Ex Parte Dain et alDownload PDFPatent Trials and Appeals BoardMay 10, 201913092898 - (D) (P.T.A.B. May. 10, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/092,898 04/22/2011 50548 7590 ZILKA-KOTAB, PC- IBM 1155 N. 1st St. Suite 105 SAN JOSE, CA 95112 05/14/2019 FIRST NAMED INVENTOR Joseph Whitney Dain 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. TUC1Pl59/TUC920110009US1 7626 EXAMINER NGUYEN, TAND ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 05/14/2019 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): zk-uspto@zilkakotab.com alma@zilkakotab.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH WHITNEY DAIN, JEFFREY LEE FIELDS, KELLY LOUISE HICKS, and FREDERICK SCOTT HUNTER KRAUSS Appeal2017-010791 Application 13/092,898 1 Technology Center 3600 Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and DAVID J. CUTITTA II, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge DAVID J. CUTITTA II. Opinion Concurring-In-Part filed by Administrative Patent Judge BRADLEY W. BAUMEISTER. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1, 3, 4, 7-10, 12, 13, 16-19, and 21- 27, the only claims pending in the application. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify International Business Machines Corporation as the real party in interest. See Appeal Br. 2. 2 Claims 2, 5, 6, 11, 14, 15, and 20 are cancelled. See Appeal Br. 28-34. Appeal2017-010791 Application 13/092,898 STATEMENT OF THE CASE Invention Appellants' invention relates to "automated ordering of replacement parts for components in a computer system based on established service thresholds." Spec. ,r 1. 3 Exemplary Claim Claim 1 is reproduced below with bracketed material added. 1. A system comprising: [a] a plurality of electronic components; [b] at least one processor and logic integrated with and/or executable by the at least one processor, the logic being configured to: [ c] identify one of the electronic components in the system that requires service, wherein the identified electronic component has a service threshold associated therewith; [ d] dynamically adjust the service threshold associated with the identified electronic component based at least in part on one or more of: a maximum number of requests to service the identified electronic component, and a global enable/disable part ordering setting; [ e] determine whether the identified electronic component needs a replacement part based on the adjusted service threshold; [ fJ automatically order the replacement part without manual intervention, in response to determining that the identified electronic component needs the replacement part; 3 Our Decision refers to: (1) Appellants' Specification filed April 22, 2011 ("Spec."); (2) the Final Rejection mailed November 17, 2016 ("Final Act."); (3) the Appeal Brief filed March 20, 2017 ("Appeal Br."); (4) the Examiner's Answer mailed June 12, 2017 ("Ans."); and (5) the Reply Brief filed August 14, 2017 ("Reply Br."). 2 Appeal2017-010791 Application 13/092,898 [g] output a status of the order for the replacement part order in response to ordering the replacement part; and [h] use the replacement part in the system upon installing the replacement part to the identified electronic component; [i] wherein the service threshold is selected from a group consisting of "high", "medium" and "low", and rn wherein each of the "high" "medium" and "low" service thresholds prescribe a different service protocol. Appeal Br. 28 (Claims Appendix). REFERENCES The Examiner relies upon the following prior art4 in rejecting the claims on appeal: Obert Gilberto Cassidy Jorgensen US 2004/0204977 Al US 7 ,444,298 B2 US 2012/0030326 Al US 8,918,784 Bl REJECTIONS Oct. 14, 2004 Oct. 28, 2008 Feb.2,2012 Dec. 23, 2014 Claims 1, 3, 4, 7-10, 12, 13, 16-19, and 21-27 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without adding significantly more. See Final Act. 3-11. Claims 1, 3, 4, 7, 9, 10, 12, 13, and 22 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Obert, Cassidy, and Jorgensen. See Final Act. 11-25. 4 All citations to the references use the first-named inventor only. 3 Appeal2017-010791 Application 13/092,898 Claims 8, 16-19, 21, and 23-27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Obert, Cassidy, Jorgensen, and Gilberto. See Final Act. 25-30. Our review in this appeal is limited to the above rejections and the issues raised by Appellants. Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2016). DISCUSSION Reiection Under§ 1 OJ Standard for Patent Eligibility An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). 4 Appeal2017-010791 Application 13/092,898 Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). 5 Appeal2017-010791 Application 13/092,898 If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. USPTO January 7, 2019 Revised Section 1 OJ Memorandum The USPTO recently published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 50 (Jan. 7, 2019) ("Memorandum"). Under the Memorandum guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a}- ( C ), ( e }-(h)). See 84 Fed. Reg. at 52-55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: 6 Appeal2017-010791 Application 13/092,898 (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 84 Fed. Reg. at 56. Analysis Appellants argue the claims as a group. See Appeal Br. 6, 7. We select independent claim 1 as exemplary of Appellants' arguments for the group. See 37 C.F.R. § 4I.37(c)(1)(iv)(2016). The Examiner determines "the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more." Final Act. 4. Appellants present several arguments against the§ 101 rejection. We do not find Appellants' arguments persuasive, as discussed below. Applying the guidance set forth in the Memorandum, we are not persuaded of Examiner error. We adopt the nomenclature for the analysis steps used in the Memorandum. STEP 1 Section 101 provides that "[ w ]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. Initially, we determine that independent claim 1 recites "[a] system." Appeal Br. 28. As 7 Appeal2017-010791 Application 13/092,898 such, claim 1 is directed to a statutory class of invention within 35 U.S.C. § 101, i.e., a machine. See also Final Act. 7. STEP 2A, Prong 1 Under Step 2A, Prong 1, of the Memorandum, we must determine whether claim 1, being directed to a statutory class of invention, nonetheless falls within a judicial exception. The Examiner determines claim 1 is "directed to the abstract idea of automating replacement part ordering based on service thresholds" and "[t]his concept[] relate[s] to a method of organizing human activity and is not meaningfully different than those economic concepts found by the courts to be abstract ideas." Final Act. 8, 9. Appellants argue that claim 1 is not directed to an abstract idea because: (1) "the present record does not reflect the requisite analysis to satisfy the Office's burden of presenting a prim a facie case of subject matter ineligibility" because "the rejection fails to consider each and every limitation of the rejected claims," and "improper[ly] reli[ es] on non- precedential authority"; and (2) the claim is "not directed to the type of subject matter previously recognized as 'a method of organizing human activity,' and further that represents a significant improvement over conventional service systems and techniques." Appeal Br. 6-16; Reply Br. 2. Appellants' arguments are unpersuasive. Claim 1 recites a "system" that implements steps including: [ c] "identify ... electronic components in the system that require[] service"; [d] "dynamically adjust [a] service threshold associated with the identified electronic component"; [ e] "determine whether the identified electronic component needs a 8 Appeal2017-010791 Application 13/092,898 replacement part based on the adjusted service threshold"; [f] "automatically order the replacement part"; [g] "output a status of the order for the replacement part order"; [i] "wherein the service threshold is selected from a group consisting of 'high', 'medium' and "low"'; and Li] "wherein each of the 'high' 'medium' and 'low' service thresholds prescribe a different service protocol." Appeal Br. 28. Apart from generic hardware, such as recited in limitations [a] and [b], limitations [c] - [g], [i], and Li] recite adjusting a service threshold associated with an identified electronic component and using the adjusted threshold to determine whether the identified electronic component needs a replacement part. If a replacement part is needed, the replacement part is ordered, and a status of the order is output. Adjusting a service threshold of a component, using the threshold to determine when the component needs to be replaced, and ordering the component are all activities that would normally take place when a consumer purchases an electronic part, such as a printer, from a retailer or manufacturer. For example, the manufacturer may instruct the consumer to replace an electronic printer cartridge after a threshold number of pages have been printed or when the printer ink falls below an adjustable threshold level. The manufacturer may provide the printer with a warning light indicating to the buyer that the cartridge is ready for replacement, prompting the buyer to order the cartridge. Apart from extra-solution activity and generic hardware (as discussed in Step 2B below), the claimed invention is analogous to pre- Internet commercial transactions between humans in which a manufacturer provides maintenance service or assistance to entice a buyer to buy a particular electronic device or component. 9 Appeal2017-010791 Application 13/092,898 For example, Appellants' Specification describes the problem the claimed invention seeks to address as follows: A service representative may perform a diagnostic procedure, either locally at the customer's site or remotely, to determine the source of the failure and affected components in the system. The service representative may conclude from the diagnostic procedure that one of the subsystems or components in the system has failed or does not operate according to certain requirements. In that case, the service representative may order a replacement unit for the identified subsystem or component if the subsystem or component is replaceable. Such a process is costly and time-consuming as it relies on the service representative's decision to order the part and the representative's initiation of the part ordering. Spec. ,r 20. Appellants' service/maintenance in connection with the purchase of electronic devices is a fundamental economic activity long prevalent in our system of commerce and is similar to other types of "organizing human activity" that have been found to be abstract ideas by the Supreme Court and the Federal Circuit. See, e.g., Alice, 573 U.S. at 220 (intermediated settlement); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) (offer-based price optimization); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (collecting and analyzing information and notifying a user based on the analysis); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("creating a contractual relationship----a 'transaction performance guaranty"'); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014) ("showing an advertisement before delivering free content"); Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-- 45 (Fed.Cir.2013) (generating tasks for processing an insurance claim). 10 Appeal2017-010791 Application 13/092,898 Furthermore, limitation [d], "dynamically adjust the service threshold," under a broadest reasonable interpretation, reasonably may be characterized as a step of observation, evaluation, judgment, or opinion, and can be performed in the human mind or by a person using pen and paper. See 84 Fed. Reg. at 52. For example, a consumer may mentally adjust the threshold level for printer ink depending on the quantity of prints made and the lead time for delivery of a new ink cartridge. Manipulating and analyzing information by steps people may go through in their minds, without more, is essentially a mental process within the abstract-idea category. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the exception of generic computer- implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper."). Accordingly, we conclude that claim 1 recites a judicial exception comprising the abstract ideas of a mental process and a fundamental economic practice, the latter of which is one of certain methods of organizing human activity identified in the Memorandum. We note that a claim need not be addressed to a single abstract idea to be patent ineligible. As our reviewing court has held, combining several abstract ideas does not render the combination any less abstract. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea ... does not render the claim non- abstract. "); see also FairWarning, 839 at 1093-94 (patent-ineligible claims were directed to a combination of abstract ideas). Claim 1, therefore, recites a judicial exception. 11 Appeal2017-010791 Application 13/092,898 STEP 2A, Prong 2 Next, we determine whether the claim is directed to the abstract concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept, i.e., whether the claim is integrated into a practical application. See, e.g., Alice, 573 U.S. at 223, discussing Diehr, 450 U.S. at 175. Applying step 2 of the Alice/Mayo analysis, the Examiner identifies the additional limitations other than the abstract idea (limitations [a] and [b]) and determines these elements merely recite "[g]eneric computer components" and, thus, do "not impose any meaningful limit on the computer implementation of the abstract idea." Final Act. 7, 9. The Examiner further determines "[t]here is no indication that the combination of elements improves the functioning of a computer or improves any other technology." Final Act. 10. Appellants argue the claimed solution "represent[ s] an improvement to computer-related technology because the automated process ... , as in McRO, accomplishes a same or improved result as previously accomplished by humans, in a task that conventionally required human