Ex Parte Walter et al

Patent Trial and Appeal Board

Jan 12, 2016

12635898 (P.T.A.B. Jan. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/635,898 12/11/2009 Robert A. Walter
38516 7590 01/12/2016
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009-0734 1212
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
MAILDATE DELIVERY MODE
01112/2016 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
Exparte ROBERT A. WALTER, ALFONSO JONES, and
TERRI H. PIFER
Appeal2013-007678 1
Application 12/635,8982
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
February 22, 2013) and Reply Brief ("Reply Br.," filed May 24, 2013), and
the Examiner's Answer ("Ans.," mailed April 1, 2013) and Final Office
Action ("Final Act.," mailed October 3, 2012).
2 Appellants identify AT&T Intellectual Property I, L.P. as the real party in
interest. App. Br. 1.
Appeal2013-007678
Application 12/635,898
CLAIMED fNVENTION
Appellants' claimed invention "generally relate[s] to work orders and
work force management to resolve the work orders" (Spec. i-f 2).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for predicting work force requirements,
compnsmg:
retrieving weather information describing a weather
event approaching an area;
retrieving a facility density from the memory that is
associated with the area;
multiplying the facility density by the weather
information to determine an impact on work orders due to the
weather event; and
predicting by a processor the work force requirements to
resolve work orders that will be generated by the weather event.
REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 1-20 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellants regard as the invention. 3
3 Claims 16-20 depend from claim 15. As such, we treat the rejection under
§ 112, second paragraph, as also extending to those claims.
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Application 12/635,898
ANALYSIS
Enablement
Independent claim 1 and dependent claims 2-7
The test for compliance with the enablement requirement is whether
the disclosure, as filed, is sufficiently complete to enable a person of
ordinary skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Factors
to be considered in determining whether a disclosure would require undue
experimentation (commonly referred to as the "Wands factors") include:
(1) the quantity of experimentation necessary; (2) the amount of direction or
guidance presented; (3) the presence or absence of working examples;
( 4) the nature of the invention; ( 5) the state of the prior art; ( 6) the relative
skill of those in the art; (7) the predictability or unpredictability of the art;
and (8) the breadth of the claims. Id.
In the Final Office Action, the Examiner discusses the adequacy of
Appellants' disclosure in relation to: (1) the nature of the invention; (2) the
state of the prior art; (3) absence of working examples; and ( 4) the
unpredictability of the art (Final Act. 5-8).
Appellants argue that the Examiner legally erred in rejecting claim 1
for lack of enablement because the Examiner failed to consider all of the
Wands factors, specifically including "the relative skill of those in the art"
and "the breadth of the claims" (App. Br. 6-8). Appellants' argument is not
persuasive.
"Whether undue experimentation is needed is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations." In re Wands, 858 F.2d at 737. The Wands court
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Application 12/635,898
elected to consider "all of the factors." Id. at 740. However, it is not
necessary to review all of the Wands factors to find a disclosure enabling. 4
The Wands factors "are illustrative, not mandatory" and what is relevant to
an enablement determination depends on the facts of the particular case.
See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir.
1991). See also Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371
(Fed. Cir. 1999). Patent examiners are, thus, directed to focus the
explanation of an enablement rejection on "those factors, reasons, and
evidence that lead the examiner to conclude, e.g., that the specification fails
to teach how to make and use the claimed invention without undue
experimentation" see Manual of Patent Examining Procedure (MPEP)
§ 2164.04 - which the Examiner clearly appears to have done.
Appellants next argue that the Examiner erred in considering "the
nature of the invention" (App. Br. 8-9). Appellants note that the Examiner
characterizes the nature of the invention, as recited in claim 1, as
"multipl[ying] the facility density by the weather information to determine
an impact on work orders due to a weather event" and that the Examiner
interprets "weather information" to include any type of information related
to weather (id. at 8). Appellants argue that the Examiner's interpretation is
not supported by the Specification, which expressly describes "weather
information" as a "Doppler radar feed" (id. at 8-9 (citing Spec. i-fi-1 22 and
26)), and that the Examiner's finding of lack of enablement is legal error
4 Moreover, the Examiner asserts here that the Office Action "clearly
considers these Wands factors [i.e., "the relative skill of those in the art" and
"the breadth of the claims]" in explaining the enablement rejection. Ans. 3-
5.
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Application 12/635,898
because it "relies on an interpretation that does not conform with the
