Ex Parte Weiner et alDownload PDFPatent Trial and Appeal BoardApr 28, 201411015550 (P.T.A.B. Apr. 28, 2014) Copy Citation 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. 11/015,550 12/17/2004 Allison Leigh Weiner 146901XX/YOD (GEMS:0270) 9528 7590 04/29/2014 Patrick S. Yoder FLETCHER YODER P.O. Box 692289 Houston, TX 77269-2289 EXAMINER ARAQUE JR, GERARDO ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 04/29/2014 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 ALLISON LEIGH WEINER and GOPAL B. AVINASH ____________ Appeal 2011-011683 Application 11/015,550 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011683 Application 11/015,550 2 STATEMENT OF THE CASE Allison Leigh Weiner, et al. (Appellants) seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-6 and 8-22. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE.1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for operationally servicing systems comprising: using one or more physical computing devices programmed to perform the steps of: accessing system data defining operational performance parameters of a plurality of serviced systems; accessing service data defining known serviceable conditions for the serviced systems and indicators of potential malfunction based upon the performance parameters; accessing response data defining a plurality of responses to the serviceable conditions; generating prioritization scores for the responses based upon at least two of: the probability of a particular serviceable condition, the severity of a particular serviceable condition, and the cost of a potential serviceable condition, 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Mar. 28, 2011) and Reply Brief (“Reply Br.,” filed Jul. 11, 2011), and the Examiner’s Answer (“Ans.,” mailed May 10, 2011). Appeal 2011-011683 Application 11/015,550 3 wherein the severity of the particular serviceable condition is indicative of a consequence of the serviceable condition for a particular serviced system; and storing the prioritization scores. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Kumamoto Weiner US 2006/0259832 A1 US 7,734,764 B2 Nov. 16, 2006 Jun. 8, 2010 Official Notice is taken that taking into account the cost of a repair or the cost of a product must always be taken into account before moving forward with the purchase. In other words, one of ordinary skill in the art would have found it to be obvious, as well as common knowledge that before moving forward with a purchase the cost of the purchase must be considered in order to determine if the purchase can be accomplished. That is to say, it would have been obvious to one having ordinary skill in the art that in order to run a successful business one must take into consideration whether purchases are within budget constraints in order to minimize the amount of debt the an individual can succumb to. Ans. 21. (“Official Notice.”) The following rejections are before us for review: 1. Claims 1-5 and 8-22 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 2, 5-8, and 12-17 of Weiner and Kumamoto. 2. Claims 18-21 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly Appeal 2011-011683 Application 11/015,550 4 claim the subject matter which Appellants regard as the invention. 3. Claims 1, 2, 6, 10, 11, 14, 15, 17, and 18-22 are rejected under 35 U.S.C. § 102(e) as being anticipated by Kumamoto. 4. Claims 3, 5, 8, 9, 12, 16, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumamoto. 5. Claims 4 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumamoto and Official Notice. ISSUES Did the Examiner err in rejecting claims 1-5 and 8-22 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 2, 5-8, and 12-17 of Weiner and Kumamoto? Did the Examiner err in rejecting claims 18-21 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention? Did the Examiner err in rejecting claims 1, 2, 6, 10, 11, 14, 15, 17, and 18-22 under 35 U.S.C. § 102(e) as being anticipated by Kumamoto? Did the Examiner err in rejecting claims 3, 5, 8, 9, 12, 16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Kumamoto? Did the Examiner err in rejecting claims 4 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Kumamoto and Official Notice? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. Appeal 2011-011683 Application 11/015,550 5 ANALYSIS The rejection of claims 1-5 and 8-22 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 2, 5-8, and 12-17 of Weiner and Kumamoto. The Examiner takes the position that Weiner “does not explicitly claim” (Ans. 3) the last step of the claimed method (i.e., “generating prioritization scores . . .”). However, according to the Examiner, Kumamoto “would teach these missing limitations” (Id. at 3). The Appellants argue that Kumamoto “does not teach or suggest that prioritization scores for responses are generated based upon at least two of: (1) the probability of a particular serviceable condition, (2) the severity of a particular serviceable condition, and (3) the cost of a potential serviceable condition, as generally recited by independent claims 1, 9, 10, 14, and 18-22.” App. Br. 