Ex Parte Maggiore et al

Patent Trial and Appeal Board

Feb 6, 2018

11383450 (P.T.A.B. Feb. 6, 2018)

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.
11/383,450 05/15/2006 John B. Maggiore 04-1271 -US-NP/0192.0069 7683
7590
MH2 Technology Law Group (w/Boeing)
TIMOTHY M. HSIEH
1951 Kidwell Drive
Suite 550
Tysons Corner, VA 22182
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
02/08/2018 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):
doreen @ mh21aw .com
docketing @ mh21aw .com
patentadmin @ boeing. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN B. MAGGIORE, STEVE YUKAWA, WILLIAM FRANS,
and ROBERT J. MANELSKI
Appeal 2016-004442
Application 11/383,4501
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
BRADLEY B. BAYAT Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 21—30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is The Boeing
Company. (Appeal Br. 3.)
Appeal 2016-004442
Application 11/383,450
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “relates to aircraft operations, and more
specifically, to remedying potential problems observed in the operation of
the aircraft.” (Spec. 11.)
Claims 21, 29, and 30 are the independent claims on appeal. Claim 21
is illustrative. It recites:
21. A computer-implemented method for processing electronic
fault data, comprising:
operating at least one computer of a ground-based fault
processing system having a processor and an electronic memory
storing encoded computer executable instructions encoded to
cause the at least one computer to perform a process;
processing said instructions with the processor thereby
causing the at least one computer to perform the process steps
comprising,
receiving at a computer electronic fault data from an
electronic log book where said electronic fault data is
representative of a fault occurrence,
accessing at the computer a knowledge database and
retrieving from the knowledge database coded historical fault
cost data collected over time and stored on said knowledge
database and where said historical fault cost data is correlated
with coded historical observed fault event data,
correlating at the computer an observed fault code in the
electronic fault data with the coded historical fault cost data in
the knowledge database,
determining a relative fault cost for the received electronic
fault data based on a corresponding weighted summation of
coded historical fault cost data and correlated coded historical
observed fault event data; and
displaying the relative fault cost to a user.
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REJECTIONS
Claims 21—30 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception.
Claims 21—30 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 21—27, 29, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Felke (US 6,748,304 B2, iss. June 8, 2004), Grabowsky
(EP 1414192 A2, pub. Apr. 28, 2004), and Official Notice “that it is known
in the art for pilots to fill out ELB PIREPS [electronic log book pilot reports]
that are received by others so they can use the data in the PIREPS to manage
aircraft in numerous ways.” (Final Action 17.)
Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Felke, Grabowsky, Official Notice, and Rauch (US 4,635,030, iss. Jan. 6,
1987).
ANALYSIS
The §101 rejection
Appellants argue claims 21—30 together. (See Appeal Br. 9-17.) We
select claim 21 as representative. Claims 22—30 stand or fall with claim 21.
See 37 C.F.R. § 41.37(c)(l)(iv).
In 2014, the Supreme Court decided Alice Corp. Pty Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-step framework, earlier set
out in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (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.
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Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if “the elements of the claim
. . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Id. at 2357 (citing Mayo,
566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that the claims are directed to the abstract idea “of processing
aircraft fault data so that a relative fault cost can be displayed to a user,
where the relative fault cost is determined based on a weighted summation
of historical fault cost data and coded historical fault cost data.” (Final
Action 2.) In particular, the Examiner finds:
The claimed abstract idea is defined by the claimed steps of
accessing a database and retrieving historical fault cost data that
has been collected over time, and correlating an observed fault
code with the historical fault cost data, and determining a relative
fault cost based on a weighted summation of cost data (a
mathematical operation).
(Id.)
Appellants disagree and argue that the claims are “directed to a
specifically configured computer encoded with specific instructions for
collecting electronic data from tangible electronic devices (such as an
electronic log book).” (Appeal Brief 10.) According to Appellants, “[s]uch
data is representative of a tangible physical fault occurrence indicated by on­
board electronic sensing devices of an aircraft.” (Id.) Appellants also argue
that the claimed “process further comprises tangibly displaying the requests
in a user readable format.” (Id.)
