Ex Parte Whelan et al

Patent Trial and Appeal Board

Dec 14, 2017

13861369 (P.T.A.B. Dec. 14, 2017)

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.
13/861,369 04/11/2013 John Desmond Whelan 12-1084-US-NP 8535
63759 7590 12/18/2017
DTTKFW YFF
EXAMINER
YEE & ASSOCIATES, P.C. LIAO, JASON G
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
12/18/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
patentadmin @ boeing. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN DESMOND WHELAN and
HARRY ELRIDGE STOVALL III
Appeal 2017-001251
Application 13/861,369
Technology Center 2100
Before JEAN R. HOMERE, JOSEPH P. LENTIVECH,
and MICHAEL M. BARRY, Administrative Patent Judges.
HOMERE, 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, 2, 4—12, and 14—20, which constitute all claims
pending in this application.1 Claims App’x. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as The Boeing Company of
Chicago, Illinois. App. Br. 2.
Appeal 2017-001251
Application 13/861,369
Introduction
According to Appellants, the claimed subject matter relates to a
method and system for retrieving identified items (e.g., aircraft parts) stored
as contextual results within an associative memory (402). Spec. 1, 48, 70,
Fig. 4. In particular, upon receiving a first query request (416) from a user
(438) at an input device (414), the associative memory (402) locates an
entity (418) having an attribute value (420) matching the query request (416)
to return a list of results, one of which is added to a second query request
(426) received from the user (438) to return a second list of resource
references (428). Subsequently, the associative memory uses the second list
(428) to retrieve source data (430) so as to combine the entity with the
source data (430) to form a combination (432), which is returned to the user
(438) on a display device (442). Id. H 53—57.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A system for performing maintenance or manufacture of
an aircraft, the system comprising:
an associative memory comprising a non-transitory
computer readable storage medium storing a plurality of data
and a plurality of associations among the plurality of data,
wherein the plurality of data is collected into associated groups,
wherein the associative memory is configured to be queried
based on at least indirect relationships among the plurality of
data, wherein the associative memory is logically divided into
perspectives, each being a context for a particular aspect of a
domain, and wherein the associative memory is configured to
use a perspective within the perspectives distinguish one
context from another, wherein the domain comprises an aircraft
domain and wherein the perspective is a parts perspective
relating to aircraft parts;
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Application 13/861,369
a non-transitory input device, in communication with the
associative memory, configured to receive a first comparison
request;
the associative memory configured to:
responsive to receiving the first comparison
request, locate an entity value having an attribute value
matching a term of the first comparison request;
responsive to locating the entity value, return a
first list of results including the entity value;
add, as a required search term, at least one of first
results from the first list of results to a second
comparison request, the second comparison request
further including all terms of the first comparison
request;
perform the second comparison request and, as a
result, return a second list of resource references;
use the second list to retrieve source data;
combine the entity value with the source data to
form a combination;
return the combination to form a returned
combination that relates to the aircraft parts; and
use the returned combination to identify the
aircraft parts, wherein identified aircraft parts are formed;
an apparatus for retrieving the identified aircraft parts;
and
a device configured to use the identified aircraft parts on
an aircraft during manufacture or maintenance of the aircraft.
Rejections on Appeal
Claims 1, 2, 4—12, and 14—20 stand rejected under 35 U.S.C. §101 as being
directed to patent ineligible subject matter. Final Act. 20—22.
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Application 13/861,369
Claims 1, 2, 4—12, and 14—20 stand rejected under 35 U.S.C. §112(a) as
failing to comply with the written description requirement. Id. at 23—24.
Claims 1, 2, 4—12, and 14—20 stand rejected under 35 U.S.C. §112(b) or 35
U.S.C. §112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention. Id. at 24.
Claims 1, 2, 4—12, and 14—20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Oracle Database Administrator’s
Guide lOg Release 2 (hereinafter referred to as “Oracle”), Official Notice,
and Aerotec750, Airbus A3 80 Assembly and Painting (hereinafter
“Aerotec”). Id. at 25—43.
ANALYSIS2
35 U.S.C. § 101 (PatentIneligibility) Rejection
Appellants argue the Examiner erred in concluding that claims 1,2,
4—12, and 14—20 are directed to an abstract idea because they do not attempt
to pre-empt the field of associative memory. App. Br. 14. According to
Appellants, when viewed as a whole, claim 1 is directed to retrieving
contextual information from an associative memory for the purpose of
maintaining or manufacturing an aircraft. Id. at 16, 18—20, and 24.
