Ex Parte Stathis et al

Patent Trial and Appeal Board

Oct 17, 2012

11454466 (P.T.A.B. Oct. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte GEORGE L. STATHIS and CU V. TRAN
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Appeal 2010-006130
Application 11/454,466
Technology Center 2800
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Before BRADLEY W. BAUMEISTER, JEFFREY S. SMITH, and JAMES
B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-9 and 16-24.1
Claims 1-9 and 16-22 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter. (Ans. 2-3.)
Claims 1-9 and 16-24 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Wetzer (US 7,440,906 B1; issued Oct. 21, 2008; filed
Sep. 4, 2001). (Ans. 3-7.)
We affirm.

STATEMENT OF CASE
Appellants describe the present invention as relating to methods and
systems for receiving data pertaining to unscheduled maintenance performed
on components at at least one maintenance facility and for gathering the data
from repaired components for subsequent analysis. In particular, according
to the methods and systems of the present invention, data is received and
gathered to facilitate failure analysis tracking, to determine the root cause of
unscheduled maintenance, and to determine corrective action. (App. Br. 2.)
Independent claim 1 is illustrative:
1. A method comprising:
receiving data pertaining to unscheduled maintenance of a
component which results in a repaired component repaired by the
unscheduled maintenance; and
compiling the data from a multiple of repaired components to
obtain compiled data with respect to the component and facilitate
failure analysis tracking of the component.

1 Claims 10-15 are cancelled.
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CONTENTIONS2
The Examiner interprets claims 1-9 and 16-22 as not being tied to a
particular machine and not performing a transformation of a particular
article into a different state or thing, but that, instead, the claimed processes
are broad enough so as to describe methods comprising purely mental steps.
(Ans. 3; 9-11.) Accordingly, the Examiner finds that claims 1-9 and 16-22
are directed to non-statutory subject matter. (Ans. 3; 9-11.) Appellants
argue that the claimed processes transform a particular article to a different
state or thing. (App. Br. 4-5.)
In addition, the Examiner determines that claims 1-9 and 16-24 are
anticipated by Wetzer. (Ans. 3-4; 11-23.) In particular, with respect to
claim 1, the Examiner finds that Wetzer discloses a method comprising
receiving data pertaining to unscheduled maintenance of a component (Ans.
13-14 (citing col. 2, ll. 55-67; col. 3, ll. 1-27)) and compiling the data from a
multiple of repaired components (Ans. 14-17 (citing col. 5, ll. 37-67; col. 6,
ll. 22-28)).
Appellants argue, however, that Wetzer describes a method of
scheduling and directing unplanned maintenance and fails to disclose
receiving data which results from a repaired component. (App. Br. 7.)
Further, Appellants argue separately that Wetzer fails to disclose each and
every additional element of dependent claims 2, 3, and 24. (App. Br. 8-9.)

