Ex Parte Quadracci et al

Patent Trial and Appeal Board

Aug 25, 2017

12368047 (P.T.A.B. Aug. 25, 2017)

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.
12/368,047 02/09/2009 Leonard J. Quadracci 08-1044-US-NP 1156
122219 7590 08/29/2017
Miller, Matthias & Hull LLP/ The Boeing Company
One North Franklin, Suite 2350
Chicago, IL 60606
EXAMINER
RIFKIN, BEN M
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
bmatthias @ millermatthiashull. com
patentadmin @ boeing. com
ynunez@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARD J. QUADRACCI and BRIAN WARN
Appeal 2016-004852
Application 12/368,047
Technology Center 2100
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
KEVIN C. TROCK, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—6, 17, and 21—24, all the pending
claims in the present application. Claims 7—16 and 18—20 are canceled. See
Claim Appendix. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We REVERSE.
The present invention relates generally to assisting a user in
determining a cause of a manufacturing non-conformance situation in a
manufacturing application. See Abstract.
Appeal 2016-004852
Application 12/368,047
Claim 1 is illustrative:
1. A system for analyzing a cause of a specified
manufacturing non-conformance, the system comprising:
an associative learning memory including a
plurality of matrices pertaining to different manufacturing non­
conformances, each matrix including related entity values and
attribute values, the associative memory providing correlations
between each matrix relative to the other matrices; and
an entity analytics engine configured to perform a
search of the correlations with respect to a non-conformance
specified in a query, the search returning entity and attribute
values that do not include the specified non-conformance but
are highly correlated to the specified non-conformance.
Appellants appeal the following rejections:
Rl. Claims 1—6, 17, and 21—24 are provisionally rejected on the
ground of nonstatutory double patenting as being unpatentable over claims
1—4 of copending Application No. 12/368,024 (Final Act. 2—3);
R2. Claims 1—6, 17, and 21—24 are rejected under 35 U.S.C. § 112(a)
or35U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement (id. at 3—5);
R3. Claims 1—6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Whalen (US 2002/0059088 Al, May 16, 2002), Bruce
Kessler, Math Matters: Why Do I Need To Know This?, Western Kentucky
University, found at http://www.wku.edu/mathmatters/documents/
mathmattersepl3.pdf (2006) (“Kessler”) and Corey (US 5,987,446, Nov. 16,
1999) (id. at 3—10); and
R4. Claims 17 and 21—24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Whalen and Corey (id. at 11—14).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
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produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Double Patenting Rejection
Appellants argue that “[a] terminal disclaimer was filed and accepted
on February 28, 2012” with respect to the double patenting rejection (see
Reply Br. 4). USPTO records confirm this action. The Examiner does not
reference this argument or otherwise explain why the terminal disclaimer
would be ineffective in overcoming the nonstatutory double patenting
rejection (see Final Act. 2—3 and Ans. 2—5).
Because the obviousness double patenting rejection is provisional, it is
premature for the Board to address the rejection. Ex parte Moncla, 95
USPQ2d 1884, 1885 (BPAI 2010) (precedential). The Examiner is advised,
though, to seek out the aforementioned terminal disclaimer and, if
appropriate, withdraw the provisional double patenting rejection
accordingly.
Rejection under § 112, first paragraph
Issue 1: Did the Examiner err in finding that the claims fail to comply
with the written description requirement?
Regarding independent claim 1, the Examiner finds Appellants’
“figures and paragraphs do not contain this subject matter [, i.e., matrices].
At best, these paragraphs disclose rows of data, but at no time is it referred
to as a matrix, nor does it discuss there being multiple matrices that show
correlations between themselves” (Final Act. 4).
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Application 12/368,047
Appellants contend that “[t]he [EJxaminer errs because he appears to
require the exact language of the claims to set forth in the specification. . . .
[and] he ignores support in the specification” (App. Br. 12, citing Abstract
and H40, 54, and 60). We agree with Appellants.
