Ex Parte Tomastik et al

Patent Trial and Appeal Board

Apr 13, 2015

11618802 (P.T.A.B. Apr. 13, 2015)

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.
11/618,802 12/30/2006 Robert N. Tomastik PA-085.11291-US (05-534) 6358
52237 7590 04/13/2015
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
SWARTZ, STEPHEN S
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
04/13/2015 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 ROBERT N. TOMASTIK, JIHUA WANG, HOWARD A.
WINSTON, JULIE A. IRELAND, BETH K. MATONAK, AND DAVID J.
SIRAG JR.
____________

Appeal 2012-007228
Application 11/618,802
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION
1
ON APPEAL

STATEMENT OF THE CASE
Appellants
2
appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–14. We have jurisdiction under 35 U.S.C. § 6(b).

1
Our decision references Appellants’ Appeal Brief (“App. Br.,” filed Nov.
15, 2011), Reply Brief (“Reply Br.,” filed Apr. 2, 2012), and the
Specification (“Spec.,” filed Dec. 30, 2006), and the Examiner’s Answer
(“Ans.,” mailed Feb. 1, 2012).
2
Appellants identify the real party in interest as United Technologies
Corporation (App. Br. 1).

Appeal 2012-007228
Application 11/618,802

2
STATEMENT OF THE DECISION
We AFFIRM-IN-PART.
INVENTION
The claimed invention relates to a method for optimizing maintenance
work schedules for fleet management programs (Spec. ¶ 1). Claims 1, 7, 8,
and 14 are independent. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A process for optimizing maintenance work schedules in a fleet
management program for at least one engine, comprising:

creating at least one possible LLP workscope decision for a first shop
visit;

creating at least one unscheduled engine repair scenario for each said
at least one possible LLP workscope decision;

selecting one of said at least one unscheduled engine repair scenario
for one of said at least one possible LLP workscope decision;

calculating at least one expected cost for said one of said unscheduled
engine repair scenario;

determining a lowest expected cost of said at least one expected cost
for said one of said unscheduled engine repair scenario;

selecting a workscope decision having said lowest expected cost for
said first shop visit; and

performing a repair upon an engine which follows said workscope
decision having said lowest expected cost.

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REJECTIONS
The following rejections are before us for review.
1. Claims 2, 7, 9 and 14 are rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement.
2. Claims 2, 7, 9, and 14 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite.
3. Claims 1–7 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
4. Claims 1, 3–6, 8, and 10–13 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Winston (US 2006/0111871 A1, pub. May 25, 2006)
and Official Notice.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.
3

ANALYSIS
Enablement Rejection
Claims 2, 7, 9 and 14
When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
specification; this includes, of course, providing sufficient reasons for
doubting any assertions in the specification as to the scope of enablement. If

3
See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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the PTO meets this burden, the burden then shifts to the Appellants to
provide suitable proofs indicating that the specification is indeed enabling.
In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)).
It is well-established law that the test for compliance with
the enablement requirement in the first paragraph of 35 U.S.C. § 112 is
whether the disclosure, as filed, is sufficiently complete to enable one of
ordinary skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
“Enablement is not precluded by the necessity for some experimentation.
However, experimentation needed to practice the invention must not be
undue experimentation. The key word is ‘undue,’ not ‘experimentation.”’
Id. at 736–737. To evaluate whether a disclosure would require undue
experimentation, the Federal Circuit has adopted the following factors to be
considered:
(1) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.