27 (emphasis original). The Examiner responded by arguing that “Kumamoto does, indeed, teach this feature” (Ans. 22). The basis for reaching that conclusion can be found in the Examiner’s position with respect to the § 102(e) rejection whereat the Examiner found Figures 5(A), 5(B) (re “Priority” 5, 6, 7), page 8 (¶ 116), and page 6 (¶ 89) of Kumamoto discloses the last step of the claimed method. See Id. at 6-7. We have reviewed the disclosures in Kumamoto the Examiner relied on to find that Kumamoto discloses the last step of the claimed method. Figure 5(B) of the Kumamoto reference does indeed show criteria for determining priority. The “Table of priorities” disclosed in Figure 5(B) shows “Priority,” “Presumed cause of trouble,” “Presumed portion to be Appeal 2011-011683 Application 11/015,550 6 maintained,” “Certainty degree” and “The number of cases” as criteria. But, the claim calls for “upon at least two of: [(1)] the probability of a particular serviceable condition, [(2)] the severity of a particular serviceable condition, and [(3)] the cost of a potential serviceable condition” (claim 1). Figure 5(B) does not mention any of these. While it is arguable that one of ordinary skill in the art would infer a level of per se, severity corresponding to Kumamoto’s levels of “Priority,” we do not find and there is no evidence in support of finding that one of ordinary skill in the art would infer from Figure 5(B) either of the other two prioritizations claimed, i.e., “the probability of a particular serviceable condition” and “the cost of a potential serviceable condition.” However, it should be pointed out that claim 1 includes the clause “wherein the severity of the particular serviceable condition is indicative of a consequence of the serviceable condition for a particular serviced system” (emphasis added); that is to say the severity for which a prioritization score is generated is to a particular serviceable condition. In contrast, Figure 5(B) is directed to multiple serviced systems. See ¶¶ 126-27 of Kumamoto. Accordingly, albeit it is arguable that one of ordinary skill in the art would infer a level of per se severity corresponding to Kumamoto’s levels of “Priority,” one of ordinary skill in the art would not be led further to responses for severity for which a prioritization score is generated of a “particular serviceable condition is indicative of a consequence of [a] serviceable condition for a particular serviced system” (emphasis added) as claimed. Figure 5(A) which depicts a table of weight coefficients for certain trouble codes in calculating a certainty degree of trouble; page 8 (¶ 116) Appeal 2011-011683 Application 11/015,550 7 which discusses such trouble codes, and page 6 (¶ 89) which discusses the calculation of a certainty degree with respect to a trouble portion, are similarly deficient. For the foregoing reasons, a prima facie case of obviousness-type double patenting has not been made out on the first instance and thus the rejection is not sustained. The rejection of claims 18-21 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. The Examiner is “uncertain as to whether the claims [(claims 18-21)] are directed to a device that is simply only a computer readable storage medium or whether the claims are directed to a device that includes a computer readable storage medium, wherein the device includes other structural components.” Ans. 4. The rejection is not sustained. All three claims call for “[a] device including a computer storage medium having executable computer code encoded thereon.” They are clear and definite. The Examiner appears to have a question about the breadth of the claim (whether the device claimed includes other structural components or not). “However, “‘Breadth is not indefiniteness.’ In re Gardner, 427 F.2d 786[, 788] CCPA (1970).” In re Robins, 429 F.2d 452, 458 (CCPA 1970) (emphasis added). Appeal 2011-011683 Application 11/015,550 8 The rejection of claims 1, 2, 6, 10, 11, 14, 15, 17, and 18-22 under 35 U.S.C. § 102(e) as being anticipated by Kumamoto. The Examiner takes the position that each of claims 1, 2, 6, 10, 11, 14, 15, 17, and 18-22 reads on Kumamoto. The Examiner takes the position that Kumamoto expressly describes all the limitations in these claims. Ans. 5-14. As the Appellants point out, independent claims 1, 10, 14, and 22 all generally recite, inter alia, "prioritization scores ... based upon at least two of the probability of a particular serviceable condition, the severity of a particular serviceable condition, and the cost of a potential serviceable condition, wherein the severity of the particular serviceable condition is indicative of a consequence of the serviceable condition for a particular serviced system." (Emphasis added.) App. Br. 14. For the reasons stated above with respect to the obviousness- type double patenting rejection, we do not find that Kumamoto expressly describes this claim limitation. With respect to independent claims 18-21, these claims also include the above-referenced limitation and thus, for the same reasons, the rejection of claims 