Ex Parte Doeberl et al

Patent Trial and Appeal Board

Dec 22, 2014

10249615 (P.T.A.B. Dec. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TERRENCE M. DOEBERL, PAUL ERNEST
DUEDALL, MARK E. HOGAN, and JOHN D. GOLDSON
____________________

Appeal 2012–0033171
Application 10/249,615
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–5 and 11–15.
We affirm–in–part.

1 The Appellants identify the real part in interest is Pitney Bowes Inc. (App.
Br. 3).
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THE CLAIMED INVENTION
Appellants claim systems and methods for managing assets (Spec.
para. 7). Claim 1 is illustrative of the claimed subject matter:
1. A computer implemented method for providing asset
replacement analysis relating to an asset using a computer
comprising:
obtaining historical asset usage data for the asset of a first
type over a plurality of periods using the computer;
obtaining current asset pricing data using the computer;
obtaining other cost data for the asset using the computer;
determining historical billing data for the asset using the
computer;
receiving an indication associated with at least one
proposed replacement asset using the computer, wherein each
of the at least one proposed replacement assets is associated
with an asset type;
obtaining model data associated with the at least one
proposed replacement asset using the computer;
determining predicted historical billing data for the at
least one proposed replacement asset using the computer;
reporting the historical billing data and predicted
historical pricing data using the computer.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Melby US 6,952,680 B1 Oct. 4, 2005
Vitulli US 2004/0103048 A1 May 27, 2004

REJECTIONS
The following rejection is before us for review.
The Examiner rejected claims 1–5 and 11–15 under 35 U.S.C.
§ 103(a) as unpatentable over Melby and Vitulli.
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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Melby discloses gathering from maintenance invoices data on “date and
nature of the maintenance that was performed, the amount of usage of
the asset 11 as of the date of such maintenance, and the cost of such
maintenance.” (Col. 5, ll. 11–18).
2. Melby discloses obtaining a fault code from an asset, and comparing
raw operational data with “the history of the specific asset 31 as well as
the history of similar assets from which maintenance trends may be
determined . . . .” (Col. 15, l. 53 to col. 16, l. 1).
3. Melby discloses obtaining data on “parts used with the existing
inventory,” maintenance trends for a specific asset and class of assets,
age of assets, and usage trends. (Col. 17, l. 56 to col. 18, l. 1).
4. Vitulli discloses obtaining predictive data on component life.
(Para. 60).
5. Melby discloses an example of asset types for replacement, stating
“more tires may be required for a forklift asset if a number of the assets
are reaching a preventative maintenance stage where tires have to be
replaced.” (Col. 18, ll. 3–5).

ANALYSIS
Claim 1
Claim 1 recites a method that collects a number of types of data, and
then reports the collected data. The method recites “obtaining,” “receiving,”
and “determining” data. We determine the scope of the claims in patent
applications are “not solely on the basis of the claim language, but upon
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giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 (Fed.
Cir. 2004)).
In construing the meaning of, “obtaining” and “determining,” we turn
to the Specification for help. The Appellants direct us specifically to Figure
11 as support for each of the limitations in the body of claim 11. (App. Br.
6–7). Figure 11 appears to be an image of a report, such as recited in the last
clause of the claim, and does not assist in determining what is meant by
“obtaining” or “determining.”
The Appellants also direct us to Figure 1, and paragraphs 7–9, 52, and
137–142. (App. Br. 4–5). These cited sections, however, do not provide
specific guidance on the meaning of these terms. Figure 1 is “a schematic
representation of an illustrative system including representative components
including business machines and Asset Management systems according to
an illustrative embodiment of the present application.” (Spec. para. 10).
Figure 1 provides little, if anything, on how data is obtained or determined.
Paragraphs 7–9, in the summary section, each describe separate
embodiments of the described systems and methods, but do not describe
how data is obtained or determined. Paragraph 52 describes computing
devices in a “representative customer system.” Paragraph 137 describes that
Figure 11 is a report. Paragraph 138 describes that the report includes a list
of assets, volumes, and costs that are presented for comparison, along with
“savings.” Paragraph 139 describes features not present in claim 1.
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Paragraphs 140–142 describe additional reports and the types of data they
may present.
Claim 1 recites obtaining “usage data,” and also obtaining or
determining several monetary types of data, which are “pricing,” “cost,” and
“historical billing” data. The claim also recites receiving an “indication
associated with at least one proposed replacement asset,” which broadly
encompasses identifying a proposed replacement asset, because the method
obtains “model data associated with” and “predicted historical billing data
for the at least one proposed replacement asset.” The billing data and pricing
data are reported, but the “usage,” “pricing,” “cost,” and “indication” are not
recited in claim 1 as being reported.
Therefore, we construe “obtaining,” “receiving,” and “determining2”
data under the ordinary meanings of these terms. We construe that
“receiving”, “obtaining” and “determining” data to be data gathering steps.
We construe “reporting” as a data output step. The entirety of claim 1,
therefore, recites only data gathering and data output.
Melby discloses gathering different types of data, such as usage, cost,
and dates from invoices (FF 1), a “fault code” sent to a data acquisition
device, and data comparison with “history” data (FF 2). Melby discloses
data on parts inventory comparisons, and maintenance trends with a specific
asset or class of assets. (FF 3). Melby thus discloses obtaining or gathering
data on usage, pricing, cost, and historical billing data, as well as
comparisons of data, all as claimed. Vitulli discloses obtaining data, not

