Ex Parte Capotosto et al

Board of Patent Appeals and Interferences

Sep 14, 2010

11170125 (B.P.A.I. Sep. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313- 1450
www uspto go"
33438 7590 09/16/2010
HAMILTON & TERRILE, LLP
P.O. BOX 2035 18
AUSTIN, TX 78720
APPLICATION NO.
I EXAMINER I
WOOD, DAVID L
11/170,125 06/29/2005 Thomas Capotosto DC-06199 33 14
FILING DATE
I ARTUNIT I PAPERNUMBER I
BPAI
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
09/16/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte THOMAS CAPOTOSTO,
THOMAS KUNZ,
and DAVID ORNELAS
Appeal 2009-014040
Application 1 111 70,125
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014040
Application 1 11170,125
STATEMENT OF THE CASE
Thomas Capotosto et al. (Appellants) seek our review under 35 U.S.C.
5 134 (2002) of the final rejection of claims 1-7, 10-17, and 20. We have
jurisdiction under 35 U.S.C. 5 6(b) (2002). Claims 8-9 and 18-19 have been
canceled.
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
This invention is "a managed services system which provides
managed services with asset management." Specification 4: 2-3.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented method for managing
asset management information comprising:
creating, via a computer system, a detailed
record of an asset at the time of manufacture of the
asset; and,
systematically updating, via the computer
system, the detailed record of the asset in a closed
loop manner when an event that causes change to
the asset occurs, the detailed record of the asset
including logistics elements, the logistics elements
including a manufacture facility element, a parts
stocking information element, integration,
2 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed Feb. 20, 2009) and the Examiner's Answer ("Answer," mailed May 1,
2009).
Appeal 2009-014040
Application 1 11170,125
consolidation and merge elements, transport and
delivery elements, receipt and administration
requirements element, and asset deployment and
change management schedules elements.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
DeWolf US 200210032626 A1 Mar. 14, 2002
Carmody US 200310055749 A1 Mar. 20, 2003
The following rejection is before us for review:
1. Claims 1-7, 10-17, and 20 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Carmody and DeWolf.
ISSUE
The issue is whether claims 1-7, 10- 17, and 20 are unpatentable under
35 U.S.C. 9 103(a) over Carmody and DeWolf. Specifically, the issue is
whether Carmody or DeWolf teaches: 1) creating a detailed record of an
asset at the time of manufacture of the asset and 2) systematically updating
the detailed record of the asset in a closed loop manner when an event that
causes change to the asset occurs.
FINDINGS OF FACT
We find that the following findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Znc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
Appeal 2009-014040
Application 1 11170,125
1. We adopt the Examiner's findings of facts related to the rejection
of claim 1 as our own. See Answer 3-12.
ANALYSIS
The rejection of claims 1-7, 10-1 7, and 20 under §103(a) as being
unpatentable over Carmody and De Wolf.
Method Claims 1 - 7 and 10
The Appellants argue claims 1-7 and 10 as a group. Br. 2-5. We
select claim 1 as the representative claim for this group, and the remaining
claims 6-7 and 10 stand or fall with claim 1. 37 C.F.R. 5 41.37(c)(l)(vii)
(2009).
The Appellants argue that neither Carmody nor DeWolf separately
teaches: 1) creating a detailed record of an asset at the time of manufacture
of the asset and 2) systematically updating the detailed record of the asset in
a closed loop manner when an event that causes change to the asset occurs.
Br. 2-5.
First, we turn to the Appellants' argument that neither Carmody nor
DeWolf teaches creating a detailed record of an asset at the time of
manufacture of the asset. Br. 2-5. In response, the Examiner cites to
paragraphs [0031], [0102], [0104], [0107], and [0121] of DeWolf to teach
this limitation. Answer 7-9. While the Appellants reiterate the disclosure of
some of the cited portions of DeWolf (Br. 5), the Appellants then merely
assert that these cited portions do not teach the limitations as issue and do
not include any other explanation as to why one of ordinary skill in the art
would not have been led to the claimed limitation. See Br. 2-5. We note
that the Appellants admit that portions of DeWolf "generally disclose that
Appeal 2009-014040
Application 1 11170,125
the manufacture of a vehicle would create a vehicle asset record." Br. 5.
Therefore, we are not persuaded by this argument of the Appellants.
Next, we turn to the Appellants' argument that neither Carmody nor
DeWolf teaches systematically updating the detailed record. Br. 2-5. In
response the Examiner construes the term systematical to be "methodical in
procedure or plan;" "an organized or established procedure;" or "a regularly
interacting or interdependent group of items forming a unified whole."
Answer 9. The Examiner then finds that paragraph [0081] of Carmody and
paragraph [0008] of DeWolf teach this limitation. Answer 10. The
Appellants do not challenge the reasonableness of the Examiner's
construction nor do they address the Examiner's specific finding above that
Carmody and DeWolf teach this limitation. See Br. 2-5. We are not
persuaded by this argument of the Appellants.
Finally, we turn to the Appellants' third argument that neither
Carmody nor DeWolf teaches that the updating of the detail record is in a
closed loop manner. Br. 2-5. In response, the Examiner construes the term
"closed loop manner" to broadly encompass a "linkage of an asset to its
record, which is updated through out the lifetime of the asset" and asserts
that this is taught by Carmody's Abstract. Answer 10-1 1. Again, the
Appellants do not challenge the reasonableness of the Examiner's
construction of the term "closed loop manner" nor do they address the
Examiner's specific finding above that Carmody teaches this limitation. See
Br. 2-5. We are not persuaded by this argument of the Appellants.
We find that the Examiner has established a prima facie showing of
obviousness, which the Appellants' arguments have not overcome.
Appeal 2009-014040
Application 1 11170,125
Accordingly, we sustain the rejection of claims 1-7 and 10 under 35 U.S.C.
5 103(a) as being unpatentable over Carmody and DeWolf.
Apparatus Claims 11 -1 7 and 20
Unlike method claims 1-7 and 10, claims 1 1- 17 and 20 are directed to
an apparatus written in means-plus-function format. The Appellants argue
these apparatus claims together with method claims 1-7 and 10, discussed
above. See Br. 2-5. The Appellants' arguments are directed to the steps
recited in claim 1. Id. However, 35 U.S.C. 112, sixth paragraph states:
An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts
in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
While the Appellants' argument challenges whether the steps recited in
claim 1 are taught in the prior art, the Appellants' argument does not
challenge whether the Examiner's combination of Carmody and DeWolf
teaches the corresponding structure described in the Specification or an
equivalent. Br. 2-5. In the context of a means-plus-function claim, the
invalidating prior art must disclose not simply a means for achieving the
desired function, but rather the particular structure recited in the written
description corresponding to that function, or an equivalent thereof. See In
re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994).
Filing a Board appeal does not, unto itself, entitle
an appellant to denovo review of all aspects of a
rejection. If an appellant fails to present arguments
on a particular issue - or, more broadly, on a
Appeal 2009-014040
Application 1 11170,125
particular rejection - the Board will not, as a
general matter, unilaterally review those
uncontested aspects of the rejection. . . . Thus, the
Board will generally not reach the merits of any
issues not contested by an appellant.
In re Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Accordingly, we find that the Appellants have not overcome the
rejection of claims 1 1- 17 and 20 under 35 U.S.C. 5 103(a) as being
unpatentable over Carmody and DeWolf.
DECISION
The decision of the Examiner to reject claims 1-7, 10-17, and 20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
AFFIRMED
mev
HAMILTON & TERRILE, LLP
P.O. BOX 203518
AUSTIN TX 78720