intervention." Appeal Br. 16 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)); see Reply Br. 5. Appellants' argument based on McRO is unpersuasive because Appellants' claim 1 is unlike the claims in McRO. The patent at issue in McRO describes that, prior to the claimed invention, character animation and lip synchronization were accomplished by human animators with the assistance of a computer, and involved the use of a so-called "keyframe" approach in which animators set appropriate parameters, i.e., morph weights, 12 Appeal2017-010791 Application 13/092,898 at certain important times, i.e., in order to produce accurate and realistic lip synchronization and facial expressions. McRO, 837 F.3d. at 1305. Animators knew what phoneme a character pronounced at a given time from a time-aligned phonetic transcription ( a "timed transcript"). Id. In accordance with the prior technique, animators, using a computer, manually determined the appropriate morph weight sets for each keyframe based on the phoneme timings in the timed transcript. Id. Thus, in McRO, the improvement in computer animation was realized by using "rules, rather than artists [i.e., human animators], to set the morph weights and transitions between phonemes" (id. at 1313 ( citation omitted)), i.e., in McRO, the invention used "rules to automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously achieved manually by animators." Id. at 1307. The rules in McRO, thus, allowed the computer to solve a technological problem by producing accurate and realistic synchronization in animated characters that could only previously be produced by humans. In contrast with McRO, Appellants do not identify any specific rules in the claim that are used by the claimed processor to solve a technological problem, let alone identify specific rules that act in the same way as the specific rules enabling the computer in McRO to generate computer animated characters. Rather, as claimed, Appellants' invention merely adjusts a threshold to better identify when an electronic component requires service. No technological rules are identified in the claim; rather the claims merely require broadly that the threshold be "selected from a group consisting of 'high', 'medium' and "low."' Appeal Br. 28. We, therefore, find insufficient evidence of record to support Appellants' argument that 13 Appeal2017-010791 Application 13/092,898 claim 1 is similar to the claim in McRO, where computers were unable to make certain subjective determinations, i.e., regarding morph weight and phoneme timings, which could only be made prior to the McRO invention by human animators. Also, the solution addressed by Appellants' claim is a business problem, not a technical problem. Rather than addressing a problem unique to the technology in which the solution is implemented, Appellants' claim 1 merely automates, using generic computer technology, a pre-internet process in which a seller provides maintenance service or assistance for electronic components. As set forth in the Specification, the "embodiments of the invention, as described, automate the problem [-] determination and part ordering processes [-] to minimize the need for human decisions and intervention by either the customer or the service representative, and thus minimizing the time it takes to bring the system back to operation and reducing service costs." Spec. ,r 20. Thus, claim 1 is directed to facilitating part ordering, which is not an improvement to technology because the broadly claimed part ordering based on a threshold does not recite a particular solution to a technological problem or a particular way to achieve a desired outcome by reciting an improvement to technology. See MPEP § 2106.05 (a). In addition, because a particular computer is not required, the claim also does not define or rely on a "particular machine." See MPEP § 2106.05(b ). Further, the method does not transform matter; at best, it transforms information. That is, the claim simply manipulates and outputs data. See MPEP § 2106.05 (c); see also Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972) (holding that a computer based algorithm that merely 14 Appeal2017-010791 Application 13/092,898 transforms data from one form to another is not patent-eligible). As such, the claim has no other meaningful limitations (see MPEP § 2106.05 (e)), and merely recites instructions to execute the abstract idea on a computer processor (see MPEP § 2106.05 (f)). Moreover, although the claim calls for using the replacement part in the system upon installing the replacement part to the identified electronic component, this is merely insignificant extra- solution activity. See MPEP § 2106.05 (g). We, therefore, determine claim 1 is not directed to a specific asserted improvement in computer technological implementation or otherwise integrated into a practical application and thus is directed to a judicial exception. STEP 2B Next, we determine whether the claim includes additional elements that provide significantly more than the recited judicial exception, thereby providing an inventive concept. Alice, 573 U.S. at 217-18 (quoting Mayo, 566 U.S. at 72-73). The Examiner finds claim 1 does "not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea." Final Act. 8. Appellants argue that because "claim 1 now requires 'the service threshold is selected from a group consisting of 'high', 'medium' and 'low', wherein each of the 'high' 'medium' and 'low' service thresholds prescribe a different service protocol,"' the claimed system "is directed to significantly 15 Appeal2017-010791 Application 13/092,898 more than any judicial exception to which claim 1 is allegedly directed." Appeal Br. 16. We find Appellants' argument unpersuasive because, other than the abstract idea, claim 1 recites [a] "a plurality of electronic components," [b] "at least one processor and logic integrated with and/or executable by the at least one processor and [h] "use the replacement part in the system upon installing the replacement part to the identified electronic component." Appeal Br. 28. Considered both separately and as an ordered combination, the additional limitations add nothing inventive to the claim. As noted above, the additional limitations merely recite generic computing components for implementing the claimed abstract idea (see Spec. ,r 58), or in the case of limitation [h], mere extra-solution activity, because the limitation is not integrated into the claim as a whole. To the extent Appellants argue the limitations reciting a service threshold add significantly more to the abstract idea to provide an inventive concept (see Appeal Br. 16), these limitations are not additional elements beyond the abstract idea, but rather are directed to the abstract idea itself, as noted previously in our step 2A, prong 1 analysis. Thus, we do not find that the additional recited elements- considered individually and as an ordered combination-add significantly more to the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Memorandum. In