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In making the “directed to” inquiry under step one of the Alice
framework, we “look at the ‘focus of the claimed advance over the prior art’
to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)). Thus, although we consider the
claim as a whole, the “directed to” inquiry focuses on the claim’s “character
as a whole.”
In that regard, the Specification discloses “[automated processing of
electronic log book (ELB) pilot reports (PIREPs) [where the automated
processing is] configured to receive ELB PIREPs and prioritize observed
faults and potential observed faults included in the ELB PIREPs.” (Spec.
17.) Further, claim 21 recites a “method for processing electronic fault data,
comprising: . . .” “receiving . . . electronic fault data from an electronic log
book,” “accessing ... a knowledge database and retrieving . . . coded
historical fault cost data,” “correlating ... an observed fault code . . . with
the coded historical fault cost data,” “determining a relative fault cost for the
received electronic fault data,” “and displaying the relative fault cost.”
As an initial matter, we note that the claim does not recite “a tangible
physical fault occurrence,” or “on-board electronic sensing devices of an
aircraft.” (See Appeal Br. 10.) Appellants’arguments in that regard are not
commensurate with the scope of the claim and, thus, are not persuasive of
error.
“The focus of the asserted claims ... is on collecting information,
analyzing it, and displaying certain results of the collection and analysis.”
Elec. Power Grp., 830 F.3d at 1353. “[W]e have treated collecting
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information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Id.', see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—
94 (Fed. Cir. 2016).
Here, notwithstanding that the electronic fault data may represent a
fault in a physical component, that does not change its character as
information. Similarly, that the claim recites “receiving . . . electronic fault
data from an electronic log book” does not make the claim any less abstract.
Nor do the limitations of “determining a relative fault cost” and “displaying
the relative fault cost to a user” make claim 21 any less abstract. A method,
like the claimed method, “that employs mathematical algorithms [e.g.,
determining a relative fault cost] to manipulate existing information to
generate additional information is not patent eligible.” See Digitech Image
Techs, LLCv. Flees, for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014). Additionally, the Federal Circuit has “recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Elec. Power Grp., 830 F.3d at 1354.
To the extent Appellants argue that “the claims do not recite
mathematical formulas or relationships” (App. Br. 11), we disagree. As
described in the Specification, a relative fault cost is determined “by
calculating the product of each of the weighting factors and each of the
respective costs, and totaling those products” according to Equation 1.
(Spec. 139.) This is clearly a mathematical formula or relationship.
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Appellants next argue that “it would have been impractical, if not
impossible, for a human user to retrieve a large amount of disparate data
relating to schedule interruption events and the like” and “obtaining a
representative sample of data would have been impossible to accomplish in a
reasonable amount of time or with acceptable accuracy.” (Appeal Brief 10-
11). Appellants’ argument is not commensurate with the scope of the
claims. The claims do not require “retriev[ing] a large amount of disparate
data” or “obtaining a representative sample of data.” Moreover, Appellants’
argument is not persuasive of error because “relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.” See OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015).
Appellants seek to analogize the present claims to those in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) because
“the presently claimed solution . . . solves a problem arising from processing
data from a plurality of disparate sources.” (Appeal Br. 12.) But unlike the
claims here, the claims in DDR Holdings “specify how interactions with the
Internet are manipulated to yield a desired result — a result that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.'” DDR Holdings, 773 F.3d at 1258 (emphasis added). In
other words, the invention claimed in DDR Holdings does more than
“simply instruct the practitioner to implement the abstract idea with routine,
conventional activity.” See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014); see also DDR Holdings, 773 F.3d at 1259.
In view of the above, we are not persuaded that the Examiner erred in
determining that claim 21 is directed to an abstract idea.
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Step two of the Alice framework has been described “as a 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.’” Alice, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 72—73).
The introduction of a computer into the claim does not alter the
analysis at step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if ” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “ ‘to a particular technological environment.’ ”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our §101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Id. at 2359. They do not. Claim 21 relates to a method
for receiving data, accessing data, correlating data, and determining and
displaying a value based on that data.
Taking the claim elements separately, the function performed by the
computer at each step is purely conventional. Receiving data, accessing
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data, correlating data, and determining and displaying data are basic
computer functions. Moreover, the Specification discloses that the invention
can be implemented using generic computer components. (See, e.g., Spec.
