Ex Parte Snow et al

Patent Trial and Appeal Board

Nov 15, 2012

10757917 (P.T.A.B. Nov. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIEL D. SNOW and STANLEY H. COOKE
____________________

Appeal 2010-006859
Application 10/757,917
Technology Center 2100
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Before ROBERT E. NAPPI, HUNG H. BUI, and LYNNE E. PETTIGREW,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1-17. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 Real Party in Interest is Chrysler Group LLC. Appeal Brief filed November
24, 2009 (“App. Br.”).
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I. STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ claims are generally directed to a hint generating and
distribution system and a method for generating and distributing (on an
unsolicited basis) service/repair tips or hints to the service technician to
assist in correct diagnosis of an observed problem exhibited by a product
having at least one component part. See generally Spec. ¶¶0004-0006.
Claims on Appeal
Claims 1, 7 and 12 are independent. Claim 1 is representative and is
reproduced below with disputed limitations emphasized:

1. A method of assisting in correct diagnosis of a
problem exhibited by a product having at least one component
part, the method comprising:

inputting to a database description of the problem, a part
identifier for the at least one component part, a description of
the at least one component part, a product identifier, and at least
one hint for assisting in diagnosing the problem, wherein the at
least one hint includes a file that includes a suggestion from an
engineering group for resolving at least one of a failure mode
of the at least one component part and a repair related to the at
least one component part;

generating a hint file that includes the at least one hint in
the database and associating said hint file with the at least one
component part; and

downloading the hint file to a parts ordering system and a
parts catalog system in association with the part identifier prior
to a request to order the at least one part or an inquiry for the
part is made to the parts catalog system so that whenever said
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request to order the at least one part is entered into the parts
ordering system or said inquiry for the part is made to the parts
catalog system, the hint will be displayed.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Griffiths U.S. 2002/0116316 A1 Aug. 22, 2002
Squeglia U.S. 2002/0156692 A1 Oct. 24, 2002
Williams U.S. 2003/0055812 A1 Mar. 20, 2003
Demetriades U.S. 2004/0010578 A1 Jan. 15, 2004
(filed Jul. 6, 2001)

Examiner’s Rejections
(1) Claims 1, 5-6, 12 and 16-17 stand rejected under 35 U. S. C. §
102(e) as being anticipated by Williams (Ans. 3-9);
(2) Claims 2-4, 7, 10-11, 13-14 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Williams and Squeglia (Ans. 10-16);
(3) Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Squeglia, Williams, and Demetriades (Ans. 17); and
(4) Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Williams, Squeglia, and Griffiths (Ans. 17-18).

II. ISSUES
Under § 102(e), the dispositive issue on appeal is whether the
Examiner has erred in rejecting claims 1, 5-6, 12 and 16-17 as being
anticipated by Williams. In particular, the issue turns on whether Williams
discloses the claimed feature “hint includes a file that includes a suggestion
from an engineering group for resolving at least one of a failure mode of the
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at least one component part and a repair related to the at least one
component part” and the limitation “whenever said request to order the at
least one part is entered in a parts ordering system or said inquiry for the
part is made to the parts catalog system, the hint will be displayed,” as
recited in independent claim 1.
Under § 103(a), the dispositive issue on appeal is whether the
Examiner has erred in rejecting claims 2-4, 7, 10-11, 13-14 as being
unpatentable over Williams and Squeglia. In particular, the issue turns on
whether Williams and Squeglia disclose or suggest the claimed feature
“forwarding the refined hint file to an approval organization for review,
further refinement if necessary, and approval, resulting in an approved hint
file,” as recited in independent claim 7.

III. ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections and the Examiner’s responses to Appellants’
arguments. We are not persuaded by Appellants’ arguments and
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the final Office Action, and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief. We concur with the conclusions reached by the Examiner and further
highlight for emphasis the following:

§102 Rejection of Claims 1, 5-6, 12 and 16-17 over Williams

With respect to independent claim 1, Appellants contend that
Williams does not disclose the claimed feature “hint includes a file that
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includes a suggestion from an engineering group for resolving at least one
of a failure mode of the at least one component part and a repair related to
the at least one component part” and the limitation “whenever said request
to order the at least one part is entered in a parts ordering system or said
inquiry for the part is made to the parts catalog system, the hint will be
displayed,” as recited in independent claim 1. App. Br. 6. In particular,
Appellants argue that neither industry notes as described in ¶0070 nor user
notes (i.e., “my notes”) as described in ¶¶0071-0072 of Williams constitute
Appellants’ “hint” because these industry/user notes: (1) are not hints for
assisting in diagnosing the problem, (2) do not correspond to “a suggestion
from an engineering group for resolving at least one of a failure mode of the
at least one component part and a repair related to the at least one
component part” and (3) are not displayed “whenever said request to order
the at least one part is entered into the parts ordering system or said inquiry
for the part is made to the parts catalog system” as recited in independent
claim 1. App. Br. 7-9; Rep. Br. 5-6.
However, we are not persuaded by Appellants’ arguments. Claim
terms must be given their “broadest reasonable interpretation” consistent
with the specification. In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
According to the Webster’s New World Dictionary, 3rd College Edition, the
term “hint” of Appellants is defined as a “helpful suggestion; clue; or note”
and this definition is consistent with Appellants’ Specification. As such and
as correctly noted by the Examiner (Ans. 21), there is no distinction between
Appellants’ claimed “hint” as recited in independent claim 1 and the
industry notes provided from vehicle parts manufacturers to a user of the
vehicle parts monitoring system of Williams, via repair shops, as long as
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those industry notes can be used to resolve a failure or repair of a vehicle
part.
As noted by the Examiner, Williams discloses that:
“Such industry notes 398 may indicate, e.g., common
difficulties with a particular part, and other information that may be
of use to the user of the vehicle parts monitoring system 100.”

Williams, ¶0070 (emphasis added).
According to Williams, such other information may also include
“actual assembly manuals, repair shop manuals, and service manuals from
vehicle manufacturers and parts manufacturers,” or “[n]otes on assembly
drawings” (e.g., engineering notes or comments) so that parts can be
installed on a vehicle in accordance with engineering specifications to avoid
any mistakes. See ¶0084 of Williams. Likewise, such other information
can further include repair notes or other educational information to allow
“vehicle owners, service persons, or enthusiasts” who are interested in how
their particular vehicle is built and what goes into these vehicles, to perform
the associated repair on the actual vehicle. See ¶0108 of Williams.
In view of such a disclosure, we agree with the Examiner’s reasonable
interpretation that Appellants’ claimed feature “hint includes a file that
includes a suggestion from an engineering group for resolving at least one
of a failure mode of the at least one component part and a repair related to
the at least one component part” encompasses the industry notes that
Williams provides to assist in diagnosing a problem associated with a
vehicle. Ans. 20-21 (emphasis added). Likewise, we also agree with the
Examiner’s finding that such industry notes are displayed, via a graphical
user interface (GUI) 114, upon a request by a user “whenever said request to
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order the at least one part is entered into the parts ordering system or said
inquiry for the part is made to the parts catalog system” as recited in
independent claim 1. Ans. 18-19.
Appellants further argue that these “industry notes” are not “hints for
assisting in diagnosing the problem.” Rep. Br. 5-6. However, we disagree
since the vehicle parts monitoring system of Williams also provides repair
shop manuals, engineering notes on an assembly specification to avoid
mistakes during installation or repair notes to help a user to diagnose a
problem associated with a vehicle and to perform an associated repair on the
vehicle. See ¶0084 and ¶0108 of Williams.
For the reasons set forth above, Appellants have not persuaded us of
error in the Examiner’s anticipation rejection of the representative claim 1.
Accordingly, we will sustain the Examiner’s rejection of independent claim
1.
With respect to independent claim 12 and dependent claims 5-6, and
16-17, Appellants present no arguments regarding patentability of these
claims separately from independent claim 1. As such, claims 5-6, 12 and
16-17 fall together with independent claim 1. See 37 C.F.R. § 1.37(c)(1)(vii)
(stating that “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”).

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§103 Rejection of Claims 2-4, 7, 10-11 and 13-14 over Williams and
Squeglia
Appellants further contend that the combination of Williams and
Squeglia does not disclose or suggest the claimed feature “forwarding the
refined hint file to an approval organization for review, further refinement if
necessary, and approval, resulting in an approved hint file,” as recited in
independent claim 7, and argue that both Williams and Squeglia teach away
from this feature.
However, Appellants’ arguments are not persuasive. First, and as
correctly noted by the Examiner, an approval organization as recited in
independent claim 7 can be broadly and reasonably interpreted to read on a
recommendation authoring subsystem 182 included in a diagnosis and repair
system 140, shown in FIG. 7 of Squeglia, for selecting, based on all general
diagnosis, repair and technical information available, only that information
needed for a specific repair as associated with a specific vehicle. Second,
Williams already discloses different types of hints, including industry notes
or user notes (i.e., my notes) that can be displayed on a graphical user
interface (GUI) when a user selects the hint for particular vehicle parts for
repair/replacement of parts. Squeglia simply suggests that the
recommendation authoring subsystem could be used to serve as an approval
organization and to review and refine the industry notes or user notes (i.e.,
my notes) for information needed for a specific repair as associated with a
specific vehicle. See ¶0062 and FIG. 7 of Squeglia; Ans. 22-23.
In view of the Examiner’s findings, we see no reason why the
recommendation authoring subsystem as suggested by Squeglia cannot be
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implemented into the vehicle parts monitoring system of Williams, as both
Williams and Squeglia are directed towards the same vehicle parts
monitoring and replacement system. Nowhere in either Williams or
Squeglia is there any disclosure that teaches away from Appellants’ claimed
“forwarding the refined hint file to an approval organization for review,
further refinement if necessary, and approval, resulting in an approved hint
file,” as recited in independent claim 7.
With respect to dependent claims 2-4, 8, 10-11 and 13-15, Appellants
present no separate patentability arguments directed to additional disclosures
of Demetriades and Griffiths. Instead, Appellants merely repeat the
arguments that are set forth in relation to independent claims 7 and 12
regarding the alleged deficiencies of Williams and Squeglia, and allege that
Demetriades and Griffiths do not cure those deficiencies. (App. Br. 11-12;
Rep. Br. 7-8). However, these conclusory statements will not be considered
arguments for separate patentability of the claim. See 37 C.F.R.
§41.37(c)(1)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
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.”). Accordingly, for the reasons discussed above, we also sustain
the rejections of claims 2-4, 8, 10-11 and 13-15.
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V. CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting (1) claims 1, 5-6, 12 and 16-17 under 35 U. S. C. § 102(e) as
being anticipated by Williams; (2) claims 2-4, 7, 10-11, 13-14 under 35
U.S.C. § 103(a) as being unpatentable over Williams and Squeglia; (3) claim
9 under 35 U.S.C. § 103(a) as being unpatentable over Squeglia, Williams
and Demetriades; and (4) claims 8 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Williams, Squeglia, and Griffiths.

VI. DECISION
As such, we affirm the Examiner’s final rejections of claims 1-17
under 35 U.S.C. § 102(b) and §103(a).
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) (2011).

AFFIRMED

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