These arguments are persuasive. The U.S. Supreme Court provides a
two-step test for determining whether a claim is directed to patent-eligible
subject matter under 35 U.S.C. §101. Alice Corp. Pty. Ltd. v. CLSBank
2 Rather than reiterate all the arguments of Appellants and all the Examiner’s
findings, we refer to the Appeal Brief (filed June 15, 2016) (“App. Br.”), the
Reply Brief (filed October 25, 2016) (“Reply Br.”), and the Answer (mailed
August 25, 2016) (“Ans.”) for the respective details.
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Int’l, 134 S. Ct. 2347, 2355 (2014). In the first step, we determine whether
the claims are directed to one or more judicial exceptions (i.e., law of nature,
natural phenomenon, and abstract ideas) to the four statutory categories of
invention. Id. citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1296—97 (2012)) (“Mayo”). In the second step, we
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132
S. Ct. at 1297—98). In other words, the second step is to “search for an
‘inventive concept’—i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Id. (citing Mayo, 132 S.
Ct. at 1294).
Appellants’ claimed subject matter pertains to retrieving specified
items corresponding to aircraft parts stored as contextual groups in an
associative memory in response to user’s queries for the purpose of
manufacturing or maintaining an aircraft. As noted in Appellants’
Specification,
[UJnlike relational databases, an implied association
exists among the results returned by an associative memory. . . .
However, when using associative memories [to store and
retrieve information about three high technology companies],
each entity result is usually taken into consideration as each
entity result relates to the context of the resource. In this case,
the context is the observation that all three entities are high
technology companies .... Because the data may be organized
by associations and not necessarily by categories, as with
traditional searches, an associative memory query’s results may
be more complicated then they appear to be to some users.
Spec. 1126-30.
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We agree with Appellants that the claims, when viewed as whole, are
not directed to an abstract idea. See Affinity Labs, of Texas, LLC v.
DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2017) (“The ‘abstract idea’
step of the inquiry calls upon us to look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.”) In particular, we agree with
Appellants’ argument that the Examiner has too broadly characterized the
claims as being directed merely to “An idea or Mathematical Relationships.”
Ans. 29; see Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir.
2016) (“describing the claims at such a high level of abstraction and
untethered from the language of the claims all but ensures that the
exceptions to § 101 swallow the rule”). The mere inclusion of mathematical
formulas in the claims does not per se cause the claims to be directed to an
abstract idea. See Diamond v. Diehr, 450 U.S. 175, 192 (1981) (explaining
that claims are patent eligible “when a claim containing a mathematical
formula implements or applies that formula in a structure or process which
when considered as a whole, is performing a function which the patent laws
were designed to protect”). Although querying a memory to retrieve files
and data arranged therein is a well-known endeavor in the art of database
and file management, such practices are not per se patent ineligible
notwithstanding their common use of mathematical algorithms or formulas.
Likewise, albeit the claimed associative memory performs mathematical
computations to determine contextual results in response to user’s queries,
the disclosed computations are not directed to a mathematical algorithm.
Rather, the disclosed computations are an integral part of the determination
made by the associative memory in retrieving contextual results associated
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with the user’s queries. Therefore, we are not persuaded that claim 1 is
directed to an abstract idea.
Because Appellants have shown at least one reversible error in the
Examiner’s rejection, we need not reach the merits of Appellants’ remaining
arguments pertaining to this ground of rejection. Accordingly, we do not
sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 1, as well as
claims 2, 4—12, and 13—20, which were rejected on the same basis.
35 U.S.C. § 112, 1stparagraph (Written Description) Rejections
Appellants argue that the Examiner erred in concluding the originally-
filed written description does not support the recitation of “performing
maintenance or manufacture of an aircraft” or “use the identified aircraft
parts during the manufacture or maintenance of the aircraft,” as recited
currently in independent claim 1. App. Br. 36. In particular, Appellants
state the following:
[I]t is unreasonable to believe that — in an application
directed towards the tracking and management of information
using an associative memory where aircraft parts are
specifically mentioned — those of ordinary skill would believe
that Applicant failed to have possession of the use of this
technology in aircraft manufacturing or maintenance. It is
notoriously well known that devices are used for retrieving and
placing parts during the aircraft manufacturing and maintenance
processes. Thus, based on the disclosures of the specification in
paragraph 48 and 70, those of ordinary skill in the art would
readily assess that Applicant had described distinguishing
identifying characteristics sufficient to show that Applicant was
in possession of the claimed invention.
