Ex Parte Wilson et al

Patent Trial and Appeal Board

Apr 26, 2013

11165978 (P.T.A.B. Apr. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER A. WILSON, DANIEL J. SHERWINTER,
CRAIG M. FARNIOK, and TIMOTHY STUMPF
___________

Appeal 2011-001482
Application 11/165,978
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001482
Application 11/165,978

2
STATEMENT OF THE CASE
Peter A. Wilson et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the final rejection of claims 1, 3-7, 10-13, 18-20, and 22-23. We
have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of developing a plan for replacing a
part on an aircraft, the part having a mounting
portion that interfaces with a receiving portion of
the aircraft, the method comprising:
removing the part from the receiving portion of the
aircraft;
using a measurement device to scan the receiving
portion of the aircraft to acquire information about
at least one of dimensions, a position, and an
orientation of the receiving portion;
using a measurement device to scan the mounting
portion of the removed part;
using a computer to search a database of scanned
information about existing parts to find a
replacement part that best fits the scanned
receiving and mounting portions; and

1
Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed May 19, 2010) and the Examiner’s Answer (“Ans.,” mailed Jul. 21,
2010).

Appeal 2011-001482
Application 11/165,978

3
creating a repair plan for attaching the replacement
part to the receiving portion of the aircraft.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Costello
Imundo
US 2002/0007225 A1
US 2002/0166220 A1
Jan. 17, 2002
Nov. 14, 2002

The following rejections are before us for review:
1. Claims 22-24 rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2

2. Claims 1, 3-7, 10-13, 18-20, and 22-23 rejected under 35
U.S.C. § 103(a) as being unpatentable over Imundo and
Costello.

FINDINGS OF FACT
We find that the following findings of fact are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).

2
The Examiner does not include dependent claim 24 in the instant rejection.
Ans. 4. The Appellants include claim 24 in their response to the Examiner’s
rejection. Br. 13. As it appears the Examiner intended claim 24 to be
included in this rejection, based upon its dependency on independent claim
22, we have adopted the Appellant’s statement of rejection to include
dependent claim 24.
Appeal 2011-001482
Application 11/165,978

4
We adopt the Examiner’s findings of fact which appear on pages 5-9
of the Examiner’s Answer.

ANALYSIS
The rejection of claims 22-24 under 35 U.S.C. § 112, second paragraph, as
being indefinite
We are persuaded by the Appellants’ argument (Br. 13) that the
Examiner erred in rejecting claims 22-24 under 35 U.S.C. § 112, second
paragraph, as being indefinite. We agree with the Appellants that the
Examiner has not established that independent claim 22 is indefinite because
it is “confusing” that the body of the claim recites a computer. Ans. 4.
Accordingly, we reverse the Examiner’s rejection of claims 22-24 under 35
U.S.C. § 112, second paragraph, as being indefinite.

The rejection of claims 1, 3-7, 10-13, 18-20, and 22-23 under 35 U.S.C.
§ 103(a) as being unpatentable over Imundo and Costello
The Appellants do not provide separate arguments for claims 1, 3-7,
10-13, 18-20, and 22-23. Br. 6-9. We select claim 1 as the representative
claim for this group, and the remaining claims 3-7, 10-13, 18-20, and 22-23
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded of error by the Appellants’ argument that
Imundo only describes scanning a part to be replaced (i.e., mounting
portion), and as such, fails to teach or suggest “scanning the receiving
portion of the aircraft to acquire information . . . .” Br. 6. Imundo discloses
that its system “uses an accurate measurement of the part to be repaired and
the structure into which it fits” (Abs; see also ¶¶ [0022]; [0026].). That is,
Appeal 2011-001482
Application 11/165,978

5
we find this portion of Imundo discloses that its system scans the part to be
repaired/replaced and the structure into which it fits, which we find
corresponds to “the receiving portion of the aircraft,” as presently claimed.
Therefore, Imundo teaches or suggest the step “scanning the receiving
portion of the aircraft to acquire information about at least one of
dimensions, a position, and an orientation of the receiving portion.”
Additionally, while Appellants assert that Imundo “describes a
method for manufacturing a new part, not finding a replacement part” Br. 6,
we do not find this assertion to be persuasive, as the Examiner does not rely
on Imundo to address the step of finding a replacement part. Ans. 6-7. See
In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument
that a single reference alone does not disclose the recited claimed steps is not
persuasive because nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures).
To address this limitation, the Examiner relies on Costello. Ans. 7.
Costello is directed to a system for identifying replacement parts utilizing a
searchable database comprising detailed parts information about replacement
parts (¶ [0088]). While Appellants assert that “Costello only describes the
scanning of a bar code” to find a replacement part, which is not the same as
scanning the mounting and receiving portions (Br. 7), we find such an
assertion fails to appreciate the Examiner’s reliance on Imundo to address
the step of scanning the mounting and receiving portions, as discussed
above. See In re Merck & Co. Inc., 800 F.2d at 1097.
We are also not persuaded of error by the Appellants’ argument that
“Costello is not concerned with ordering the part that fits best.” Br. 8. To
Appeal 2011-001482
Application 11/165,978

6
address “a replacement part that best fits,” the Examiner reasons that “by
retrieving data [in Costello] about the selected equipment, it is understood
that the database is finding the part that fits bests.” Ans. 21. We agree with
the Examiner.
In making this determination, we note that Appellants’ Specification
does not include a lexicographic definition of the term “best fits.” To the
extent Appellants’ Specification does describe the term, it generally
describes a part that “best fits” as a part that requires the least changes.
(Spec. 5, ll. 15-28.) Therefore, giving the claim its broadest reasonable
construction in light of the specification (In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1369 (Fed. Cir. 2004)), we find that the database of
replacement parts, relied on by the Examiner in Costello, which is
searchable based on the scanned data obtained by Imundo, meets the
claimed step of “find[ing] a replacement part that best fits,” as Costello is
finding a part that “best fits,” based upon the data received by Imundo.
To the extent that Appellants additionally contend Costello fails to
teach or suggest finding a replacement part that “best fits,” because
“Costello doesn't provide the understanding that some replacement parts
might fit better than others” Br. 9, we do not find such an aspect to be set
forth in independent claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418
F.3d 1225, 1231 (Fed. Cir. 2005) (while the specification can be examined
for proper context of a claim term, limitations from the specification will not
be imported into the claims).
Accordingly, the rejection of claims 1, 3-7, 10-13, 18-20, and 22-23,
under 35 U.S.C. § 103(a) over Imundo and Costello is affirmed, for the same
reasons set forth above with respect to claim 1.
Appeal 2011-001482
Application 11/165,978

7

DECISION
The decision of the Examiner to reject claims 22-24 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The decision of the Examiner to reject claims 1, 3-7, 10-13, 18-20,
and 22-23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

ELD