Id. at 737. Thus, the examiner's analysis must consider all the evidence
related to each of these factors, and any conclusion of non-enablement must
be based on the evidence as a whole. Id.
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Here the Examiner has failed to present a complete analysis with the
cited Wands factors and the burden of establishing lack of enablement has
not been met. The Examiner merely states “[i]t is not clear how the equation
provided helps the application find the optimum work schedule for the LLP
repairs taking into expected and unexpected situations” (Ans. 5). For this
reason, the rejection of claims 2, 7, 9, and 14 made under 35 U.S.C. § 112,
first paragraph is not sustained.
Indefiniteness Rejection
Claims 2, 7, 9 and 14
Claims 2, 7, 9, and 14 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite because the equation recited fails to provide
“the names of variables (i.e., E), [which according to the Examiner], must be
in the claim limitation” (Ans. 16).
Appellants contend that they are unaware of such a requirement and
specify the name of each variable of the recited equation as provided in the
Specification at paragraph 60 (App. Br. 12–13, Reply Br. 3–4).
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co.,
927 F.2d 1200, 1217 (Fed. Cir.1991)). “[T]he definiteness of the language
employed must be analyzed — not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
We agree with Appellants that one of ordinary skill in the art would
determine the name of each variable from a reading of the Specification.
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Therefore, we conclude that the Examiner erred in rejecting claims 2, 7, 9,
and 14 as indefinite.
Non-statutory Rejection
Claims 1–7
The Examiner concludes that claims 1–7 are directed to non-statutory
subject matter for failing the machine-or-transformation test, and hence,
ineligible subject matter for patenting under 35 U.S.C. § 101 (Ans. 6–7).
Appellants argue that because “an engine is being repaired using the
workscope decision…[w]hen one repairs an engine or performs work on it,
one transforms the engine” (Reply Br. 4–5). Thus, Appellants conclude “the
method is tied to the repair of a particular apparatus – namely the engine”
(id. at 5).
Subsequent to the filing of briefs in this appeal, the Supreme Court
in Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), reiterated the
framework set out previously in Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355.
The first step in the analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If they are directed
to a patent-ineligible concept, the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. at 2350 (quoting Mayo,
132 S. Ct. at 1297). In other words, the second step is to “search for an
‘inventive concept’––i.e., an element or combination of elements that is
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‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.” Id. at 2355 (quoting
Mayo, 132 S. Ct. at 1294).
In this case, claim 1 is drawn to a process for optimizing maintenance
work schedules in a fleet management program for at least one engine
including the steps of creating a workscope decision and an unscheduled
engine repair scenario for the workscope decision, selecting the unscheduled
repair engine scenario, calculating an expected cost for the selected scenario,
determining a lowest expected cost of said expected cost, selecting a
workscope decision having said lowest expected cost, and performing a
repair upon an engine based on the selected workscope decision having the
lowest expected cost. The claim is directed to the abstract idea of cost
optimization.
Having determined that the Appellants’ method claim is directed to a
patent-ineligible concept, we must now consider whether the claim contains
additional substantive limitations that narrow, confine, or otherwise tie down
the claim so that, in practical terms, it does not fully cover the abstract idea
itself. See Alice, 134 S. Ct. at 2357 (“we must examine the elements of the
claim to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application. A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’”) (citations omitted). Here, claim 1 fails to
even suggest the use of a computer in carrying out the process. Thus, the
recited claim limitations both individually and as an ordered combination
fail to transform the nature of the claim into a patent-eligible application.
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Additionally, claim 1's method step can largely be performed by a
human using a pen and paper. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011) (relying on the Supreme Court's
decision in Gottschalk v. Benson, 409 U.S. 63, 67 (1972), for the proposition
that “methods which can be performed mentally, or which are the equivalent
of human mental work, are unpatentable abstract ideas”). For example, the
steps can be performed either in the human mind, or by a human writing
down calculating the cost based on each scenario and selecting the lowest
