Ex Parte Roddy et al

Patent Trial and Appeal Board

Feb 10, 2016

10199717 (P.T.A.B. Feb. 10, 2016)

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.
10/199,717 07/18/2002 Nicholas E. Roddy 121889 (552-0018) 3635
7590 02/10/2016
GE Corporate, Global Patent Operation
Suite 648
2 Corporate Drive
Shelton, CT 06484
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
02/10/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NICHOLAS E. RODDY, DAVID RICHARD GIBSON,
GLENN ROBERT SHAFFER, LOUIS ANDREW SCHICK,
MICHAEL JAMES PIERRO, and WILLIAM ROY SCHNEIDER
____________________

Appeal 2013-0013741
Application 10/199,7172
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
MATTHEW S MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1–26 and 28. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
June 12, 2012) and Reply Brief (“Reply Br.,” filed October 26, 2012), and
the Examiner’s Answer (“Ans.,” mailed August 29, 2012) and Final Office
Action (“Final Act.,” mailed January 13, 2012).
2 Appellants identify General Electric Company as the real party in interest
(Appeal Br. 5).
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CLAIMED INVENTION
Appellants’ claimed invention is generally directed to the
management of remote assets, particularly as it relates to planning
maintenance activities responsive to failure predictions (Spec. 2, l. 25 – 3,
l. 2).
Claim 1, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
1. A computerized method for identification and
evaluation of a repair likely to prevent a failure of a mobile
asset, the method comprising:
[a] collecting data indicative of an incipient malfunction
in the mobile asset;
[b] collecting usage data indicative of usage of the
mobile asset;
[c] processing, with a processor, the usage data relative to
historical data collected from a fleet of corresponding mobile
assets to generate a usage profile;
[d] processing, with the processor, the data indicative of
incipient malfunctions to generate a prediction of a failure in
the mobile asset and at least one repair likely to prevent the
failure of the mobile asset;
[e] determining a repair weight indicative of a probability
that the repair will prevent the predicted failure;
[f] adjusting the repair weight based on the usage profile
of the asset; and,
[g] using the adjusted repair weight to at least evaluate
whether to perform the at least one repair of the mobile asset.
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REJECTIONS3
Claims 1, 2, 5, 6, 8, 9, 12, 13, 15–18, and 23–26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Wang (US 5,566,092, iss. Oct. 15,
1996), Schricker (US 5,737,215, iss. Apr. 7, 1998), and Tomiyama
(US 5,239,547, iss. Aug. 24, 1993).
Claims 3, 4, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang, Schricker, Tomiyama, and Sewersky
(US 5,239,468, iss. Aug. 24, 1993).
Claims 7 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wang, Schricker, Tomiyama, and Blair (US 4,809,794, iss. Mar. 7,
1989).
Claims 19–22 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Tomiyama and Wang.
Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wang and Tomiyama.

