Ex Parte Schramek

Board of Patent Appeals and Interferences

Nov 30, 2004

09532379 (B.P.A.I. Nov. 30, 2004)

1Claims 24-25 were rejected in the final Office action dated
May 21, 2003, Paper No. 5, but appellant attempts to cancel these
claims subsequent to this final rejection (Brief, page 2, ¶¶ III
and IV). However, appellant has not submitted an amendment by
separate cover and therefore claims 24-25 are still pending in
this application. Since the examiner has agreed with appellant’s
status of the claims (Answer, page 3, ¶(3)) and rejected claims
1-23 (Answer, page 6), we consider claims 1-23 on appeal and
claims 24-25 withdrawn from the appeal. Upon the return of this
(continued...)
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSEPH E. SCHRAMEK
___________
Appeal No. 2004-1224
Application No. 09/532,379
__________
ON BRIEF
_________
Before FLEMING, WALTZ, and PAWLIKOWSKI, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 23, which are the only claims
on appeal.1 We have jurisdiction pursuant to 35 U.S.C. § 134.
Appeal No. 2004-1224
Application No. 09/532,379
1(...continued)
application to the jurisdiction of the examiner, this matter
should be resolved.
2The examiner also cites the 1999 New Car Buying Guide,
published by Consumer Reports, pp. 54-57 and 123, June 1999, and
The Computer Science and Engineering Handbook by Tucker, p. 1520,
CRC Press, 1996, as “Prior Art of Record” (Answer, page 5).
However, since these references were not recited in the statement
of the rejection, we do not consider them as part of the
examiner’s evidence of obviousness. See In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
2
According to appellant, the invention is directed to a
method for efficiently and accurately measuring the progress of
achieving optimal motor vehicle characteristics that are
important to customer satisfaction (Brief, page 2). A copy of
representative independent claim 1 has been attached as an
Appendix to this decision.
The examiner has relied upon the following references as
evidence of obviousness:
Handbook of Industrial Engineering, Gavriel Salvendy (Salvendy),
2nd ed., Section IV(G), “Quality Assurance,” pp. 2219-2396, John
Wiley & Sons, Inc., 1992;
Juran on Quality by Design, by J.M. Juran (Juran), pp. 462-467,
The Free Press, 1992.2
Claims 1, 11, 14 and 15 stand rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite (Answer, page 6). Claims
1-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Salvendy in view of Juran (id.). Upon careful consideration of
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Application No. 09/532,379
3
the entire record, including the claims, specification, the
Brief, Reply Brief, Answer, and the references used in the
rejection, we cannot sustain the examiner’s rejections on appeal.
Accordingly, the decision of the examiner is reversed.
OPINION
A. The Rejection under § 112, ¶2
The examiner finds that the word “matching” as recited in
claim 1, steps C and E, is indefinite for several reasons
(Answer, pages 6-7). The examiner finds that appellant’s
definition of “matching” is not clear, with a “very broad”
definition set forth in appellant’s remarks and no clarification
stated in the specification (Answer, page 6).
The examiner also finds that “test characteristics ... best
in class” as recited in claims 1 and 11 is indefinite, as well as
the phrases “performing tests to determine test design
characteristics” in claim 11 and “illustrate the progress” in
claims 14 and 15 (Answer, page 7).
“The legal standard for definiteness [of claim language] is
whether a claim reasonably apprises those of skill in the art of
its scope. [Citations omitted].” In re Warmerdam, 33 F.3d 1354,
1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). Although appellant
has submitted dictionary definitions for “matching” (Brief,
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Application No. 09/532,379
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Exhibit A), we need not rely on this extrinsic evidence when
intrinsic evidence is readily available. The examiner asserts
that the terminology used in appellant’s definition (“matching”
creates a list of characteristics from the characteristics
“common” to both points of view or sets of data) is not present
in the specification or claims (Answer, page 4). Contrary to the
examiner’s assertion, we find that appellant has adequately
explained and defined “matching” in the specification (see also
claim 4 on appeal). As stated on page 5, ll. 2-5, of the
specification, “the internal organizational data and the external
organizational data is matched to create a list of common
critical characteristics” (underlining added). As further
explained in the specification (page 8, l. 27-page 9, l. 3),
“[o]nce the matches are made between the elements of the internal
organizational data and the external organizational data, a
preliminary list is created where the preliminary list includes
the common critical design, manufacturing and performance
characteristics” (underlining added). Accordingly, it would have
been clear to one of ordinary skill in this art, from appellant’s
specification, that any step of “matching” would necessitate
comparing two lists of elements or sets of data to create a new
list of common elements or data. Therefore one of ordinary skill
Appeal No. 2004-1224
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in this art would have been apprised of the scope of this
contested claim language.
The examiner states that it is not clear whether appellant
intends “test characteristics” as developed by Consumer Reports
or JD Powers, or if appellant intends to derive a new set of
“test characteristics” from the actual vehicles which were
awarded a “best in class” rating (Answer, page 7). However, as
correctly argued by appellants (Brief, page 5), the specification
clearly discloses that “experimental tests are performed to
independently determine design and manufacturing characteristics
that are critical to excellent product performance”
(specification, page 5, ll. 5-8, italics added). Therefore we
determine that one of ordinary skill in this art would have been
readily apprised of the scope of this contested phrase in claim 1
on appeal, namely that independent testing is done to determine
critical design and manufacturing characteristics. The similar
phrase in claim 11 would also be definite for these same reasons.
The examiner also finds the phrase “illustrate the progress”
indefinite as recited in claims 14 and 15 since assigning a color
to a characteristic would only illustrate the present value
(Answer, page 7). As clearly disclosed in the specification
(page 11) and illustrated in Figure 2, the designation of each
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color code illustrates the progress for each final critical
design, manufacturing and performance characteristic over
previous designations. Therefore we determine that one of
ordinary skill in this art would have been apprised of the scope
of this contested language in claims 14 and 15 on appeal.
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that one of ordinary skill in this art
would have been readily apprised of the scope of the contested
claim language. Therefore we reverse the examiner’s rejection of
claims 1, 11, 14 and 15 under 35 U.S.C. § 112, second paragraph.
B. The Rejection under § 103(a)
We limit our remarks to independent claim 1 on appeal but
these remarks equally apply to independent claims 11, 14, 18 and
22.
The examiner finds that steps A and B of claim 1 on appeal
(gathering internal and external organizational data) are
disclosed by “total quality control” at page 2226 of Salvendy,
along with “internal and external customers” at Figure 85.6. The
examiner notes that the discussion of “total quality control” at
pages 2226-27 of Salvendy must be considered “in the context” of
Salvendy Section IVG Quality Assurance pages 2219-2397 (Answer,
page 8). The examiner has not explained how the general remarks
Appeal No. 2004-1224
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regarding the “context” of a 178-page chapter (i.e., Salvendy)
discloses or suggests any claim limitations. The examiner has
failed to meet the initial burden of proof, i.e., the examiner
has not specifically established how the concept of “total
quality control” discloses or suggests the first two claimed
steps, nor why “Outputs to internal and external customers” as
recited in Figure 85.6 discloses or suggests gathering internal
and external organizational data.
Even assuming arguendo that these first two steps of claim 1
on appeal were disclosed or suggested by Salvendy, the examiner
has not established that this reference discloses or suggests the
“matching” step C in claim 1 (see the Brief, pages 7-8). The
examiner’s only finding regarding this claimed step is that this
step is “disclosed by ‘total quality control’ at Salvandy [sic,
Salvendy] page 2226, and Figure 85.6 ‘The Total Quality Control
Conceptual Model’ at page 227 [sic, 2227].” Answer, page 8. The
term “matching,” as it has been construed above, requires
comparing two sets of elements or data to determine a list of the
common elements or data. The examiner has failed to explain how
the concept of “total quality control” discloses or suggests this
step of matching, nor how Figure 85.6 discloses or suggests this
term as construed above. The examiner’s findings regarding the
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second “matching” step required by claim 1 on appeal (the
examiner’s “step E”) are even more general, merely stating that
this step “is disclosed by ‘total quality control’ at Salvandy
[sic, Salvendy] page 2226.” Answer, page 8. The examiner fails
to explain how this concept of Salvendy discloses or suggests the
specific step recited in claim 1 on appeal.
Additionally, the examiner finds that the “tests to
determine test characteristics” limitation of claim 1 (step D,
part 1) is disclosed by Salvendy’s Figure 85.2, the “Inspection”
Production Model (Answer, page 8). As correctly argued by
appellant (Brief, page 8), the cited portions of Salvendy relate
to inspecting incoming parts and do not disclose or suggest
performing tests to determine test characteristics from vehicles
with a best in class rating. The examiner has failed to explain
or establish how this cited portion of Salvendy discloses or
suggests the claimed step (step D, part 1).
The examiner only applies Juran to show use of the best in
class rating to determine the quality of proposed designs for new
vehicle models (Answer, page 9, with regards to claim 1, step D,
part 2). Therefore, Juran does not remedy the above noted
deficiencies found in Salvendy.
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For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has not established a
prima facie case of obviousness in view of the reference
evidence. Therefore the rejection of claims 1-23 under 35 U.S.C.
§ 103(a) over Salvendy in view of Juran cannot be sustained.
C. Summary
The rejection of claims 1, 11, 14 and 15 under the second
paragraph of 35 U.S.C. § 112 is reversed.
The rejection of claims 1-23 under 35 U.S.C. § 103(a) over
Salvendy in view of Juran is reversed.
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The decision of the examiner is reversed.
REVERSED

