Ex Parte Kolbet et al

Patent Trial and Appeal Board

Feb 12, 2016

13343524 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/343,524
89955 7590
HONEYWELL/IPL
Patent Services
115 Tabor Road
P.O.Box 377
FILING DATE
01/04/2012
02/17/2016
MORRIS PLAINS, NJ 07950
FIRST NAMED INVENTOR
David Michael Kolbet
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.
H0022388 (002.1302) 9858
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/17/2016 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):
patentservices-us@honeywell.com
DL-ACS-SM-IP@Honeywell.com
docketing@ifllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MICHAEL KOLBET,
RA VINDRA P ATANKAR,
and RANDY R. MAGNUSON
Appeal2013---004708
Application 13/343,524
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
David Michael Kolbet, Ravindra Patankar, and Randy R. Magnuson
(Appellants) seek review under 35 U.S.C. § 134 of a Final Examiners
rejection of claims 1-20, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed November 21, 2012) and Reply Brief ("Reply Br.," filed February
19, 2013), and the Examiner's Answer ("Ans.," mailed February 5, 2013),
and Final Rejection ("Final Rej.," mailed August 31, 2012).
Appeal2013-004708
Application 13/343,524
The Appellants invented a computerized system in the field of repair
parts requisition and maintenance optimization. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for
minimizing the cost
of a maintenance plan
for correcting a failure mode
of a casualty
in a complex machine,
compnsmg:
[ 1] receiving a plurality of maintenance actions related to the
failure mode,
wherein one of the maintenance actions of the plurality is
likely to repair the failure mode,
each maintenance action having an associated cost equal
to a waiting time cost, an execution time cost and a
material cost,
wherein the waiting time of each maintenance action is
the time required to requisition and receive material
required to perform the maintenance action;
[2] constructing a plurality of different maintenance plans
each comprising a sequence of the maintenance actions
by assigning zero or more of the maintenance actions
of the sequence with the longest of the waiting times to a
second requisition,
wherein each maintenance plan includes a first
requisition and the second requisition;
[3] calculating an associated cost of each maintenance plan;
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and
[ 4] determining which of the associated cost maintenance plans
is lowest.
The Examiner relies upon the following prior art:
Ruckart US 2002/0196919 Al Dec. 26, 2002
Bucci US 6,823,315 Bl Nov. 23, 2004
Goll US 2006/0085299 Al Apr. 20, 2006
Tomastik US 2008/0162235 Al Jul. 3, 2008
Zalio US 2008/0254803 Al Oct. 16, 2008
Beaumont US 7 ,454,3 77 B 1 Nov. 18, 2008
Binns US 2009/0048877 Al Feb. 19,2009
Underal US 2009/0271239 Al Oct. 29, 2009
Lienhardt US 2010/0017241 Al Jan. 21, 2010
Soga US 2010/0185477 Al Jul. 22, 2010
Claims 1-15 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 5, 6, and 8 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
T omastik and Lienhardt.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, and Binns.
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Application 13/343,524
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
T omastik, Lienhardt, and Beaumont.
Claims 10 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tomastik, Lienhardt, and Zalio.
Claims 3 and 6-9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Tomastik, Lienhardt, Beaumont, and Binns.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Soga, and Binns.
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tomastik, Lienhardt, Zalio, and Bucci.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, and Binns.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, and Underal.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, Bucci, and Ruckart.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, Binns, and Beaumont.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, Binns, and Soga.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, Bucci, Ruckart, and Goll.
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Application 13/343,524
ISSUES
The issues of definiteness tum primarily on whether claims 5, 6, and 8
apprise one of ordinary skill of their scope. The issues of obviousness tum
primarily on whether Tomastik and Lienhardt describe action plans having
costs associated with anticipated necessities.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
"requisition."
02. The ordinary meaning of a requisition is either a formal written
request for something needed, or a necessity or requirement. In
the context of a plan rather than actual execution, assigning to a
non-existent formal written request is nonsensical, so the
appropriate meaning is that of a necessity.
Facts Related to the Prior Art
Tomastik
03. Tomastik is directed to optimizing maintenance work schedules
for fleet management programs. Tomastik para. 1.
04. Tomastik describes a need to predict future expected engine cycles
between shop visits, and address the impact of today's decisions
on the expected cost( s) of the next shop visit and a need to
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Application 13/343,524
optimize maintenance cost per engine flight cycle over two shop
visits with this prediction. Tomastik paras. 5-6.