2 Throughout this Decision, we refer to the following documents for their
respective details: the Appeal Brief (App. Br.) filed September 21, 2009; the
Examiner’s Answer (Ans.) mailed December 18, 2009; and the Reply Brief
(Reply Br.) filed February 18, 2010.
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THE UNPATENTABLE SUBJECT MATTER REJECTION
Issue
Did the Examiner err in finding that the methods of claims 1-9 and
16-22 fail to describe the transformation of a particular article to a different
state or thing?
Analysis
1. Claim Construction
In response to the Examiner’s rejection of claims 1-9 and 16-22,
Appellants argue that the method of claim 1 describes a transformation of a
particular article to a different state or thing. (App. Br. 4.) The U.S.
Supreme Court acknowledges that the machine-or-transformation test is a
“useful and important clue or investigative tool” for determining patent
eligibility under § 101. Bilski v. Kappos, 130 S.Ct. 3218, 3221 (2010).
Thus, in order to determine whether the claims satisfy the machine-or-
transformation test, we begin by construing independent claim 1, which is
representative of the other claims subject to this rejection.
In claim 1, Appellants describe a method comprising two steps:
“receiving data pertaining to unscheduled maintenance of a component” and
“compiling the data from a multiple of repaired components.” Initially,
claim terms are given their ordinary and customary meaning. “[T]he
ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention, i.e., as of the effective filing date of the application.”
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). In
construing the claims, however, we also are guided by Appellants’
Specification. See Phillips, 415 F.3d at 1321 (noting that the Specification is
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the single best guide to a disputed term’s meaning and acts as a dictionary
when it expressly defines terms recited in the claims).
a. Step of “Receiving Data”
With respect to the “receiving” step, a general purpose dictionary
defines the verb: to receive, as “to acquire or accept or take in (something
offered or sent or given).” See OXFORD AMERICAN DICTIONARY 750-51
(Heald Colleges ed. 1980). Appellants do not suggest any other meaning for
this term in the Specification. Moreover, in describing the received “data,”
Appellants state that
Data within the repair facility FTP sites 22a-22n about the repaired
components or systems is communicated from each of the
aforementioned locations to the aircraft [original equipment
manufacturer] OEM 24. . . . The data typically includes information
pertaining to component removals or failures that caused an
unscheduled maintenance as well as other information as disclosed in
the screen shot (Figure 2) of the illustrated embodiment which utilizes
a spindle assembly (Figures 3A and 3B) as an example component
which has been sent out to a repair facility.
(Spec. ¶ [0016]; see also Spec. ¶¶ [0020], [0023].) Thus, we construe this
step as describing the receiving of data including information pertaining to
component removals or failures that caused an unscheduled maintenance as
well as other information, such as that depicted in the data entry screen of
Appellants’ Fig. 2. (See Spec. ¶ [0016].)
In the “receiving” step, Appellants further describe that the
unscheduled maintenance “results in a repaired component repaired by the
unscheduled maintenance.” (App. Br. 5 (responding to patent eligibility
rejections).) Moreover, Appellants argue that it is the “receiving data which
results in a repaired component.” (App. Br. 7 (responding to anticipation
rejections).) Nevertheless, we interpret this phrase either as a field of use
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limitation or as a statement of intended use either of the “unscheduled
maintenance” or of the “receiving” step. (App. Br. 4-5; see also App. Br. 9
(“Appellant[s] specifically recite[] and claim[] communication with at least
one repair facility to receive data from unscheduled maintenance which
results in the component being repaired”).) Because this phrase merely
describes a field of use or an intended use, the phrase does not recite a
limitation capable of making an abstract idea or mental process patent
eligible or of distinguishing the claimed method over the prior art. Bilski,
130 S.Ct. at 3231(“Flook established that limiting an abstract idea to one
field of use or adding token postsolution components did not make the
concept patentable.”); Waite, 158, F.2d 291, 294 (CCPA 1947) (treatment of
statements of intended use in method claims).
b. Step of “Compiling the Data”
As noted above, claim 1 additionally recites “compiling the data from
a multiple of repaired components.” A general purpose dictionary defines
the verb: to compile, as “to collect and arrange (information) into a list or
book.” See OXFORD AMERICAN DICTIONARY 173 (Heald Colleges ed. 1980).
Moreover, in claim 1, “the data” compiled is the same as the received
“data,” but the compiled data is from “multiple of repaired components,”
i.e., a plurality of repaired components that includes, but is not limited to,
the “repaired component” described in the first step of the claimed method.
In addition, claim 1 describes two fields of use or intended uses for
the compiling step: first, “to obtain compiled data with respect to the
component” and, second, “[to] facilitate failure analysis tracking of the
component.” These uses do not constitute additional affirmative steps of the
claimed method. As such, these descriptions of use do not limit the step of
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“compiling the data” beyond merely requiring that the compiled data is
merely capable of being used, in some manner and at some future time, to
facilitate failure analysis tracking. See Bilski, 130 S.Ct. at 3231; Waite, 158,
F.2d at 294.
2. Subject Matter Analysis
a. Absence of Specific Machine
As noted above, in independent claim 1, Appellants recite two steps:
“receiving” data and “compiling” the data. The Examiner concludes that
neither of these steps, however, refers to a specific machine by reciting
structural limitations to any apparatus, or recites any specific operations that
would cause a machine to be the mechanism to perform these steps. (Ans.
3.) Appellants have not provided persuasive evidence or argument to rebut
the Examiner’s conclusion.
b. Absence of Patent Eligible Transformation
Moreover, the Examiner concludes that the steps recited in claim 1 do
not “positively recite subject matter that is being transformed, for example
by identifying the material that is being changed to a different state.” (Id.)
Thus, the Examiner concludes that these two steps recite “purely mental
steps” that read on a mental process that could be performed in the human
mind, or by a human using a pen and paper. (Ans. 3; see CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (holding that
a process for verifying the validity of a credit card transaction over the
Internet to be nonstatutory as an abstract idea capable of being performed in
the human mind or by a human using a pen and paper).) “[M]ental
processes–or processes of human thinking–standing alone are not patentable
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even if they have practical application.” In re Comiskey, 554 F.3d 967, 979
(Fed. Cir. 2009).
Appellants argue, however, that
Appellants[’] data “articles” which represent a component and
repaired component are analogous with the data “articles” that
represent the “structure of bones, organs, and other body tissues”
which were within a patent eligible method of In re Abele. That is,
Appellant[s] do[] transform data that represents physical and tangible
objects and that data is central to the purpose of the claimed process.
(App. Br. 5 (emphasis in the original).)
In Abele, the court found that a claim for a process that passed X-rays
through bone, organs, and other body tissues to create attenuated X-rays and
then displayed the attenuated X-rays described a patent eligible
transformation of the data articles representing the X-rays to transformed
data articles representing the attenuated X-rays. 684 F.2d 902 (CCPA
1982).
We find that Appellants’ claimed process fails to recite a
transformation of a particular article into a different state or thing. First,
Appellants’ claimed method includes the steps of receiving “data” and
compiling “the data,” but does not recite repairing a component. Thus, the
claimed method does not include a step, which, alone or in combination with
the other of the “receiving” step and “compiling” step, requires such a
transformation.
Second, as noted above, we construe the received “data” to be “the
data” that is compiled. Thus, the claimed method does not recite a
transformation of an article into a different state or thing that is comparable
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to the transformation described in Abele.3 (Ans. 10-11; See In re Bilski, 545
F.3d 943, 964 (Fed. Cir. 2008) (en banc) (“[The claim] does not involve the
transformation of any physical object or substance, or an electronic signal
representative of any physical object or substance.”), aff’d, Bilski v. Kappos,
130 S.Ct. 3218 (2010).) Thus, even if Appellants’ “data” is an electronic
signal representing a physical object, i.e., the component, which is
transformed within a computer; Appellants’ claimed process does not
transform that signal or the underlying object in a manner that is comparable
to the way that Abele’s X-rays are transformed into a visual display. Rather,
claim 1 merely receives data and compiles it with other data. (Id.; see also
App. Br. 4-5.). The transformation of received data into compiled data
within a general purpose computer is not the type of transformation that has
been determined to render a claimed method statutory by the Supreme Court
or by our reviewing court.
In view of the Supreme Court’s guidance in Bilski, 130 S. Ct. 3218, as
expanded upon by the Federal Circuit in CyberSource, 654 F.3d 1366, we
conclude that Appellants fail to demonstrate that the method of independent
claim 1 transforms a particular article to a different state or thing. Instead,
independent claim 1 may be reasonably interpreted as encompassing an
unpatentable abstract idea. For the foregoing reasons, Appellants have not
persuaded us of error in the Examiner’s rejection of independent claim 1 as
directed to unpatentable subject matter. Accordingly, we sustain the

3 Because the alleged transformation is not present in claim 1, we do not
address whether the alleged transformation is central to the purpose of the
claimed process or whether the alleged transformation transforms a
particular data article. (See App. Br. 4-5.)
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Examiner’s rejection of that claim and of dependent claims 2-9 and 16-22
which fall with claim 1.4

THE ANTICIPATION REJECTION
Issues
1. Did the Examiner err in finding that Wetzer discloses each and
every element of claims 1, 4-9, and 16-23?
2. With respect to claim 2, did the Examiner err in finding that
Wetzer discloses “determining a root cause for the unscheduled
maintenance from the data?”
3. With respect to claim 3, did the Examiner err in finding that
Wetzer discloses “determining a proposed corrective action from
the compiled data?”
4. With respect to claim 24, did the Examiner err in finding that
Wetzer discloses that “said computer system communicates with at
least one repair facility, each of said repair facilities communicates
data which pertains to unscheduled maintenance of each of said
component which said repair facility has repaired?”
Analysis
1. Claims 1, 4-9, and 16-23.
Initially, we note that we here apply the same construction of claim 1
that is set forth above. In claim 1, Appellants describe a process comprising

4 We do not address whether claims 23 and 24 describe patentable subject
matter. We note, however, that our reviewing courts recently have
addressed the issue of when a system implementing an unpatentable method
also fails to describe patentable subject matter. See, e.g., Fort Properties,
Inc. v. American Master Lease LLC, 671 F.3d 1317, 1323 (Fed. Cir. 2012).
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two steps: receiving “data” and compiling “the data.” In particular,
Appellants describe “receiving data pertaining to unscheduled maintenance
of a component” and “compiling the data from a multiple of repaired
components.”
The Examiner contends that Wetzer discloses each of these elements.
(Ans. 3; 13-14.) In particular, the Examiner finds that Wetzer discloses
discovering a component of a piece of equipment requiring unplanned
maintenance and identifying the location of the component, a category of
work required, a task description in the work category, and a data code on
the component. (Ans. 13-14 (quoting col. 2, ll. 55-67).) The Examiner
additionally finds that Wetzer discloses obtaining information from one or
more databases associated with the maintenance of the equipment and
scheduling the unplanned maintenance of the component with the planned
maintenance of the equipment. (Id.)
Appellants argue, however, that claim 1 requires “receiving data
which results in a repaired component.” (App. Br. 7 (emphasis added).)
Appellants further argue that Wetzer only describes a method of scheduling
unplanned maintenance, and that, unlike Appellants’ claimed process,
“Wetzer is not concerned with receiving data that results from the unplanned
[maintenance repair and overhaul] MRO task.” (Id. (emphasis added).)
As noted above, we construe the phrase: “which results in a repaired
component repaired by the unscheduled maintenance” to be a statement of
intended use. (Supra, 5-6.) This phrase does not alter the “receiving data”
step or the “unscheduled maintenance,” but merely describes a later
occurring repair of a component resulting from receipt of the “data” or the
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completion of the “unscheduled maintenance.” Thus, this phrase does not
distinguish the claimed method over Wetzer.
Accordingly, we find that Appellants’ argument is not commensurate
in scope with the claim language and are, therefore, unpersuasive. Teleflex,
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002) (“The
claim language defines the bounds of claim scope.”). Consequently, we find
that the Examiner demonstrates that Wetzer discloses Appellants’
“receiving” step, as described in claim 1. (Ans. 13-14.)
With respect to Appellants’ “compiling” step, the Examiner finds that
Wetzer discloses compiling data to create (1) a work description database
120, (2) a standard repair library database 124, and (3) a component
part/serial number database 128. (Ans. 17.) According to the Examiner,
Wetzer compiles information concerning “categories of MRO work such as
mechanical, electrical work for unplanned/unscheduled work category/task
type” in work description database 120 and standard repair library database
124. (Id.; see also Ans. 15-16 (quoting col. 5, ll. 58-67).) Moreover, the
Examiner concludes that Wetzer establishes a generalized components list
including component part/serial numbers stored in component part/serial
number database 128. (Ans. 17 (quoting col. 6, ll. 22-28).) The Examiner
further concludes that component part/serial number database 128 facilitates
failure analysis tracking of the component. (Id.)
Appellants argue that Wetzer is concerned only with efficiently
scheduling of unplanned maintenance and not with failure analysis tracking.
(App. Br. 7.) With respect to Wetzer’s component part/serial number
database 128, however, we note that, in Appellants’ Appendix (¶ [0032]),