As stated in Ex parte Parks, adequate written description “does not
require literal support for the claimed invention.” Ex parte Parks,
30 USPQ2d 1234, 1236 (BPAI 1993). As such, “a lack of literal support
does not, in and of itself, establish a prima facie case for lack of adequate
descriptive support. . . .” Id. “Rather, it is sufficient if the originally-filed
disclosure would have conveyed to one having ordinary skill in the art that
an appellant had possession of the concept of what is claimed.” Id.
Here, Appellants’ Specification discloses that “the entity analytics
engine 21... returns information that also indicates how well correlated the
retrieved entities and entity types are with the manufacturing non­
conformance information provided” (138). The Specification further
discloses that “[t]he entity types are arranged in rows . . . [whereby] [a]ll of
the entities associated 3081—308n [are] associated with each of the entity
types 306i—306n, respectively” (139); that the software provides “a list of
all the entities that are associated with the current non-conformance” and a
list of other entities that are similar (1 54); and that “all the specific entities
related to this particular radio non-conformance are associated with each
other” (1 60).
In other words, Appellants’ system includes an associative memory
populated with rows of entity types, with each entity type including at least
one entity, i.e., a row of entity types and a column of entities or vice versa
(see 139 and Fig. 4). That is, we understand Appellants’ Specification as
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Application 12/368,047
disclosing correlations provided between each row of data relative to the
other rows of data.
Turning to the disputed claim language, the ordinary and usual
meaning of a “matrix” is an arrangement of elements in rows and columns.
Merriam-Webster’s Collegiate Dictionary 733 (9th Edition 1990).
Furthermore, the broadest reasonable interpretation of “matrix” includes
arrangements of elements provided in a single row or column. Bronson,
Matrix Methods 1-2 (1970).
As such, we find the “matrix” of claim 1 to read on at least a one­
dimensional row or column of data. We further find that Appellants’
Specification sufficiently describes a one-dimensional (i.e., n x 1) matrix.1
In Appellants’ system, all specific entities related to a non-conformance are
associated with, i.e., correlated with, each other and also correlated with
entities similar thereto. Restated, we find that this feature requires a
1 There is a separate question, which we shall not address here, as to whether
Appellants’ originally filed Specification provides adequate written
description support for the full scope of the amended claim term “matrix,”
i.e., support for a multi-dimensional matrix, as well as a one-dimensional
matrix. In the event of further prosecution, we leave it to the Examiner to
consider whether the originally filed Specification reasonably conveys that
the inventor also had possession of the idea of providing correlations
between multi-dimensional matrices. See Gentry Gallery, Inc, v, Berkline
Carp., 134 F,3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998) (claims to a
sectional sofa comprising, inter alia, a console and a control means were
held invalid for failing to satisfy the written description requirement where
the claims were broadened by removing die location of the control means);
see also Enzo Biochem, Inc, v. Gen-Probe Inc,, 323 F.3d 956, 966 (Fed.
Cir. 2002) (the disclosure of only one species encompassed within a genus
adequately describes a claim directed to that genus only if the disclosure
“indicates that: the patentee lias invented species sufficient to constitute the
gen[us].”).
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Application 12/368,047
correlation between each one-dimensional matrix relative to the other one­
dimensional matrices in order to find entities similar thereto.
Regarding claim 17, the Examiner finds that Appellants’ Specification
at no time discloses that the associated memory subsystem automatically
creates correlations between each stored entity and all of the other stored
entities (Final Act. 4) (emphasis added). As noted above, though,
Appellant’s Specification indicates that the memory subsystem links non­
conformance entities “with the other entities as associated entities”
(Spec. 1 60) (emphasis added). We understand this disclosure to reasonably
conveys to one of ordinary skill that the non-conformance entities are
correlated to all of the other stored entities.
As such, we disagree with the Examiner’s finding that Appellants’
Specification fails to conveys to one having ordinary skill in the art that
Appellants had possession of the concept of what is claimed.
Accordingly, we do not sustain the rejection of the claims under
35 U.S.C. § 112, first paragraph.
Rejections under § 103(a)
Issue 2: Did the Examiner err in finding that Whalen is analogous
art?
Appellants contend that “Whalen is not from the same field of
endeavor as claim 17. . . . [and] Whalen is not reasonably pertinent to the
problem faced by the inventors” (App. Br. 6). Appellants further contend
that “Whalen identifies problems with public seminars . . . problems with
hiring consultants to provide on-site training remedies . . . [and] deficiencies
in on-line web sites . . . [whereas] [t]he inventors are concerned with the
deficiencies of hierarchal databases with respect to storing data” (id. at 6—7).
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The Examiner finds that “paragraph 0066 [of Whalen] directly relates
to the limitations found in the independent claims. . . . dealing with
manufacturing process efficiency/effectiveness ... ‘a gage error database’
. . . [and] ‘a process variation database’ ... the applicant has failed to point
out any particular limitations that cannot be met” (Ans. 21—22).
Although the Examiner highlights how Whalen pertains to specific
claimed limitations, the field of endeavor test “requires the PTO to
determine the appropriate field of endeavor by reference to explanations of
the invention’s subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention.” In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004) (citation omitted). Here, the Examiner
does not expressly state a determination of Appellants’ field of endeavor,
nor does the Examiner cite any evidence in the Specification supporting a
conclusion that Appellants’ field of endeavor is the same as the cited
references. See id. at 1326 (“[T]he PTO must show adequate support for its
findings on the scope of the field of endeavor in the application’s written
description and claims, including the structure and function of the
invention.”).
We note that the “Field” section of the Specification describes that
“[t]he present disclosure relates to associative learning memory systems . . .
especially well adapted for use investigating non-conformance instances in
manufacturing environment” (Spec. 12). Similarly, the “Summary”
likewise states “assisting a user in determining a cause of a manufacturing
non-conformance situation in a manufacturing application” (id. 19). In
describing the prior art upon which the invention improves, the Specification
discusses that “[a] challenge in present day manufacturing applications is a
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Application 12/368,047
lack of capability to rapidly and accurately identify the source of
manufacturing non-conformance instances” (id. 14). To the extent that the
Examiner’s use of the cited references, particularly Whelan, is based on a
determination that they are within Appellants’ field of endeavor, the
Examiner has not provided adequate support for that conclusion.
Likewise, the Examiner does not make any findings in support of a
determination that the cited references are analogous art under the second
test. “A reference is reasonably pertinent if... it is one which, because of
the matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). See also In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)
(“[I]t is necessary to consider “the reality of the circumstances’ ... — in
other words, common sense — in deciding which fields a person of ordinary
skill would reasonably be expected to look for a solution to the problem
facing the inventor.”). The Examiner does not identify the problem with
which Appellants are involved, or explain how the cited references,
particularly Whelan, are pertinent to that problem.
Instead, the Examiner merely alleges that Whelan discloses features
found in the claims themselves (see Ans. 21—22), instead of addressing the
particular problem raised by Appellants. Appellants emphasize the differing
problems addressed in Whelan as compared to the problem highlighted in
the present invention (see App. Br. 6—7, noting Whelan’s problems with
training seminars, including on-line web sites verses Appellants’ problems
with investigating non-conformance instances in manufacturing
environments). We find that the Examiner has not shown that Whelan
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Application 12/368,047
logically would have commended itself to an inventor considering this
problem.
Because the Examiner has not met the burden of establishing that
Whelan constitutes analogous art, we are constrained by the record before us
to find that the Examiner erred in rejecting claims 1—6, 17, and 21—24 as
being obvious in view of the cited combined references.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments.
Accordingly, we will not sustain the Examiner’s obviousness rejections R3
and R4 of claims 1—6, 17, and 21—24.
DECISION
We do not reach the provisional rejection of claims 1—6, 17, and 21—
24 for obviousness-type double patenting.
The decision of the Examiner to reject claims 1—6, 17, and 21—24
under 35U.S.C. § 112, first paragraph is reversed.
The decision of the Examiner to reject claims 1—6, 17, and 21—24
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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