Id. at 37.
These arguments are not persuasive. To satisfy the written description
requirement, a patent Specification must describe the claimed invention in
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sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Moba, B. V. v. Diamond
Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003). An applicant may
show possession of the claimed invention by describing the claimed
invention with all of its limitations using such descriptive means as words,
structures, figures, diagrams, and formulas that fully set forth the claimed
invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997). However, our reviewing court guides that “[a] description which
renders obvious the invention for which an earlier filing date is sought is not
sufficient.” Lockwood, 107 F.3d at 1572 (quoting Jepson v. Coleman, 314
F.2d 533, 536 (CCPA 1963)). “[I]t is ‘not a question of whether one skilled
in the art might be able to construct the patentee’s device from the teachings
of the disclosure. . . . Rather, it is a question whether the application
necessarily discloses that particular device.’” Id. (emphasis added).
As correctly noted by the Examiner, although Appellants’
Specification indicates that aircraft parts are examples of the items stored in
the associative memory, it is indisputable that the terms “maintenance” or
“manufacture” appear nowhere in Appellants’ originally-filed Specification,
drawings or claims. Final Act. 18 (citing Spec. 48, 70). While we agree
with Appellants that the written description requirement does not mandate
an “in haec verba” recitation of the disputed claim language, it nonetheless
requires a sufficient description of the claim subject matter so as to enable
one of ordinary skills in the art to make and use the invention. Therefore,
the ordinarily-skilled artisan, having read Appellants’ Specification, would
readily understand that Appellants had possession of the associative
memory’s logical divisions as including parts for commercial aircraft.
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However, while the ordinarily-skilled artisan could speculate as to the
intended purpose of the aircraft parts (e.g., for sale, maintenance or
manufacture, etc.) in the associative memory, the artisan would not be able
to specify with any degree of certainty the objective of the aircraft parts
because the Specification provides no explicit guidance on this point.
Therefore, under the standard promulgated by the relevant case law,
Appellants have not shown that they had possession of the parts being used
for the purpose of maintaining or manufacturing the aircraft at the time of
the invention. Accordingly, we are not persuaded of error in the Examiner’s
written description rejections of claims 2, 4—12, and 13—20.
35 U.S.C. § 112, 2nd (Indefiniteness) Rejection
Appellants argue that the Examiner erred in concluding that claims 1,
2, 4—12, and 14—20 are indefinite. App. Br. 42-43. In particular, Appellants
the following:
[T]he “field of invention” stated in Applicant’s
specification states that the present disclosure relates generally
to associative memories and in particular to identifying
contextual results within associative memories. It is likewise
true that the vast bulk of the disclosure is directed to this
subject matter. Applicant likewise does not dispute that the
claims have since changed to be directed to a method for
manufacturing or maintenance.
However, Applicant is under no restriction imposed by
the “field of invention” in paragraph 1 when amending the
claims. Applicant is entitled to amend the claims using any
language supported by the specification, under the law of 35
U.S.C. § 112, First Paragraph as explained above. Thus, the
Examiner’s citation to Applicant’s paragraph 1 is irrelevant to
the determination of patentability under 35 U.S.C. § 112, First
Paragraph or 35 U.S.C. § 112, Second Paragraph.
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Id.
This argument is persuasive. “The legal standard for definiteness is
whether a claim reasonably apprises those of skill in the art of its scope.”
In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v.
Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991)).
The “inquiry therefore is merely to determine whether the claims do, in fact,
set out and circumscribe a particular area with a reasonable degree of
precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA
1971).
Even though the claim recites language that does not comply with the
written description requirement under 35 U.S.C. § 112, First Paragraph, as
discussed in the preceding section, we agree with Appellants that such
failure does not ipso facto render the claim indefinite under the second
paragraph of the code. Because the Examiner has failed to show how the
lack of support for the disputed claim limitation also renders the claim
indefinite under 35 U.S.C. § 112, Second Paragraph, such that the
ordinarily-skilled artisan, having read Appellants’ Specification, would not
be apprised of the scope of the claim, we do not sustain this rejection.
