Ex Parte Jayanth

Patent Trial and Appeal Board

Oct 3, 2017

11474821 (P.T.A.B. Oct. 3, 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.
11/474,821 06/26/2006 Nagaraj Jayanth 0315-578/COB 1188
27572 7590 10/05/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
10/05/2017 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAGARAJ JAYANTH
Appeal 2016-003732
Application 11/474,821
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 5—17, 19, 54—56, 62, 63, and 67—70. We have
jurisdiction under 35 U.S.C. § 6(b). The Appellant’s representative
appeared for oral hearing in this appeal on July 18, 2017 (“Hearing”).3
We AFFIRM.
1 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed Aug. 26, 2015), Reply Brief (“Reply Br.,” filed Feb. 29,
2016), and Specification (“Spec.,” filed June 26, 2006), and to the
Examiner’s Answer (“Ans.,” mailed Dec. 31, 2015) and Final Office Action
(“Final Act.,” mailed Mar. 26, 2015).
2 According to the Appellant, the real party in interest is “EMERSON
CLIMATE TECHNOLOGIES, INC.” Appeal Br. 4.
3 Throughout this opinion, we refer to the transcript of the Hearing (“Tr.”).
Appeal 2016-003732
Application 11/474,821
STATEMENT OF THE CASE
The Appellant’s invention relates generally to “compressors, and
more particularly, to compressor warranty administration.” Spec. 12.
Claim 67 (Appeal Br. 44-45 (Claims App.)) is the only independent
claim on appeal, is representative of the subject matter on appeal, and is
reproduced below (with bracketing added for reference):
67. A method comprising:
[(a)] controlling, with a local module, operation of a
compressor installed in a refrigeration system having non­
compressor refrigeration system components, the compressor
being covered by a warranty;
[(b)] storing, with the local module, operating data of the
compressor in a non-volatile memory associated with the
compressor and accessible to the local module;
[(c)] determining, with the local module, when a fault has
occurred based on the operating data of the compressor, the fault
including at least one of a compressor fault and a refrigeration
system fault;
[(d)] storing, with the local module, fault history data in
the non-volatile memory associated with the compressor based
on the determining when the fault has occurred;
[(e)] retrieving, with a remote module in communication
with the local module over a network, the operating data and the
fault history data from the non-volatile memory when a
notification of a potential warranty claim under the warranty is
received, the potential warranty claim being associated with an
occurrence of the fault and the retrieving being performed after
the determining when the fault has occurred and while the
compressor remains installed in the refrigeration system;
[(f)] examining the operating data and the fault history
data retrieved from the non-volatile memory;
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[(g)] determining, based on the examining, whether the
fault was caused by the compressor and whether a warranty
voiding event occurred prior to the fault;
[(h)] responding to the notification, when the fault is
determined to have been caused by the compressor and when no
warranty voiding event is determined to have occurred prior to
the fault, by one of repairing the compressor or replacing the
compressor with a new compressor and by installing one of the
repaired compressor or the new compressor in the refrigeration
system; and
[(i)] controlling, with the local module, operation of one
of the repaired compressor or the new compressor after the
repairing or replacing when the fault is determined to have been
caused by the compressor and when no warranty voiding event
is determined to have occurred prior to the fault.
REJECTIONS
Claims 5—17, 19, 54—56, 62, 63, and 67—70 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claims 5—17, 19, 54—56, 62, 63, and 67—70 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Millet (US 6,302,654 Bl, iss.
Oct. 16, 2001), Blair (US 6,694,204 Bl, iss. Feb. 17, 2004), and Nguyen
(US 6,125,312, iss. Sept. 26, 2000).
ANALYSIS
Patent-Ineligible Subject Matter - § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
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Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The Court has, thus, made clear that “[phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
Following the Supreme Court, the Federal Circuit has similarly held
that mental processes are not patent-eligible subject matter. Therefore, the
court has held that methods which can be performed entirely in the human
mind are unpatentable, not because “there is anything wrong with claiming
mental method steps as part of a process containing non-mental steps,” but
rather because “methods which can be performed entirely in the human mind
are the types of methods that embody the ‘basic tools of scientific and
technological work’ that are free to all men and reserved exclusively to
none.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. (citing
Mayo, 132 S. Ct. at 1296—97) (emphasis added). If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
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nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
132 S. Ct. at 1297—98). In other words, the second step is to “search for an
‘inventive concept’—i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Id. (alteration in original)
(quoting Mayo, 132 S. Ct. at 1294). The Court acknowledged in Mayo, that
“all inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293.
