Ex Parte Rumbo et al

Board of Patent Appeals and Interferences

Dec 23, 2010

10439390 - (D) (B.P.A.I. Dec. 23, 2010)

The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIM R. RUMBO, CHAD E. GAIER, JOHN C. HADLEY, ADIB
BOUANANI, and GREGORY S. HILL
____________

Appeal 2009-003381
Application 10/439,390
Technology Center 3600
____________

Before, HUBERT C. LORIN, ANTON W. FETTING and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-21, 31 and 32. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM IN PART and enter a new grounds.
(37 C.F.R. § 41.50(b).
THE INVENTION
Appellants claim an aviation navigation system which determines
segment sequencing. (Specification 2:¶ [0007])
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A navigation system for navigating an aircraft into a holding
pattern, the navigation system comprising:
a sequencing system, the sequencing system adapted to evaluate a
plurality of segments in a holding pattern entry to determine which of
the plurality of segments meets a control criterion, the sequencing
system further adapted to select a segment that meets the control
criterion from the plurality of segments and navigate the aircraft to
follow the selected segment for entry into the holding pattern.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Baiada US 6,463,383 B1 Oct. 8, 2002

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The following rejections are before us for review.
The Examiner rejected claim 16 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which appellant regards as the invention.
The Examiner rejected claims 1-21, 31 and 32 under 35 U.S.C.
§ 102(b) as being anticipated by Baiada.
ISSUE
Did the Examiner err in rejecting claims 1-21, and 31 on
appeal as being unpatentable under 35 U.S.C. § 102(e) over Baida on
the grounds that the system in Baida is capable of meeting the
limitations of claims 1-21, and 31?
Did the Examiner err in rejecting claim 16 under 35 U.S.C. §112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which appellant regards as the invention?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Baiada discloses that “FIG. 7 presents a depiction of the airborne
holding method of sequencing aircraft.” (Col.7, ll. 21-22).
2. Baiada defines aircraft trajectory as “[t]he movement or usage of an
aircraft defined as a position, time (past, present or future). For example, the
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trajectory of an aircraft is depicted as a position, time and intent. (Col.7, ll.
61-64).
3. Baiada discloses that its disclosed system is in some ways the
combination of several process steps which include:
1. An asset trajectory tracking (i.e., three spatial
directions and time) process that looks at the
current position and status of all aircraft and other
system resource assets,
2. An asset trajectory predicting process that
inputs the asset's current position and status into an
algorithm which predicts the asset's future position
and status for a given specifiable time or a given
specifiable position,
3. A goal attainment assessment process that
assesses at any given instant, based on the inputted
position and status of these assets, the degree of
attainment of the system resource's and aircraft's
specified safety and operational efficiency goals,
4. An alternative trajectory scenario generation
process that generates various alternative
trajectories for the set of aircraft arriving and
departing at the control airport (or other system
resource); with these alternative scenarios then
being assessed with the goal attainment assessment
process to identify which of these alternative
scenarios will yield the highest degree of
attainment (i.e., better optimized) of the aviation
authority's and aircraft's goals….
(Col.11, ll. 7-27).