05. Tomastik describes creating a life-limited part (LLP) workscope
decision for a first shop visit for an engine; creating one or more
unscheduled engine repair scenarios for the LLP workscope
decision for the first shop visit; selecting an unscheduled engine
repair scenario for the LLP workscope decision for the first shop
visit; calculating at least one expected cost for the one of the
unscheduled engine repair scenario for the first shop visit;
determining a lowest expected cost of the at least one expected
cost for the one of the unscheduled engine repair scenario for the
first shop visit; associating the lowest expected cost with at least
one of the at least one possible LLP workscope decisions for the
first shop visit; selecting an LLP workscope decision out of the at
least one possible LLP workscope decision based upon the
association with the lowest expected cost for the first shop visit;
and performing upon the at least one engine the LLP workscope
decision having the lowest expected cost. Tomastik para. 8.
Lienhardt
06.Lienhardt is directed to a Maintenance Optimization Model
(MOM), and more specifically to a MOM driving design of a
product, such as an aircraft, towards minimum operating cost
while ensuring optimum availability for an end-user, such as an
airline operating the aircraft. Lienhardt para. 2.
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07.Lienhardt describes that its Ground Support Equipment Cost
output can include direct maintenance costs (labor and material
costs). Lienhardt paras. 115 and 133.
08.Lienhardt describes that its Ground Support Equipment Cost
output can also include aircraft downtime due to maintenance
including the mean time to check a function the mean time to
restore a function. Lienhardt paras. 137-139.
Zalio
09.Zalio is directed to scheduling of cell search operations in a
mobile communications user terminal. Zalio para. 1.
10. Zalio describes all of its commands being sorted by in ascending
order according to desired execution time. As a result of this step,
the temporary table of commands is now ordered according to
desired execution time. Zalio para. 46.
ANALYSIS
Claims 5, 6, and 8 rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention
The Examiner found that claim 5' s recitation of an isolation action, and
the recitation of average total execution time cost and average total material
cost in claims 6 and 8 were actions and computations with no guidance or
examples in the Specification to apprise one of ordinary skill of their scope.
Ans. 6.
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As to claim 5, determining when an action is an isolation action, we are
not persuaded by the Appellants' argument that Specification paragraphs 5-
8 and 27-30 provide sufficient support. App. Br. 13. Paragraphs 5-8 say
that an isolation action is something for which a depot supplies an isolation
time. Paragraphs 27-30 say that an isolation action is something identified
as isolation action ly, Iz and le. Both of these descriptions are tautological,
merely defining an isolation action as something that something else calls it
as such.
As to claim 6, as Examiner found (Ans. 26), Appellants do not more
than discuss each word in the phrase "average total execution time cost."
App. Br. 6. This does not apprise one of ordinary skill of what costs are
considered within the scope of execution time cost.
The question is whether the existence of multiple methods
leading to different results without guidance in the patent or the
prosecution history as to which method should be used renders
the claims indefinite. Before Nautilus, a claim was not
indefinite if someone skilled in the art could arrive at a method
and practice that method. In our previous opinion, relying on
this standard, we held that the claims were not indefinite,
holding that "the mere fact that the slope may be measured in
more than one way does not make the claims of the patent
invalid." This was so because Dow's expert Dr. Hsiao, a
person skilled in the art, had developed a method for measuring
maximum slope.
Under Nautilus this is no longer sufficient. "[A] patent is
invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history,
fail to inform, with reasonable certainty, those skilled in the art
about the scope of the invention." ("[W]e read§ 112, i-f 2 to
require that a patent's claims, viewed in light of the
specification and prosecution history, inform those skilled in
the art about the scope of the invention with reasonable
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certainty."). Here the required guidance is not provided by the
claims, specification, and prosecution history.
Dow Chemical v. Nova Chemicals, _F.3d_, 2015 WL 5060947 (Fed
Cir 2015).
As to claim 8, this claim recites the computational formula for average
total material cost, so this term cannot be said to lack definiteness.
Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over Tomastik
and Lienhardt
We are not persuaded by the Appellants' argument that, regarding the
maintenance cost output in Lienhardt paragraphs 137-139,
the "third output" in Lienhardt is an output from the
Maintenance Optimization Model (MOM) which is a model
used to design an aircraft (See, Abstract and paragraph [0002]).
