10701419 (B.P.A.I. Oct. 30, 2009)

Ex Parte Bach

Board of Patent Appeals and InterferencesOct 30, 2009

10701419 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MARK C. BACH ____________ Appeal 2008-005737 Application 10/701,419 Technology Center 2100 ____________ Decided: November 02, 2009 ____________ Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAY P. LUCAS, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2008-005737 Application 10/701,419 2 The Appellant appeals rejected claims 16 and 17 under 35 U.S.C. § 134(a) (2002). Claims 1-15 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2008). We REVERSE. I. STATEMENT OF THE CASE The Invention The Appellant invented a method of servicing a system including a fuel cell thereby permitting a service person to enter a description of servicing method that is verified and validated by a third party. The validated description can be incorporated as a recommendation to be used as future servicing method (Spec. 12 l. 20-14 l. 15). The Illustrative Claim Claim 16, an illustrative claim, reads as follows: 16. A method of servicing a system including a fuel cell and at least one sensor operatively connected with the system, the method comprising the steps of: (a) generating information indicative of operation of the system; (b) communicating the information to a tool operatively connected with the system; (c) evaluating the information to determine if the system is operating as intended; (d) determining a recommendation for returning the system to intended operation; Appeal 2008-005737 Application 10/701,419 3 (e) entering into the tool a description of a method for returning the system to intended operation; (f) obtaining a verification of the description; (g) incorporating the verification as a recommendation; and (h) performing the recommendation such that the system is operating as intended. The Rejections The following rejection is before us for review: Claims 16 and 17 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Tveit. The Reference The Examiner relied upon the following prior art as evidence in support of rejections: Tveit US 2002/0087220 A1 Jul. 4, 2002 II. ISSUE Has the Appellant shown that the Examiner erred in finding that Tveit discloses “obtaining a verification of the description” and “incorporating the verification as a recommendation,” as recited in the independent claim 16? III. PRINCIPLES OF LAW Prima Facie Case of Unpatentability The allocation of burden requires that the United States Patent and Trademark Office (USPTO) produce the factual basis for its rejection of an Appeal 2008-005737 Application 10/701,419 4 application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). Appellant has the opportunity on appeal to the Board of Patent Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). Anticipation “[A]nticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim . . . .” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986) (citing Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1573 (Fed. Cir. 1984)). Inherency is not established by probabilities or possibilities. MEHL/Biophile Int’l Corp. v. Milgraum, 192 F. 3d 1362, 1365 (Fed. Cir. 1999) (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). That a certain thing may result from a given set of circumstance is not sufficient to establish inherency. Id. IV. FINDINGS OF FACT The following findings of fact (FFs) are supported by a preponderance of the evidence. Appeal 2008-005737 Application 10/701,419 5 1. Tveit discloses a step of inspector/repairman in consultation with Help Desk to make a repair plan (pg. 6, ll. 5-18). Tveit further describes the consultation/interaction as follows: In this interaction between Inspector and Help Desk, the Help Desk comes up with a solution to the problem, and takes proper action. If the problem can be solved immediately, the Help Desk guides the inspector on site in the repair and/or re- connection or re-booting of the component. If not, the Help desk identifies spare pats needed, repairs or other actions that must be taken. ([0036]) If they consider the error to be serious, they may decide to disconnect the transformer to avoid an even more serious error condition to arise. The helpdesk will first find out if any of the customers connected to this transformer are critical before making a disconnection decision. In any case, the Help Desk will make an assessment of the situation, and find a solution which may include a plan for repair or ordering of spare parts. ([0055]) V. ANALYSIS The Examiner set forth a detailed explanation of a prima facie case of obviousness in the Examiner’s Answer. Therefore, we look to the Appellant’s Briefs to show error in the proffered prima facie case. 35 U.S.C. § 102(b) With respect to claim 16, the Appellant contends that Tveit does not teach or suggest a step of validation or verification of a description entered by the inspector, nor does Tveit teach or suggest a step of incorporating the verification into a service process as a recommendation (App. Br. 4). In addition, “Tveit only describes that the inspector/repairman works with the Appeal 2008-005737 Application 10/701,419 6 Help desk to come up with a plan (Tveit, paragraph [0059]). The description does not indicate that subsequent validation or verification is performed for the repair plan.” (Reply Br. 2). Finally, “[t]he mere performance of the repair plan does not render the repair plan for subsequent recommendations or use. Consequently, the repair plan in Tveit is not incorporated into a service process as a recommendation, as described in claim 16.” (Reply Br. 3). The Examiner maintains that the claim language is anticipated by Tveit. The examiner respectfully submits that the documenting of the plan in consultation with the Help Desk is verifying the description. The examiner respectfully notes that the term verification has been given the broadest reasonable interpretation in light of the instant specification and prior art. Although the reference does not use the word verification, the repair man consults with the help desk (third party), for a recommended repair procedure and the decided solution is inherently verified by the agreement as a result of the consultation between the repairman and help desk. (Ans. 6 emphasis added). We disagree with the Examiner’s finding. To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting In re Oelrich, 666 Appeal 2008-005737 Application 10/701,419 7 F.2d at 581). Here, even though Tveit teaches the interaction between inspector and Help Desk (FF1), there is no express language for validating a repair plan entered by an inspector. The verification step is not necessarily present in the service process described in Tveit because the consultation/interaction between the inspector and Help Desk in Tveit is either that the Help Desk guides the inspector to repair or that the Help Desk finds a solution for the problem and makes a repair plan (FF1). Thus, the Examiner’s inherency reasoning, i.e., a repair plan results from the consultation with Help Desk is inherently verified, is not sufficient and must fail. Since there is no verification step taught by Tveit, we find that Tveit does not teach the step of incorporating the verification as a recommendation. The Examiner has not shown, and we do not readily find that Tveit discloses the argued limitations.1 Accordingly, we cannot sustain the anticipation rejection of claim 16. The rejection of dependent claim 17 contains the same deficiencies. Because we agree with at least one of the Appellant’s contentions, we reverse the anticipation rejection of claims 16 and 17. VI. CONCLUSION We conclude that the Appellant has shown that the Examiner erred in finding that Tveit discloses “obtaining a verification of the description” and “incorporating the verification as a recommendation,” as recited in the independent claim 16. 1 Our agreement with Appellant’s finding of error in the Examiner’s rejection under anticipation should not be construed as a finding of error under obviousness since such a rejection is not before us for review. Appeal 2008-005737 Application 10/701,419 8 VII. DECISION We reverse the Examiner’s rejection of claims 16 and 17. REVERSED rwk MCDERMOTT, WILL & EMERY 600 13TH STREET, NW WASHINGTON, DC 20005-3096