Ex Parte Shaw

Board of Patent Appeals and Interferences

Jan 4, 2008

10365855 (B.P.A.I. Jan. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFF ALTON SHAW
____________

Appeal 2007-2336
Application 10/365,8551
Technology Center 2100
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Decided: January 4, 2008
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Before ROBERT E. NAPPI, JEAN R. HOMERE, and
SCOTT R. BOALICK, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 through 20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm in part.

1 Filed on Feb. 13, 2003. Dell Products L.P. is the real party in interest.
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The Invention
Appellant invented a method and system for verifying the hardware
component failure diagnosis of an information handling system. (Spec. 1.)
Particularly, the invention discloses a support center that examines the
diagnostics code of the hardware component to verify that said component
has indeed failed before dispatching a replacement component to the
information handling system. (Id. 3.)
An understanding of the invention can be derived from exemplary
independent claim 1, which reads as follows:
1. A system for verifying an information handling system
hardware component failure diagnosis, the system comprising:
a diagnostics module integrated with the information handling
system and operable to detect a hardware component
failure of the information handling system, to generate a
hardware diagnostics code and to communicate the
hardware diagnostics code to a support center;
a communication module associated with the support center
and operable to receive the hardware diagnostics code;
and
a diagnostics engine interfaced with the communication module
and operable to verify failure of the hardware component
with the hardware diagnostics code.
The Examiner relies upon the following prior art to reject the claims
on appeal:
Scholl US 5,400,018 Mar. 21, 1995
Daimon US 2001/0013109A1 Aug. 09, 2001

The Examiner rejects the claims on appeal as follows:
A. Claims 1 through 3, 10 through 13, and 17 through 19 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Scholl.
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B. Claims 4 through 9, 14 through 16, and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Scholl and
Daimon.

APPELLANT’S CONTENTIONS and EXAMINER’S RESPONSES
Appellant contends that Scholl does not anticipate independent
claims 1, 10, and 17. Particularly, Appellant contends that Scholl does not
teach the following limitations:
(i) information handling system failure, as recited in claim 1.
Particularly, Appellant states that:
Although Scholl’s use of a microprocessor located on a vehicle
may disclose the use of an information handling system
integrated in the vehicle, Scholl addresses vehicle component
failures, not information handling system component failures…
Scholl discloses communication of status of a vehicle, not
status of an information handling system.

(App. Br. 3, Reply Br. 2.)
(ii) automatically initiating shipment of a replacement hardware
component for the failed hardware component, as recited in claim 10. (Id.)
(iii) verifying the authenticity of each hardware diagnostics code
before authorizing shipment of the associated hardware component to the
information system, as recited in claim 17. Particularly, Appellant states
that:
Scholl performs no verification of the authenticity of a
diagnostics code and provides no suggestion at all that
verification of the authenticity of a diagnostics code is needed.
Further, Scholl does not teach, disclose or suggest verification
of authenticity of a diagnostics code as a precondition to the
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shipment of the “associated hardware component to the
information handling system.”

(App. Br. 4, Reply Br. 2.)

In response, the Examiner asserts the following:
(i) Scholl teaches diagnosing the component of the claimed
information handling system as diagnosing the failure of a vehicle’s
components including a microprocessor-based monitor and associated
components. (Ans. 8.)
(ii) Scholl implicitly teaches automatically shipping a replacement
hardware component as part of the maintenance and repair services
including a list of replacement parts performed at the service dealer.
Particularly, the Examiner states:
Scholl teaches (col. 2, lines 66-68) that the maintenance may be done
at the dealer service center and the repair order may include a list of
needed parts. He further teaches (col. 4, lines 66-68) that after
receiving a fault code, and may in view of the vehicle’s history have
enough information to generate repair instruction and that would
include replacement component list if any. He thus teaches
automatically initiating shipment of a replacement hardware
component for the failed hardware component.
(Ans. 9.)
(iii) Scholl teaches verifying authenticity of a diagnostics code by
disclosing a diagnostics module that generates a fault code indicating a
particular fault. The fault code is subsequently examined by an expert at a
remote service hub center to decide if repairs are indeed needed. (Ans. 9.)