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea, and merely invoke generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
Claims 5-17. 19. 5A-56. 62. 63. 67. and 70
Turning to the first step of the Alice framework, before determining
whether claims at issue are directed to an abstract idea, we must first
determine to what the claims are directed.
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) Rather, the “directed to” inquiry
applies a stage-one filter to claims, considered in light of the
specification, based on whether “their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
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Genetic Techs. Ltd. v. Merial L.L.C., 2016 WL 1393573, at *5
(Fed. Cir. 2016) (inquiring into “the focus of the claimed advance
over the prior art”).
Enfish, 822 F.3d at 1335.
With respect to computer-enabled claimed subject matter, it can be
helpful to determine whether “the claims at issue . . . can readily be
understood as simply adding conventional computer components to well-
known business practices” or not. Id. at 1338; see also Affinity Labs of Tex.,
LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). In Enfish,
the court put the question as being “whether the focus of the claims is on [a]
specific asserted improvement in computer capabilities ... or, instead, on a
process that qualifies as an ‘abstract idea’ for which computers are invoked
merely as a tool.” Enfish, 822 F.3d at 1335—36. The court found in Enfish
that the “plain focus of the claims” was on “an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity.” Id. at 1336.
“In determining the eligibility of respondents’ claimed process for
patent protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole “focus on a specific means or method that improves the
relevant technology” or are “directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
In this case, the claims as a whole are focused on a process for
determining whether a warranty voiding event occurred based on received
operating and fault data. Independent claim 67 recites the limitations of
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controlling a compressor, storing operating data, determining when a fault
has occurred based on the operating data, storing fault history data,
retrieving the operating and fault history data, examining the retrieved
operating and fault history data, determining whether the fault was caused
by the compressor and whether a warranty voiding event occurred prior to
the fault, then, if both are true, in response to a notification of a warranty
claim, repair or replace the compressor, and controlling operation of the
repaired or replacement compressor. Appeal Br. 43 44 (Claims App.).
Dependent claims 5—17, 19, 54—56, 62, 63, and 70 recite limitations further
defining the method regarding warranty data (claims 5—9), denying the claim
if the compressor is functioning (claim 10), determining a cause of the
malfunction based on the examining (claims 11 and 70), the type of data
stored in the memory (claims 12—17, 54—56), the type of data examined
(claim 19), notifying a party of a fault (claims 62 and 63). The Specification
provides that the invention is directed to “compressor warranty
administration.” Spec. 12. Figures 5 and 7, to which the Appellants refer as
a summary of the claimed matter (Appeal Br. 8—9), depict “a data access
control algorithm for a compressor memory system” and “a warranty
administration method.” Spec. H 120, 122; see also id. 11 147,168.
Thus, we agree with and adopt the Examiner’s finding that the claims
are directed to the abstract idea of “determining whether or not to grant or
deny a warranty claim by examining operating data and fault data” (Final
Act. 2), a method of organizing human activity and “a fundamental
economic practice that has long been prevalent in our system of commerce
in terms of warranty administration” (id.). This abstract idea is similar to
ones our reviewing courts have deemed ineligible. See Accenture Glob.
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Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir.
2013) (finding “generating tasks [based on] rules ... to be completed upon
the occurrence of an event” an abstract idea (alterations in original));
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed. Cir.
2016) (“collecting and analyzing information to detect misuse and notifying
a user when misuse is detected”); Elec. Power Grp. LLC v. Alstom, 830 F.3d
1350, 1353—54 (Fed. Cir. 2016) (collecting information and “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category.”); In re Meyer, 688 F.2d 789, 795—96 (CCPA 1982)
(claims directed to identifying probable locations of malfunctions are
“mathematical algorithm representing a mental process that has not been
applied to physical elements or process steps”); AudatexN. Am., Inc. v.
MitchellInt’l, Inc., No. 2016-1913, 2017 WL 3188451, at *3 (Fed. Cir.
2017) (claims directed to “‘providing a vehicle valuation through the
collection and use of vehicle information’ . . . recite nothing more than the
collection of information to generate a valuation report for a damaged
vehicle with the aid of well-known technology.”). Here, the claims involve
nothing more than controlling an apparatus, receiving and storing data,
analyzing the data, and manual repairs or replacements without any
particular inventive technology — an abstract idea. See Elec. Power Grp.,
830 F.3d at 1354.
We find unpersuasive the Appellants’ argument that the “method
recited by claim 67 is more akin to [an] industrial process[].” Appeal Br. 12.