Appellants describe that “Component_Serial_Number” may be part of the
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received data pertaining to the unscheduled maintenance of a component.
(¶ [0017] (“The description and data type for each field are provided in the
Appendix.”); see also Fig. 2.). Thus, we find that the Examiner
demonstrates that a component’s serial number may be included in the
received data and the compiled data. Consequently, we conclude that the
Examiner demonstrates that at least the compilation of component serial
numbers into Wetzer’s component part/serial number database 128 discloses
the compiling step of Appellants’ claimed method. (Ans. 17.)
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s anticipation rejection of claim 1 by Wetzer. Accordingly,
we sustain the Examiner’s rejection of that claim and of dependent claims 4-
9 and 16-23, which are not separately argued.
2. Claim 2.
With respect to claim 2, the Examiner notes that Wetzer describes
[d]efined categories of MRO work, such as mechanical,
electrical, software, etc. are specified along with expected types of
tasks relative to that category. For example, plumbing could be
expected to have leaks of varying severity, including seepage, pooling,
heavy volume, burst pipe, etc. As another example, structural failures
could include task types such as corrosion, cracking, fastener loss and
bending, etc. For each of these categories and tasks types, standard
nomenclature is developed and category/task-type pairs are
established. The resulting data is stored in the work description
library database 120.
(Ans. 19 (quoting col. 5, ll. 37-47 (emphasis added)).) Thus, the Examiner
concludes that Wetzer describes the identification of unplanned maintenance
and possible causes, e.g., plumbing leaks and a burst pipe or structural
failure and corrosion. (Id.) That is, the Examiner concludes that Wetzer
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discloses determining a root cause for the unscheduled maintenance from the
data.
Appellants argue, however, that Wetzer does not mention the term,
“root cause,” and that, because Wetzer is not directed to failure analysis
tracking, Wetzer is not concerned with the root cause of the unplanned
maintenance. (App. Br. 8.) In particular, with respect to the disclosure of
Wetzer, quoted above, Appellants argue that Wetzer fails to disclose
determining the precise cause of a specific failure. (Id.) Appellants argue
instead that Wetzer may link possible problems with known solutions and,
thereby, may create a standard repair library, such as standard repair library
124. (Reply Br. 3.)
In relation to claim 2, Appellants only argue that Wetzer fails to
disclose determining the “root cause” for the unplanned maintenance. (App.
Br. 8.) We find that the Examiner demonstrates that, as part of the process
of scheduling unplanned maintenance, Wetzer discloses identifying a
problem and its cause, e.g., its “root cause.” (Ans. 17 and 19.) Thus, the
Examiner demonstrates that Wetzer discloses the additional element of claim
2.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s anticipation rejection of claim 2 by Wetzer. Accordingly,
we sustain the Examiner’s rejection of that claim.
3. Claim 3.
With respect to claim 3, the Examiner finds that Wetzer discloses
“determining a proposed corrective action from the compiled data.” (Ans.
21.) In particular, the Examiner finds that Wetzer’s standard repair library
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124 provides a proposed corrective action and that the corrective action is
determined from the compiled data. (Id.)
Claim 3 depends from independent claim 1 via intervening claim 2.
Referring to the previous arguments with respect to claims 1 and 2,
Appellants argue that the Examiner fails to demonstrate that Wetzer
discloses compiling data from a multiple of repaired components for the
described uses or determining a “root cause” for the unscheduled
maintenance. (App. Br. 9.) In the absence of these steps, Appellants argue,
Wetzer does not disclose determining a proposed corrective action from the
compiled data. (Id.) As noted above, however, we find that Wetzer
discloses each of the steps of Appellants’ claims 1 and 2.5 Therefore, we are
not persuaded by Appellants’ argument.
In the Reply Brief, Appellants further argue that the Examiner relies
of Wetzer’s description of standard methods of repair stored in standard
repair library 124 as the source of proposed corrective action, rather than
corrective action determined “from the compiled data.” (Reply Br. 2-3.)
Wetzer discloses, however, that
[f]or each unplanned work category/task type pair identified in
the work description library database 120, a standard method of
repair is established and associated data is stored in the standard
repair library database 124. This library, in one embodiment,
includes task descriptions, basic required tool listings as well as any
special processing notes, skills or certifications required for the task,
including safety warnings. This database also includes both schedule
span estimates and cost estimates of the effort required to accomplish
the standard repair tasks.