45—47.) In short, each step does no more than require a generic computer
to perform routine computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. The claim does not, for example, purport to
improve the functioning of the computer itself. Nor does it effect an
improvement in any other technology or technical field. Instead, the claim
at issue amounts to nothing significantly more than an instruction to collect,
analyze, and display data using a generic computer. That is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360.
Nonetheless, Appellants attempt to analogize the invention to claim 2
in Example 21 of the July 2015 Update Appendix 1: Examples. (Appeal
Br. 13—14.) According to Appellants, the limitations of claim 21, as “an
ordered combination” address the computer-centric challenge of “utilizing
an aircraft’s electronic log book data to efficiently schedule and otherwise
handle maintenance based on historical data” by “receiving an aircraft’s log
book data from the aircraft and determining a relative fault cost associated
with a fault recorded in the log book.” (Id. at 14.)
Initially, we note that Appellants do not point to any language in
claim 21 that limits the claim to “efficiently schedul[ing]” or “handling]
maintenance.”
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Turning to Example 21 of the USPTO Guidance, claim 2, in relevant
part, recites “[a] method of distributing stock quotes over a network to a
remote subscriber computer” including the steps of
transmitting] the formatted stock quote alert over a
wireless communication channel to a wireless device associated
with a subscriber based upon the destination address and
transmission schedule,
wherein the alert activates the stock viewer application to
cause the stock quote alert to display on the remote subscriber
computer and to enable connection via the URL to the data
source over the Internet when the wireless device is locally
connected to the remote subscriber computer and the remote
subscriber computer comes online.
July 2015 Update Appendix 1: Examples, 3 (2015), https://www.uspto.gov/
sites/default/files/documents/ieg-july-2015-appl.pdf. The Update Appendix
explains that
[t]he claimed invention addresses the Internet-centric challenge
of alerting a subscriber with time sensitive information when the
subscriber’s computer is offline. This is addressed by
transmitting the alert over a wireless communication channel to
activate the stock viewer application, which causes the alert to
display and enables the connection of the remote subscriber
computer to the data source over the Internet when the remote
subscriber computer comes online.
(Id. at 4.)
Claim 1 in Example 21 of the Update is similar to claim 2 except that
claim 1 lacks the stock viewer application and, thus, does not address “the
Internet-centric challenge of alerting a subscriber . . . when the subscriber’s
computer is offline.” Claim 1 in Example 21 is described as patent-
ineligible. Appellants do not persuasively argue why receiving log book
data and determining a relative fault cost associated with a fault recorded in
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the log book, is analogous to “the Internet-centric challenge of alerting a
subscriber when their computer is offline” in claim 2 of Example 21, and,
thus, would be indicative of patent-eligible subject matter. (See Reply
Br. 3.)
Appellants further argue that the claims are patent-eligible as they
“are not an attempt to tie up all methods of processing fault and maintenance
data, or computer networks generally.” (Appeal Br. 14.) Preemption,
however, is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Fourie, J., concurring), affd, 134 S. Ct. 2347 (2014). Moreover,
“[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
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We also do not agree with Appellants that the claims are similar to the
claims held patent-eligible in Diamond v. Diehr, 450 U.S. 175 (1981).
(Appeal Brief 15.)
Diehr involved a process for curing synthetic rubber. Diehr, 450 U.S.
at 187. The claimed steps in Diehr include “installing rubber in a press,
closing the mold, constantly determining the temperature of the mold,
constantly recalculating the appropriate cure time through the use of the
formula and a digital computer, and automatically opening the press at the
proper time.” Id. at 187. We do not see an analogous situation here. For
example, Appellants do not point to anything in the claims or the
Specification that would indicate that Appellants’ claimed invention
involves constantly determining a physical characteristic of a tangible
object. Cf. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1348-49
(Fed. Cir. 2017) (“claims are directed to . . . use [of] inertial sensors in a
non-conventional manner to reduce errors in measuring”).
Appellants’ argument that the claims contain “an inventive application
of data processing techniques, and a unique combination of data processing,
that have not been previously performed and are a novel and non-obvious
departure from prior processes” (Appeal Br. 15), also fails to apprise us of
error in the rejection. “The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.” Diehr, 450 U.S. at 188—89.