The Appellants have not adequately shown how the claimed process is an
“industrial one.” Indeed, the Appellants characterize the claims as directed
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to “a specific manner and timing for retrieving specific types of data from a
specific non-volatile memory associated with a compressor via
communication between a remote module and a local module.” Id.', Reply
Br. 4; Tr. 5. We disagree. But, even assuming arguendo that the claims are
directed to “a specific manner and timing for retrieving data” from a
memory associated with a compressor, this would still be an abstract idea
similar to those found ineligible by our reviewing courts. See Elec. Power
Grp., 830 F.3d at 1354 andFairWarningIP, 839 F.3d at 1093.
Turning to the second step of the Alice framework, we find
unpersuasive the Appellants’ arguments that the claims are nonetheless
directed to patent-eligible subject matter because the claims include features,
either alone or in combination, that amount to ‘“significantly more’ than the
Examiner’s asserted abstract idea.” Appeal Br. 14; see also id. at 15—17;
Reply Br. 5—11. We find unpersuasive the Appellants’ argument that the
claims are more because the limitations are computer-implemented. Id.
at 14—15; Reply Br. 10—11. The Appellants have not shown adequate
evidence that the limitations are not routine, conventional, well-understood
functions of a generic computer. We further note that the functions of
examining, determining, and responding, as recited in limitations (f)—(h) of
claim 67, are performed mentally and manually.
Rather, we agree with and adopt the findings of the Examiner that
“any claimed functions being performed by the claimed local module and/or
the claimed remote module of the pending claims [] ... are all reciting well
understood, routine, and conventional activities that can be provided by any
type of generic computing device.” Final Act. 3; see also id. at 4—6. As the
Examiner points out, the recited modules are broadly defined as general
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purpose computers. Id. at 3. The Specification supports this view in
describing the local module and including a processor and memory and the
remote module as including a database. Spec. 1 60. The Appellants argue
that the Examiner does not appropriately apply case law (see Appeal Br. 15—
17; Reply Br. 7—9), but do not provide adequate evidence or technical
reasoning that the functions of controlling a compressor, storing data,
determining a fault, and retrieving data over a network, as recited in
limitations (a)-(e) and (i) of claim 67 as being performed by a module, are
not routine, well-understood, and conventional functions of a generic
computer. See Elec. Power Grp., 830 F.3d at 1355 (“The claims at issue do
not require any nonconventional computer, network, or display components,
or even a ‘non-conventional and non-generic arrangements of known,
conventional pieces,’ but merely call for performance of the claimed
information collection, analysis and display functions ‘on a set of generic
computer components’ and display devices.”); Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 116 F.3d 1343, 1347—
49 (Fed. Cir. 2014) (“The concept of data collection, recognition, and
storage is undisputedly well-known.”). There is no further specification of
particular technology for performing the steps. See Affinity Labs of Texas,
LLCv. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also
Enfish, 822 F.3d. at 1336 (focusing on whether the claim is “an
improvement to the computer functionality itself, not on economic or other
tasks for which a computer is used in its ordinary capacity.”); DDR,
111 F.3d at 1256 (“[AJfter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”) (citing Alice, 134 S. Ct. at 2358)).
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Similarly, we also find unpersuasive the Appellants’ argument that the
specific manner and timing for retrieving specific types of data
from a specific non-volatile memory associated with a
compressor via communication between a remote module and a
local module, with the local module also controlling operation of
the compressor, and the retrieval occurring when a notification
of a potential warranty claim is received, after a fault has been
determined, and while the compressor remains installed in the
refrigeration system
(Appeal Br. 16) transform the abstract idea into a patent-eligible invention.
As noted above, the Appellants do not provide adequate support that the
manner and timing of retrieving data from a specific memory in a specific
location, while other functions are being performed, are technically done
such that they are not routine, conventional functions of generic computers.
The post-solution activities of manually repairing or replacing the
compressor and of controlling the operation of the repaired or replaced
compressor (see Tr. 11; Appeal Br. 15) do not make the abstract idea any
less abstract and do not transform the abstract idea into a patentable process.
See Parker v. Flook, 427 U.S. 584, 591 (1978). The claims do not purport to
change or improve the technical or technological process of repairing,
replacing, or controlling the compressor operations. There is no inventive
concept in the application of the abstract idea. See id. at 594—95; cf.
Diamond v. Diehr, 450 U.S. 175, 193—94 (1981) (finding patent eligible
under § 101 the process of curing synthetic rubber because it was drawn to
the industrial process of molding rubber products).