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ISSUE
The pivotal issue in the appeal before us is as follows:
Has Appellant shown2 that the Examiner failed to establish that
Scholl’s disclosure anticipates the claimed invention under
35 U.S.C. § 102(b)? Particularly, has Appellant shown that the Examiner
erred because Scholl’s disclosure does not teach the following limitations:
(i) diagnostic failure of a hardware component of an information
handling system;
(ii) automatically initiating shipment of a replacement hardware
component for the failed hardware component, and
(iii) verifying the authenticity of each hardware diagnostics code
before authorizing shipment of the associated hardware component to the
information system.

2 In the examination of a patent application, the Examiner bears the initial
burden of showing a prima facie case of unpatentability. In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984). When that burden is met, the burden
then shifts to the applicant to rebut. Id.; see also In re Harris, 409 F.3d
1339, 1343-44 (Fed. Cir. 2005) (finding rebuttal evidence unpersuasive). If
the applicant produces rebuttal evidence of adequate weight, the prima facie
case of unpatentability is dissipated. Piasecki, 745 F.2d at 1472. Thereafter,
patentability is determined in view of the entire record. Id. However,
Appellant has the burden on appeal to the Board to demonstrate error in the
Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006)
(“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

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FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
The Invention
1. As depicted in figure 1, Appellant invented a method and
system for verifying the hardware component failure diagnosis of an
information handling system (14), which includes a diagnostics module (24),
and other hardware components (16, 18, 20, 22). (Spec. 6.) Upon detecting
a hardware component failure, the diagnostics module (24) generates a
unique diagnostics code for the detected failure, and communicates the
generated code to a support center (30) via the Internet (26) or a public
switched telephone network (28). (Id. 7)
2. A diagnostics engine (38) at the support center (30) accepts the
diagnostics code, and compares the code with data in a diagnostics database
(40) to verify the authenticity of the code. If the diagnostics engine (38)
confirms that the code is authentic then it automatically dispatches a
replacement component via the hardware shipper module (44) to the
information handling system (14). (Id.)

The Prior Art Relied Upon
3. As depicted in Figure 1, Scholl discloses a method and system for
relaying information from a fleet of vehicles (104, 106) to a remote service
support hub (112). The vehicles (104, 106) are located at a work site (102)
including a service center (118), which performs routine maintenance and
repairs on the vehicles. (Col. 2, ll. 45-57.)
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4. As shown in Figure 2, each vehicle (202, 204, 206) includes a
microprocessor-based monitor (210), which receives data from various
sources on the vehicle including sensors and the electronic control modules
(ECM- 208). (Col. 3, ll. 17-29.)
5. As shown in Figure 3, the monitor (210) may include a diagnostics
module (308), a prognostic module (304), and a plurality of computer based
models (302). (Col. 3, ll. 48-57.)
6. Upon receiving data from the sensors indicating that a component in
the vehicle is not performing inside a preset range (e.g., computer-based
model parameters, col. 5, ll. 1-27), the diagnostics module generates a fault
code corresponding to a predetermined condition, and indicating a particular
fault. (Col. 4, ll. 5-16.)
7. The generated fault code is then communicated to a vehicle specialist
(220) or an expert (222) at the remote service support hub (112). (Col. 4, ll.
43-46.)
8. The expert then examines the received fault code, along with the
vehicle’s history including maintenance records, past fault codes, and other
previously transmitted data from the vehicle to determine whether to issue
certain repair instructions or to request additional data. (Col. 4, ll. 47-53.)
9. If the expert decides to issue repair instructions to remedy the
identified fault, the instructions are sent to the service center or the dealer
service center (118). The repair order to the dealer may also include a list of
needed parts. (Col. 2, l. 59 - col. 3, l. 2.)
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PRINCIPLES OF LAW
ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (citation
omitted).

ANALYSIS
Claims 1 through 9
Independent claim 1 requires-in-part a diagnostics module that detects
the failure of a hardware component in an information handling system.
(App. Br. 6, Claims Appendix.) As indicated above, Appellant argues that
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Scholl discloses the communication of status of a vehicle, not status of the
information handling system. The Examiner responds that Scholl detects
fault in the microprocessor-based monitor components by detecting fault in
the vehicle components, which include the monitor and associated
components. We agree with the Examiner that Scholl’s disclosure
reasonably teaches this limitation.
It is undisputed that Scholl discloses a diagnostics module that detects
fault in a vehicle, which includes a microprocessor-based monitor. (FF 4.)
Further, similar to Appellant’s information handling system, Scholl’s
monitor integrates a diagnostics module. (FF 5.) Scholl’s monitor also
includes other components, inter alia, the computer-based model, and the
prognostics module. (Id.) Additionally, Scholl discloses that the detected
fault may also include data pertaining to the performance of the computer-
based data model. (FF 6.) Thus, Scholl’s diagnostics module not only
detects faults in the components of the vehicle, which includes the
computer-based monitor, it also detects faults in the components of the
computer-based monitor itself.
It follows that the Examiner did not err in rejecting independent
claim 1 as being anticipated by Scholl.
Appellant did not provide separate arguments with respect to the
rejection of claims 2 and 3. Therefore, we select independent claim 1 as
being representative of the cited claims. These claims consequently fall
together with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
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Further, Appellant has not provided arguments directed to the
Examiner’s rejection of claims 4 through 9 under 35 U.S.C. § 103(a). Thus,
we find no error in the Examiner’s rejection of claims 4 through 9.
Claims 10 through 13
Independent claim 10 requires-in-part automatically initiating
shipment of a replacement hardware component for a failed hardware
component. (App. Br. 7, Claims Appendix.) Scholl discloses that the expert
may issue repair instructions to the service dealer after examining the
vehicle’s repair history. (FF 8.) Scholl further discloses that the issued
repair instructions may also include a list of needed parts. (FF 9.)
We disagree with the Examiner that the cited findings teach or even
suggest automatically initiating shipment of the needed parts to replace parts
previously identified as being defective. Scholl, at best, teaches that the
expert may provide the service dealer with a list of needed parts along with
repair instructions after examining the fault or failure in the vehicle’s
component. However, Scholl’s teachings do not extend to automatically
initiating shipping the needed parts to the dealer. Even if we were to
construe “initiating shipping” as “beginning the process of shipping” the
needed parts, Scholl’s teachings would still fall short of suggesting that the
list of needed parts is made in anticipation of automatically shipping the
parts. To somehow construe Scholl’s creation of the needed parts list as
automatically initiating the shipment of the needed parts to the service dealer
would require us to resort to speculation and strain the reference’s teachings
beyond reasonable limits.
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It follows that the Examiner erred in rejecting independent claim 10 as
being anticipated over Scholl. We find for these same reasons that Scholl
does not anticipate dependent claims 11 through 13.

Claims 14 through 16
Appellant argues that Scholl cannot anticipate claim 10 or claims 11
through 16, which depend from claim 10. (Br. 4.) This statement is
erroneous since dependent claims 14 through 17 are rejected as being
unpatentable over the combination of Scholl and Daimon. We interpret this
argument to mean that the combination of Scholl and Daimon does not
render dependent claims 14 through 16 unpatentable under 35 U.S.C.
§ 103(a) since Daimon does not remedy the deficiencies of Scholl.
In light of our interpretation of Appellant’s argument, we agree with
Appellant that the cited combination does not render these claims
unpatentable. Daimon was relied upon for its teaching that an information
system can be connected to a PC, a telephone, a facsimile, or other
equipment. (Ans. 6.) Therefore, it does not cure Scholl’s failure to teach
automatically initiating shipping the replacement parts as required by these
claims by virtue of their dependency on independent claim 10.
It follows that the Examiner erred in rejecting dependent claims 14
through 16 as being unpatentable over the combination of Scholl and
Daimon.

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Claims 17 through 20
Independent claim 17 requires-in-part “verifying the authenticity of
each hardware diagnostics code before authorizing shipment of the
associated hardware component to the information handling system.” (App.
Br. 9, Claims Appendix.) As set forth above, Appellant argues that Scholl
does not verify the authenticity of diagnostics codes before shipping the
associated hardware component to the information handling system. The
Examiner responds that Scholl’s disclosure of an expert that verifies the
unique fault codes received from the diagnostics module teaches the
limitation of verifying the authenticity of the diagnosis before shipping the
component. We agree with the Examiner.
Scholl discloses a diagnostics module that generates a fault code
corresponding to an identified component failure in the microprocessor-
based monitor in a vehicle. (FF 6.) The generated fault code is
communicated to an expert who examines it along with the repair history of
the identified vehicle to determine whether to request additional data or to
provide repair instructions to the service dealer. The expert may decide to
provide the service dealer with repair instructions along with a list of needed
parts. (FF 7-9.)
One of ordinary skill in the art would readily recognize that each fault
code generated by Scholl’s diagnostics module uniquely identifies a
particular component failure in the vehicle. In other words, the ordinarily
skilled artisan would recognize from Scholl’s disclosure that the diagnostics
module generates and communicates unique fault codes to the remotely
located expert,enables the expert to particularly identify the vehicle, the
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failed component, as well as to locate the vehicle’s repair history. Further,
only after analyzing the vehicle’s data history and fault code does the expert
suggest repair instructions with a list of needed parts, if any. Therefore, the
ordinarily skilled artisan would readily appreciate that the expert’s
examination of the received unique fault code along with the vehicle’s repair
history teaches that the expert does verify the authenticity of the received
fault code. In other words, if the diagnostics module mistakenly
communicates to the expert a fault code that identifies an unknown vehicle
component or an undefined component failure, the expert would not be able
to find any prior data concerning such component. Thus, at a bare
minimum, the expert’s review of the vehicle’s historical data teaches that
the expert compares the received fault code identifying a failed component
with historical data to ensure that the vehicle does include such component,
and that the reported failure is typical of the identified vehicle. We find that
this disclosure is sufficient to teach the claimed limitation.
Appellant’s argument that Scholl does not disclose verification
authentication of the diagnostics codes as a precondition to the shipment of
the hardware component is unavailing. The claim does not require that the
replacement component be actually shipped. It merely requires verifying
that the diagnostics code is authentic (before shipping the parts, which may
or may not occur.) Thus, Scholl’s disclosure that the expert examines the
received unique codes along with the vehicle’s repair history before
providing the service dealer with repair instructions along with a list a
replacement parts, if any, reasonably teaches the claimed limitation.
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It follows that the Examiner did not err in rejecting independent claim
17 as being anticipated by Scholl.
Appellant did not provide separate arguments with respect to the
rejection of claim 18 and 19. Therefore, we select independent claim 17 as
being representative of the cited claims. These claims consequently fall
together with representative claim 17. See 37 C.F.R. § 41.37(c)(1)(vii).
Further, Appellant has not provided arguments directed to the
Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a). Thus, we find
no error in the Examiner’s rejection of claim 20.

SUMMARY
A. Appellant has not shown that the Examiner failed to establish that
claims 1 through 3, and 17 through 19 are anticipated by Scholl under
35 U.S.C. § 102(b).
B. Appellant has not shown that the Examiner failed to establish that
claims 4 through 9, and 20 are unpatentable over the combination of Scholl
and Daimon under 35 U.S.C. § 103(a).
C. Appellant has shown that the Examiner failed to establish that
claims 10 through 13 are anticipated by Scholl under 35 U.S.C. § 102(b).
D. Appellant has shown that the Examiner failed to establish that
claims 14 through 16 are unpatentable over the combination of Scholl and
Daimon under 35 U.S.C. § 103(a).

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DECISION
We affirm the Examiner’s decision rejecting claims 1 through 9, and
17 through 20. However, we reverse the Examiner’s decision rejecting
claims 10 through 16.
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

clj

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