Ex Parte Schierholt et al

Patent Trial and Appeal Board

Oct 2, 2012

11064665 (P.T.A.B. Oct. 2, 2012)

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.
11/064,665 02/22/2005 Hans Karsten Schierholt 6741P059 9810
45062 7590 10/03/2012
SAP/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
PATS, JUSTIN
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
10/03/2012 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 HANS KARSTEN SCHIERHOLT,
PRITI PRABHOO, and UWE SODAN
____________________

Appeal 2011-003215
Application 11/064,665
Technology Center 3600
____________________

Before: ANTON W. FETTING, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003215
Application 11/064,665

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
391. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claims are directed to system and method for service parts
planning (Spec. para. [0001]). Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method for service parts planning in a network
having one or more service parts comprising:
(a) for each of at least a subset of the one or more service
parts,
calculating, for the service part, system availability
per cost of the part for each of a plurality of locations
within the network, the system availability is a
probability that the service part is functioning;
(b) determining, by a computer, which change in quantity
of a service part of the at least the subset of the one or more
service parts at a location of the plurality of locations results in
a greatest gain in system availability per cost of the service part;
and
(c) increasing an investment in the service part at the
location that results in the greatest gain in system availability
per cost of the service part.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 23, 2010) and Reply Brief (“Reply Br.,” filed November
10, 2010), and the Examiner’s Answer (“Ans.,” mailed September 10,
2010).
Appeal 2011-003215
Application 11/064,665

3
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Al- Bahi, Spare Provisioning Policy Based on Maximization of
Availability Per Cost Ratio, Computers Ind. Engng. Vol. 24, No. 1, 81-90
(1993) (hereinafter “Al-Bahi”);
Scudder and Hausman, Spares Stocking Policies for Repairable Items
with Dependent Repair Times, Naval Research Logistics Quarterly Vol. 29,
No. 2, 303-322 (1982) (hereinafter “Scudder & Hausman”);
Cohen, Optimizer: IBM’s Multi-Echelon Inventory System for
Managing Service Logistics, Interfaces 20:1, 65-82 (1990) (hereinafter
“Cohen”); and
Pyke, Priority Repair and Dispatch Policies for Reparable-Item
Logistics Systems, Naval Research Logistics Vol. 37, 1-30 (1990)
(hereinafter “Pyke”).

REJECTIONS
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Al-
Bahi; claims 2-4, 6-8, 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Al-Bahi in view of Scudder & Hausman; claims 5, 17-21,
24-26, 28-33, and 37-39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Al-Bahi in view of Scudder & Hausman and Cohen;
claims 9-11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Al-
Bahi in view of Scudder & Hausman and Pyke; claims 16 and 27 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Al-Bahi in view of
Cohen; and claims 12, 13, 22, 23, and 34-36 are rejected under 35 U.S.C.
Appeal 2011-003215
Application 11/064,665

4
§ 103(a) as unpatentable over Al-Bahi in view of Cohen, Scudder &
Hausman and Pyke.

FINDINGS OF FACT
We find that the findings of fact which appear below are supported by
at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).

Specification
FF1. Machine-specific usage information (e.g., 146, 148) refers to
information that provides an indication of how much use a machine (and/or
a service part) experiences. Examples of machine-specific usage
information include and are not limited to: number of operating hours;
number of times a machine specific event has occurred (e.g., take-
off/landings of an aircraft or number of items produced by a machine);
indicators of wear (e.g., wear on a stamping press); and the like. As is
further discussed below, machine-specific usage information (e.g., 146, 148)
enables a service parts planning system to estimate demand using actual
machine data rather than tabulated data such as estimations of the mean time
between failures for a service part (para. [0019]; emphasis added).

Al-Bahi
FF2. λf is the constant hazard rate for an exponential distribution
describing lifetime of the unit to be spared; failure per day.

Appeal 2011-003215
Application 11/064,665

5
Pyke
FF3. Decisions are made based on the need of bases and the
reluctance of the depot. The need of the bases is a function of demand rate,
stock on hand, stock in transit, proportion of items reparable at base levels,
and number of items in base repair (p. 3; emphasis added).