3 Appellants argue that Pierro (US 6,301,531, iss. Oct. 9, 2001) is not
available as prior art because “the present application [is] entitled to the
benefit of the earlier filing dates of one or more of U.S. Patent Application
Nos. 09/378,939; 60/201,243; 09/644,420; and 09/736,495” (Appeal Br. 56–
58; see also Reply Br. 5). However, the Pierro reference is not relied on by
the Examiner in any rejections presently on appeal, and so, we decline to
make any priority determination at this time. We note that all references
applied as prior art in the appealed rejections antedate Appellants’ earliest
effective filing date claiming benefit of priority to U.S. Patent Application
No. 09/378,939, filed August 23, 1999.
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ANALYSIS
Independent claim 1 and dependent claims 2–8
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because Tomiyama, on which the
Examiner relies, does not disclose or suggest, “determining a repair weight
indicative of a probability that the repair will prevent the predicted failure,”
as recited by limitation [e] of claim 1, “adjusting the repair weight based on
the usage profile of the asset,” as recited by limitation [f] of claim 1, and
“using the adjusted repair weight to at least evaluate whether to perform the
at least one repair of the mobile asset,” as recited by limitation [g] of claim 1
(see Appeal Br. 26–29). The Examiner maintains that the rejection is proper
and directs us to column 9, line 63 through column 11, line 68, as disclosing
the argued limitations (see Final Act. 8–9; see also Ans. 13–15). More
particularly, the Examiner states Tomiyama
determine[s] a repair weight indicative of a probability that the
repair will prevent the predicted failure as it is the case which
has the highest number of parameters and the highest number of
times successful; adjusting the repair weight based on the usage
profile of the asset the weight is adjusted as the success goes up
or down; and using the adjusted repair weight to at least
evaluate whether to perform the at least one repair of the mobile
asset and this adjusted weight is used which case best applies
and as such which resolution to apply to the asset.
(Ans. 15).
Tomiyama is directed to “a system capable of making self-diagnos[is]
and self-repair of the operating state” (Tomiyama col. 1, ll. 10–12).
Tomiyama discloses that its system includes a plurality of sensors la, 1b and
1c, which are “used for detecting the change of elements of the objective
machine or relevant states among the machine elements which occurs by the
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operation of the objective machine” (id. at col. 2, ll. 62–66). Tomiyama
discloses
repair plan portion 15, the case memory portion 17 and the
work script memory portion 18 constitute a composition portion
for inferring a repair plan and deriving repair work on the basis
of the results of inference of, if a fault exists, the fault in fault
diagnosis. In making inference in the repair plan and deriving
the repair work, a case concerning past success in repair which
is stored in the case memory portion 17 is retrieved, and a work
script for executing the case retrieved (a series of work units for
performing a repair operation) is selected from the work script
memory portion 18
(Id. at col. 3, ll. 39–50). Tomiyama discloses that “fault diagnosis
knowledge is, for example, a set condition that a particular parameter must
be, for example, ‘normal[.]’ If the particular parameter is not ‘Normal[,]’ it
is judged that a fault exists and the fault symptom is specified depending on
what the particular parameter is” (id. at col. 4, ll. 47–52). Tomiyama
discloses that once cases stored in case memory are retrieved based on a
matching “fault symptom” and “fault” as diagnosed by the fault diagnosis
portion 12 and the fault simulation portion 13 (id. at col. 9, l. 25 – 10, l. 16),
“it is necessary to determine which of the cases is first applied to the repair
work” (id. at col. 11, ll. 29–31). Tomiyama further discloses
the case number, the condition before repair, the condition after
repair, the fault symptom, the fault, the repair work, the number
of times of success in application and the number of times of
failure in application are recorded as shown in Table 3 in each
of the cases stored in the case memory portion 17