We further find unpersuasive the Appellants’ argument that “it cannot
fairly be said that the claims are designed to ‘monopolize’ that abstract idea
when the claims additionally recite, for example” the retrieving function as
recited limitation (e) of claim 67. Id. at 15. Although the Supreme Court
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has described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption,” see Alice, 134 S. Ct. at 2354, characterizing pre-emption or
monopolization as a driving concern for patent eligibility is not the same as
characterizing pre-emption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability,” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2354). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Finally, the Appellants argue that the Examiner has improperly failed
to perform a claim-by-claim analysis of the dependent claims 5—17, 19, 54—
56, 62, 63, and 70 under § 101 and, therefore, the rejection is “improper and
should be overturned.” Appeal Br. 18—33. Responding to the Appellants’
argument, the Examiner explains in the Answer that “[t]he dependent claims
have been fully considered for what they recite and it was concluded that
they do not recite significantly more than the abstract idea.” Ans. 8. The
Examiner also provides a further discussion, specifically addressing
dependent claims 5—7 and 70, and explaining why these claims, which the
Examiner treats as exemplary, are considered to be directed to an abstract
idea and do not recite “anything in addition to the abstract idea.” Id.
We do not agree that the Examiner’s rejection is improper with
respect to the dependent claims where, as here, there is no indication that the
Appellants were not put on notice of the Examiner’s rejection or that the
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rejection otherwise failed to satisfy the requirements of35U.S.C. § 132.
We also decline to find error in the Examiner’s decision not to recite each
dependent claim limitation and address its patent-eligibility separately. The
Examiner’s discussion in the Final Office Action appears under the heading
“Claims 5—17, 19, 54—56, 62, 63, 67—70 are rejected under 35 U.S.C. 101
because 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. 2. And the Examiner finds that the claimed subject
matter, generally, is directed to the abstract idea of “determining whether or
not to grant or deny a warranty claim by examining operating data and fault
data” (id.) and specifically that “[t]he dependent claims do not recite
anything that is found to render the abstract idea as being transformed into a
patent eligible invention and amount to mostly reciting features to the
warranty itself, which is simply a further embellishment of the abstract idea
itself’ (id. at 7). As discussed above, each of the dependent claims is
directed to determining whether to grant or deny a warranty claim based on
analysis of collected data, and adds limitations that merely further specify
that abstract idea without anything more. We are not persuaded that
dependent claims 5—17, 19, 54—56, 62, 63, and 70 are patent-eligible
because, like independent claim 67, they add nothing meaningful to the
abstract idea.
Indeed, aside from arguing in the Appeal Brief that the dependent
claims were not addressed, the Appellants merely recite the claim limitations
and allege that the features are not an abstract idea. Appeal Br. 18—33. The
Appellants present no persuasive argument or technical reasoning to
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demonstrate that dependent claims 5—17, 19, 54—56, 62, 63, and 70 are
patent-eligible.
Thus, we are not persuaded that the Examiner erred in rejecting claims
5—17, 19, 54—56, 62, 63, 67, and 70 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection.
Claims 68 and 69
We find unpersuasive the Appellants’ argument that claims 68 and 69
are not directed to an abstract idea because they positively recite structure.
See Appeal Br. 17—19; Reply Br. 11—12. As with claim 67, we first
determine to what claims 68 and 69 are directed.
Each of claims 68 and 69 depends from claim 67 and is directed to a
method. Appeal Br. 45 (Claims App.). Thus, claims 68 and 69, like
claim 67, are directed to a process for determining whether a warranty
voiding event occurred based on received operating and fault data.
Although claims 68 and 69 recite structural limitations regarding the
location of the memory with regards to the compressor apparatus and claim
68 also recites limitations regarding the compressor itself (id.), the claims do
not focus on how the location of the memory or structure of the compressor
leads to an improvement in the technology of the modules performing the
functions. See Intellectual Ventures ILLC v. Erie Indemnity Co., 850 F.3d
1315, 1329-30 (Fed. Cir. 2017). And, the Appellants do not adequately
show that, or how, the steps of the process of claim 67, i.e., controlling the
compressor, storing data, and determining a fault, as recited in limitations
(a)-(e) and (i) of claim 67, are performed differently by the modules
(technologically or otherwise) based on the location of the memory and
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structure of the compressor as recited in claim 68. The Appellants further do
not adequately show that the claimed structure of claim 68 transforms the
abstract idea into a patent-eligible invention; rather, the Appellants merely
recite the claim limitations and allege that the features “clearly amount to
‘significantly more’ than any abstract idea.” Reply Br. 12.