conclusion, because Appellants' representative claim 1 is directed to a patent-ineligible abstract concept and does not recite something "significantly more" under the Alice analysis, we sustain the Examiner's rejection of this claim under 35 U.S.C. § 101 as being directed to non- 16 Appeal2017-010791 Application 13/092,898 patentable subject matter in light of Alice and its progeny. The rejection of the other claims in the group is sustained for the same reasons. Reiection of Claim 1 Under § 103 Issue: Whether the combination of Obert, Cassidy, and Jorgensen teaches or suggests "dynamically adjust the service threshold associated with the identified electronic component based at least in part on ... a maximum number of requests to service the identified electronic component, ... wherein the service threshold is selected from a group consisting of 'high,' 'medium,' and 'low,"' as recited in claim 1. The Examiner relies on the combination of Obert, Cassidy, and Jorgensen to teach the disputed limitation. See Final Act. 10-16; Ans. 5-8. Appellants dispute the Examiner's factual findings, first arguing "Jorgensen's activity levels are not 'service thresholds' nor do they relate to 'service' in any manner." Appeal Br. 19. We are unpersuaded of Examiner error. Appellants' Specification discloses that "the term 'service threshold' broadly refers to thresholds that relate to both the operational characteristics and service characteristics of a component." Spec. ,r 21. Appellants fail to demonstrate that Jorgensen's activity level thresholds, used to indicate a degree of CPU usage by virtual machines, do not relate to operational characteristics of a component. See Jorgensen 9:25--45. Next, Appellants argue Jorgensen's service thresholds are not "selected from a group consisting of 'high', 'medium' and "low,"' as claimed, because instead "Jorgensen treats values matching the threshold as either high or low." Appeal Br. 20 (citing Jorgensen 9:25--45). 17 Appeal2017-010791 Application 13/092,898 The portion of Jorgensen cited by the Examiner discusses selecting an adjustable service threshold level "where the threshold level can be any one of 0%, 10%, 20%, 30%, 40%, 50%, 60%, 70%, 80%, 90%, 99% or another value." See Final Act. 21. Appellants' argument does not persuasively explain why Jorgensen's discussion of selecting a service threshold from a group consisting of a 10% threshold level (low), a 50% threshold level (medium), and a 90% threshold level (high), does not teach or suggest low, medium and high thresholds as claimed. See Jorgensen 9:38--42. Although Jorgensen does not use the same label for the thresholds, identity of terminology is not required to reject a claim. See In re Bond, 910 F .2d 831, 832 (Fed. Cir. 1990). The Examiner additionally relies on Cassidy' s discussion of denying service requests by a client until a "threshold 117 representing the maximum number of connection attempts" is met, to teach or suggest "dynamically adjust the service threshold associated with the identified electronic component based at least in part on ... a maximum number of requests to service the identified electronic component. Final Act. 18 ( citing Cassidy ,r,r 18, 19, 47-54, and Fig. 6.) Appellants argue "Cassidy does not address 'service' in the context of replacing hardware components, but rather is limited to the scope of providing access to information (' cable service')." Appeal Br. 21. We find this argument unpersuasive because here, similar to our discussion above, Appellants fail to show why Cassidy's denial of service by server 102 to client 302, based on a threshold number of service requests, does not relate to operational characteristics of a component, namely the client 302. See Spec. ,r 21. 18 Appeal2017-010791 Application 13/092,898 Next, Appellants argue, "Cassidy teaches providing access to service in response to detecting a minimum number of requests to access information, not 'a maximum number of requests to service the identified electronic component' as required by claim 1." Appeal Br. 21. We find this argument unpersuasive because Appellants fail to persuasively explain why the Examiner's finding that Cassidy's discussion of denying service requests by a client until a "threshold 117 representing the maximum number of connection attempts" is met, does not teach or suggest the limitation. See Cassidy ,r 51. Lastly, Appellants argue "the present record lacks the requisite analysis and consideration of relevant facts necessary to establish a 'predictable results' theory." Appeal Br. 21. We are unpersuaded of error. The Examiner points to specific disclosures in the prior art that describe each of the limitations of Appellants' claim. See Final Act. 3-7. The Examiner also articulates a reason having rational underpinnings for the proposed combination. See Final Act. 5. We, therefore, find the Examiner's obviousness conclusion is based on sufficiently articulated reasoning. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). With respect to predictable results, we understand the Examiner's position to be that the inclusion of Cassidy and Jorgensen's teachings regarding thresholds into Obert's use of a predefined threshold in an automatic part replacement system merely constitutes combining prior art elements according to known methods to yield predictable results (KSR, 550 U.S. 398 at 401) or possibly a simple substitution of one known element for another to obtain predictable results (KSR, 550 U.S. 398 at 417). 19 Appeal2017-010791 Application 13/092,898 In either case, the Examiner has established a prima facie case of obviousness, and thus the burden has shifted to Appellants to overcome the prima facie case with argument and/or evidence. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, Appellants have not persuasively shown error in the Examiner's conclusion that combining the teachings would improve Obert's use of thresholds in a predictable way and produce predictable results. We, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 1, and of independent claims 9 and 16, which are argued only nominally separately from independent claim 1. See Appeal Br. 25-27. We likewise sustain the rejection of dependent claims 3, 7, 8, 10, 12, 13, 17-19, and 21-27, which are not argued separately. Re;ection of Claim 4 Under § 103 Issue: The dispositive issue for claim 4 is whether Obert teaches or suggests "wherein the service protocol prescribed by the medium service threshold comprises instructing execution of a problem determination module before automatically ordering the replacement part," as recited in claim 4. The Examiner relies on Obert to teach the disputed limitation. See Final Act. 23 ( citing Obert ,r,r 28, 49); Ans. 8. Appellants argue "Obert is silent as to ... instructing execution of a problem determination module before automatically ordering the replacement part" and "[t]he rejection makes no allegation to the contrary, instead simply asserting a general, unconnected teaching regarding a call 20 Appeal2017-010791 Application 13/092,898 center with a dispatcher receiving a message allegedly relates to the claimed 'call center."' Appeal Br. 23. Appellants further argue "[t]he Answer does not expand or elaborate on the grounds of rejection presented in the Final Office Action, and so Appellants submit the rejections warrant reversal for the reasons set forth in the Appeal Brief." Reply Br. 9. On this record, we find Appellants' arguments persuasive because we agree the Examiner does not sufficiently show how Obert teaches the disputed limitation. Accordingly, on this record we cannot sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 4. Because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants other arguments directed to claim 4. See Appeal Br. 23. DECISION We affirm the Examiner's decision to reject claims 1, 3, 4, 7-10, 12, 13, 16-19, and 21-27 under 35 U.S.C. § 101. We affirm the Examiner's decision to reject claims 1, 3, 7-10, 12, 13, 16-19, and 21-27 under 35 U.S.C. § 103(a). We reverse the Examiner's decision to reject claim 4 under 35 U.S.C. § 103(a). Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision to reject all of the pending claims. 21 Appeal2017-010791 Application 13/092,898 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 )(iv). AFFIRMED 37 C.F.R. § 4I.50(B) 22 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH WHITNEY DAIN, JEFFREY LEE FIELDS, KELLY LOUISE HICKS, and FREDERICK SCOTT HUNTER KRAUSS Appeal2017-010791 Application 13/092,898 Technology Center 3600 Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and DAVID J. CUTITTA II, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge, CONCURRING-IN-PART: For the following reasons, I would reverse the 101 rejection and the 103 rejections. I also would newly reject all of the claims under 35 U.S.C. § l 12(a) (pre-AIA § 112, ,r 1, for lacking adequate written description. CLAIM INTERPRETATIONS "Before considering the rejections ... , we must first [determine the scope ofJ the claims .... " In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974). Appellants' independent claim 1 recites, inter alia, 1. A system comprising ... at least one processor and logic integrated with and/or executable by the at least one processor, the logic being configured to: ... Appeal2017-010791 Application 13/092,898 dynamically adjust the service threshold associated with the identified electronic components based at least in part on one or more of: a maximum number of requests to service the identified electronic component, and a global enable/ disable part ordering setting; wherein the service threshold is selected from a group consisting of "high", "medium" and "low," and wherein each of the "high[,]" "medium[,]" and "low service thresholds prescribe a different service protocol. App. Br. 28, Claims App 'x. This claim language presents two issues of claim construction, which I address seriatim. I. The first claim-construction issue is this: what does it mean for the service threshold to be based at least in part on one or more of a maximum number of service requests and a global enable/disable part-ordering setting? I understand the claim term "based ... on" to mean that the dynamically adjusted threshold of the components is a threshold of a type that indicates the maximum number of requests, a threshold of a type that can be adjusted by a global enable/disable part-ordering setting, or plural thresholds or respective components that are of these types. That is, I understand that "based ... on" does not mean that a threshold is dynamically adjusted either in response to detecting that a maximum number of requests has occurred or in response to detecting that a global enable/disable setting has been changed. 2 Appeal2017-010791 Application 13/092,898 This interpretation of the term "based on" is informed by Appellants' Specification: Figure 8 is a flowchart of an exemplary process for updating a service threshold at which a replacement part is ordered for a component in a system, according to an embodiment of the invention. At step 801, a service representative may select from a list of service thresholds a particular threshold for a replaceable component in a product system. The part service threshold may be selected from a part database through a graphic user interface (GUI) or browser. The service threshold may be based on certain measurements relating the operation and performance of the respective part. The service representative may change the service threshold to a new value at step 802. For example, the service threshold for the part's operating temperature may be set not to exceed 100 degrees Fahrenheit. See Spec. ,r 48 ( emphasis added). II. The second claim-construction issue is this: does the claim language, "the logic being configured to ... dynamically adjust the service threshold," necessarily require that the logic, itself, automatically perform the dynamic adjustments of the thresholds, or can this language additionally or alternatively be interpreted to mean that the logic merely enables a human to dynamically adjust the service threshold. I understand this claim language to require the narrower interpretation-that the logic, itself, perform the dynamic adjustments of the thresholds. That is, the plain meaning of the claim language is limited to requiring that the dynamic adjustments be carried out automatically without manual intervention. It would be unreasonable to interpret this claim language alternatively to mean that the logic merely enables a human to dynamically adjust the 3 Appeal2017-010791 Application 13/092,898 service threshold. Restated, it would be unreasonable to interpret this claim language to mean that the logic dynamically adjusts the service threshold in response to a human entering commands for the thresholds to be adjusted. If Appellants desired that claim 1 cover situations in which the logic enables humans to adjust the service thresholds, Appellants could have drafted the claim to say that. Furthermore, the record confirms that Appellants intended for the claim language to mean that the processor's logic automatically performs the dynamic adjustment of the service threshold. See, e.g., the Remarks section associated with the Amendment filed April 22, 2014---the amendment in which the present claim language under construction was added ("the 2014 Amendment"). Therein, Appellants argued, there is again no teaching or suggestion [in the previously applied prior-art reference, Hayward,] that said threshold conditions may be dynamicaHy adjusted, much less dynamically adjusted based, in part, on a maximum number of requests to service the identified component and/or a global enable/disable part ordering setting. kforeover, as this section qf llay1,vard does not teach or suggest an_v logic configured to adjust said predetennined threshold, there can be thus no teaching or suggestion therein that a consumable may be determined to need replacement based on an adjusted threshold. 