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ANALYSIS
We affirm the rejection of claims 1-21 under 35 U.S.C. § 102(e),
reverse as to claims 31 and 32; we enter a new ground under 35 U.S.C. 112,
second paragraph for claim 32; we reverse the rejection of claim 16 under 35
U.S.C. 112, Second Paragraph.
The 35 U.S.C. § 103(a) Rejection of Claims 1-21 and 31.
Initially, we address the scope of the claims.
Appellants maintain that “claims 1, 14, 31 and 32 recite specifically
configured sequencing systems, and that ALL the recited limitations of those
claims must be given proper patentable weight.” (Appeal Br. 12)
We are not persuaded by Appellants’ argument because the only claim
which employs the configured term is claim 31. Independent claims 1 and 14
use the word, “adapted”, and not “configured”, to tie functional terms to the
sequencing system. Thus, the language of independent claims 1 and 14, and
that of their dependents, describes the sequencing system in functional
terms. As functional language, we are required to give this language weight
only to the extent that the prior art is or is not capable of meeting the
limitation. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
Appellants nevertheless argue that their system “is adapted to evaluate
a plurality of segments and further adapted to select a segment that meets the
control criterion determines the ‘ordering of segments’ that the aircraft
follows by determining the next segment….” (Appeal Br. 13)
Appellants’ arguments fail from the outset because they are not based
on limitations appearing in claim 1 which does not require “ordering of
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segments”. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 1 requires: i) evaluate a plurality of segments in a holding
pattern entry to determine which of the plurality of segments meets a control
criterion, and to ii) select a segment that meets the control criterion from the
plurality of segments and iii) navigate the aircraft to follow the selected
segment for entry into the holding pattern.
We find that Baiada either explicitly discloses, or discloses a system
which is capable of the step “to select a segment that meets the control
criterion from the plurality of segments and navigate the aircraft to follow
the selected segment for entry into the holding pattern”.
We interpret each aircraft trajectory in Baiada as a segment because
the sum of the trajectories constitutes the flight. (FF 2).
Based on this interpretation, we find that Baiada explicitly discloses
application to a plurality of segments in a holding pattern entry because
Baiada discloses “a depiction of the airborne holding method of sequencing
aircraft.” (FF 1).
We further find that Baiada discloses a trajectory tracking (i.e., three
spatial directions and time) process that looks at the current position and
status of all aircraft and other system resource assets, and predicts an
aircraft’s future position and status for a given specifiable time or a given
specifiable position (FF 3).
We also find that Baiada discloses generating various alternative
trajectories for aircraft arriving and departing at the control airport based on
criteria to identify which alternative scenarios will yield the highest degree
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of attainment (i.e., better optimized) of the aviation authority's and aircraft's
goals. (FF 3)
We therefore find that the selecting of the alternative scenarios by
Baiada meets the claim limitation, to select a segment that meets the control
criterion from the plurality of segments and navigate the aircraft to follow
the selected segment for entry into the holding pattern, because holding
patterns make up at least part of the trajectories in Baiada (FF 1), which are
all subject to the selection of alternative scenarios based on the criteria of the
aviation authority (FF 3).
Claims 5 and 14 include the further limitations of determine an
inbound delta to a hold orientation, the sequencing system further adapted
to determine a hold entry type from the inbound delta, the sequencing system
further adapted to evaluate a plurality of segments in a holding pattern entry
algorithm corresponding to the determined hold entry type to determine if
the plurality of segments meets a control criterion….
Again, these limitations are recited in functional terms and we are
required to give this language weight only to the extent that the prior art is or
is not capable of meeting the limitation. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997).
We therefore find that the system in Baiada is capable of performing
these claimed functions because Baiada provides for trajectory tracking
capable of determining a delta (FF 3) and uses an aircraft’s current position
and status in an algorithm which, as discussed above, also selects an
alternative trajectory which includes trajectories for holding patterns.
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Claim 31 uses the term “configured” in connection with the above
listed determining an inbound delta to a hold orientation limitation. We
thus read these recitations as positive limitations and find that Baiada, while
disclosing a system capable of performing these functions, nevertheless does
not anticipate claim 31 because the Baiada system does not disclose each
and every claim element. Verdegaal Bros. v. Union Oil Co. of California,
814 F.2d 628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
Regarding the dependent claims argued separately, we find that
Baiada is capable of functioning as claimed.
Specifically, for claim 2, we find that since Baiada discloses a
trajectory tracking (i.e., three spatial directions and time) process that looks
at the current position and status of all aircraft and other system resource
assets (FF 3), it is thus capable of selecting a trajectory based on relative
orientation which also includes the calculation of angles based on trajectory
tracking as required by claims 12, 13 and 21. Similarly, the tracking system
of Baiada is capable of sequencing based on distance as required by claims
3, 8, 9,10,17 18 and 19 because it already tracks three spatial directions and
time for each aircraft it tracks.
Regarding claims 11 and 20, we find that Baiada is capable of locking
out used segments because it generates various alternative trajectories for the
set of aircraft arriving and departing at the control airport and thus would not
use the present or used trajectory in such a process.

