International Business Machines Corporation

Patent Trials and Appeals Board

May 15, 2020

2020000128 (P.T.A.B. May. 15, 2020)

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.
14/799,082 07/14/2015 Akram Bou-Ghannam AUS920150141US1 2093
58919 7590 05/15/2020
TERRILE, CANNATTI & CHAMBERS, LLP - IBM SV
PO BOX 203518
AUSTIN, TX 78720
EXAMINER
CHEN, WENREN
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
05/15/2020 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):
USPTO@dockettrak.com
tmunoz@tcciplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKRAM BOU-GHANNAM, KALMAN GYIMESI,
and JENNY S. LI
Appeal 2020-000128
Application 14/799,082
Technology Center 3600
Before JAMES R. HUGHES, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 7–18, which are all claims pending in
the application. Appellant has canceled claims 1–6. Appeal Br. 9. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as the
assignee, International Business Machines Corporation. Appeal Br. 1.
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STATEMENT OF THE CASE2
Appellant’s disclosed embodiments and claimed invention relate to a
system and method for dynamic discovery and enhancements of diagnostic
rules. See Spec. ¶ 1.
Exemplary Claim
Claim 7, reproduced below, is representative of the subject matter on
appeal (italics added to contested prior-art limitations; underlining added to
contested limitations pertaining to written description Rejection R1 and
indefiniteness Rejection R2):
7. A system comprising:
a processor;
a data bus coupled to the processor; and
a non-transitory, computer-readable storage medium
embodying computer program code for performing a complex
asset analysis operation within a complex asset analysis
environment, the complex asset analysis environment
comprising a plurality of crowd sourced complex assets and a
complex asset analysis system, the plurality of crowd sourced
complex assets and the complex asset analysis system
communicating via a network, the non-transitory, computer-
readable storage medium being coupled to the data bus, the
computer program code interacting with a plurality of computer
operations and comprising instructions executable by the
processor and configured for:

2 Our decision relies upon Appellant’s Appeal Brief (“Br.,” filed
June 17, 2019); Examiner’s Answer (“Ans.,” mailed July 18, 2019); Final
Office Action (“Final Act.,” mailed Feb. 14, 2019); and the original
Specification (“Spec.,” filed July 14, 2015). Appellant did not file a Reply
Brief in response to the factual findings and legal conclusions in the
Examiner’s Answer.
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receiving crowdsourced data from the plurality of crowd
sourced complex assets via the network, each of the plurality of
crowd sourced complex assets comprising a respective motor
vehicle, each of the plurality of crowd sourced complex assets
comprising a respective data collection agent, the respective
data collection agent providing respective data to the complex
asset analysis system, the crowdsourced data being received via
a crowdsourcing operation, the crowdsourcing operation
comprising obtaining the crowdsourced data by soliciting
contributions from a group of complex assets, the
crowdsourced data corresponding to a common information
model, the crowdsourced data specifying a configuration of a
complex asset of the plurality of crowdsourced complex assets,
a snap shot of asset performance parameters during problems
of the complex asset and associated maintenance and repair
experience of the complex asset;
aggregating the crowdsourced data received from the
plurality of crowd sourced complex assets via the complex asset
analysis system; and,
performing the complex asset analysis operation based
upon the crowdsourced data received from the plurality of
crowd sourced complex assets, the complex asset analysis
operation providing an information brokerage function for a
community of complex assets by managing shared information
from the plurality of crowd sourced complex assets; and,
controlling at least one complex asset to control operator
actions based upon individual complex asset data and
crowdsourced data relating to a particular type of complex
asset.
9. The system of claim 7, wherein:
each of the plurality of complex assets register respective
complex asset data and subscribe for content notifications
based on a type and configuration of the complex asset.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
McClellan et al. (“McClellan”) US 2008/0294690 A1 Nov. 27, 2008
Koch US 2014/0277902 A1 Sept. 18, 2014
Rejections on Appeal3
R1. Claims 7–18 stand rejected under 35 U.S.C. § 112(a) as lacking
written description support. Final Act. 3.
R2. Claims 7–18 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention. Final Act. 6.
R3. Claims 7, 8, and 10–18 stand rejected under 35 U.S.C.
§§ 102(a)(1) and 102(a)(2) as being anticipated by Koch. Final Act. 7.
R4. Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Koch and McClellan. Final Act. 15.
CLAIM GROUPING
Based on Appellant’s arguments (Br. 3–8) and our discretion under 37
C.F.R. § 41.37(c)(1)(iv), we decide the appeal of written description and
indefiniteness Rejections R1 and R2 of claims 7–18 on the basis of
representative claim 7; and we decide the appeal of anticipation Rejection