2014 Amendment at 13 ( emphasis added). To be sure, the passages of Appellants' Specification that they rely upon for providing support for the claim language (see App. Br. 4), as well as the surrounding portions of the Specification, only disclose that a human manually performs the dynamic adjustments of the service thresholds. These cited passages of Appellants' Specification do not provide adequate 4 Appeal2017-010791 Application 13/092,898 support for the first-noted, narrower claim interpretation in which the processor logic, itself, performs the adjustments automatically. For example, Appellants' Specification contains the following disclosure: The part service thresholds are granular to the individual components in a product system and may be dynamically adjusted. For example, a [human] service representative 213 at the service center 207 has the ability to dynamically change the service thresholds for serviceable components in a system. Such a function provides the ability to 'tum off' on a global scale the automatic ordering of replacement parts for a particular component or for all components in a supported system. For example, if the manufacturer has 2,000 systems in the field, the service representative 213 can globally set a service threshold that works with the automated ordering process such that the automatic replacement part orders for a specific part in all 2,000 systems are disabled. Spec. ,r 43 ( emphasis added), cited in App. Br. 4; see also Appellants' Figure 2 (indicating that Service Representative 213 is a human). Other portions of Appellants' Specification further explain this functionality in additional detail: At step 801, a service representative may select from a list of service thresholds a particular threshold for a replaceable component in a product system . ... The service threshold may be based on certain measurements relating the operation and performance of the respective part. The service representative may change the service threshold to a new value at step 802. For example, the service threshold for the part's operating temperature may be set not to exceed 100 degrees Fahrenheit. In another embodiment, a service threshold may be set to initiate the ordering of a replacement part if there has been more than N number of service requests for a particular component. In yet another embodiment, a service threshold may be set to globally enable or disable automated part ordering on a specific 5 Appeal2017-010791 Application 13/092,898 part or to require users to execute a problem determination module prior to automatically ordering a replacement part. Spec. ,r,r 48, 49 ( emphasis added); Spec. ,r 49 cited in App. Br. 4. The fact that Appellants' Specification only provides support for a human adjusting the service threshold, as opposed the processor's logic automatically adjusting the service threshold, is an insufficient reason to interpret the claim language contrary to its plain and intended meaning such that the language is construed to read on humans performing the adjustments. It is a well-settled principle of patent law that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). WRITTEN DESCRIPTION Statute 35 U.S.C. § 112(a) reads as follows: (a) JN GENERA.L.-------T'he specification shall contain a written description of the invention1 and of the manner and process of making and using it in such fu1L clear. concise. and exact terms .._, .._, / ' ·' / as to enable any person skilled in the art to which it pertains1 or with which it is most nearly connected~ to make and use the same, and shall set forth the best mode contemplated by the inventor or J'oint inventor of carrving out the invention. • w 0 For the following four reasons, I would enter new grounds of rejection for independent claims 1, 9, and 16 under 35 U.S.C. § 112, first paragraph, as lacking written support in the originally filed Specification. 6 Appeal2017-010791 Application 13/092,898 I. For the reasons explained above in the claim-construction section, I understand independent claims 1 and 16 to set forth that the processor's logic is configured so that the logic, itself, dynamically adjusts the service thresholds. This language does not appear in the originally filed Specification. It was first added by the 2014 Amendment. The originally filed Specification alternatively discloses that a human performs the dynamic threshold adjustments-not the processor's logic. See, e.g., Spec. ,r 48. Accordingly, Appellants' originally filed Specification does not reasonably convey that at the time of filing, Appellants possessed the idea of the processor's logic performing the service threshold adjustments. I, therefore, would reject independent claims 1 and 16, and further reject claims 3, 4, 7, 8, 17-19, 21-23, and 27, which depend from claims 1 and 16, under 35 U.S.C. § 112(a) (or pre-AIA § 112, ,r 1) for lacking adequate written description. II. The wording of independent claim 9 differs slightly from that of independent claims 1 and 16: 9. A computer implemented method comprising: identifying, from a system of electronic components, an electronic component that requires service, wherein the identified electronic component has a first service threshold associated therewith; dynamically adjusting the first service threshold associated with the identified electronic component based at least in part on one or more of: a maximum number of requests to service the identified electronic component, and a global enable/disable part ordering setting; 7 Appeal2017-010791 Application 13/092,898 determining whether the identified electronic component needs a replacement part based on the adjusted service threshold; and automatically ordering the replacement part without manual intervention, in response to determining that the identified electronic component needs the replacement part; installing the replacement part to the identified electronic component, wherein at least one of the identifying, determining and automatic ordering is performed by a processor. App. Br. 30-31 (emphasis added). Claim 9 is broader than claims 1 and 16 in that claim 9 does not limit the recited computer-implemented method to require that the processor logic, itself, automatically dynamically adjusts the threshold. As such, claim 9 reads on a human adjusting the service thresholds and, therefore, is not subject to the same written description rejection as the other independent claims. However, independent claim 9, as well as claims 1 and 16, lack adequate written description for a different reason. Claim 9' s method entails first identifying an electronic component that requires service, subsequently adjusting the service threshold of the component that requires service, and then determining whether the identified electronic component needs a replacement part based on the adjusted service threshold. In contrast, Appellants' originally filed Specification merely discloses adjusting thresholds of components based on measurements relating to the operation and performance of the parts. E.g., Spec. ,r,r 48, 49. And Appellants' Specification discloses identifying whether