Ex Parte MacAuley et al

Patent Trial and Appeal Board

Aug 7, 2013

11997187 (P.T.A.B. Aug. 7, 2013)

a 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/997,187 01/29/2008 James MacAuley U-11704US ;67097-1018PUS1 3894
54549 7590 08/08/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
MONFELDT, SARAH M
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
08/08/2013 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 JAMES MACAULEY and NEIL FISK
Appeal 2011-009734
Application 11/997,187
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2011-009734
Application 11/997,187
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-24 and 26-28. We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE DECISION
We AFFIRM.1
BACKGROUND
Appellants’ invention relates generally to control and management of
repair and maintenance and, more particularly, to a method and system for
workscope management and control for a repair and maintenance process
(Spec. l,para. [0001]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of controlling a repair and maintenance
process for equipment comprising:
maintaining a database of source data based on original
equipment manufacturer information;
generating a maintenance plan based at least in part on
the source data, the maintenance plan designating a workscope;
generating a maintenance instruction based at least in
part on the workscope;
communicating a logical order with a maintenance center
for inspection of the equipment, the logical order being based at
least in part on the maintenance instruction;
1 Our decision will make reference to Appellants’ Appeal Brief (“App.
Br.,” filed January 7, 2011) and Reply Brief (“Reply Br.,” filed May 24,
2011) and the Examiner’s Answer (“Ans.,” mailed March 30, 2011).
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communicating a repair instruction to a repair unit, the
repair instruction being based at least in part on the inspection;
and
performing a repair task based at least in part on the
repair instruction.
THE REJECTIONS
The following rejections are before us for review:
Claims 1-8, 17-24, 26, and 28 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 1-24 and 26-28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Catalano (US 2006/0010152 Al, pub. Jan. 12,
2006) in view of Wetzer (US 2004/0254764 Al, pub. Dec. 16, 2004).
ANALYSIS
Non-Statutory Subject Matter
Independent claim 1 and dependent claims 2-8 and 26
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 by Appellants’ argument that the claim satisfies the
transformation prong of the Bilski machine-or-transformation test, i.e., that
the claimed method “transforms a database of source data into a
maintenance plan, then transforms the maintenance plan into a maintenance
instruction, and the maintenance instructions [sic] provides a basis for a
logical order” and that claim 1, therefore, recites patent-eligible subject
matter under § 101 (App. Br. 4-5). Instead, we agree with the Examiner that
the claimed manipulations of a database of source data do not meet the test
of transforming a particular article into a different state or thing (Ans. 26-
27). We also agree with the Examiner that the claims are not tied to a
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particular machine (Ans. 27-28); therefore, the clams do not satisfy the
machine prong of the machine-or-transformation test.
The Supreme Court has made clear that a patent claim’s failure to
satisfy the machine-or-transformation test is not dispositive of the § 101
inquiry. See Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). However we
conclude that, absent other factors weighing either toward or against patent
eligibility, the two machine-or-transformation factors both weighing against
patent eligibility are alone sufficient to establish a prima facie case of patent-
ineligibility. See id. (the machine-or-transformation test is “a useful and
important clue, an investigative tool, for determining whether some claimed
inventions are processes under § 101.”)
We conclude that the Examiner correctly determined that claim 1 fails
to recite patent-eligible subject matter. Appellants have not pointed to, nor
are we able to readily ascertain, any convincing factors that weigh towards
patent eligibility.
Therefore, we will sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101. We also will sustain the Examiner’s rejection of
claims 2-8 and 26, which depend from claim 1.
Independent claim 17 and dependent claims 18-24 and 28
We also are not persuaded that the Examiner erred in rejecting
claim 17 under 35 U.S.C. § 101 (App. Br. 5-6 and Reply Br. 1-2). Claim 17
recites “[a] computer readable program embodied in an article of
manufacture.”
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Describing the program, paragraph [0030] of the Specification reads
in part:
[0030] The process described herein ... is preferably one or
more software programs or applications that can be run by a
CPU, and is more preferably a computer program product
having a computer useable medium with a computer readable
code means embodied in the medium for control of the
workscope of the repair and maintenance program. . . .
Appellants argue that the Examiner erred in rejecting claim 17 under § 101
“based on the breadth of a ‘computer useable medium’ term, when that term
is not even used [in the claim]” (Reply Br. 2). However, code can be
embodied in (i.e., transmitted within) transitory signals, and Appellants have
not limited the scope of their claim to only include non-transitory signals.
In our view, the phrase “embodied in an article of manufacture,” when
given its broadest reasonable interpretation in light of the Specification,
includes transitory embodiments, which are non-statutory subject matter.