The MOM has nothing to do with correcting particular failure
modes in an aircraft and cannot determine a requisition time
months and years into the future. Because the MOM is a big
picture, aircraft design tool, the MOM would not, and could
not, possibly be able to address the time cost required to
requisition and receive material required to perform a specific
maintenance action months or years into the future. This is so
because at the aircraft design level of the 17 MOM, specific
waiting time costs for specific maintenance procedures over an
aircraft life span are small, random, and unknowable.
App. Br. 17-18. Appellants do not proffer an alternative interpretation of
Lienhardt' s explicit description of model maintenance cost outputs as
including downtime. FF 07---08. Downtime is known to those in the arts of
maintenance planning as including lead times for repair parts, which is
generally the time to order (requisition) and receive parts. Further, the
limitation at issue, "receiving a plurality of maintenance actions related to
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the failure mode" does not recite receiving such costs. The limitation only
recites that an action has such costs. As maintenance action costs include
downtime costs, they necessarily have the component lead time costs.
Similarly, because the limitation does not recite actually receiving those lead
time costs. The issue of whether those costs can be accurately modeled is
not commensurate with the scope of the claim.
We are not persuaded by the Appellants' argument that, regarding the
shop visits in Tomastik paragraphs 5-6,
Applicant respectfully points out that Tomastik is concerned
only with a first shop visit and its related first Unexpected
Engine Removal (UER) during that visit and determining the
lowest cost for that first visit (See, paragraphs [0008-0011 ]).
Paragraphs [0008-0011] (i.e., Summary of the Invention) never
discuss a second shop visit being incorporated into the lowest
cost determination. In fact, Tomastik expressly states that any
second shop visit (SV2) decisions are discarded and that the
optimal SV2 would be run when SV2 actually occurs (See,
paragraph [0044]). Hence, Tomastik expressly states that SV2
is not considered in the determination of the lowest cost.
Further, Appellant also points out that both Tomastik and
Lienhardt are silent concerning a maintenance plan that
includes a first requisition and a second requisition. A
Tomastik shop visit is NOT a requisition for parts and cannot
be construed as such. No requisition or requisition cost is
described in Tomastik (see, paragraphs [0034-0035 and
00450046] for description of various shop visit costs). Thus,
any assertion that shop visit cost includes a requisition or a
requisition waiting time cost is mere speculation and may be
disregarded.
Further, a "second shop visit" implies that the engine
leaves the shop and is placed back into service of some type (a
"next shop visit" implies that the engine leaves the shop
(i-10042)). Since the engine is implicitly placed back into
service after the first shop visit, there can be no second
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Application 13/343,524
requisition based on the same failure mode corrected in the first
shop visit even if there was a first requisition, which there is
not. An unserviceable engine would not be permitted to leave
the shop without the failure mode being corrected. Hence, a
second shop visit (scheduled or unscheduled) is necessarily for
a different failure mode than the first shop visit. This assertion
is backed up by Tomastik, which expressly states that any
second shop visit (SV2) decisions are discarded and that the
optimal SV2 would be run when SV2 actually occurs (See,
paragraph [0044]). Hence, there is no second requisition or
second requisition waiting time cost for the same particular
failure mode as addressed in the first shop visit and as is
required in the claim.
App. Br. 19-20. Claim 1 recites a plan, not actual execution. Thus, the
requisitions in claim 1 are not formal written documents, but planned for
necessities. FF 01---02. Tomastik describes such a pair of planned for
necessities. As claim 1 does not incorporate the requisitions into the lowest
cost determination, Appellants' argument that Tomastik is not
commensurate with the scope of the invention. Appellants' argument that a
second shop visit after an engine is initially placed back in service is
unpersuasive as claim 1 associates planned for actions within maintenance
plans, not specific actual events, to requisitions. Tomastik associates plural
planned shop visits with planed for necessities. Further, although the actions
are related to a failure mode, a failure mode is a description of a type of
failure. Again, claim 1 determines costs of plans not actual events, so
Tomastik's description of plural planned for shop visits associated with a
common failure description is within the scope of the claim.
Claim 2 rejected under 35 U.S.C. § 103(a) as unpatentable over Tomastik,
Lienhardt, and Binns
This claim is argued based on the patentability of claim 1.
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Application 13/343,524
Claim 4 rejected under 35 U.S.C. § i03(a) as unpatentable over Tomastik,
Lienhardt, and Beaumont
This claim is argued based on the patentability of claim 1.
