. Br. 14, emphasis added.
[I]t appears that the Office maintains that Vinnem describes
“characterizing a complex mechanical system in terms of
functions” on its pages 165—166, repeated below:
[Appellant quotes the paragraph bridging Vinnem pages 165—66]
However, this section is inconsistent with the broadest
reasonable interpretation standard articulated for the above-
identified application. Such interpretation lacks any
description of describing a system in terms of what it does
and/or its purpose. Rather, this section of Vinnem discloses that
systems are described in terms of hazards and/or risks.
App. Br. 16, emphasis added.
“[Characterizing a complex mechanical system in terms of functions”
means describing a mechanical system in terms of what it does and/or its
purpose. App. Br. 17, emphasis added.
2. Further, Appellant contends that the Examiner erred in rejecting
claim 1, under 35 U.S.C. § 102(b) because “Vinnem fails to expressly or
inherently describe ‘using a computer system to display and fill in
bowtie charts to identify problems and solutions with respect to
functions’.”
[T]he method of claim 1 also describes utilizing a computer to identify
problems and solutions to what the mechanical system does and/or its
purpose. App. Br. 18, emphasis added.
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Appeal 2016-008223
Application 13/732,646
As noted above, the entirety of Vinnem fails to describe, depict,
teach, or suggest defining a system in terms of what it does
and/or its purpose. Instead, as noted before, Vinnem is solely
focused on describing systems in terms hazards and/or risks.
Accordingly, Vinnem fails to expressly or inherently describe
utilizing a computer to identify problems and solutions to what
the mechanical system does and/or its purpose, as is consistent
with the broadest reasonable interpretation standard for this
application.
App. Br. 18, emphasis added.
3. Appellant contends that the Examiner erred in rejecting claim 5,
under 35 U.S.C. § 103(a) because:
Philley fails to describe, depict, teach, or suggest characterizing
a complex mechanical system in terms of functions consistent
with the broadest reasonable interpretation standard outlined
above and thus fails to resolve Vinnem’s deficiencies.
App. Br. 24, emphasis added.
4. Appellant contends that the Examiner erred in rejecting claim 6,
under 35 U.S.C. § 103(a) because:
Yuan fails to resolve the deficiencies of the Vinnem and Philley
references.
App. Br. 25—26, emphasis added.
5. Appellant contends that the Examiner erred in rejecting claim
14, under 35 U.S.C. § 103(a) because:
Romer fails to resolve the deficiencies of the Vinnem reference.
App. Br. 26, emphasis added.
6. Appellant contends that the Examiner erred in rejecting claim
15, under 35 U.S.C. § 103(a) because:
McCall fails to resolve the deficiencies of the Vinnem reference.
App. Br. 27.
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Appeal 2016-008223
Application 13/732,646
7. Appellant contends that the Examiner erred in rejecting claim
18, under 35 U.S.C. § 103(a) because:
Yuan fails to resolve the deficiencies of the Vinnem and Philley
references.
App. Br. 28, emphasis added.
8. Appellant contends that the Examiner erred in rejecting claim
20, under 35 U.S.C. § 103(a) because:
Yuan fails to resolve the deficiencies of the Vinnem and Philley
references.
App. Br. 29, emphasis added.
9. Appellant contends that the Examiner erred in rejecting claim
25, under 35 U.S.C. § 103(a) because:
Romer fails to resolve the deficiencies of the Vinnem reference.
App. Br. 29, emphasis added.
10. Appellant contends that the Examiner erred in rejecting claim
28, under 35 U.S.C. § 103(a) because:
Yuan fails to resolve the deficiencies of the Vinnem and Philley
references.
App. Br. 30, emphasis added.
11. Appellant contends that the Examiner erred in rejecting claim
33, under 35 U.S.C. § 103(a) because:
Romer fails to resolve the deficiencies of the Vinnem, Philley,
and Yuan references.
App. Br. 31, emphasis added.
7
Appeal 2016-008223
Application 13/732,646
Issues on Appeal
Did the Examiner err in rejecting claim 1 as anticipated because
Vinnem fails to describe the argued limitations?
Did the Examiner err in rejecting claims 5, 6, 14, 15, 18, 20, 25, 28,
and 33 as being obvious?
Appellant’s Definitions and Examples
A system may be characterized as a construct or collection of
different components that together produce results not
obtainable by the components alone. These components may
include, without limitation, people, hardware, software,
facilities, policies, and documents.
Spec. [16], emphasis added.
A complex mechanical system as used herein refers to a system
including sophisticated mechanical components (and optionally
system logic) that is difficult to comprehend without the aid of
analytical tools. Examples of complex mechanical systems
include, but are not limited to, space launch systems, commercial
aircraft, missile defense systems, satellites, biomedical devices,
nuclear plants, automotive systems, and large construction
projects such as bridges.
Spec. [16], emphasis added.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contention (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant’s conclusions.
