Rochester Institute of Technology

Patent Trials and Appeals Board

Jun 22, 2020

2020003631 (P.T.A.B. Jun. 22, 2020)

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.
13/861,000 04/11/2013 Nabil Nasr VNO 110 RA / 111393-22 1924
146446 7590 06/22/2020
Dinsmore & Shohl LLP
801 Pennsylvania Avenue, N.W.
Suite 610
Washington, DC 20004
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
abby.feldman@dinsmore.com
dcipdocket@dinsmore.com
kimberly.koen@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NABIL NASR and MICHAEL THURSTON
Appeal 2020-003631
Application 13/861,000
Patent 7,925,472 B2
Technology Center 3900
Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting reissue claims 1–10, 12–26, 28–42, 44–73, and 75, which
are all of the claims pending in the reissue application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Vnomics Corp. as the real party in
interest. Appeal Br. 2.
Appeal 2020-003631
Application 13/861,000
U.S. Patent No. 7,925,472 B2

2
TECHNOLOGY
The application relates to “optimizing utilization of one or more
assets” based on “historical maintenance data and life-cycle data.” Spec.
1:28–34.
ILLUSTRATIVE CLAIM
Reissue claim 1 is illustrative and reproduced below with annotations
indicating language changed from issued claim 1 of US 7,925,472 B2:
1. A method for optimizing utilization of one or more assets, the
method comprising:
obtaining at an optimization processing apparatus
operational data and physical condition data for one or more
elements of at least one of the assets and specification data,
historical maintenance data and life-cycle data for the one or
more elements of the at least one of the assets;
conducting with the optimization processing apparatus
one or more diagnostics on the one or more elements of the at
least one of the assets based on the obtained the operational data,
the physical condition data, and the retrieved specification data,
wherein the one or more elements each comprise one or more
components;
conducting with the optimization processing apparatus
one or more prognostics on the one or more elements of the at
least one of the assets based on the obtained operational data, the
physical condition data, the specification data, the historical
maintenance data and the life-cycle data;
determining one or more optimization instructions with
optimization processing apparatus for the at least one asset based
on the conducted diagnostics and prognostics and a plurality of
probabilities relating to a plurality of characteristics, with respect
to at least one of the components within the at least one of the
elements of the at least one of the assets, of the at least one of the
components completing a second operational duration relating to
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U.S. Patent No. 7,925,472 B2

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one of the characteristics after completing a first operational
duration relating to another of the characteristics based on each
operational duration of each component having an associated
probability of completion, wherein at least one of the conducting
one or more diagnostics and the conducting one or more
prognostics further comprises determining one or more
maintenance needs related to at least one of the one [of the one]
or more elements of the at least one of the assets in a near term
comprising before a first designated period of time and over a
long term comprising after the first designated period of time and
wherein the one or more optimization instructions are further
based on the determined near term and long term maintenance
needs; and
displaying with the optimization processing apparatus the
determined one or more optimization instructions.
REJECTIONS ON APPEAL
Claims 1–10, 12–26, 28–42, 44–73, and 75 stand rejected under 35
U.S.C. § 251 as being based upon new matter added to the patent for which
reissue is sought. Non-Final Act. 4.
Claims 1–10, 12–26, 28–42, 44–73, and 75 stand rejected under 35
U.S.C. § 112, first paragraph as failing to comply with the written
description requirement. Non-Final Act. 6.
Claim 75 stands rejected under 35 U.S.C. § 112, second paragraph as
indefinite. Non-Final Act. 8.
The Examiner withdrew the rejections under § 103. Ans. 4.
ISSUES
1. Did the Examiner err in finding that “a plurality of probabilities
relating to a plurality of characteristics . . . of the at least one of the
components completing a second operational duration relating to one of the
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U.S. Patent No. 7,925,472 B2

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characteristics after completing a first operational duration relating to
another of the characteristics based on each operational duration of each
component having an associated probability of completion,” as recited in
claim 1, constituted new matter under § 251 and lacked sufficient written
description support under § 112, first paragraph?
2. Did the Examiner err in concluding that “balancing near term
and long term maintenance needs against both operational requirements and
at least one of status of consumables, operational readiness, and degradation
or failures of at least one of the one or more elements of the at least one of
the assets” rendered dependent claim 75 indefinite?
ANALYSIS
New Matter
(§ 251)
Reissue claim 1 recites “a plurality of probabilities relating to a
plurality of characteristics . . . of the at least one of the components
completing a second operational duration relating to one of the
characteristics after completing a first operational duration relating to
another of the characteristics based on each operational duration of each
component having an associated probability of completion.” This limitation
was added during reissue and does not appear in issued claim 1. Similar
limitations appear in the other independent reissue claims, namely reissue
claims 17, 33, 49, 50–57, and 64. Appeal Br. 65.
By statute, “[n]o new matter shall be introduced into the application
for reissue.” 35 U.S.C. § 251(a). Here, the Examiner finds that the
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U.S. Patent No. 7,925,472 B2