5 We note that claim 3 does not require that the corrective action is linked to
the root cause of claim 2. (See App. Br. 9.)
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(col. 5, ll. 48-57 (emphasis added).) Thus, Wetzer describes that, for each
identified work category/task pair, a standard method of repair is
established, and data is associated with the established method. (Ans. 21.)
Moreover, Wetzer states that “[a] technician identifies location of the
unplanned work and answers tailored questions posed by the system to
obtain additional information about the nature of the work. Using this
information, the system identifies and describes the unplanned work tasks
. . . .” (Col. 11, ll. 20-24.) Therefore, we find that Wetzer describes the use
of compiled data, such as that contained in work description library database
120, to enter standard repair library database 124 and, thereby, to determine
proposed corrective action. See Ans. 17 and 19; col. 2, ll. 55-67.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s anticipation rejection of claim 3 by Wetzer. Accordingly,
we sustain the Examiner’s rejection of that claim.
4. Claim 24.
With respect to claim 24, the Examiner finds that Wetzer discloses
that “said computer system communicates with at least one repair facility,
each of said repair facilities communicates data which pertains to
unscheduled maintenance of each of said component which said repair
facility has repaired.” (Ans. 23.) Appellants, however, fail to address the
rejection based on Wetzer and, instead, merely repeat the language of the
claim and states that advantages of Appellants’ systems. As such,
Appellants’ repetition of the language of claim 24 is not considered to be an
argument for separate patentability. See 37 C.F.R. § 41.37(c)(1)(iv).
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For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s anticipation rejection of claim 24 by Wetzer.
Accordingly, we sustain the Examiner’s rejection of that claim.
5. Untimely Arguments
We do not consider Appellants’ argument that purports to distinguish
the method described in claims 16-22 over the method described in claims 2-
9. (Reply Br. 3.) This argument is presented for the first time in the Reply
Brief and, therefore, is waived as untimely. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).6

CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1-9 and 16-22 under § 101, and Appellants have not shown that the
Examiner erred in rejecting claims 1-9 and 16-24 under § 102(e).

DECISION
The Examiner’s decision rejecting claims 1-9 and 16-24 is affirmed.

6 Even if we were to consider this belated argument, we question whether
Appellants have identified deficiencies, by which each group of claims may
be distinguished over Wetzer and from each other.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).
AFFIRMED

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