3 We note the Examiner withdrew the rejection of claims 7–18 under 35
U.S.C. § 101. Final Act. 2.
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R3 of claims 7, 8, and 10–18 on the basis of representative claim 7. We
address separately argued obviousness Rejection R4 of claim 9, infra.4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We agree with particular arguments advanced by Appellant with
respect to written description Rejection R1 and indefiniteness Rejection R2
of claims 7–18, and we do not sustain the rejections, as discussed below.
However, we disagree with Appellant’s arguments with respect to
anticipation Rejection R3 of claims 7, 8, and 10–18 and obviousness
Rejection R4 of claim 9 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claims 7 and 9 for emphasis as follows.

4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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1. § 112(a) Written Description Rejection R1 of Claims 7–18
Issue 1
Appellant argues (Appeal Br. 3–5) the Examiner’s rejection of claim 7
under 35 U.S.C. § 112(a) as lacking written description support is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the originally filed disclosure fails to
provide adequate written description support for the limitation of
“controlling at least one complex asset to control operator actions based
upon individual complex asset data and crowdsourced data relating to a
particular type of complex asset,” as recited in independent claim 7?
Principles of Law
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id.; see also PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008) (explaining that § 112,
first paragraph (now § 112(a)), “requires that the written description actually
or inherently disclose the claim element”); cf. U.S. v. Telectronics, Inc., 857
F.2d 778, 785 (Fed. Cir. 1988) (“The test of enablement is whether one
reasonably skilled in the art could make or use the invention from the
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disclosures in the patent coupled with information known in the art without
undue experimentation.”).
Analysis
The Examiner finds the Specification “fails to disclose with enough
specificity, the . . . limitations [of] ‘controlling at least one complex asset to
control operator actions based upon individual complex asset data and
crowdsourced complex asset data relating to a particular type of complex
asset.’ However, the Specification does not describe how that is
performed.” Final Act. 3.
We disagree with the Examiner because, as argued by Appellant, the
contested limitation “is at least impliedly [disclosed] by the present
application as it was originally filed and art to which the claimed invention
belongs is mature and the predictable nature of the art mandates a generally
lower showing of possession.” Br. 4. Appellant cites to paragraphs 57, 58–
66, and Figures 3 and 6 of the Specification as providing adequate
description of the contested “controlling” limitation. Id. We note in
particular, the disclosure in paragraph 57 that states, in pertinent part:
[T]he master complex asset analysis system 322 [is enabled] to
generate unique models which can predict and diagnose
machine failures as well as encourage adjustment of operator
actions that optimize asset usage. In various embodiments, the
operator actions can include driving conditions, speeding,
abrupt braking, etc. Also, in certain embodiments, the complex
asset analysis system 301 can provide certain controls over the
complex asset to adjust the operator actions. For example, the
complex asset analysis system 301 might have the ability to
control acceleration and/or top speed of a vehicle under certain
conditions to increase the operating efficiency of the complex
asset.
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Spec. 57 (cited with emphasis in Br. 4–5).
In agreement with Appellant, we find the originally-filed disclosure
adequately supports the contested “controlling” limitation of claim 7, and we
do not sustain the Examiner’s Rejection R1 of claims 7–18.
2. § 112(b) Indefiniteness Rejection R2 of Claims 7–18
Issue 2
Appellant argues (Br. 3–5) the Examiner’s rejection of claim 7 under
35 U.S.C. § 112(b) as being indefinite is in error. These contentions present
us with the following issue:
Did the Examiner err in concluding the phrases “individual complex
asset data” and “crowdsourced data relating to a particular type of complex
asset” are indefinite under § 112(b) in the context of independent claim 7?
Principles of Law
We apply the indefiniteness test approved by In re Packard, 751 F.3d
1307 (Fed. Cir. 2014) (per curiam): “A claim is indefinite when it contains
words or phrases whose meaning is unclear,” and “claims are required to be
cast in clear–as opposed to ambiguous, vague, indefinite–terms.” See