See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter).
Therefore, we will sustain the Examiner’s rejection of independent
claim 17 and dependent claims 18-24 and 28 under 35U.S.C. § 101.
Obviousness
Independent claims 1, 9, and 17
Appellants argue claims 1, 9, and 17 as a group (App. Br. 6-9). We
select claim 1 as representative. The remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(vii).
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellants’ argument that the Examiner’s
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proposed combination of Catalano and Wetzer fails to teach “a logical order
. . . being based at least in part on the maintenance instruction,” as recited in
the claim (App. Br. 6-8 and Reply Br. 2). Instead, we agree with and adopt
the Examiner’s findings and rationale as set forth at pages 29-34 of the
Answer.
In this regard, we note in particular that the Examiner relies on
paragraphs [0046] and [0047] of Catalano, not Wetzer, as disclosing
“generating a maintenance instruction based at least in part on the
workscope.” Catalano describes in paragraph [0046] that a collection of
information can be organized as desired to form a workscope, and describes
in paragraph [0047] that the workscope can be supplemented with useful
“notations concerning, for example and without limitation, proper tools to be
used, recommended safety procedures, warnings about unobvious hazards,
etc.” The Examiner cites paragraph [0041] of Wetzer as disclosing a logical
order (i.e., a maintenance plan or schedule) based at least in part on
a maintenance instruction, as described in Catalano, i.e., “notations
concerning, for example and without limitation, proper tools to be used,
recommended safety procedures, warnings about unobvious hazards, etc.”
(Ans. 31-32). Wetzer describes at paragraph [0041] that a maintenance plan
or schedule is based, inter alia, on resource availability data, including tool
data.
We also are not persuaded by Appellants’ argument that the
Examiner’s proposed modification of Catalano, to communicate a logical
order to the maintenance center for inspecting the equipment, would render
Catalano unsatisfactory for its intended purpose and change the principle of
operation of Catalano (App. Br. 8-9). Appellants have provided no
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persuasive evidence to support their contention. Attorney argument cannot
take the place of evidence in the record. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997).
Dependent claims 2 and 18
Appellants argue claims 2 and 18 together (App. Br. 9). We select
claim 2 as representative. Claim 18 stands or falls with claim 2. 37 C.F.R.
§ 41.37(c)(l)(vii).
We are not persuaded that the Examiner erred in rejecting claim 2
under 35 U.S.C. § 103(a) by Appellants’ argument that paragraph [0055] of
Wetzer, on which the Examiner relies, fails to disclose or suggest
“performing a comparison of the repair task performed with the workscope,”
as recited in the claim (App. Br. 9). Instead, we agree with and adopt the
Examiner’s response to Appellants’ argument as set forth at pages 35-37 of
the Answer. In particular, in response to Appellants’ argument that “no
repair task has been undertaken in Wetzer at the time of the comparison [of
the actual configuration to the described configuration, as disclosed in
paragraph [0055] of Wetzer]” (App. Br. 9), we note that Wetzer expressly
describes that the actual configuration data is updated “as soon as possible
after the . . . servicing of the mechanical equipment to maintain the accuracy
of the actual configuration data” (Wetzer, para. [0054]).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 2 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claim 18, which stands or falls with claim 2.
Dependent claims 3 and 19
Appellants argue that claims 3 and 19 are patentable because the
claims recite “modifying the maintenance plan based at least in part on the
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workscope compliance report;” the Examiner relies on Wetzer’s disclosure
of a resource planner 14 as teaching this feature; and resource planner 14
does not modify a maintenance plan based on a workscope compliance
report (App. Br. 9-10).
Appellants’ assertions do not rise to the level of a separate argument.
See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the
Board reasonably interpreted 37 C.F.R. § 41.37 (c)(l)(vii) as requiring
“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”). Therefore, we will sustain the Examiner’s
rejection of claims 3 and 19 under 35 U.S.C. § 103(a).
Dependent claims 4 and 20
Appellants argue claims 4 and 20 together (App. Br. 10). We select
claim 4 as representative. Claim 20 stands or falls with claim 4. 37 C.F.R.
§ 41.37(c)(l)(vii).
We are not persuaded that the Examiner erred in rejecting claim 4
under 35 U.S.C. § 103(a) by Appellants’ argument that Wetzer’s disclosure
of a financial analyzer 66, cited by the Examiner, fails to disclose or suggest
“electronically accepting customer approval of the maintenance plan,” as
recited in the claim (App. Br. 10). Instead, we agree with and adopt the
Examiner’s findings and rationale as set forth at page 15 of the Answer.