cost scenario. Thus, in light of the analysis explained in Alice Corp.
and CyberSource, claim 1 is not directed to patent-eligible subject matter at
least because it is a mental process and hence an abstract idea.
Further, the Supreme Court recognized that, although not the sole test,
the “machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101.” Bilski, 130 S. Ct. at 3227. Here, claim 1 is not tied
to a particular machine or apparatus and does not transform
a particular article into a different state or thing. Id. at 3226 (citation
omitted); see also Digitech Image Techs. v. Elecs. for Imaging, Inc., slip op.
at 11 (Fed. Cir. July 11, 2014) (finding the method claims directed to an
abstract idea in-part because they are “not tied to a specific structure or
machine”). The performance of the repair on the engine is nothing more
than insignificant extra-solution activity, followed after the selection of the
workscope decision resulting from the optimization process. In other words,
“the claims simply instruct the practitioner to implement the abstract idea
with routine, conventional activity.” Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014). Under Alice, this is not sufficient “to
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transform an abstract idea into a patent-eligible invention.” See Alice, 134 S.
Ct. at 2360. Thus, the machine-or-transformation test provides further
support for our conclusion that independent claim 1 is directed to non-
statutory subject matter. Therefore, claim 1 does not recite any limitation
that, in practical terms, limits the scope of the claim so it does not fully
cover the abstract idea itself.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1–7 under 35 U.S.C. § 101.
Obviousness Rejection
Claims 1, 3–6, 8, and 10–13
The Examiner rejects independent claims 1, 7, 8, and 14 as
unpatentable over Winston in view of Official Notice (Ans. 8–9).
Appellants’ dispute the Examiner’s taking of Official Notice as
improper (App. Br. 17–20, Reply Br. 6–7).
In the Non-Final Rejection mailed on August, 31, 2010, the Examiner
stated:
Winston does not explicitly disclose performing this list of
tasks, but the examiner takes official notice that the reference
teaches finding the optimum cost of LLP work for expected and
unexpected work and then creates the task list of issues to
perform that it would be inherent to then perform this list of
tasks. Additionally, there is also an analysis that takes into
account history of past activities (see; pg. 6, par. [0039] of
Winston) this indicates that the work has been done in the past
and recoded indicating that the work is performed on the
engines. It would be obvious to one of ordinary skill in the art
at the time of the invention to expand the process of optimizing
maintenance work schedules of Winston to include actually
performing the repair, because this will make the database for
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historical information making the optimization of the expected
and unexpected repairs more accurate and therefore effective
(Non-Final Rejection 7).
Appellants filed a response on November 30, 2010 disputing the
Examiner’s taking of Official Notice based on inherency in Winston because
“there are many ways to arrive at costs,” refuted the teachings in paragraph
39 as proffered by the Examiner, and challenged the Examiner’s conclusion
of obviousness by requesting documentary evidence (see Amendment after
Non-Final 15–16).
In the Final Rejection mailed February 14, 2011, the Examiner fails to
address Appellants’ challenge to the Official Notice or provide any
documentary evidence (Final Act. 2–10).
We agree with Appellants that proper documentary evidence to
support the conclusion of obviousness by taking Official Notice here has not
been provided. It is not appropriate to rely solely on “common knowledge”
in the art without evidentiary support in the record, as the principal evidence
upon which a rejection was based. Zurko, 258 F.3d at 1385, 59 USPQ2d at
1697 (“[T]he Board cannot simply reach conclusions based on its own
understanding or experience—or on its assessment of what would be basic
knowledge or common sense. Rather, the Board must point to some concrete
evidence in the record in support of these findings.”). As such, we find the
Examiner improperly relied on Official Notice for core factual findings.
It is further unclear that the facts for which Official Notice is taken are
capable of instant and unquestionable demonstration as being well-known.
Thus, a prima facie case of obviousness has not been established, and
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therefore, the rejection of claims 1, 3–6, 8, and 10–13 under 35 U.S.C. § 103
is not sustained.
DECISION
The rejections of claims 2, 7, 9, and 14 under 35 U.S.C. § 112 are
reversed.
The rejection of claims 1–7 under 35 U.S.C. § 101 is affirmed.
The rejection of claims 1, 3–6, 8, and 10–13 under 35 U.S.C. § 103 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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