Packard, 751 F.3d at 1310, 1313; Ex parte McAward, Appeal No. 2015-
006416 (PTAB Aug. 25, 2017) (precedential) at *8–11 (explaining because
of different approaches to indefiniteness before the PTAB and the courts, the
PTAB continues to follow Packard after the Supreme Court’s Nautilus, Inc.
v. Biosig Instruments, Inc., 572 U.S. 898 (2014) decision).
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
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describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112(b).
Packard, 751 F.3d at 1311.
Further, we give pending claims “their broadest reasonable
interpretation consistent with the specification” and “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Analysis
In rejecting the claims for indefiniteness, the Examiner concludes “[i]t
is unclear whether if ‘individual complex asset data’ and ‘crowdsourced data
relating to a particular type of complex asset’ are the same as the ‘receiv[ed]
crowdsourced data from the plurality of crowd sourced complex assets’ of
the first limitation or new/different set of data (‘individual complex asset
data’ and ‘crowdsourced data relating to a particular type of complex
asset’).” Final Act. 6.
Appellant responds by contending:
These terms refer to different data. This difference can
specifically be seen in the element “controlling at least one
complex asset to control operator actions based upon individual
complex asset data and crowdsourced data relating to a
particular type of complex asset” (emphasis added).
Specifically, the term “individual complex asset data” is
discussed at Paragraph [0057] of the application as filed and the
term “crowdsourced data” is discussed at Paragraph [0052] of
the application as filed.
Br. 6 (emphasis omitted).
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We agree with Appellant that the recited terms refer to different data,
and further note the contested terms represent the first instance or recitation
of these specific limitations in claim 7. We further determine that the
Examiner has not shown the meaning of the claims are unclear to one skilled
in the art. See Packard, 751 F.3d at 1310.
Accordingly, we do not sustain the Examiner’s Rejection R2 of
claims 7–19 for indefiniteness.
3. § 102(a)(1) or § 102(a)(2) Rejection R3 of Claims 7, 8, and 10–18
Issue 3
Appellant argues (Br. 6–7) the Examiner’s rejection of claim 7 under
35 U.S.C. § 102(a)(1) or § 102(a)(2) as being anticipated by Koch is in error.
These contentions present us with the following issues:
Did the Examiner err in finding the cited prior art discloses a system
that includes a processor executing instructions configured for, inter alia:
[a] receiving crowdsourced data from the plurality of
crowd sourced complex assets via the network, each of the
plurality of crowd sourced complex assets comprising a
respective motor vehicle, each of the plurality of crowd sourced
complex assets comprising a respective data collection agent,
the respective data collection agent providing respective data to
the complex asset analysis system,
wherein
[b] the crowdsourced data corresponding to a common
information model, the crowdsourced data specifying a
configuration of a complex asset of the plurality of
crowdsourced complex assets, a snap shot of asset performance
parameters during problems of the complex asset and associated
maintenance and repair experience of the complex asset,
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as recited in claim 7?
Principles of Law
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added).
Analysis
The Examiner provides a detailed mapping of the contested
limitations [a] and [b] above to the Koch reference. See Final Act. 9–10
(citing Koch at multiple paragraphs, and Figs. 1 and 5).
With respect to limitation [a], Appellant contends “the [E]xaminer
cites to a portion of Koch which discloses three crowdsourcing modules (a
community diagnostics module 132, a community road health module 134
and a community driver health module 136) (see e.g., Koch, Figure 1 and
Paragraph [0021]) as well as a portion of Koch which discloses that in-
vehicle devices can report information to a vehicle management system 110
(see e.g., Paragraph [0022]).” Br. 6. Appellant generally argues, without
specific analysis, “the claimed respective data collection agents which
provide respective data to the complex asset analysis system are patentably
distinct from the in-vehicle devices disclosed by Koch.” Id. Appellant then
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concludes Koch doesn’t disclose contested limitation [a]. Id. We are not
persuaded by Appellant’s allegation.
We are not persuaded because mere attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex
parte Belinne, No. 2009-004693, slip op. at 7–8 (BPAI Aug. 10, 2009)
(informative), available at https://www.uspto.gov/sites/default/files/