components- presumably including adjusted components-need to be replaced. E.g., Spec. ,r 39. However, Appellants' originally filed Specification does not 8 Appeal2017-010791 Application 13/092,898 reasonably convey that at the time of filing, Appellants possessed the idea of first identifying that a component needs service, but not replacing that so- identified component until after both ( 1) the threshold of that failed or inoperable component has been adjusted and (2) a second determination has been undertaken to see if that component still needs to be replaced. Independent claims 1 and 16 contain similar claim language. I, therefore, would reject independent claims 1, 9, and 16, and further reject claims 3, 4, 7, 8, 10, 12, 13, 16-19, and 21-27, which depend from these independent claims, under 35 U.S.C. § 112(a) ( or pre-AIA § 112, ,r 1) for lacking adequate written description. III. Appellants' originally filed Specification does not convey that at the time of filing, Appellants possessed the idea that a single threshold can be adjusted based upon both the maximum number of requests and a global enable/disable part-ordering setting. Appellants' Specification does disclose adjusting thresholds for each of these conditions. See, e.g., Spec ,r,r 48, 49. But paragraph 49 of Appellants' Specification clearly indicates that these two bases for adjustment occur in alternative embodiments: In another embodiment, a service threshold may be set to initiate the ordering of a replacement part if there has been more than N number of service requests for a particular component. In yet another embodiment, a service threshold may be set to globally enable or disable automated part ordering on a specific part or to require users to execute a problem determination module prior to automatically ordering a replacement part. Spec. ,r 49 ( emphasis added). 9 Appeal2017-010791 Application 13/092,898 For these additional reasons, I also would reject independent claim 1, 9, and 16, and further reject claims 3, 4, 7, 8, 10, 12, 13, 16- 19, and 21-27, which depend from the independent claims, under 35 U.S.C. § 112(a) (or pre-AIA § 112, ,r 1) for lacking adequate written description. IV. Independent claim 1 also recites the limitation "at least one processor ... being configured to ... use the replacement part in the system upon installing the replacement part to the identified electronic component." Appellants rely on paragraph 20 of the Specification, set forth below, as providing written description support for this limitation: A service representative may perform a diagnostic procedure, either locally at the customer's site or remotely, to determine the source of the failure and affected components in the system. The service representative may conclude from the diagnostic procedure that one of the subsystems or components in the system has failed or does not operate according to certain requirements. In that case, the service representative may order a replacement unit for the identified subsystem or component if the subsystem or component is replaceable. Such a process is costly and time-consuming as it relies on the service representative's decision to order the part and the representative's initiation of the part ordering. The embodiments of the invention, as described, automate the problem determination and part ordering processes to minimize the need for human decisions and intervention by either the customer or the service representative, and thus minimizing the time it takes to bring the system back to operation and reducing service costs. Spec. 20 ( emphasis added), cited in App. Br. 4. 10 Appeal2017-010791 Application 13/092,898 The paragraph cited by Appellants does not disclose a processor using the replacement part. The paragraph only discloses, more generally, "us[ing] the replacement part in the system upon installing the replacement part to the identified electronic component" ( emphasis added). The Specification, as cited by Appellants, thus, does not provide written description support for the limitations. For these additional reasons, I also would reject independent claim 1, as well as dependent claims 3, 4, 7, 8, and 21-23, under 35 U.S.C. § 112(a) (or pre-AIA § 112, ,r 1) for lacking adequate written description. PA TENT ELIGIBILITY I agree with the Majority that under step 2A, prong 1, of the Guidance, the independent claims recite two abstract ideas: (1) mental processes including observations, evaluations, judgement, and opinions; and (2) organizing human activities, including commercial interactions. See Maj. Op. 8-11. I would reverse the patent-ineligibility rejection under step 2A, prong 2, though. The Examiner has not performed the requisite analysis to establish that the claims fail to integrate the abstract ideas into a practical application. The Examiner instead merely concludes, without analysis or factual support, that the additional limitations beyond the abstract idea are "generic computer functions routinely used in computer applications" (Final Act. 9), that "[t]here is no indication that the combination of elements improves the functioning of a computer or improves any other technology" (id. at 10 11 Appeal2017-010791 Application 13/092,898 (emphasis omitted)), and that "[the additional elements'] collective functions merely provide conventional computer implementation (id.). The supplemental reasoning set forth in the Examiner's Answer is similarly deficient. The Examiner relies on Tranxition, Inc. v. Lenovo, Inc., 664 Fed. Appx. 968 (Fed. Cir. 2016) for the sweeping proposition that "the 'automation' of any process by a computer of any other device[] does not pass the 'significantly more' test and is not patent eligible." Ans. 3 ( emphasis omitted). This interpretation of Tranxition is an oversimplification of the law. The Examiner must perform an analysis and provide a factual basis for why the automation undertaken in the present invention merely constitutes an improvement to abstract ideas using conventional computer components and does not constitute, for example, an improvement to the computer or relevant technology that performs the automated process. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). The Examiner additionally relies on In re Venner, 262 F .2d 91 (CCP A 1958) for the proposition that "'automation' of any function/step is well known feature in order to improve efficiency over manual action and would have been obvious to a skilled artisan." Ans. 3. As such, the Examiner misapplies Venner. Venner arose in the context of an art-based rejection under 35 U.S.C. § 103 and addressed the obviousness of automating or otherwise modifying known manual devices and activities. See, e.g., MPEP § 2144.04(III) ( discussing Venner 's holding that "it is not 'invention' to broadly provide a mechanical or automatic means to replace manual activity [that] has accomplished the same result"). Cases such as Venner implicitly stmi with 12 Appeal2017-010791 Application 13/092,898 the premise that the particularly employed means of automation were conventional. They do not address the threshold question of whether the means of automation were, in fact, conventional or whether they alternatively were an improvement to the technology. In short, Venner has no bearing on the question of whether claiming a new method for automating a manually performed method renders the invention patent eligible under 35 U.S.C. § 101. OBVIOUSNESS I also would reverse the obviousness rejections under 35 U.S.C. § 103(a). I. The Examiner finds that Obert discloses two service thresholds that are associated with different service protocols. Final Act. 15. Specifically, the Examiner finds that Obert discloses "urgent" and "non-urgent" time-for- shipping thresholds, wherein the "urgent ( or high) threshold results in immediate shipping and the "non-urgent" ( or low) threshold results in overnight shipping. Id. ( citing Obert ,r 28). The Examiner relies on Cassidy for reaching that a service threshold may be managed. App. Br. 18 (citing Cassidy ,r,r 18, 19, 27-54; FIG. 6). The Examiner further relies on Jorgensen for teaching that a system may include three, instead of two, thresholds-high, medium, and low thresholds. Final Act. 21 (citing Jorgensen, col. 9, 11. 25--45). Appellants argue that "assuming arguendo Jorgensen's activity levels may be considered service thresholds, the service thresholds only correspond to a binary determination, i.e. 'high' and 'low' activity (similar to the alleged 13 Appeal2017-010791 Application 13/092,898 'high' and 'low' levels of service allegedly suggested by Obert, ... ) rather than including a third possibility- 'medium."' App. Br. 19. Appellants further contend Jorgensen teaches defining a percentage of total activity as an activity threshold, and categorizes individual virtual machines' activity level relative to the single threshold defined. For example, if the threshold is 50% activity, Jorgensen's virtual machines exhibiting activity of 50% or more may be characterized as "high activity" while those below 50% may be characterized as "low activity". . . . Jorgensen treats values matching the threshold as either high or low. Accordingly, Appellant[ s] respectfully submit[] Jorgensen, taken singly or in combination with the remaining evidence of record, fails to teach or suggest three distinct service thresholds, namely "high," "medium," and "low" as required by claim 1. Id. at 19-20 (citing Jorgensen, col. 9, 11. 25--45). Appellants' arguments are persuasive. The cited passage of Jorgensen teaches that a threshold level can be freely set at various levels-anywhere between 0% and 99%. Jorgensen, col. 9, 11. 30-32. This is a teaching that a given single threshold can be set freely, as desired. This is not a teaching, though, of a system that possesses multiple thresholds. To be sure, Jorgensen teaches that virtual-machine activity at a level below a threshold may result in a first operational characteristic, and virtual- machine activity at a level above a threshold may result in a second operational characteristic. Id. col. 9, 11. 32-38. But even if Jorgensen's different operational characteristics reasonably can be interpreted as "service thresholds" within the meaning of claim 1, mapping these operational characteristics to the claimed service thresholds still would not satisfy the language of claim 1. Jorgensen only teaches two operational characteristics 14 Appeal2017-010791 Application 13/092,898 or "service thresholds"-not three, as claimed. See id. at col. 9, 11. 39--42 ("values above [the] threshold [can be] considered high activity values, values below [the] threshold [can be] considered low activity values, and values at the threshold [can be] considered as either high or low"). For these reasons, the Examiner has not established a prima facie case of obviousness. 5 II. The Examiner's obviousness rejection contains a more significant shortcoming, though. Appellants argue that independent claims 1, 9, and 16 require first identifying an electronic component that requires service, subsequently adjusting the service threshold of the component that requires service, and then determining whether the identified electronic component needs a replacement part based on the adjusted service threshold. Specifically, Appellants recite this claim language in their principle Brief. See, e.g., App. Br. 19 (reciting this claim language in relation to claim 1 ). Appellants then argue, 5 Given that the Examiner relied on Obert to teach two delivery options or "service thresholds," as claimed, it is not immediately clear why the Examiner needed to rely further on both Cassidy and Jorgensen to support the proposition that it would have been obvious to provide three service thresholds instead of two. Given Obert's disclosure of plural delivery options, alternatively providing three delivery options instead of two provisionally seems obvious. For example, it was well known to those of ordinary skill in the art at the time of the invention that the United States Postal Service has long provided more than two delivery options. The Postal Service's well-known delivery options included next-day, second-day, first- class, and bulk-mailing delivery. I would recommend that upon any further prosecution, the Examiner should consider the relevance of this noticed fact. 15 Appeal2017-010791 Application 13/092,898 Cassidy's teachings to limit responses to requests for information submitted to a content server by a set top box neither teach nor suggest the claimed "dynamically adjusting the first service threshold associated with the identified electronic component based at least in part on one or more of: a maximum number of requests to service the identified electronic component, and a global enable/disable part ordering setting[,]" as required by claim 1. App. Br. 21 (emphasis added). The recitation of "the identified electronic component" includes the antecedent-basis term, "the identified." This term requires that the component being adjusted be the same component that was previously identified as requiring service. The Examiner has not demonstrated that the cited references, alone or in combination, teach first identifying that a component needs service, but not servicing that so-identified component until after both (1) the threshold of that failed or inoperable component has been adjusted and (2) a second determination has been undertaken to see if that component still needs to be serviced. The fact that the claim limitations may lack adequate written description is not a justification for ignoring those limitations when formulating an art-based rejection under 35 U.S.C. § 102 or§ 103. Independent claims 9 and 16 recite language similar to claim 1. Furthermore, the Examiner does not rely on the additionally cited reference, Gilberto, to cure the deficiency of the rejection of the independent claims. See Final Act. 25-30. I therefore would reverse the obviousness rejections of claims 1, 3, 4, 7-10, 12, 13, 16-19, and 21-27. 16 Copy with citationCopy as parenthetical citation