35 U.S.C. § 103 (Obviousness) Rejection
Appellants argue that the Examiner’s obviousness rejection of claims
1,2, 4—12, and 14—20 is in error because the Examiner unreasonably
compares the associative memory to a relational database. App. Br. 44.
First, Appellants argue:
This rejection is fundamentally flawed because the Office
Action is unreasonably comparing relational databases to the
claimed associative memory. An associative memory is not a
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relational database. Associative memories have problems not
faced by relational databases. These facts are proven
extensively, above, in the reply to response to arguments
section of the response to the first ground of rejection.
Briefly, however, an associative memory is not a
relational database, it is a content addressable memory. Specific
differences and problems relative to associative memories and
relational databases are called out in Applicant’s specification
paragraphs 26 and 27, proving that the Examiner’s
interpretation of the claims are not consistent with the
specification in violation of standard claim interpretation
principles provided in MPEP § 2111. For these reasons, the
Examiner cannot reasonably compare an associative memory to
a relational database.
App. Br. 44.
This argument is not persuasive. As correctly noted by the Examiner,
Appellants’ allegation that the claims should be construed according to the
“beyond reasonable doubt” standard of review is inaccurate. Ans. 4. We
echo the Examiner’s observation that the correct standard of review for
claim construction is the “preponderance of the evidence” standard. Id. We
further agree with the Examiner that under the broadest reasonable
interpretation, associative memory encompasses relational database
technology. Id. at 7—9.
Second, Appellants argue that Oracle is non-analogous art because it
pertains to relational database, whereas the claimed associative memory
pertains to content addressable memories. App. Br. 45. In particular,
Appellants argues:
Oracle relates to a relational database, which is not in the
same field of invention as the claims and is not reasonably
related to the problem to be solved. While relational databases
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and content addressable memories are both data storage and
manipulation technologies, they operate on entirely different
principles. Thus, they are not in the same field of invention.
Indeed, the problems addressed by applicants do not arise in
relational databases; thus, Oracle is not reasonably pertinent to
problem faced by Applicant.
Id.
These arguments are not persuasive. As correctly noted by the
Examiner, both relational databases and associative memories are designed
to associate or establish relationships between datasets to facilitate and
expedite query processing and data retrieval from memory. Ans. 9.
Likewise, we agree with the Examiner that the Wikipedia page provided by
Appellants as evidence offers little probative value to corroborate the
arguments regarding the associative memory being a content addressable
memory. App. Br. 9, 12—13. Accordingly, we are not persuaded by
Appellants’ non-analogous art argument.
Third, Appellants argue that the Examiner has taken improper official
notice. App. Br. 46. In particular, Appellants argue:
Applicant agrees that aircraft are notoriously well known
to be devices, and Applicant agrees that aircraft are notoriously
well known to be made from particular combinations of many
different aircraft parts. Indeed, one of the reasons why
Applicant created the claimed inventions is to address the
problem of dealing with truly vast numbers of parts and their
combinations during the aircraft manufacturing and
maintenance processes. As indicated above, even a single
commercial jetliner may have six million parts plus wiring.
Of interest, Applicant notes that relational databases do
not scale to such large amounts of data. However, since
Applicant is not claiming specific amounts of data or tracking a
certain number of parts, Applicant does not argue this point.
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What Applicant does challenge is the application of the
facts to which the Office Action takes official notice. First and
foremost, an implemented RDMBS is not an associative
memory as defined in this application or as defined in the
claim. Applicant respectfully submits that, given the context of
the application as a whole, it is unreasonable to assert that
Applicant's claims are related to RDMBS technology.
Id.
Appellants’ arguments are not persuasive. We agree with the
Examiner that although the manufacture of an aircraft does require the use
and tracking of a great amount of parts, Appellants have proffered no
evidence that a traditional relational database would not able to support the
management of such data. Final Act. 35—37. Therefore, on this record, we
are not persuaded that the claimed associative memory would be offer
distinct advantages over its relational database counterpart. Accordingly, we
are not persuaded that the Examiner’s taking of official notice is improper.
Consequently, we are not persuaded of error in the Examiner’s
obviousness rejection of claims
DECISION
For the above reasons, we reverse the Examiner’s patent ineligibility
and indefmiteness rejections of claims 1, 2, 4—12, and 14—20. However, we
affirm the Examiner’s written description and obviousness rejections of
claims 1, 2, 4—12, and 14—20.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
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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)(l)(iv).
AFFIRMED
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