18-21as being anticipated as being expressly disclosed in Kumamoto is also not sustained. We disagree with the Examiner’s assessment that the code set forth in claims 18-21 is “directed towards the intended use of the storage medium will be treated as simply a mere arrangement of data.” Ans. 13. The Examiner is correct in arguing that “claiming executable code is not equivalent to claiming that the executable code is being executed.” Id. at 20. But, that does not mean executable code per se, such as what is claimed, Appeal 2011-011683 Application 11/015,550 9 may be ignored because it “is nothing more that non-functional descriptive material” (Id. at 27). “USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art.” Manual of Patent Examining Procedure (MPEP) § 2111.05 (8th ed., Rev. 9, Aug. 2012). Although the code as claimed is couched in terms of “executable code,” it nevertheless performs some function with respect to the computer with which it is associated. This is evident from reading the claims. For example, in claim 18, the code is defined as “for accessing system data,” etc. Thus the code is presented in a manner defining certain functions with respect to the computer with which it is associated. “Where the programming performs some function with respect to the computer with which it is associated, a functional relationship will be found.” MPEP § 2111.05 (III). Thus, the code set forth in claims 18-21 should have been considered in determining patentability of claims 18-21 under § 102(e). For the foregoing reasons, the rejection under § 102(e) is not sustained. The rejection of claims 3, 5, 8, 9, 12, 16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Kumamoto. Claims 3, 5, 8, 9; 12; and 16 depend on claims 1, 10, and 14, respectively, and whose rejection under § 102(e) was not sustained. The analysis underlying the rejection of these claims builds on the Examiner’s position that all the claim limitations of the independent claims are expressly disclosed in Kumamoto. See Ans. 14-16. Because, for the reasons stated earlier, Kumamoto does not expressly disclose all the limitations of the independent claims, a prima facie case of obviousness has not been made out Appeal 2011-011683 Application 11/015,550 10 in the first instance for the subject matter of these dependent claims, which claims include all the subject matter of the corresponding independent claims. As to claim 19, here the Examiner properly addresses all the claim limitations, notwithstanding they are directed to “code.” Ans. 17-19. The Examiner finds that Kumamoto discloses all the claim limitations. Id. at 17- 19. However, for the reasons given earlier, Kumamoto does not disclose code for generating prioritization scores for the responses, wherein the prioritization scores indicate prioritization between responses to different serviceable systems based upon at least two of: the probability of a particular serviceable condition, the severity of a particular serviceable condition, and the cost of a potential serviceable condition, and wherein the severity of the particular serviceable condition is indicative of a consequence of the serviceable condition for a particular serviced system, and code for storing the system data, the service data, the response data and the prioritization scores in an integrated service knowledgebase for the serviced systems. Claim 19 (emphasis added). Accordingly, the rejection of claim 19 under § 103(a) over Kumamoto is not sustained. The rejection of claims 4 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Kumamoto and Official Notice. Claims 4 and 13 depend on claims 1, 10, and 14, respectively, and whose rejection under § 102(e) was not sustained. The analyses underlying the rejection of these claims build on the Examiner’s position that all the claim limitations of the independent claims are expressly disclosed in Kumamoto. See Ans. 20-22. Because, for the reasons stated earlier, Kumamoto does not expressly disclose all the limitations of the independent Appeal 2011-011683 Application 11/015,550 11 claims, a prima facie case of obviousness has not been made out in the first instance for the subject matter of these dependent claims, which claims include all the subject matter of the corresponding independent claims. CONCLUSIONS The rejection of claims 1-5 and 8-22 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 2, 5-8, and 12-17 of Weiner and Kumamoto is reversed. The rejection of claims 18-21 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention is reversed. The rejection of claims 1, 2, 6, 10, 11, 14, 15, 17, and 18-22 under 35 U.S.C. § 102(e) as being anticipated by Kumamoto is reversed The rejection of claims 3, 5, 8, 9, 12, 16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Kumamoto is reversed. The rejection of claims 4 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Kumamoto and Official Notice is reversed. DECISION The decision of the Examiner to reject claims 1-6 and 8-22 is reversed. REVERSED Appeal 2011-011683 Application 11/015,550 12 hh Copy with citationCopy as parenthetical citation