Thus, we are not persuaded that the Examiner erred in rejecting the
claims 68 and 69 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection.
Obviousness - § 103
Claims 5-17. 19. 5A-56. 62. 63. 67. 69. and 70
The Appellants contend that the Examiner erred in the rejection
because the combination of the prior art “fail[s] to teach or suggest the
method recited by [independent] claim 67.” Appeal Br. 34. In support of
the contention, the Appellants argue that none of the references teaches or
suggests retrieving operating data, examining the data, and determining
whether the fault was caused by the compressor, as recited in limitations (e)-
(g) of claim 67.
We find the Appellants’ arguments unpersuasive at least because the
Appellants argue against each reference individually when the Examiner
relies on the combination of the art for the cited limitations. The test for
obviousness is not what any one reference would have suggested, but rather
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA
1981). “[0]ne cannot show non-obviousness by attacking references
individually were, as here, the rejections are based on combinations of the
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references.” Id. The Examiner finds that Millet teaches a compressor with a
control system, i.e., a local module, able to communicate with various
sensors, a communication network, and the use of fault codes for errors
detected by the module. See Final Act. 8—9, 13. The Examiner finds that
Bair teaches storing operating data in the memory of a controller in a
refrigeration system, the data retrievable via wireless or wired
communication, and reviewing the data for warranty purposes. See id.
at 10-12; see also Ans. 9. The Examiner finds that Nguyen teaches
examining warranty claims with a control system that obtains data from
sensors and that uses fault codes, i.e., fault data. Final Act. 10-11. The
Examiner further finds that Nguyen teaches determining if the warranty is to
be covered, assessing whether the part is covered by the warranty, and using
operational data and fault codes, i.e., fault data, in the determination and
assessment. See id.
The Appellants do not provide adequate evidence or technical
reasoning why the Examiner’s findings and/or reasoning are erroneous
and/or unsupported. Viewed as a whole, the Appellants’ arguments amount
to a recitation of the claim language and cited portions of Bair and Nguyen,
from which the Appellants summarily conclude that the cited portions of the
references are “silent” with respect to the quoted claim language. Appeal
Br. 34—36. Other than seeking direct quotations of identical terminology,
the Appellants have not identified error in the Examiner’s interpretations of
the cited references or the claim language. Appellants may well disagree
with how the Examiner interpreted and applied the references, but
Appellants offer no substantive arguments to rebut the specific underlying
factual findings made by the Examiner in support of the ultimate legal
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conclusion of obviousness. And we decline to examine the claims sua
sponte, looking for distinctions over the prior art. Cf. In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this
court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.”).
Based on the foregoing, we are not persuaded of error on the part of
the Examiner, and we sustain the Examiner’s rejection of independent
claim 67 under § 103. The Appellants present no separate argument against
the rejection of claims 5—17, 19, 54—56, 62, 63, 69, and 70, but rely on their
dependency from claim 67. Appeal Br. 37. Thus, for the same reasons we
sustain the Examiner’s rejection of independent claim 67, we also sustain the
rejection of dependent claims 5—17, 19, 54—56, 62, 63, 69, and 70.
Claim 68
The Appellants contend that the Examiner’s rejection of claim 68 is in
error because Millet does not teach the structure recited in claim 68. Appeal
Br. 36-37.
The Appellants’ arguments are unpersuasive because they attack
Millet individually. The Examiner relies on the combination of Millet and
Bair to teach the limitations of claim 68. Ans. 10—11; see also Final Act. 8—
10, 12. The Appellants do not provide adequate evidence or technical
reasoning why the combination of Millet and Bair does not teach the
structural limitations. To the extent the Appellants argue that Millet does
not teach a connector block with power leads (see Appeal Br. 37, Reply
Br. 13), we find supported the Examiner’s finding that Millet’s case 84, i.e.,
the connector block, “maintains a hermetic seal of a compressor while
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Appeal 2016-003732
Application 11/474,821
allowing power to be delivered to the compressor via power leads.”
Ans. 11; see also Millet, col. 4,11. 54—63, col. 5,11. 37-43.
Based on the foregoing, we are not persuaded of error on the part of
the Examiner, and we sustain the Examiner’s rejection of dependent
claim 68 under § 103.
DECISION
The Examiner’s rejection of claims 5—17, 19, 54—56, 62, 63, and 67—
70 under 35 U.S.C. § 101 is AFFIRMED.
The Examiner’s rejection of claims 5—17, 19, 54—56, 62, 63, and 67—
70 under 35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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