Claims 10 and 16 rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, and Zalio
Claim 10 is similar to claim 1, but also recites "receiving a sequence of
maintenance actions in an increasing order of a waiting time for each
maintenance action." We are not persuaded by the Appellants' argument
that
the Zalio commands are periodic operational cell search
commands and as such have nothing to do with a "maintenance
action." Therefore, a Zalio command cannot reasonably be
construed to be "a sequence of maintenance actions ... wherein
one of the maintenance actions is likely to repair the failure
mode." There is no "failure mode" associated with a Zalio cell
search command. Hence, Applicant respectfully submits that
the Examiner's construction is unreasonable and that there is a
lack of substantial evidence in Zalio to equate a periodic
operational cell search command to the recited "maintenance
action" (In Re Werner Kotzab).
Further, Zalio expressly states that the commands are
ordered at their desired execution times (i.e. a scheduled times).
Zalio does not describe commands in order of waiting time. A
scheduled execution time cannot be reasonably construed to be
a "waiting time for each maintenance action" where a "waiting
time of each maintenance action is the elapsed time required to
requisition and receive resources required to perform the
maintenance action." A waiting time is a cumulative elapsed
time from the point of requisition until receipt, not a time
specific (i.e., 1:15 PM) execution time as described in Zalio.
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App. Br. 22. Appellants respond to the rejection by attacking the references
separately, even though the rejection is based on the combined teachings of
the references. 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).
The Examiner applied Zalio only to show it was known to sort actions
by planned for execution time to efficiently find actions to perform in the
planned for sequence. Claim 10 receives planned for actions in increasing
order of waiting times, meaning the sequence in which the waiting times end
at which point the action can be completed. As this is an example of
planned for actions with a planned for sequence, Zalio only shows the
common sense solution of sorting beforehand was a known technique with
broad application.
Claim 16 is similarly argued.
Claims 3 and 6--9 rejected under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Beaumont, and Binns
This claim is argued based on the patentability of claim 1.
Claim 5 rejected under 35 U.S.C. § 103(a) as unpatentable over Tomastik,
Lienhardt, Soga, and Binns
This claim is argued based on the patentability of claim 1.
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Claims ii-i3 rejected under 35 U.S.C. § i03(a) as unpatentable over
Tomastik, Lienhardt, Zalio, and Bucci
These claims are argued based on the patentability of claim 10.
Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over Tomastik,
Lienhardt, Zalio, and Binns
This claim is argued based on the patentability of claim 16.
Claim 19 rejected under 35 U.S.C. § 103(a) as unpatentable over Tomastik,
Lienhardt, Zalio, and Underal
This claim is argued based on the patentability of claim 16.
Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable over Tomastik,
Lienhardt, Zalio, Bucci, and Ruckart
This claim is argued based on the patentability of claim 10.
Claim 18 rejected under 35 U.S.C. § 103(a) as unpatentable over Tomastik,
Lienhardt, Zalio, Binns, and Beaumont
This claim is argued based on the patentability of claim 16.
Claim 20 rejected under 35 U.S.C. § 103(a) as unpatentable over Tomastik,
Lienhardt, Zalio, Binns, and Soga
This claim is argued based on the patentability of claim 16.
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Claim i5 rejected under 35 U.S.C. § i03(a) as unpatentable over Tomastik,
Lienhardt, Zalio, Bucci, Ruckart, and Goll
This claim is argued based on the patentability of claim 10.
Claims 1-15 rejected under 35 U.S. C. § 1 OJ as directed to non-statutory
subject matter
As all claims are properly rejected over art, we do not reach this
rejection.
CONCLUSIONS OF LAW
The rejection of claims 1-15 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is not reached.
The rejection of claims 5 and 6 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention is proper.
The rejection of claim 8 under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention is
improper.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik and Lienhardt is proper.
The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, and Binns is proper.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, and Beaumont is proper.
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The rejection of claims 10 and 16 under 35 U.S.C. § 103(a) as
unpatentable over Tomastik, Lienhardt, and Zalio is proper.
The rejection of claims 3 and 6-9 under 35 U.S.C. § 103(a) as
unpatentable over Tomastik, Lienhardt, Beaumont, and Binns is proper.
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Soga, and Binns is proper.
The rejection of claims 11-13 under 35 U.S.C. § 103(a) as unpatentable
over Tomastik, Lienhardt, Zalio, and Bucci is proper.
The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, and Binns is proper.
The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, and Underal is proper.
The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, Bucci, and Ruckart is proper.
The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, Binns, and Beaumont is proper.
The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, Binns, and Soga is proper.
The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Tomastik, Lienhardt, Zalio, Bucci, Ruckart, and Goll is proper.
DECISION
The rejection of claims 1-20 is affirmed.
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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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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