specification and with 35 U.S.C. § 112, first paragraph" (id. at 9).
Appellants' argument is not persuasive. During prosecution the PTO
gives claims their "broadest reasonable interpretation consistent with the
specification," In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000), and claim
terms are presumed to take on their "plain, ordinary, and accustomed
meaning to one of ordinary skill in the relevant art." Prima Tek II, L.L. C. v.
Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003). Appellants may
overcome that presumption by acting as their own lexicographer to assign a
special definition to a particular claim term. However, neither paragraph 22
nor paragraph 26 of the Specification defines "weather information";
instead, the cited paragraphs merely describe Doppler radar data feed as a
non-limiting example of weather information (see Ans. 6). We find nothing
in paragraphs 22 and 26 that limits the term "weather information" to
Doppler radar data and, therefore, nothing that precludes the Examiner's
broad, but reasonable, interpretation of that term or the Examiner's
characterization of the "nature of the invention."
For much the same reasons, we are not persuaded by Appellants'
argument that the Examiner erred in finding that the state of the prior art
includes "any type of information related to weather" (App. Br. 9-10).
Again, Appellants have not identified any disclosure in the Specification that
limits the term "weather information" to any specific type of information
(see Ans. 7).
We also are not persuaded by Appellants' further argument that rather
than considering the predictability or unpredictability of the art, the
Examiner mistakenly analyzes the claim terms (App. Br. 10). Instead, we
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Application 12/635,898
find that the Examiner properly considered the level of predictability of the
art as set forth at pages 7-8 of the Answer.
Absent further explanation, we are not persuaded that the Examiner
erred in rejecting independent claim 1 for lack of enablement. Therefore, we
sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 112, first
paragraph.
Appellants do not present any arguments in support of the separate
patentability of dependent claims 2-7. Therefore, we summarily sustain the
Examiner's rejection of claims 2-7 under 35 U.S.C. § 112, first paragraph.
Independent claims 8 and 15, and dependent claims 9-14 and 16-20
Appellants' arguments with respect to independent claims 8 and 15
(see App. Br. 11-17) are substantially identical to Appellants' arguments
with respect to claim 1, which we find unpersuasive. Therefore, we sustain
the Examiner's rejection of independent claims 8 and 15 under 35 U.S.C.
§ 112, first paragraph for the same reasons set forth above with respect to
claim 1.
Appellants do not present any arguments in support of the separate
patentability of dependent claims 9-14 and 16-20. Therefore, we
summarily sustain the Examiner's rejection of claims 9-14 and 16-20 under
35 U.S.C. § 112, first paragraph.
Indefiniteness
Independent claim 1 and dependent claims 2-7
In rejecting independent claim 1 as indefinite, the Examiner finds that
the limitation, "multiplying the facility density by the weather information to
determine an impact on work orders due to the weather event," is unclear
because Appellants have "failed to quantify the weather information so that
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Application 12/635,898
it may be multiplied by a facility density in order to ... determine an impact
on work orders and to predict workforce requirements to resolve the work
orders" (Final Act. 8).
Appellants respond, charging that the Examiner has unreasonably
interpreted "weather information" to include "any type of information
related to weather," and that"[ w ]hen independent claim is reasonably
interpreted, ... one of ordinary skill in the art [would] fully understand what
is claimed when read in light of the specification" (App. Br. 11).
Appellants' argument is not persuasive for the reasons set forth above
with respect to Appellants' argument regarding the enablement rejection.
Therefore, we sustain the Examiner's rejection of claim 1 under 35 U.S.C.
§ 112, second paragraph. Because Appellants do not present any arguments
in support of the separate patentability of dependent claims 2-7, we
summarily sustain the Examiner's rejection of claims 2-7 under 35 U.S.C.
§ 112, second paragraph.
Independent claims 8 and 15, and dependent claims 9-14 and 16-20
Appellants' arguments with respect to independent claims 8 and 15
(see App. Br. 14, 17-18) are substantially identical to Appellants' arguments
with respect to claim 1. Therefore, we sustain the Examiner's rejection of
independent claims 8 and 15 under 35 U.S.C. § 112, second paragraph for
the same reasons set forth above with respect to claim 1. Because
Appellants do not present any arguments in support of the separate
patentability of dependent claims 9-14 and 16-20, we summarily sustain the
Examiner's rejection of claims 9-14 and 16-20 under 35 U.S.C. § 112,
second paragraph.
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Application 12/635,898
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112, first
paragraph is affirmed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112,
second paragraph is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
em
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