Michael R. Fleming )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Thomas A. Waltz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )
TAW/tdl
Appeal No. 2004-1224
Application No. 09/532,379
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Gigette M. Bejin
Brooks & Kushman
1000 Town Center Twenty-Second Floor
Southfield, MI 48075-1351
Appeal No. 2004-1224
Application No. 09/532,379
1
APPENDIX
1. A method for efficiently and accurately measuring the
progress of achieving optimal motor vehicle characteristics that
are important to customer satisfaction, the method comprising:
gathering internal organizational data;
gathering external organizational data;
matching the internal organizational data with the external
organizational data to create a first list of characteristics,
wherein the first list of characteristics comprises
characteristics gathered from the internal and external
organizational data that are valued by customers according to an
organizational point of view;
performing a plurality of tests to determine test
characteristics, wherein the test characteristics are determined
from vehicles having a best-in-class rating such that the best-
in-class ratings indicate the test characteristics that are
valued by customers according to one or more publications;
matching the test characteristics with the first list of
characteristics to create a second list of characteristics,
wherein the second list of characteristics comprises the
characteristics of the first list that correspond with the test
characteristics such that the characteristics in the second list
are valued by customers according to the organizational point of
view and according to one or more publications;
defining a stop designation for each characteristic of the
second list, the stop designation including a range of values
which define performance levels which require repair;
defining a caution designation for each characteristic of
the second list by establishing a range of values, the caution
designation including a range of values which define performance
levels which may be improved;
defining a go designation for each characteristic of the
second list, the go designation including a range of values which
define performance levels are acceptable;
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assigning a designation to each characteristic in the second
list to illustrate the progress for each characteristic of the
second list.