As to Appellant’s above contention 1 directed to claim 1, we disagree
that the Examiner has erred. First, Appellant argues “[characterizing the
complex mechanical system 110 in terms of functions is known in the art as
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Appeal 2016-008223
Application 13/732,646
‘functional modeling.’” App. Br. 12. We disagree. While “functional
modeling” might be limited to “characterizing a complex mechanical system
in terms of functions,” we see no reason for the reverse reading of
“characterizing a complex mechanical system in terms of functions” as
limited to “functional modeling.” Nor are we able to find a dictionary
definition of “characterizing” which corresponds to Appellant’s attempted
reading of the term as “modeling.” Rather, “characterize” means “1. to mark
or distinguish as a characteristic; be a characteristic of: Rich metaphors
characterize his poetry. 2. to describe the character or individual quality of:
He characterized her in a few well-chosen words. 3. to attribute character
to: to characterize him as a coward.'’'’ The Random House Dictionary of the
English Language, 347 (2nd Ed. Unabridged; 1987). We find the most
relevant of these definitions to be “to describe the character of.”
We conclude Appellant is attempting to interpret claim 1 to
impermissibly import the “functional modeling” limitation from the
Specification into the claim. See Phillips v. AIV 11 Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc) (cautioning against reading limitations from
specification into the claims). As such, we find Appellant’s argument
unpersuasive and we decline to find Examiner error based on Appellant’s
proposed importation of limitations from the Specification. Although the
claims are interpreted in light of the Specification, limitations from the
Specification are not read into the claims. See In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993).
Second, Appellant argues “a person of ordinary skill in the art would
interpret the phrase ‘characterizing a complex mechanical system in terms of
functions’ to mean modeling a complex mechanical system in terms of what
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Application 13/732,646
it, and its corresponding subsystems, does and/or its purpose.” App. Br. 12,
emphasis added. As to the term “modeling,” again we see no basis for
importing this limitation in from the Specification. Otherwise, we agree
with Appellant except to the extent that Appellant substitutes “modeling” for
“characterizing.” That is, we agree “in terms of functions” means “in terms
of what it, and its corresponding subsystems, does and/or its purpose.”
However, Appellant further argues that Vinnem lacks any description
of characterizing a mechanical system in terms of what it does and/or its
purpose. We disagree with this argument. The Examiner’s rejection cites to
Vinnem at pages 160-169. Appellant acknowledges that Vinnem teaches
“identifying hazards for an offshore rig.” App. Br. 12. Based on Appellant’s
definition and examples {supra) of “a complex mechanical system,” we
conclude that an offshore rig is such a complex mechanical system. Also,
Appellant’s definition of system {supra) shows that “people” can be
components in such a “complex mechanical system.” Further, page 166 of
Vinnem teaches a bow-tie that includes “Activities & tasks,” i.e., functions
within the system. We conclude that Vinnem’s tasks depicted in the bow-tie
describe (characterize) the system in terms of what it does. Nothing more
specific is required by the language of claim 1.
As to Appellant’s above contention 2 directed to claim 1, we disagree.
Vinnem at page 166 teaches a bow-tie tool called THESIS and cites to
Appendix A. Contrary to Appellant’s argument that “Vinnem fails to
expressly or inherently describe” utilizing a computer system to display and
fill in bowtie charts to identify problems and solutions with respect to the
functions., Appendix A of Vinnem explicitly states that THESIS is a
“software tool.”
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Appeal 2016-008223
Application 13/732,646
As to Appellants’ above contention 3—11, we disagree. Appellant’s
arguments are all premised on there being deficiencies in the Vinnem
reference. Which alleged deficiencies, Appellant then argues, propagate
through the rejections unresolved by the secondary and tertiary references.
As discussed above, we find no such deficiencies which need to be resolved.
Therefore, these arguments do not persuade us of Examiner error.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—4, 17, 19, 26,
and 27 as being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 5—16, 18, 20—25,
and 28—33 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1—33 are not patentable.
DECISION
The Examiner’s rejections under 35 U.S.C. §§ 102 and 103 of claims
1—33 are 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)(l)(iv).
AFFIRMED4
4 As the Examiner has shown that all the claims are unpatentable, we do not
also reject Appellant’s claims 1—33 under 35 U.S.C. § 101 as not being
directed to patent eligible subject matter. However, should there be further
11
prosecution of these claims; the Examiner’s attention is directed to our
following concerns.
We note that claims 1—16 and 19—33 are directed to abstractions in the
form of bowtie charts, where a computer is used to characterize a complex
mechanical system by the abstractions. The Examiner’s attention is directed
to the Court’s decision in Alice Corp. Pty. LTD., v. CLS Bank Inter., 134
S.Ct. 2347 (2014) and any agency guidance subsequent to the close of
prosecution before the Examiner. The Supreme Court in Alice set forth a
two-part test to determine compliance of a claim with § 101. The Court held
that a mere instruction to implement an abstract idea on a computer cannot
impart patent eligibility. 134 S.Ct. at 2357-59.
We note that claims 17 and 18 are directed to an abstraction in the
form of a bowtie chart which is comprised of various abstract data content.
A claim directed to an abstraction was not deemed statutory subject matter
even before the Court’s decision in Alice. Subsequent to Alice, even less
basis exists to find such claims to be statutory subject matter.