ip/boards/bpai/decisions/inform/fd09004693.pdf. See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
Arguments not made are therefore waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Similarly, with respect to limitation [b], Appellant contends:
[T]he examiner cites to portions of Koch which disclose
collecting summarizing characteristics of fleet applications as a
list where variables are annotated in time (see e.g., Koch,
Paragraph [0085]). However, it is respectfully submitted that
crowdsourced data which corresponds to a common
information model and which specifies a configuration of a
complex asset of the plurality of crowd sourced complex assets,
a snap shot of asset performance parameters during problems of
the complex asset and associated maintenance and repair
experience of the complex asset is are patentably distinct from
the list of summarizing characteristics disclosed by Koch.
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Br. 7.
Again, we disagree with Appellant’s contentions, which amount to a
general allegation that the cited prior art does not disclose the disputed
limitation [b]. See Br. 7 (“Accordingly, nowhere within Koch, taken alone
or in combination, is there any disclosure or suggestion of [limitation [b]]”).
The Examiner makes further findings in the Answer (6–9) which
Appellant does not rebut by filing a Reply Brief.
Therefore, based upon the unrebutted findings above, on this record,
we are not persuaded of error in the Examiner’s reliance on the cited prior
art to disclose the disputed limitation of claim 7, nor do we find error in the
Examiner’s resulting finding of anticipation.
Accordingly, we sustain the Examiner’s anticipation rejection of
independent claim 7, and grouped claims 8 and 10–18 that fall therewith.
See Claim Grouping, supra.
4. § 103 Rejection R4 of Claim 9
Issue 4
Appellant argues (Br. 7–8) the Examiner’s rejection of claim 9 under
35 U.S.C. § 103(a) as being obvious over the combination of Koch and
McClellan is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the system of claim 7, wherein “each of the plurality of complex
assets register respective complex asset data and subscribe for content
notifications based on a type and configuration of the complex asset,” as
recited in claim 9?
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Analysis
The Examiner cites McClellan at paragraphs 92 through 99 as
teaching or suggesting plural recited vehicle (complex asset) registrations.
Final Act. 16.
Appellant appears to admit that McClellan discloses automated
registration of a vehicle and a driver performance database. Br. 8 (citing
McClellan ¶¶ 57 and 97). Appellant argues “[h]owever, nowhere within the
cited portions of McClellan (nor anywhere else in McClellan) is there any
disclosure or suggestion of each of the plurality of complex assets register
respective complex asset data, much less subscribing for content
notifications based on a type and configuration of the complex asset, as
required by claim 9.” Br. 9 (emphasis omitted).
In the Answer, the Examiner further explains the rejection with
respect to the disclosure of McClellan, and cites “para[graphs] [0017],
[0046], [0048], [0066], [0072] [for] disclos[ing] transmitting of subscribed
notification based on driver performance which comprising vehicle type and
monitored configuration (i.e. speed, acceleration, impact, accident).”
Ans. 10.
Again, Appellant does not rebut the Examiner’s additional findings by
filing a Reply Brief.
Therefore, based upon the unrebutted findings above, on this record,
we are not persuaded of error in the Examiner’s reliance on the cited prior
art combination to teach or suggest the disputed limitations of claim 9, nor
do we find error in the Examiner’s resulting conclusion of obviousness.
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Accordingly, we sustain the Examiner’s obviousness Rejection R4 of
dependent claim 9.
CONCLUSIONS
(1) The Examiner erred with respect to written description
Rejection R1 of claims 7–18 under 35 U.S.C. § 112(a), and we do not
sustain the rejection.
(2) The Examiner erred with respect to indefiniteness Rejection R2
of claims 7–18 under 35 U.S.C. § 112(b), and we do not sustain the
rejection.
(3) The Examiner did not err with respect to anticipation Rejection
R3 of claims 7, 8, and 10–18 under 35 U.S.C. § 102(a)(1) or § 102(a)(2), and
we sustain the rejection.
(4) The Examiner did not err with respect to obviousness Rejection
R4 of claim 9 under 35 U.S.C. § 103 over the cited prior art combination of
record, and we sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
7–18 112(a) Written Description 7–18
7–18 112(b) Indefiniteness 7–18
7, 8, 10–18 102(a)(1) or 102(a)(2) Koch 7, 8, 10–18
9 103
Koch,
McClellan

9
Overall
Outcome 7–18
FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED