Ex Parte Conrad

Patent Trial and Appeal Board

Jul 11, 2018

14577314 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/577,314 12/19/2014
130674 7590 07/13/2018
Lightfoot & Alford PLLC (BHTI)
4100 Eldorado Parkway
Suite 100-271
McKinney, TX 75070
FIRST NAMED INVENTOR
Kevin Conrad
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0021-00066 2993
EXAMINER
TEST ARD!, DAVID A
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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):
patentdocket@lightfootalford.com
lightfootalfordpllc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN CONRAD
Appeal2017-009720
Application 14/577,314
Technology Center 3600
Before WILLIAM A. CAPP, JEREMY M. PLENZLER, and
SEAN P. O'HANLON, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Bell Helicopter Textron, Inc. ("Bell") is identified as the Applicant on the
Application and Appellant identifies Bell as the real-party-in-interest.
Appeal Br. 1.
Appeal2017-009720
Application 14/577,314
THE INVENTION
Appellant's invention relates to an aircraft prognostics health system.
Spec. 1. Claim 9, reproduced below, is illustrative of the subject matter on
appeal.
9. A system for reassessing use of an aircraft component
installed on an aircraft, configured to:
receive at a usage/load unit, from one or more sensors
installed on the aircraft, one or more measurements
representative of at least one load applied against the aircraft
component;
determine by a damage unit, based on the received one or
more measurements and based on at least one other received
input to at least one of a usage model and a damage model, an
amount of change in probability of failure caused by application
of the at least one load against the aircraft component;
receive at the damage unit a change to one of the received
one or more measurements or the at least one other received
input; and
redetermine by the damage unit the change in probability of
failure based on the received change.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Schmidt
Johnson
US 8,262,019 B2
US 2013/0138332 Al
Sept. 11, 2012
May 30, 2013
Iyyer, Architecture for Dynamic Component Life Tracking in an
Advanced HUMS, RFID, and Direct Load Sensor Environment,
AHS Int'l Forum 65, May 27-29, 2009, Ft. Worth, TX.
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Application 14/577,314
The following rejections are before us for review:
1. Claims 1-16 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. 2
2. Claims 1-16 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention.
3. Claims 1-16 are rejected under 35 U.S.C. § 101 as directed to
unpatentable subject matter, namely, an abstract idea.
4. Claims 1, 4--9, and 12-16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schmidt and Johnson.
5. Claims 2--4 and 10-12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schmidt, Johnson, and Iyyer.
OPINION
In the Final Action, the Examiner rejected all of the pending claims
under the: (1) written description, (2) enablement, and (3) indefiniteness
provisions of Section 112. Final Action 8-15. 3 We analyze the
indefiniteness issue first before proceeding to the written description issue.
See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (the first inquiry is
definiteness).
When assessing compliance with section 112, analysis should
begin with the second paragraph of that section, Moore, 439
F.2d at 1235, because where the first paragraph of that section
uses the term "invention" it could only be referring to the
claimed invention as set forth by the applicant. Id. The initial
inquiry, therefore, is to determine whether the claims do set
2 A ground of rejection under 35 U.S.C. § 112(a) for lack of enablement has
been withdrawn by the Examiner. Ans. 3.
3 The non-enablement grounds of rejection has been withdrawn. Ans. 3.
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Application 14/577,314
forth a particular area with reasonable precision and
particularity.
Penda Corp. v. US., 29 Fed. Cl. 533, 553 (1993).
Section 112 (b) - Indefiniteness
The test for definiteness under 35 U.S.C. § 112, is whether "those
skilled in the art would understand what is claimed when the claim is read in
light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). The PTO can
properly reject a claim as indefinite if the claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear. In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014). The statutory standard to particularly point out and
distinctly claim the subject matter regarded to be the invention serves an
important public notice function. See Predicate Logic, Inc. v. Distributive
Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008). Section 112 places the
burden of precise claim drafting on the applicant. See In re Morris, 127 F.3d
1048, 1056-57 (Fed. Cir. 1997). During patent prosecution when claims can
be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed. See In re Zietz, 893 F.2d 319,
321 (Fed. Cir. 1989).
"damage unit"
The term "damage unit" appears in each of the independent claims,
which Appellant argues together. Claims App. claims, 1, 9; Appeal Br. 4--5.
We select claim 9 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). The
Examiner determines that "damage unit" should be analyzed under the
means-plus-function provisions of 35 U.S.C. § 112(±). Final Action 13.
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Application 14/577,314
The word "means" does not appear in claim 9. Claims App. Lack of
use of the word "means" creates a rebuttable presumption that Section 112(f)
does not apply. Williamson v, Citrix Online, LLC, 792 F.3d 1339, 1349
(Fed. Cir. 2015). The Williamson court recognized that generic terms such
as "mechanism " "element " and "device " are mere "nonce" words that are
' ' '
tantamount to using the word "means," because they typically do not
connote definite structure. Id. at 1350. Specifically, Williamson held that
the word "module" used in the phrase "distributed learning and control
module" is a nonce word substitute for "means." Id. at 13 50-51.
In the instant case, the Examiner finds that the Specification fails to
sufficiently identify and disclose structure that corresponds to the claimed
"damage unit." Final Action 13. The Examiner further finds that the
Specification does not include algorithms executed by a processor. Id.
In response, Appellant argues all three of the Examiner's then-
pending Section 112 rejections in a single paragraph under a single heading.
Appeal Br. 4--5. The arguments in traverse of the three different Section 112
grounds are co-mingled in a confusing manner that renders it difficult for us
to parse which arguments are specifically directed to the various individual
grounds of rejection. Appellant's brief fails to comport with our rules. See
37 U.S.C. § 4I.37(c)(iv) ("Each ground of rejection contested by appellant
must be argued under a separate heading, and each heading shall reasonable
identify the ground of rejection").
As best we are able to determine, Appellant merely argues that an
applicant is entitled to claims that are as broad as the prior art and
application will allow. Appeal Br. 4. Appellant deems the Examiner's
rejection "inappropriate" because the breadth of the claim is not to be
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Application 14/577,314
equated with indefiniteness. Id. at 4--5 (citing In re Miller, 441 F.2d 689
(CCPA 1971)).
In the Specification, Appellant makes the following statement
regarding means-plus-function claiming:
To aid the Patent Office, and any readers of any patent issued
on this application in interpreting the claims appended hereto,
applicants wish to note that they do not intend any of the
appended claims to invoke paragraph 6 of 35 U.S.C. § 112 as it
exists on the date of filing hereof unless the words "means for"
or "step for" are explicitly used in the particular claim.
Spec. 31. However, apart from the foregoing statement in the Specification,
Appellant does not challenge the Examiner's determination that "damage
unit" should be construed as a means-plus-function limitation. See generally
Appeal Brief. Appellant provides no argument or evidence that "damage
unit," read in light of the Specification and the surrounding claim language,
recites sufficient structure that the Examiner allegedly errs in resorting to
Section 112(±).
In response to the Appeal Brief, the Examiner correctly observes that
Appellant fails to address the specific issues raised in the Final Rejection.
Ans. 5.
We agree with the Examiner that the means-plus-function provisions
of Section 112(±) apply to claim 9.
If one employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112.
In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). Appellant's
"damage unit" is depicted as a black box in Figure 4A of the drawings. See
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Application 14/577,314
Fig. 4A ( element 460). The Specification provides the following description
of the "damage unit."
Part history/extraction/assembly unit 450 may extract
relevant usage/ load information for a specific component ....
Part/history/extraction/assembly unit 450 may provide the
relevant usage/ load information as well as identification of the
relevant usage models to damage unit 460.
Once the relevant component usage/load history has been
extracted, damage unit 460 may calculate an amount of damage
suffered by a component. In one example embodiment, damage
unit 460 may utilize damage models that are associated with the
usage models ( discussed with regard to part/history/
extraction/assembly unit 450) and/or the component ( e.g.,
component type). In some embodiments, damage unit 460 may
also estimate uncertainty in the damage calculations.
In some embodiments, damage unit 460 may calculate both
cumulative damage as well as historical damage. For example,
usage models and damage models may be subject to change,
and damage unit 460 may recalculate past damage using current
usage and damage models.
Spec. 23-24.
Read in light of the Specification and the surrounding claim language,
the Examiner correctly determines that "damage unit" should not be
construed as a structural term. In claim 9, "damage unit" performs the
function of determining an amount of change in probability of failure caused
by a load on an aircraft component. Claims App. Taken in the appropriate
context, "unit" is a mere nonce word substitute for "means" which is used to
perform the claimed function. The Examiner sufficiently rebuts the
presumption that Section 112(±) does not apply. Final Action 4--7, 13.
With the presumption successfully rebutted and the Examiner finding
a lack of corresponding structure, the burden shifts to Appellant to identify
sufficient corresponding structure to render the claim definite. Appellant
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Application 14/577,314
fails to make any showing in this regard. In particular, damage unit 460 is a
black box computational device of some sort that purportedly determines an
amount of change in the probability of failure of an aircraft component.
However, Appellant fails to identify any algorithm by which the damage
unit calculates an amount of damage suffered by a component.
In cases such as this, involving a claim limitation that is subject
to § 112 [(f)] that must be implemented in a special purpose
computer, this court has consistently required that the structure
disclosed in the specification be more than simply a general
purpose computer or microprocessor. E.g., Aristocrat Techs.
Aust!. Pty Ltd. v. Int'! Game Tech., 521 F.3d 1328, 1333 (Fed.
Cir. 2008) (citing WMS Gaming, Inc. v. Int'! Game Tech., 184
F.3d 1339 (Fed. Cir. 1999)). We require that the specification
disclose an algorithm for performing the claimed function. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir.
2008).
Williamson, 792 F.3d at 1353.
In view of the foregoing, we determine that Appellant's use of
"damage unit" in independent claim 9 renders the claim indefinite.
Claims 2-8 and 10-16, which depend, directly or indirectly, from either of
claims 1 or 9, respectively, suffer from the same infirmity. We sustain the
Examiner's Section 112(b) indefiniteness rejection of claims 1-16 by reason
of indefiniteness of the term "damage unit."
The Remaining Section 112(!) Rejections
In addition to the rejection based on "damage unit" discussed above,
the Examiner identified no less than nine (9) other terms, phrases, or other
usage of language (such as including method steps in a systems claim) that
render one or more of the pending claims indefinite. Final Action 12-15.
We have reviewed these additional rejections and find that they have
substantial merit.
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As previously discussed, Appellant's Appeal Brief co-mingles the
arguments regarding three separate grounds of rejection under a single
heading. Moreover, the arguments presented in the brief are abbreviated and
vague. See Appeal Br. 4--5. None of the arguments are specifically directed
to showing that any particular term or phrase identified by the Examiner is
definite. Id. Our rules require the following in regard to the argument
section of an Appeal Brief:
The arguments of appellant with respect to each ground of
rejection, and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the Record relied on. The
arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant.
37 C.F.R. § 4I.37(c)(iv). In the instant case, Appellant's arguments fail to
fairly meet the substance of the Examiner's section 112 rejections. More
particularly, Appellants fail to offer any argument, supported by citations to
the record and applicable law, that apprises us of any error in the Examiner's
indefiniteness rejections. Under the circumstances we adopt, as our own, the
Examiner's detailed findings and conclusions set forth in the Final Rejection
and Answer. Final Action 12-15, Ans. 5.
Accordingly, we sustain each of the indefiniteness rejections set forth
in pages 12 through 15 of the Final Rejection.
Section l 12(a) - Written Description
The written description requirement of 35 U.S.C. § 112(a) requires
that the disclosure of the application relied upon reasonably convey that the
inventor had possession of the claimed subject matter as of the filing date.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
( en bane). In view of our determination that all pending claims are
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unpatentable as indefinite, we do not reach the Examiner's section 112(a)
rejection. See 37 C.F.R. § 41.50(a)(l) (The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed). We do not deem it prudent to attempt to determine whether the
Appellant has "possession" of an invention that is not claimed distinctly and
with particularity in accordance with Section 112(b ).
Section 101- Unpatentable Subject Matter
In view of our determination that all pending claims are indefinite
under 35 U.S.C. § 112(b), we do not reach the Examiner's unpatentable
subject matter rejection. 37 C.F.R § 4I.50(a)(l).
Unpatentability over Schmidt and Johnson
In view of our determination that all pending claims are unpatentable
under the definiteness requirements of 35 U.S.C. § 112(b ), we do not reach
the Examiner's art rejections. 37 C.F.R. § 4I.50(a)(l).
DECISION
The decision of the Examiner to reject claims 1-16 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)(l )(iv).
AFFIRMED
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