Ex Parte Obert

Board of Patent Appeals and Interferences

May 10, 2010

10409726 (B.P.A.I. May. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES E. OBERT
____________

Appeal 2009-006716
Application 10/409,726
Technology Center 3600
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Decided: May 11, 2010
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
STEPHEN C. SIU, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006716
Application 10/409,726

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-27. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b) (2002).
We AFFIRM.

BACKGROUND
Appellant’s invention is directed to systems and methods for
automated replenishment of consumables, replacement of maintenance
components, and/or repair of failed components in an electrical device
(Spec. [1]).
Claim 1 is illustrative:
1. A method for servicing a device, comprising:
receiving a service request signal from a serviced device,
the service request signal corresponding to a need for service to
the serviced device and having an identifier which identifies the
serviced device;
identifying a service agreement that is applicable to the
serviced device based upon the received identifier;
retrieving entitlement information corresponding to the
service agreement, the entitlement information defining at least
one attribute of service that is to be provided under the service
agreement, and the attribute of service corresponding to the
need for service;
determining a response specifying a service that
corresponds to the need for service;
communicating a message to an entity with instructions
to provide the service; and
receiving a service completed signal from the serviced
device, the service completed signal corresponding to a
condition indicating that the need for service has been provided.
Appeal 2009-006716
Application 10/409,726

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The Examiner relies on the following prior art reference as evidence
of unpatentability:
Iihoshi US 6,754,570 B2 Jun. 22, 2004
Toyama US 6,662,090 B2 Dec. 9, 2003

Appellant appeals the rejection of claims 1-4 and 11-27 under 35
U.S.C. § 102(e) as anticipated by Toyama; and claims 5-10 under 35 U.S.C.
§ 103(a) as being unpatentable over Toyama in view of Iihoshi.

ISSUES
Did the Examiner err in asserting that vehicle 2’s transmittal of
environment data to service provider 3 in Toyama corresponds to the service
request signal and service completed signal received from the serviced
device, as recited in independent claims 1, 23, 26, and 27?
Did the Examiner err in asserting that a combination of Toyama and
Official Notice renders obvious dependent claims 2 and 25?

FACTUAL FINDINGS
We rely on the Examiner's factual findings stated in the Answer
(Exam’r’s Ans. 2-6, 9-12, 15-19).

PRINCIPLES OF LAW
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
Appeal 2009-006716
Application 10/409,726

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While the specification can be examined for proper context of a claim
term, limitations from the specification will not be imported into the claims.
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005).
To adequately traverse a finding of Official Notice, the appellant must
specifically point out the supposed errors in the Examiner's action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art. In re Chevenard, 139 F.2d 711, 713
(CCPA 1943).

ANALYSIS
We are not persuaded the Examiner erred in asserting that vehicle 2’s
transmittal of environment data to service provider 3 in Toyama corresponds
to the service request signal and service completed signal received from the
serviced device, as recited in independent claims 1, 23, 26, and 27 (App. Br.
8-10, 12-13, 15-19). The sending of raw environmental data that makes up
“service request” and/or “service completed” signals in Toyama, even
without an express recognition by vehicle 2 of the “service request” and/or
“service completed” signals in the raw environmental data, is sufficient to
meet the claimed recitations (Ex. Ans. 16, 18). See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d at 1364; CollegeNet, Inc. v. ApplyYourself, Inc., 418
F.3d at 1231.
We are also not persuaded the Examiner erred in asserting that a
combination of Toyama and Official Notice renders obvious dependent
claims 2 and 25 (App. Br. 10-11, 14-15). Appellant traverses the
Examiner’s findings of Official Notice concerning the subject matter of
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Application 10/409,726

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dependent claims 2 and 25, and requests that the Examiner provide “specific
factual findings predicated on sound technical and scientific reasoning in
support of the conclusion of common knowledge.” The Examiner has set
forth such findings on page 19 of the Examiner’s Answer. As the Appellant
has not set forth specific, technical arguments as to why these findings are
inadequate, we will sustain the rejection. See In re Chevenard, 139 F.2d at
713.

DECISION
The Examiner’s rejections of claims 1-27 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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2007).

AFFIRMED
Appeal 2009-006716
Application 10/409,726

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