(Id. at col. 9, ll. 46–51). In this regard, Tomiyama discloses that its system
determines priority in situations when more than one case is detected:
if the condition of parameters before repair in each of the
cases (1) to (3) is compared with the present condition of
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parameters (see Table 2), only the state of Vn differs in the
case (1), the states of Vn and Vi differ in the case (2), and the
states of Vn, Vb, and Vi differ in the case (3)” which results in a
priority “concerning the order of application is assigned in the
order of the case (1), the case (2) and the case (3)
(Id. at col. 11, ll. 32–49). Tomiyama also discloses
[i]f the numbers of times of coincidence of the conditions of
parameters before repair in the respective cases and the present
condition of parameters are equal, the numbers of times of
success in application are considered (step S24). Higher
priority is assigned to a case where the number of times of
success in application is larger.
(Id. at col. 11, ll. 50–56). Tomiyama also discloses
if the numbers of times of coincidence of the conditions of
parameters before repair and the present condition of
parameters are equal and the numbers of times of success in
application are the same, the numbers of times of failure in
application are considered (step S24). Higher priority is
assigned to a case where the number of times of failure in
application is smaller.
(Id. at col. 11, ll. 57–64).
We have reviewed the cited portions of Tomiyama, on which the
Examiner relies. Although we agree with the Examiner that the
prioritization of cases (i.e., repair plans) in Tomiyama reflects a probability
that a repair will prevent a predicted failure (see Ans. 13–15), under a
broadest reasonable interpretation, Tomiyama does not disclose or suggest
determining a “repair weight indicative of a probability that the repair will
prevent the predicted failure” (emphasis added), as recited by limitation [e]
of claim 1.
Assuming, arguendo, we were to agree with the Examiner that it is
reasonable to interpret the prioritization of cases based on a number of
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successes and/or common parameters, as disclosed in Tomiyama, as “a
repair weight indicative of a probability that the repair will prevent the
predicted failure,” Tomiyama still fails to disclose “adjusting the repair
weight based on the usage profile of the asset” and “using the adjusted repair
weight to at least evaluate whether to perform the at least one repair of the
mobile asset,” as further recited by limitations [f] and [g], respectively.
Here, the Examiner finds that “adjusting the repair weight based on
the usage profile of the asset the weight is adjusted as the success goes up or
down” (Ans. 15). However, the difficulty with the Examiner’s position is
that Tomiyama’s disclosure regarding the adjustment of the success up or
down relates to completed (i.e., previously repaired) cases stored in
Tomiyama’s case memory portion (see Tomiyama col. 9, ll. 41–45). In this
regard, Tomiyama describes that if the work succeeded, the number of times
of success in application in the case is increased by one and the number of
times of success is registered (see id. at col. 12, l. 63 – col. 13, l. 7; see also
Fig. 8A, elements S29, S31). Consequently, because the repair would have
already been performed in order to adjust the “repair weight,” Tomiyama
fails to disclose or suggest “using the adjusted repair weight to at least
evaluate whether to perform the at least one repair of the mobile asset,” as
recited by limitation [g].
On this record, the Examiner has failed to establish a prima facie case
of unpatentability. Therefore, we do not sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 2–8. Cf. In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if
the independent claims from which they depend are nonobvious”).
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Independent claim 9 and dependent claims and 10–15
Independent claim 9 includes language substantially similar to the
language of claim 1, and was rejected based on the same rationale applied
with respect to independent claim 1. Therefore, we do not sustain the
Examiner’s rejection of independent claim 9 and claims 10–15, which
depend therefrom, under 35 U.S.C. § 103(a) for the same reasons set forth
above with respect to claim 1.

Independent claim 16
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting independent claim 16 under 35 U.S.C. § 103(a) because
the combination of Wang, Schricker, and Tomiyama fails to disclose or
suggest “developing a service recommendation for the mobile asset and a
success probability of the service recommendation in response to the
identified trend and the usage profile of the asset,” as recited by independent
claim 16 (Appeal Br. 33–35). Instead, we agree with the Examiner that the
combination of Wang, Schricker, and Tomiyama discloses the argued
limitation (see Final Act. 15–18 (citing Wang, col. 11, ll. 26–38; Tomiyama,
col. 9, l. 63 – col. 11, l. 68)).
Wang is directed to a system for monitoring machine components for
possible failures, which includes a machine diagnostic system that “uses
neural networks, expert systems, physical models, and fuzzy logic to detect
possible failure conditions and alert maintenance personnel” (Wang col. 10,
ll. 27–32). Wang describes using a fault diagnostic network (FDN) to
identify machine faults from sensory data (id. at col. 11, ll. 16–18; see also
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id. at col. 27, ll. 14–21). Wang discloses that its fault reasoning expert
system (FRES) “checks the faults against its rules in the knowledge base, the
damage or repair history, and machine usage information to determine the
most likely faults. Finally, recommendations for correcting the identified
machine faults are provided by the FRES to the user” (id. at col. 11, ll. 28–
32; see also id. at col. 10, ll. 55–63; col. 27, ll. 22–26). Wang further
discloses that its system acquires data from a machine and that the data are
monitored and processed to determine “whether the machine or process is
operating in a normal manner (green condition), a potentially problematic
manner (yellow condition), or a dangerous manner (red condition)” (id. at
col. 29, ll. 25–46). Wang also discloses that “if a yellow or red condition
exists diagnostics are performed” (id. at col. 29, ll. 56–62) and the
identifiable potential faults are provided to the FERS (id. at col. 30, ll. 18–
19).
Tomiyama discloses that once cases stored in case memory are
retrieved based on a matching “fault symptom” and “fault” as diagnosed by
the fault diagnosis portion 12 and the fault simulation portion 13 (id. at col.
9, l. 25 – 10, l. 16), “it is necessary to determine which of the cases is first
applied to the repair work” (id. at col. 11, ll. 29–31). Tomiyama further
discloses
the case number, the condition before repair, the condition after
repair, the fault symptom, the fault, the repair work, the number
of times of success in application and the number of times of
failure in application are recorded as shown in Table 3 in each
of the cases stored in the case memory portion 17
(Id. at col. 9, ll. 46–51). In this regard, Tomiyama discloses that its system
determines priority in situations when more than one case is detected
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if the condition of parameters before repair in each of the cases
(1) to (3) is compared with the present condition of parameters
(see Table 2), only the state of Vn differs in the case (1), the
states of Vn and Vi differ in the case (2), and the states of Vn,
Vb, and Vi differ in the case (3)” which results in a priority
“concerning the order of application is assigned in the order of
the case (1), the case (2) and the case (3)
(Id. at col. 11, ll. 32–49). Tomiyama also discloses
[i]f the numbers of times of coincidence of the conditions of
parameters before repair in the respective cases and the present
condition of parameters are equal, the numbers of times of
success in application are considered (step S24). Higher
priority is assigned to a case where the number of times of
success in application is larger.
(Id. at col. 11, ll. 50–56). Tomiyama further discloses
if the numbers of times of coincidence of the conditions of
parameters before repair and the present condition of
parameters are equal and the numbers of times of success in
application are the same, the numbers of times of failure in
application are considered (step S24). Higher priority is
assigned to a case where the number of times of failure in
application is smaller.
(Id. at col. 11, ll. 57–64).
We also are not persuaded by Appellants’ argument that “[n]one of
Wang, Schricker, and Tomiyama describes developing such a success
probability” (Appeal Br. 36; see also Reply Br. 3–4). More particularly,
Appellants argue that the Examiner incorrectly construed the claim term
“success probability,” and as such, erred in relying on Tomiyama’s
disclosure regarding “[t]he equating of prioritizing a fault case according to
the number of times that a repair was successful with a probability that a
repair will be successful” (Appeal Br. 37; see also Reply Br. 3). We agree
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with the Examiner that Tomiyama discloses the argued feature (see Ans. 17–
19).
There is a heavy presumption that claim terms take on their “plain,
ordinary, and accustomed meaning to one of ordinary skill in the relevant
art.” Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed.
Cir. 2003) (citation omitted). A patent applicant may overcome that
presumption by acting as his or her own lexicographer so as to assign a
special definition to each claim term, but such a definition must be “clearly
set forth” and “explicit.” Id.
In making this determination, we note that Appellants have not
directed us to any special definition in the Specification for the word
“probability,” as it appears in the term “success probability;” and, after
reviewing Appellants’ Specification, we are unable to find any such clear
and explicit definition for the word. Although the Specification provides a
number of non-limiting examples in which “[a] repair weight [is] indicative
of a probability” (Spec. 3, ll. 19–20; see also id. at 18, ll. 8–9), the term
“success probability” does not appear in the Specification at all. Therefore,
in the absence of an explicit definition, the Examiner may adopt the broadest
reasonable interpretation of the term consistent with the Specification. In re
Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997).
Here, we agree with the Examiner that Tomiyama’s disclosure
regarding determining priority, i.e., “[i]f . . . the conditions of parameters
before repair in the respective cases and the present condition of parameters
are equal, the numbers of times of success in application are considered” and
[h]igher priority is assigned to a case where the number of times of success
in application is larger” (Tomiyama col. 11, ll. 57–64), as disclosed in
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Tomiyama, constitutes “developing . . . a success probability,” as recited by
independent claim 16, under a broad, but reasonable, interpretation (Ans.
17–18). We note this interpretation is commensurate with the ordinary and
customary meaning of “probability” which is generally understood to mean
“1. [t]he quality or condition of being probable; likelihood” and a dictionary
definition of “probable” which is “1. Likely to happen or to be
true. . . . 2. [l]ikely but uncertain; plausible,”4 and reasonable in view of
Appellants’ Specification (cf. e.g., Spec. 18, ll. 1–3). Thus, Tomiyama
discloses “developing . . . success probability,” as recited by independent
claim 16.
Appellants also argue that the rejection of independent claim 16 is
improper because “Tomiyama does not qualify as analogous art to the
present application as Tomiyama is not from the same field of endeavor as
the present application and is not reasonably pertinent to the problem sought
to be solved by the present application” (Appeal Br. 33; see also id. 20–26).
However, we agree with the Examiner that although Tomiyama is not
directly related to mobile assets, its teachings would apply to “any asset not
just an imag[ing] device” (Ans. 8–10).
In this regard, Tomiyama is directed to a self-diagnosis and self-repair
system which monitors the operating state of a machine and plans repair
work accordingly (see Tomiyama, Abstract). Tomiyama is analogous prior
art because it logically would have commended itself to a person skilled in

4 See The American Heritage® Dictionary of the English Language,
accessed at http://www.thefreedictionary.com/probability and
http://www.thefreedictionary.com/probable (last visited on February 5,
2014).
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the art considering the substantially similar issues, with which the inventor is
involved, related to the management of remote assets, particularly as it
relates to planning maintenance activities responsive to failure predictions
(see e.g., Spec. 2–3). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(Even when prior art is not in the same field of endeavor as the claimed
invention, it is still analogous prior art if it is “reasonably pertinent” to the
particular problem with which the inventor is involved); In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992) (A reference is reasonably pertinent if, because of
the matter with which it deals, it logically would have commended itself to
an inventor’s attention in considering his problem.). We also note that
Wang and Schricker are in the same field of endeavor as the claimed
invention because Wang and Schricker both perform machine fault
diagnostics to ensure effective equipment maintenance (see Wang, Abstract;
see also Schricker, Abstract).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 16 under 35 U.S.C. § 103(a).

Independent claim 17
Appellants argue that the Examiner erred in rejecting independent
claim 17 under 35 U.S.C. § 103(a) because the combination of Wang,
Schricker, and Tomiyama fails to disclose or suggest “developing a service
recommendation for the mobile asset and a success probability of the service
recommendation in response to the identified combination of faults and the
usage profile of the asset.” (Appeal Br. 36–38). More particularly,
Appellants argue that “[n]one of Wang, Schricker, and Tomiyama describes
developing such a success probability” (id.). However, as discussed above
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with respect to independent claim 16, we agree with the Examiner that
Tomiyama discloses “developing . . . a success probability” (see Ans. 17–
19), and so, Appellants’ similar arguments are unpersuasive for the same
reasons set forth above with respect to claim 16.
Therefore, we sustain the Examiner’s rejection of independent claim
17 under 35 U.S.C. § 103(a).

Independent claim 18
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting independent claim 18 under 35 U.S.C. § 103(a) because
the combination of Wang, Schricker, and Tomiyama fails to disclose or
suggest “developing a service recommendation for the mobile asset and a
success probability of the service recommendation in view of the rule base
for determining the servicing schedule of the fleet of mobile assets and
further in view of the usage profile of the mobile asset” (Appeal Br. 41–44).
Instead, we agree with the Examiner that the combination of Wang,
Schricker, and Tomiyama discloses the argued limitation (see Final Act. 22–
25 (citing Wang, col. 11, ll. 16–38, col. 27, ll. 14–26; Tomiyama, col. 9,
l. 63 – col. 11, l. 68)).
In particular, Appellants argue that the Examiner “mischaracterizes
the disclosure of Tomiyama by equating prioritization of fault cases
according to the number of times of previous successful repairs with
determining repair weights that indicate probabilities of success in repairs”
(Appeal Br. 42). However, independent claim 18 does not recite
“determining repair weights that indicate probabilities of success in repairs;”
claim 18 recites “developing . . . success probability of the service
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recommendation.” See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d
1225, 1231 (Fed. Cir. 2005) (although the specification can be examined for
proper context of a claim term, limitations from the specification will not be
imported into the claims).
Appellants also argue “[n]one of Wang, Schricker, and Tomiyama
describes developing such a success probability” (Appeal Br. 41–42).
However, as discussed above with respect to independent claim 16, we agree
with the Examiner that Tomiyama discloses “developing . . . a success
probability” (see Ans. 17–19), and so, Appellants’ similar arguments with
respect to “a success probability” are unpersuasive for the same reasons set
forth above with respect to claim 16.
Appellants’ last argue that the Examiner erred in rejecting
independent claim 18 because “[i]f there is no disclosure or suggestion of
such a rule base or servicing schedule, then Tomiyama cannot describe or
suggest developing a success probability of a service recommendation in
view of the rule base for determining the servicing schedule” (Appeal Br.
43). However, Appellants’ argument is not persuasive at least because claim
18 is rejected as unpatentable over the combination Wang, Schricker, and
Tomiyama, and not over Tomiyama alone. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
attacking [the] references individually where the rejection is based upon the
teachings of a combination of references.”) (citation omitted). The
Examiner relies on a combination of Wang and Tomiyama, not Tomiyama,
as disclosing “developing a service recommendation for the asset in view of
the rule base for determining the servicing the asset and further in view of
the usage profile of the asset” (Final Act. 22–23 (citation omitted)), and cites
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Tomiyama for its disclosure of “developing a success probability of the
service recommendation in response to the identified trend and the usage
profile of the asset” (id. at 23–25; see also Ans. 30 (citation omitted)).
Therefore, we sustain the Examiner’s rejection of independent
claim 18 under 35 U.S.C. § 103(a).