Appellants further argue that the claimed invention “transforms data
from disparate on-board systems representative of physical parameters
indicative of actual failure conditions or other on-board physical
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conditions.” (Appeal Brief 16.) According to Appellants, “there is an
improvement made to how aircraft electronic log book data is utilized and in
the efficiency of processing by a computing system.” {Id. at 17.) Citing In
re Schrader, 22 F.3d 290, 294 (Fed. Cir. 1994), Appellants argue that “the
on-board data as stored on the electronic log book is representative of a
physical parameter and the sensor data representative of physical conditions
is transformed into a cost effective sequence of repairs and maintenance
actions presented to a user interface.” {Id.)
We note that the claim does not recite “physical parameters,”
“sensors,” “physical conditions,” or a “sequence of repairs and maintenance
actions.” Thus, Appellants’ arguments are not commensurate with the scope
of the claim. Regardless, Appellants have not explained how, even if recited
in the claim, the act of scheduling repairs in a more “cost effective sequence
of repairs and maintenance actions” improves the functioning of the
computer itself.
Moreover, In re Schrader applied the so-called Freeman—Walter—
Abele test. In re Schrader, 22 F.3d at 292. The claims were “directed to a
method for competitively bidding on a plurality of related items, such as
contiguous tracts of land or the like.” Id. at 291. Schrader argued that “the
method physically regroups raw bids into new groupings and ultimately
‘completions’; physically transforms bid data into completion data or display
data; and makes physical changes to a ‘display.’” Id. at 293. The Federal
Circuit rejected Schrader’s argument and affirmed the rejection under § 101.
In relevant part, the court reasoned that “there is nothing physical about bids
per seA Id. at 293—94.
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Here, fault data may describe a physical part of an aircraft that
experiences a fault, just like a bid may describe a particular tract of land.
However, there is nothing physical about fault data per se. See Elec. Power
Grp., 830 F.3d at 1353 (“[W]e have treated collecting information, including
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.”). Accordingly, we are
not persuaded that the nature of the claimed “fault data” amounts to an
inventive step.
We are not persuaded that the Examiner erred in rejecting claim 21
under § 101. Thus, we sustain the rejection of claim 21, and claims 22—30,
which fall with claim 21. See 37 C.F.R. § 41.37(c)(l)(iv).
The f 112, first paragraph, rejection of claims 21—30
With regard to independent claims 21, 29, and 30,2 the Examiner finds
with respect to the claimed limitation of the computer performing
the step of determining the relative cost for the observed fault
data, and that this is a weighted summation of coded historical
fault cost data and correlated coded historical observed fault
event data, this does not appear to have been disclosed to any
extent that would reasonably convey possession to one of skill in
the art.
(Final Action 8.) The Examiner also finds that the Specification discloses,
in paragraph 39, a “general idea of using weighted summation to arrive at a
cost, with no discussion on how the data used in the summation is arrived at,
2 The Examiner rejects claims 21—30 under § 112, first paragraph. (Final
Action 6.) We treat the reference to “claims 21, 24, 29, 30” rather than to
claims 21—30 (see id. at 8) as a typographical error.
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or even how it is able to be assigned by a user.” (Id. at 9.) The Examiner
applies the same reasoning to independent claims 29, and 30. (Id. at 8—9.)
Appellants disagree and argue that “[a]n example formula and several
example variables are explicitly explained” in paragraph 39 of the
Specification. (Appeal Brief 19.) Appellants also argue that the claimed
weighting can be supplied by the user, as disclosed in paragraph 25 of the
Specification. (Id. at 20.)
We agree with Appellants. As an initial matter, we note that the
claimed “determining” step does not encompass all ways of determining a
relative fault cost, but is limited to determinations that are “based on a
corresponding weighted summation of coded historical fault cost data and
correlated coded historical observed fault event data.” (See, e.g., claim 21.)
We therefore do not agree with the Examiner that this limitation amounts to
“very broad and general classes,” i.e., a broad genus. The question “is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010). Particularly in view of paragraphs 25
and 39 of the Specification, we find that the Specification would have
reasonably conveyed to one of ordinary skill in the art that the inventors had
possession of the “determining” step recited in claim 21 and similar steps
recited in claims 29 and 30.