2 The ordinary and customary definition of the term “determine” as defined
by Webster’s Dictionary is: “to learn or find out (something) by getting
information.” http://www.merriam-webster.com/dictionary/determine
(accessed Dec. 22, 2014).
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only on historical life data, but also “predicted life” data on replaceable
components. (FF 4). Thus, although Melby discloses obtaining and
reporting historical data, Melby does not include “predictive” data, which
Vitulli discloses.
The specific meaning imparted to the various data does not alter the
act of obtaining and reporting the data, because the data is not used, other
than potentially for seeking data associated with the obtained data. For
example, an indication of a replacement asset can be used to obtain model
data on the replacement asset. Melby discloses obtaining, comparing, and
reporting the types of data claimed, and Vitulli suggests that some of those
types of data may be based on predictions, rather than history, as claimed.
The Appellants argue that Melby does not disclose data about a
particular asset, but only about maintenance. (App. Br. 11, Reply Br. 2).
We are not persuaded by the Appellants’ argument, because, as the
Examiner explains (Ans. 6–7), Melby discloses addressing individual parts,
as part of a maintenance regime, which parts themselves are assets. (FF 3).
We are also not persuaded by the Appellants’ argument that Vitulli
does not disclose predicted “historical billing.” (App. Br. 12–13). Melby
discloses obtaining billing data (FF 1), and Vitulli suggests the use of
predicted data as well (FF 4). Therefore, the combination of Melby and
Vitulli discloses obtaining predicted historical data. In addition, the specific
nature of the data is not vital to that data being reported in the claimed
method, and the type of data predicted is billing data. Melby discloses
billing data. (FF 1).
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Appellants argue “Melby ’680 does not teach, describe or fairly
suggest a replacement asset analysis, but rather apparently describes
efficient maintenance of an installed base of assets.” (App. Br. 10–11).
We are not persuaded by the argument, because “replacement asset
analysis” appears only in the preamble, and is not referenced in the body of
the claim, and therefore receives no patentable weight. If the body of a
claim fully and intrinsically sets forth all of the limitations of the claimed
invention, and the preamble merely states, for example, the purpose or
intended use of the invention, rather than any distinct definition of any of the
claimed invention’s limitations, then the preamble is not considered a
limitation and is of no significance to claim construction. Pitney Bowes, Inc.
v. Hewlett–Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
Appellants argue there is “no suggestion of modeling a replacement
asset costs based upon usage data collected for the installed asset.” (App.
Br. 10–11).
This set of arguments fails because “modeling a replacement asset
costs” does not appear in the claim, let alone in the preamble.
Appellants finally argue the combination of Melby and Vitulli is
improper on the basis that Vitulli “teaches away” from automated analysis
and “scheduled maintenance” in Melby, in that Vitulli discloses an “operator
must control the” system. (App. Br. 9, Reply Br. 3).
We are not persuaded by the Appellants’ argument. First, the claim
does not limit the method to being automatic, manual, or a combination.
Second, Vitulli is relied upon as disclosing the use of predictive data (Ans.
5). Melby does not discourage the use of predictive data. “A reference may
be said to teach away when a person of ordinary skill, upon [examining] the
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reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” Para–Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1090 (Fed. Cir. 1995) (alteration in original) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Therefore, Melby does not
teach away from using predictive data, and Vitulli does not teach away from
obtaining and reporting on the types of data in Melby. Thus, the Examiner’s
combination is proper. See Ans. 5–6, 8.

Claims 2–5, 14, and 15
The Appellants argue that “the Examiner has not established that
Melby” meets the claim language in at least claims 2, 14, and 15.
(App. Br. 13–14).
The Examiner has rejected these claims along with claim 1, but
without addressing the claim language not found in claim 1. (Ans. 4–6).
Claim 2 recites the indication received is “in a series of assets.” Claim 14
recites that “the predicted historical billing data is determined using trend
data . . . .” Claim 15 recites the data “comprises base cost and usage cost
data.” Although the specific content of the data, which is then reported, may
not be significant, the Examiner has failed to address this language. Instead,
the Examiner makes a conclusory statement of obviousness for each of these
claims. (Ans. 4). Therefore, we find that the Examiner has failed to
establish a prima facie case of obviousness for claims 2, 14, and 15. We
reverse the rejection of these claims, as well as claims 3–5 that depend from
claim 2.

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Claims 11 and 12
Dependent claims 11 and 12 recite that a proposed replacement asset
is associated with an asset type that is either equal, or similar, to a first asset
type.
The Appellants assert “Melby ‘680 does not teach, describe or fairly
suggest replacement asset types and suggesting replacements by similar
asset types.” (App. Br. 13).
We are not persuaded by the Appellants’ argument, because Melby
discloses replacement tires, which are a type of asset, and where the
replacement of a tire is of “equal” or “similar type,” by also being a tire. (FF
5). Thus, we affirm the rejection of claims 11 and 12.

Claim 13
The Appellants argue “Melby ‘680 does not teach, describe or fairly
suggest predicted historical billing data.” (App. Br. 14).
We are not persuaded by the Appellants’ argument, because the
rejection is based on a combination of Melby and Vitulli, where Melby
discloses obtaining billing data, and Vitulli discloses using predicted data, as
set forth above at claim 1. Thus, the combination discloses “predicted
historical billing data.”

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1 and 11–13 under 35
U.S.C. § 103(a).
The Examiner erred in rejecting claims 2–5, 14, and 15.

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DECISION
For the above reasons, the Examiner’s rejection of claims 1 and 11–13
is AFFIRMED. The Examiner’s rejection of claims 2–5, 14, and 15 is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED–IN–PART