Wetzer teaches in paragraph [0033] that financial analyzer 66 allows the
owner/operator of the subject equipment to veto planned maintenance
activity that is too expensive.
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Therefore, we will sustain the Examiner’s rejection of claim 4 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of claim
20, which stands or falls with claim 4.
Dependent claims 7, 15, and 23
Appellants argue claims 7, 15, and 23 as a group (App. Br. 10-11).
We select claim 7 as representative. Claims 15 and 23 stand or fall with
claim 7. 37 C.F.R. § 41.37(c)(l)(vii).
We are not persuaded that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103(a) by Appellants’ argument that paragraph [0041] of
Catalano, on which the Examiner relies, fails to disclose or suggest
“removing redundant source data from the database,” as recited in the claim
(App. Br. 10-11). Instead, we agree with and adopt the Examiner’s response
to Appellants’ argument as set forth at pages 43-45 of the Answer.
Therefore, we will sustain the Examiner’s rejection of claim 7 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of claims
15 and 23, which stand or fall with claim 7.
Dependent claim 11
Appellants argue that the rejection of claim 11 should be withdrawn
because paragraph [0028] of Wetzer, cited by the Examiner, fails to disclose
or suggest that the control processing unit is configured to “generate a
workscope compliance report based on a comparison of a performed repair
task with the workscope,” as recited in the claim (App. Br. 11). Appellants
maintain that paragraph [0028] only discloses that a monitor may provide a
report of longevity data for storage and that there is no comparison as in the
claimed invention (id).
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The difficulty with Appellants’ argument is that the Examiner does
not merely rely on paragraph [0028] of Wetzer. Instead, in the Response to
Argument, the Examiner sets forth a detailed explanation of the basis for the
rejection (Ans. 45-47). The Examiner notes that claim 11 does not
positively recite comparing the performed repair task with the workscope,
but instead recites “generating a workscope compliance report based on”
such a comparison. The Examiner also cites paragraphs [0051] through
[0054] of Wetzer as teaching a comparison between a desired configuration
and an actual configuration.
Appellants do not address claim 11 in the Reply Brief or otherwise
provide any response in the Reply Brief to the Examiner’s factual findings
with respect to claim 11. For that reason, on this record, we are not
persuaded of Examiner error.
Therefore, we will sustain the Examiner’s rejection of claim 11 under
35 U.S.C. § 103(a).
Dependent claim 12
Appellants argue that claim 12 is allowable because the resource
planner 14 in paragraph [0034] of Wetzer, cited by the Examiner, does not
“modify the maintenance plan based at least in part on the workscope
compliance report,” as recited in claim 12 (App. Br. 11). Instead, Appellants
maintain that paragraph [0034] of Wetzer only describes that resource
planner 14 determines whether the proposed maintenance plan will be
adopted or modified (App. Br. 11).
In the Response to Argument, the Examiner set forth a detailed
explanation of his findings and underlying rationale, citing paragraphs
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[0028]; [0031], [0032], [0045], [0050], [0053], [0054], and [0060] of Wetzer
to support the obviousness rejection of claim 12 (Ans. 47-52).
Appellants do not address claim 12 in the Reply Brief or otherwise
provide any response in the Reply Brief to the Examiner’s findings with
respect to claim 12. For that reason, on this record, we are not persuaded of
Examiner error.
Therefore, we will sustain the Examiner’s rejection of claim 12 under
35 U.S.C. § 103(a).
Dependent claim 13
We are not persuaded that the Examiner erred in rejecting claim 13
under 35 U.S.C. § 103(a) by Appellants’ argument that paragraph [0033] of
Wetzer, on which the Examiner relies, fails to disclose or suggest that the
control processing unit is configured to “read a signal representative of
customer approval of the maintenance plan,” as recited in the claim (App.
Br. 11-12). Instead, we agree with and adopt the Examiner’s response to
Appellants’ argument as set forth at pages 52-53 of the Answer.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 13 under 35 U.S.C. § 103(a).
Dependent claims 5, 6, 8, 10, 14, 16, 21, 22, and 24
Appellants do not present any arguments for the separate patentability
of dependent claims 5, 6, 8, 10, 14, 16, 21, 22, and 24 except to assert that
the claims are allowable based on their dependency from allowed claims.
Because we are not persuaded that the Examiner erred in rejecting any
of the claims from which claims 5, 6, 8, 10, 14, 16, 21, 22, and 24 depend,
we will sustain the Examiner’s rejections of claims 5, 6, 8, 10, 14, 16, 21,
22, and 24 under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 1-8, 17-24, 26, and 28 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1-24 and 26-28 under 35 U.S.C.
§ 103(a) is affirmed.
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).
AFFIRMED
hh
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