To the extent that the rejection is based, in part, on determining the
weights used in the weighted summation, we find that claim 21 does not
affirmatively recite a step of computing a weighted summation; rather, the
“determining” step is performed “based on a corresponding weighted
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summation,” i.e., an existing value. Paragraph 39 of Appellants’
Specification discloses that “[b]y manipulating the weighting factors,
response to observe [sic] faults can be adjusted to reduce particular types of
costs or to serve other objectives corresponding to the different costs.” In
other words, the weights are user-adjustable and may simply be provided by
a user. See Spec. 125 (“allowing users to assign weights”).
With regard to the claim 22 limitations of “associating uncoded fault
data” and “associating uncoded maintenance actions data,” the Examiner
finds that this is described in the “data mining process 506” that is disclosed
in paragraph 31 of the Specification. (Final Action 9—10.) The Examiner
also finds that “[h]ow the data mining is occurring and how the applicant is
doing this is not clear and is not disclosed” and that “[a]ll that the applicant
has done is disclose the general idea of using a process to data mine non­
electronic pilot reports to associate their content to fault codes.” (Id. at 10.)
According to the Examiner, “[t]he data mining process 506 is like a black
box that is only disclosed as providing a desired result with no specifics on
how the result was obtained . . . .” (Id. )
Appellants disagree and argue that “[t]he process of extracting
selected data from existing records is well-known in the art.” (Appeal
Brief 21.) Appellants also point to the disclosure in paragraphs 31 and 32 of
the Specification as describing these limitations. (Id.)
We find that the Examiner has the better position. Paragraph 31 of the
Specification discloses that “[a] first data mining process 506 is applied to
the non-ELB PIREPs 502 using the observed fault codes 504 to assign
observed fault codes to the PIREPs.” Box 506 of Figure 5 is labeled simply
“Data Mining: Assign Observed Fault Codes to PIREPs.” Similarly,
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paragraph 32 discloses that “[a] second data mining process 516 is applied to
the maintenance actions text records 512 using the maintenance task codes
516 to assign maintenance task codes to the maintenance actions.” Box 516
of Figure 5 is labeled simply “Data Mining: Assign Maintenance Task
Codes to Maintenance Actions.” Regardless of whether the general concept
of data mining was well-known, there is no description in the Specification
regarding the specific steps involved in operating a computer to perform the
two “associating” steps recited in claim 22. The vague description in the
Specification of using first and second “data mining” processes of an
unspecified nature is not sufficient to convey to a person of ordinary skill in
the art that Appellants had possession of the invention as claimed. The data
mining processes 506 and 516 are tantamount to “black boxes.” (See Final
Action 10.) Figure 5 shows data input and output to and from each box 506
and 516, but there is no description of any specific process for achieving the
function performed inside each box. (See id.) Appellants present attorney
argument, but not persuasive evidence, that, from the perspective of a person
of ordinary skill in the art, the inventor had possession of the claimed subject
matter.
Regarding claim 30, and separate from the above rejection under
§112, first paragraph, that includes claim 30, the Examiner finds that “the
specification does not even contain any disclosure to any computer
instructions at all.” (Id.) According to the Examiner, “the appellant is
claiming any and all instructions in the claim scope, and the specification
does not actually contain any instructions at all.” (Answer 16.)
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Appellants disagree and direct us to paragraphs 45—47 and Figure 8 of
Appellants’ Specification. (Appeal Brief 22.) Appellants argue that there is
no in haec verba requirement for the written description requirement. (Id.)
We agree with Appellants. A person of ordinary skill in the art at the
time the application was filed would have understood that computers are
necessarily programmed with instructions to perform the disclosed
functionality. “[Njormally, writing code for such software is within the skill
of the art, not requiring undue experimentation, once its functions have been
disclosed” and “flow charts or source code listings are not a requirement for
adequately disclosing the functions of software.” Fonar Corp. v. Gen. Elec.
Co., 107 F.3d 1543, 1549 (Fed. Cir. 1997) (discussing the best mode
requirement of35U.S.C. § 112, first paragraph). In short, with regard to the
disclosed functionality, in this case, we do not find the lack of specific
computer instructions in the Specification to be a separate basis for rejection
of claim 30 under § 112, first paragraph.
The § 103(a) rejection
The Examiner finds that Felke discloses every limitation of claim 21.
(Final Action 11—14.) In relevant part, the Examiner finds that Felke
discloses determining a relative fault cost for identified repairs at column 10,
lines 33—45. (Id. at 12.)
Appellants argue that Felke teaches “the use of a historical component
relating to repair efficacy and test efficacy and not historical fault data or
relative fault cost.” (Appeal Brief 27.) According to Appellants, “Felke
does not teach or suggest the use of coded historical fault cost data and a
corresponding weighted summation of coded historical cost data.” (Id.)
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Felke discloses computing the expected costs of different repair
strategies for repairing a given fault. (Felke col. 10,11. 33—45.) As an
example, Felke discloses that an “Engine Igniter Test” may be run and it
may report an “Igniter Fault.” {Id. at col. 9,11. 12—15.) Felke further
discloses that, if, for example, the fault is determined to be in one of two
parts, replacement strategies include replacing Part 1 (cost $1000 and 67%
likelihood this is the failed part) and then replacing Part 2 (cost $100 and
33% likelihood this is the failed part) (Strategy 1-2) or replacing Part 2 and
then replacing Part 1 (Strategy 2-1). {See id. at col. 10,11. 33—45.) The
Expected cost for each strategy is equal to the cost of the first part replaced,
plus the cost of replacing the second part multiplied by the probability that
the fault is in the second part. The equations for the two alternative
strategies described above are shown at column 10, lines 40-45 of Felke,
and are reproduced below:
40 Strategy —Expected cost for replacing Bartj then Parte;
$1000+0.3 3* lOO^Sl 053
Strategy2i—Expected cost for replacing Part;2 then PartE
Appellants have not persuasively argued why Felke’s disclosure of
calculating an expected cost for a repair strategy does not disclose
“determining a relative fault cost” as recited in claim 21. Nor have
Appellants persuasively argued why Felke’s disclosure of the probability,
based on previous tests, that a particular part contains a given fault does not
disclose the claimed “historical fault cost data.” {See id. at col. 12,11. 3—11;
see also id. at col. 10,11. 20-22.) Felke discloses that the expected cost of
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each strategy is computed as a summation of the costs of replacing the first
and second parts, where the cost of replacing the second part is weighted by
the probability that the second part will need to be replaced. Appellants
have not persuasively argued why this disclosure in Felke does not disclose
a “weighted summation” as recited in claim 21.
Appellants argue, for the first time in the Reply Brief, that the
Examiner erred in finding that the phrase “coded historical” in “coded
historical fault cost data” of claim 21 amounts to non-functional descriptive
material. (Reply Brief 7.) This argument is not responsive to a new
argument raised in the Examiner’s Answer (see Final Action 14) and
Appellants have not shown good cause as to why this argument was not
raised in the Appeal Brief. Therefore, we need not consider this new
argument. See 37 C.F.R. § 41.41(b)(2). Notwithstanding, Felke discloses
coded historical fault cost data. The cost data are both “coded” (see Felke
col. 9,11. 13—15 (coding to “Igniter Fault”)) and “historical” (see id. at col.
12,11. 3—11 (“thus average costs, includes or is dependent on historical
components or factors”); see also id. at col. 10,11. 20—22).
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 21 under § 103(a). Appellants argued claims 21—27, 29,
and 30 together. (See Appeal Brief 23—28.) Therefore, claims 22—27, 29,
and 30 fall with representative claim 21. See 37 C.F.R. § 41.37(c)(l)(iv).
With regard to dependent claim 28, Appellants do not argue the
rejection of claim 28 under § 103(a). Therefore, we sustain the rejection of
claim 28 for the reasons set forth above.
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DECISION
The Examiner’s rejection of claims 21—30 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claim 22 under 35 U.S.C. § 112, first
paragraph, is affirmed.
The Examiner’s rejection of claims 21 and 23—30 under 35 U.S.C.
§112, first paragraph, is reversed.
The Examiner’s rejections of claims 21—30 under 35 U.S.C. § 103(a)
are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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