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Specification does not support this limitation and the limitation therefore
constitutes new matter under § 251. Non-Final Act. 5.
Appellant relies on the Specification’s disclosure of one example
about predicting “an X % [chance] the battery will need to be recharged . . .
in two days and . . . a Y % chance the battery will no longer be able to
sufficiently hold a charge in two months.” Appeal Br. 27–28 (quoting Spec.
7:36–49). Appellant argues this provides probabilities (“X %”; “Y %”) for
characteristics (“required maintenance” of recharging the battery; “exceed
life expectancy”) of components (“alternator, starter, and/or battery”). Id. at
28. Appellant further argues that the completion of the “two months” (for
the Y %) comes “after” the completion of the “two days” (for the X %).
Reply Br. 3–4.
The Examiner, on the other hand, finds that the cited example fails to
address the “after completing” limitation. Ans. 5–6. Instead, the Examiner
looks to an example from the Specification in which “after two years a
component may have a 95% chance of still being operational after another
two years.” Spec. 5:22–26 (emphasis added); Ans. 6. Although this second
example may support the “after” portion of the claim language, the
Examiner finds it still is deficient because it at best involves the same
characteristic rather than the claimed “one characteristic” and “another
characteristic.” Ans. 6.
We agree with the Examiner that Appellant has not sufficiently
addressed the entirety of the claim language. Ans. 5–6. The claim does not
recite merely that the second duration is longer than the first duration, as
Appellant seems to argue. Instead, reissue claim 1 requires “probabilities
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. . . of . . . completing a second operational duration . . . after completing a
first operational duration . . . based on each operational duration . . . having
an associated probability of completion.” Appellant’s example of Y % is
merely a “probability of completion,” not a probability of completing “after
completing” the other duration. As the Examiner notes, Appellant’s Y %
chance “has no concern for whether or not it has already completed” the
second operational duration (e.g., the battery could die the very first day
before the “two days” were even completed). Ans. 5.
Accordingly, we sustain the Examiner’s rejection under § 251 of
claim 1, and claims 2–10, 12–26, 28–42, 44–73, and 75, which Appellant
argues are patentable for similar reasons. See Appeal Br. 28–29; 37 C.F.R.
§ 41.37(c)(1)(iv).
Written Description
(§ 112, first paragraph)
Appellant makes the same argument for written description under
§ 112, first paragraph as for new matter under § 251. See Appeal Br. 29–33;
Reply Br. 5–8. We are not persuaded for the same reasons.
Appellant’s additional conclusory assertion that “the predictable arts
are subject to a lower written description standard than those in the
unpredictable arts” is of no relevance here because Appellant has not shown
there is sufficient written description support of reissue claim 1 under any
standard. See Appeal Br. 31.
Accordingly, we sustain the Examiner’s rejection under § 112, first
paragraph of claims 1–10, 12–26, 28–42, 44–73, and 75.
Appeal 2020-003631
Application 13/861,000
U.S. Patent No. 7,925,472 B2

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Indefiniteness
(§ 112, second paragraph)
Dependent claim 75 recites “balancing near term and long term
maintenance needs against both operational requirements and at least one of
status of consumables, operational readiness, and degradation or failures of
at least one of the one or more elements of the at least one of the assets.”
The Examiner concludes that “[n]either the claim language nor the
specification identify specifically what the act of balancing would entail and
how one would determine what constitutes a balance between the near term
and long term needs, thus it is impossible to determine the coverage of this
claim language, rendering said language indefinite.” Ans. 10. “At best this
limitation appears to be a restatement of the overarching goals of the
invention . . . .” Id. at 11.
Although we agree with the Examiner that “verbatim” or “literal
support” does not necessarily resolve this rejection because this is an
indefiniteness rejection rather than a written description rejection, see Ans.
10, we agree with Appellant that a person of ordinary skill in the art would
have understood the limitation. See Appeal Br. 32–33. The claim as written
may be extremely broad, but “breadth is not indefiniteness.” SmithKline
Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005)
(quotation omitted). “Merely claiming broadly does not . . . prevent the
public from understanding the scope of the patent.” Ultimax Cement Mfg.
Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir. 2009).
Accordingly, we do not sustain the Examiner’s rejection under § 112,
second paragraph of claim 75.
Appeal 2020-003631
Application 13/861,000
U.S. Patent No. 7,925,472 B2

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DECISION
The following table summarizes the outcome of each rejection:
Claims Rejected Statute Basis Affirmed Reversed
1–10, 12–26, 28–
42, 44–73, 75
§ 251 New matter
in reissue
1–10, 12–26, 28–
42, 44–73, 75

1–10, 12–26, 28–
42, 44–73, 75
§ 112(a) Written
description
1–10, 12–26, 28–
42, 44–73, 75

75 § 112(b) Definiteness 75
OVERALL 1–10, 12–26, 28–42, 44–73, 75

TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED