Ex Parte Goodnow et al

Patent Trial and Appeal Board

Aug 28, 2014

12113966 (P.T.A.B. Aug. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH J. GOODNOW, SUZANNE GRANATO,
EZE KAMANU, TODD E. LEONARD, RAMNATH
RAVINDRAN, KYLE E. SCHNEIDER, and PETER A.
TWOMBLY
____________________

Appeal 2012-006794
Application 12/113,966
Technology Center 3600
____________________

Before: JOHN C. KERINS, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kenneth J. Goodnow et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–4, 7–9, and 12–15. Claims
5, 6, 10, and 11 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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CLAIMED SUBJECT MATTER
The claims are directed to a method for monitoring the warranty of an
integrated circuit. Claims 1 and 14 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method performed using at least one computing device, the
method comprising:
storing, using the at least one computing device, warranty
limit data regarding an integrated circuit (IC);
obtaining a value of a parameter of the IC, using the at
least one computing device;
determining, using the at least one computing device,
whether a warranty limit has been exceeded by comparing the
value of the parameter to a corresponding warranty limit;
extending a warranty time limit based upon the value of
the parameter in response to determining the value of the
parameter does not exceed a predetermined threshold; and
taking a prescribed action in response to the warranty
limit being exceeded.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yach
Jordan
US 5,606,511
US 6,172,428 B1
Feb. 25, 1997
Jan. 9, 2001
Pederson
Tan
Jayanth
Papageorgiou
US 2002/0133425 A1
US 2006/0184379 A1
US 2006/0238388 A1
US 2008/0174329 A1
Sep. 19, 2002
Aug. 17, 2006
Oct. 26, 2006
Jul. 24, 2008

REJECTIONS
1. Claims 1, 2, 8, and 9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Tan, Papageorgiou, and Pederson.
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2. Claims 3 and 4 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Tan, Papageorgiou, Pederson, and Yach.
3. Claim 7 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Tan, Papageorgiou, Pederson, and Official Notice.
4. Claim 13 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Tan, Papageorgiou, Pederson, and Jordan.
5. Claims 12 and 14 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Tan, Papageorgiou, Pederson, and Kitagami.
6. Claim 15 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Tan, Papageorgiou, Pederson, Kitagami, and
Jayanth.

OPINION
Claims 1 and 14
The Examiner finds that the combined teachings of Tan,
Papageorgiou, and Pederson disclose all of the limitations of independent
claim 1. Ans. 5–14. In particular, the Examiner finds that “Tan discloses
collecting a value or parameter and determining if that parameter is within a
warranty range or threshold or whether it has exceeded some threshold or
level.” Ans. 10 (citations and emphasis omitted). The Examiner further
finds that Pederson “discloses automatically extending a warranty in
response to some action or parameter [0003; 0009–0010].” Ans. 12
(emphasis omitted).
Appellants contend that “[a]t best, Tan describes providing the option
to purchase an extended warranty to a consumer, and pricing that extended
warranty according to the exposure of a device to certain ‘environmental
factors.’” Appeal Br. 6; Reply Br. 3. However, Appellants’ argument is not
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responsive to the rejection as articulated by the Examiner, because the
Examiner correctly finds that Pederson describes extending a warranty time
limit. See Ans. 12–13. Thus, Appellants do not apprise us of error.
Appellants further contend that “[t]he Pederson reference fails in
much the same way that Tan does, in that Pederson fails to teach or suggest
‘extending a warranty time limit. .. in response to determining the value of
the parameter does not exceed a predetermined threshold.’” Appeal Br. 7;
Reply Br. 4. In addition, Appellants contend that “1) Pederson extends a
warranty limit that has expired; and 2) Pederson extends the warranty limit
that has expired in response to a request unrelated to the product.” Appeal
Br. 8; Reply Br. 5.
Again, Appellants’ argument is not responsive to the rejection as
articulated by the Examiner. The Examiner correctly finds that Tan
describes obtaining the value of a parameter and determining that the value
of the parameter does not exceed a predetermined threshold in order to
determine whether or not to offer a customer the opportunity to purchase an
extended warranty. See e.g. Ans. 8, 10, 31. Thus, Appellants do not apprise
us of error.
Moreover, Appellants’ arguments fail to consider the combined
teachings of Tan and Pederson. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097, (Fed. Cir. 1986). We understand the rejection to be based on
the combined teachings of Pederson’s extension of the time limit of a
warranty and Tan’s obtaining of the value of a parameter and use of this
parameter to determine that a predetermined threshold has not been
exceeded. Appellants do not explain why the combined teachings of Tan
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and Pederson do not disclose or suggest extending a warranty time limit of
an integrated circuit based upon the value of an integrated circuit parameter
in response to determining the value of the parameter does not exceed a
predetermined threshold as argued supra. Thus, Appellants’ arguments are
not persuasive.
For these reasons, we sustain the Examiner’s decision rejecting
independent claim 1.
Appellants repeat essentially the same arguments they present for
independent claim 1 for independent claim 14. Appeal Br. 17–21. These
arguments are not persuasive for the reasons discussed supra with respect to
claim 1. Accordingly, we sustain the Examiner’s decision rejecting
independent claim 14.
Claims 2–4, 8, 9, 12, 13, and 15
Claims 2–4, 8, 9, 12, 13, and 15 stand rejected based on the combined
teachings of Tan, Papageorgiou, and Pederson, either alone or in
combination with other prior art. Appellants do not present separate
arguments for the patentability of claims 2–4, 8, 9, 12–15. See Appeal Br.
10–11, 12–13, 16, 17, 22. Thus, our resolution of the issues raised regarding
independent claim 1 discussed supra is dispositive as to all the rejections of
these claims.
Accordingly, we sustain the Examiner’s decisions rejecting claims 2–
4, 8, 9, 12, 13, and 15
Claim 7
Regarding claim 7, the Examiner, inter alia, “takes Official Notice
that it is obvious for a source external to an object to set a warranty limit.”
Ans. 20 (emphasis omitted). The Examiner took Official Notice in this
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manner1 for the first time in the non-final Office action mailed March 14,
2011. In the Remarks accompanying an Amendment filed on June 13, 2011
(“Amend.”), Appellants “request[ed] that the Examiner provide support for
his assertion that Applicants’ claim terms are obvious” and “submitted that
the facts asserted by the Examiner to be well known are not capable of
instant and unquestionable demonstration as being well-known.” Amend., 8.
In response to Appellants’ request and submission, the Examiner determined
that Appellants had not properly challenged the Examiner’s taking of
Official Notice. See Final Rej. 37. The Examiner noted that “the Applicant
has not challenged the correctness of the assertions. Bald statements such as
the Applicant traverses these findings and requests adequate evidence to
support them are not adequate and do not shift the burden to the examiner to
provide evidence in support of the Official Notice.” Id. at 37–38, (emphasis
omitted). The instant Appeal followed.
Appellants “contend that the Examiner’s assertion that the claim
features are well known is baseless.” Appeal Br. 14; Reply Br. 7. We
understand Appellants to now be challenging the correctness of the
Examiner’s assertion that it was known for a source external to an object to
set a warranty limit.2 To the extent that Appellants failure to explicitly
dispute the Examiner’s assertion in the Amendment may have been taken as

1 We note that it is proper for the Examiner to take Official Notice of facts
where the facts asserted to be well known are capable of instant and
unquestionable demonstration as being well-known. See MPEP § 2144.03.
Although, the Examiner states that Official Notice is taken “that it is obvious
for a source external to an object to set a warranty limit” (Ans. 7, emphasis
added), we understand the Examiner to take Official Notice of the fact that it
is known for a source external to an object to set a warranty limit.
2 Our understanding is based on the ordinary and customary meaning of the
word “baseless” as “wrong” or “mistaken.” Webster’s Ninth New
Collegiate Dictionary 133 (9th ed. 1983).
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an admission that it was well known for a source external to an object to set
a warranty limit, we understand Appellants to repudiate any such admission
and properly contest the Examiner’s taking of Official Notice in the instant
Appeal.
The Examiner states that “examples in support of the use of Official
Notice [have been provided] in the previous Office Action and in the body
of this Office Action.” Ans. 36 (emphasis omitted). However, the Examiner
does not identify these examples. We do not discern any examples.
Moreover, the Examiner continues to maintain his determination that
Appellants do not challenge the correctness of the assertions. Id. In the
absence of evidence in support of the properly challenged taking of Official
Notice, the Examiner fails to set forth a prima facie case of obviousness.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 7.

DECISION
The Examiner’s rejection of claims 1–4, 8, 9 and 12–15 is
AFFIRMED.
The Examiner’s rejection of claim 7 is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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