Independent claims 19 and 22, and dependent claims 20 and 21
Appellants argue that the Examiner erred in rejecting independent
claim 19 under 35 U.S.C. § 103(a) because the combination of Wang and
Tomiyama fails to disclose or suggest “determining, with a processor, a
success probability of a repair associated with the prevention of a predicted
asset failure based at least in part on a usage profile of the asset” (Appeal Br.
44–46). Independent claim 22 includes a substantially similar limitation and
is argued on the same basis as independent claim 19 (id. at 47–49). More
particularly, Appellants argue that “[n]one of Wang and Tomiyama
describes developing such a success probability” (id. at 45; see also id. at
48). However, as discussed above with respect to independent claim 16, we
agree with the Examiner that Tomiyama discloses “developing . . . a success
probability” (see Ans. 17–19), and so, Appellants’ similar arguments are
unpersuasive for the same reasons set forth above with respect to claim 16.
Therefore, we sustain the Examiner’s rejection of independent
claims 19 and 22 under 35 U.S.C. § 103(a). We also sustain the rejection
under 35 U.S.C. § 103(a) of claims 21 and 22, which are not argued
separately.

Independent claim 23 and dependent claims 24–26
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Appellants argue that the Examiner erred in rejecting independent
claim 23 under 35 U.S.C. § 103(a) because “[n]one of Wang, Schricker, and
Tomiyama describes developing such a success probability” (Appeal
Br. 51). However, as discussed above with respect to independent claim 16,
we agree with the Examiner that Tomiyama discloses “developing . . . a
success probability” (see Ans. 17–19), and so, Appellants’ similar arguments
with respect to “a success probability” art are unpersuasive for the same
reasons set forth above with respect to claim 16.
Appellants also argue that “Tomiyama does not teach or suggest that
any data is [sic] collected from assets of which the asset associated with a
servicing schedule is not a member” (Appeal Br. 51). However, we agree
with the Examiner that Tomiyama discloses the argued limitation (see Final
Act. 27–28; see also Ans. 33). In this regard, we agree with the Examiner
Tomiyama’s disclosure regarding “best resulting repair,” i.e., “the cases
stored in the case memory portion 17” (Tomiyama col. 9, ll. 46–51),
includes data “which are not necessarily in the same fleet or members of the
same group but could still prove useful in determining the fault in the current
apparatus” (Ans. 33).
Therefore, we sustain the Examiner’s rejection of independent
claim 23 under 35 U.S.C. § 103(a). We also sustain the rejection under 35
U.S.C. § 103(a) of claims 24–26, which are not argued separately.

Independent claim 28
Appellants argue that the Examiner erred in rejecting independent
claim 28 under 35 U.S.C. § 103(a) because the combination of Wang and
Tomiyama fails to disclose or suggest “developing, with a processor, a
Appeal 2013-001374
Application 10/199,717

18
service recommendation for the asset and a success probability of the service
recommendation based on the identified fault combination and a usage
profile of the asset.” (Appeal Br. 52–55). More particularly, Appellants
argue that “[n]one of Wang and Tomiyama describes developing such a
success probability” (id. at 53). However, as discussed above with respect to
independent claim 16, we agree with the Examiner that Tomiyama discloses
“developing . . . a success probability” (see Ans. 17–19), and so, Appellants’
similar arguments are unpersuasive for the same reasons set forth above with
respect to claim 16.
Therefore, we sustain the Examiner’s rejection of independent
claim 28 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 1–15 under 35 U.S.C. § 103(a)
are reversed.
The Examiner’s rejections of claims 16–26 and 28 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)(1)(iv).

AFFIRMED-IN-PART