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35 U.S.C. 112, Second Paragraph Rejection of claim 16.
Claim 16 recites in pertinent part the sequencing system is adapted to
sequence to a most likely next segment of the plurality of segments when the
aircraft is not under active control of the navigation system, the most likely
next segment of the plurality of segments determined at least in part based
on a current heading of the aircraft.
The Examiner found that “[i]t is not understood what all is meant and
encompassed by the phrase ‘most likely’. The limitation is indefinite.”
(Answer 3).
We disagree with the Examiner. The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). We find that in using an
algorithm to sequence segments, the next likely segment would reasonably
be the one the algorithm chooses based on the control criterion.
Therefore we will not sustain the 35 U.S.C. 112, second paragraph
rejection.
Claim 32
We reverse the rejection of claim 32 pro forma because there is
considerable speculation into the scope of the claim. See In re Steele, 305
F.2d 859, 862 (CCPA 1962).
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Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
for claim 32 under 35 U.S.C. § 112, second paragraph, as being indefinite
for the reasons which follow:
We find that the means of claim 32 is drawn to a computer
implemented limitation in that the Specification describes a flight
management system 100 which includes a sequencing mechanism and a
plurality of holding pattern entry algorithms. The Specification describes
the system 100 as using the sequencing mechanism and a plurality of
holding pattern entry algorithms to determine what the appropriate next
segment. (Specification 5: ¶[0032]). A machine which processes algorithms
is a computer.
We have reviewed the disclosure but have not been able to discern the
algorithm corresponding to the function for:
(iv) selecting a holding pattern entry algorithm corresponding to the
determined hold entry type, the holding pattern entry algorithm including a
plurality of segments;
(v) for evaluating the plurality of segments in the holding pattern entry
algorithm to determine if any of the plurality of segments meets a control
criterion.
We find that the Specification does not adequately describe an
algorithm corresponding to the recited functions at issue in claim 32 such
that one of ordinary skill in the art could determine the scope of claim 32.
Accordingly, we reject claim 32 under 35 U.S.C. § 112, second
paragraph, as being indefinite. When a Specification discloses no algorithm
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corresponding to a computer-enabled means-plus-function limitation in a
claim, an applicant has necessarily failed to particularly point out and
distinctly claim the invention as required by the second paragraph of section
112. See also Aristocrat, 521 F.3d 1328, 1333 (quoting Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (“[t]he corresponding
structure for a § 112 ¶ 6 claim for a computer-implemented function is the
algorithm disclosed in the specification.’’) Harris 417 F.3d at 1249.”); Net
MoneyIN, Inc. v. Verisign, Inc. 545 F.3d 1359, 1367 (Fed. Cir. 2008) (“[A]
means-plus-function claim element for which the only disclosed structure is
a general purpose computer is invalid if the specification fails to disclose an
algorithm for performing the claimed function.”).
CONCLUSIONS OF LAW
We conclude the Examiner erred in rejecting claim 16 under 35
U.S.C. §112, second paragraph, as being indefinite.
We conclude the Examiner did not err in rejecting claims 1-21; the
Examiner did err in rejecting claims 31 and 32 on appeal as being
unpatentable under 35 U.S.C. § 102(e) over Baiada.
We enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b)
rejecting claim 32 under 35 U.S.C. 112, second paragraph.
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DECISION
The decision of the Examiner to reject claims 1-21 is AFFIRMED.
The decision of the Examiner to reject claims 31 and 32 REVERSED.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
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prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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)(iv) (2010).

AFFIRMED IN PART; 37 C.F.R. § 41.50(b)

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