OPINION
Independent Claim 1
We are not persuaded the Examiner erred in asserting that Al-Bahi
renders obvious “calculating, for the service part, system availability per
cost of the part for each of a plurality of locations within the network, the
system availability is a probability that the service part is functioning,” as
recited in independent claim 12 (App. Br. 8). Appellants assert “if it is
implicit that all spare parts are functioning as argued by the Examiner, then
there would be no reason to determine the probability that a spare part is
functioning (see Advisory Action, Page 2), because all spares are known to
be functioning” (App. Br. 8). However, the aforementioned aspect of
independent claim 1 does not recite “determining the probability that a spare
part is functioning”; it merely recites that “system availability is a
probability that the service part is functioning.” See CollegeNet, Inc. v.
ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the
specification can be examined for proper context of a claim term, limitations
from the specification will not be imported into the claims). Here, the

2 We choose independent claim 1 as representative of independent claims 1,
16, and 27. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-003215
Application 11/064,665

6
Examiner has asserted that Al-Bahi uses a probability of 1.0 for the system
availability, which is all the claim requires.
Appellants then assert that “Al-Bahi fails to teach or suggest the
[system availability] calculation at a plurality of locations,” as recited in
independent claim 1 (Reply Br. 4). This argument was first set forth in the
Reply Brief, and is unrelated to the argument in the Appeal Brief concerning
the probability that service parts are functioning. Thus, as the Examiner has
not been provided a chance to respond, and in the absence of a showing of
good cause by Appellants, this argument is deemed waived. See 37 C.F.R. §
41.37(c)(1) (vii) (second sentence); In re Hyatt, 211 F.3d 1367, 1373 (Fed.
Cir. 2000) (noting that an argument not first raised in the brief to the Board
is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI
2010) (informative) (explaining that arguments and evidence not timely
presented in the principal Brief, will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Principal Brief); Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative) (“[p]roperly interpreted, the
Rules do not require the Board to take up a belated argument that has not
been addressed by the Examiner, absent a showing of good cause.”) In any
case, the Examiner appears to address this aspect at page 7 of the
Examiner’s Answer, to which Appellants’ have offered no rebuttal to the
specific arguments proffered by the Examiner. See In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“[o]nce a prima facie case of obviousness [is]
established..., the burden shift[s] to appellant to rebut it”).

Appeal 2011-003215
Application 11/064,665

7
Dependent Claims 6, 19, and 32
We are persuaded the Examiner erred in asserting that the hazard rate
of Al-Bahi corresponds to “machine-specific early indicator of failure
information,” as recited in claims 6, 19, and 32 (App. Br. 9-11; Ans. 10, 2-
22; Reply Br. 5). The Specification defines “machine-specific” information
as actual data for individual machines (FF1), which would exclude Al-
Bahi’s aggregate hazard rate (FF2).

Dependent Claims 9 and 22
We are not persuaded the Examiner erred in asserting that Pyke does
not disclose “determin[ing] whether a service part is in transit to a location
within a network,” as recited in claims 9 and 22 (App. Br. 11-12, 15-16).
Pyke discloses that in order to determine the need of the bases, stock in
transit must be determined (FF3).

Dependent Claims 10-12, 23, and 34-36
We are not persuaded the Examiner erred in asserting that Pyke does
not disclose “determining whether the service part is in transit to the location
within the network based, at least in part, on an advanced shipping
notification associated with the service part,” as recited in dependent claim
10 (App. Br. 12-13; Reply Br. 5-6). Dependent claims 11, 12, 23, and 34-36
recite similar aspects (App. Br. 14, 16-19). In the absence of objective
evidence entered into the record that “advanced shipping notification” is a
term of art, we agree with and adopt the Examiner’s findings and rationales,
as set forth on pages 23-24 of the Examiner’s Answer.
Appeal 2011-003215
Application 11/064,665

8

DECISION
The Examiner’s rejection of claims 1-5, 7-18, 20-31, and 33-39 is
AFFIRMED.
The Examiner’s rejection of claims 6, 19, and 32 is REVERSED.

AFFIRMED-IN-PART

mls