Ex Parte De et al

Patent Trial and Appeal Board

Dec 17, 2014

12198447 (P.T.A.B. Dec. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/198,447 08/26/2008 Soumen De P002499-RD-JMC 4074
65798 7590 12/17/2014
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
12/17/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte SOUMEN DE and PULAK BANDYOPADHYAY
____________

Appeal 2012-004728
Application 12/198,4471
Technology Center 3600
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Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and
GEORGE R. HOSKINS, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).

1 Appellants identify General Motors Global Technology Operations LLC,
as the real party in interest. Br. 3.

Appeal 2012-004728
Application 12/198,447

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Claim 11 reproduced below, is representative of the subject matter on
appeal.
11. A method for determining a factored miles value of a
vehicle that identifies vehicle value based on factors other than
actual miles driven and months in service, said method
comprising:
executing, using at least one computing device coupled to
a memory, instructions for:
collecting data concerning the vehicle or a group of
vehicles;
using the collected data to determine an accumulated
percent degradation of the vehicle or group of vehicles;
computing the factored miles value based on the
accumulated percent degradation; and
using the factored miles value to determine the vehicle
value.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ohmura US 2002/0103583 A1 Aug. 1, 2002
Dahlgren US 2005/0065711 A1 Mar. 24, 2005
The following rejections are before us for review.
Claims 1–6, 8–14, 16, and 18–20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ohmura.
Claims 7, 15, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ohmura in view of Dahlgen.

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Application 12/198,447

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ANALYSIS
Independent claim 11, the broadest independent claim, recites in
pertinent part,
[1] collecting data concerning the vehicle or a group of vehicles;
[2] using the collected data to determine an accumulated percent
degradation of the vehicle or group of vehicles;
[3] computing the factored miles value based on the accumulated
percent degradation; and
[4] using the factored miles value to determine the vehicle value.

The Examiner found that limitations [1] and [2] above are disclosed in
Ohmura at “Page 4 ¶ 53; Page 5 ¶ 62,63; Page 6 -7 ¶ 84; Page 8 ¶ 110, 113”
and limitation [2] is disclosed again by Ohmura at “Page 9 ¶ 129.”
Answer 5.
Our review of Ohmura however, at these sections reveals that the
cited sections only disclose the collection of raw data or “inspection results”
on the vehicle drawn to e.g., “collecting data regarding mileage, oil level, oil
deterioration, brake pad thickness, tire air pressure, air-conditioner coolant
level, and the like.” Ohmura, ¶ 129.
As to limitation [3], the Examiner then cites to page 9, paragraphs
129,130,131,132. Answer 6.
Our review of these paragraphs reveals that the server uses this data
only “to analyze the inspection data and determine the nature of the trouble”
in the vehicle. Ohmura, ¶ 131.
The Examiner then reasons that Ohmura discloses the computing
factored miles limitation at these sections because:
Appeal 2012-004728
Application 12/198,447

4
although Ohmura does not disclose or use the
exact terminology, i.e. “factored miles[,]” to
establish the current health of the vehicle the
Examiner asserts that one of ordinary skill in the
art, based on the appellant’s specification, that
“factored miles” to be nothing more than a result
that provides a user with the current
status/condition of the vehicle based on the
collected data. The Examiner asserts that the
computed factored miles value based on the
percent degradation of the vehicle, which is based
on collective data, is equivalent to Ohmura’s
method of gathering vehicle status information,
analyzing the data, and providing a
status/condition result of the vehicle to the user,
which is based on the collected data since the this
analysis is providing the overall health of the
vehicle).
Answer 9–10.
However, the claims recite “computing” a factored miles “value”
based on the accumulated percent degradation. Our review of the
Specification finds that “factored miles” is explicitly defined, namely, the
Specification states, “[t]he factored miles is a function of the percent
degradation as FM = Г(%D), and can be provided by a look-up table.”
Specification, ¶ 15.
We thus do not agree with the Examiner that the explicit definition of
FM = Г(%D) is met either inherently or otherwise by the process in Ohmura
which analyzes the inspection data and determines the nature of the trouble
because there is no final evaluation to derive a FM value or the like, but
instead the process results in a scheduled service appointment for the
defective part. See Ohmura ¶ 132. “A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
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Application 12/198,447

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inherently described, in a single prior art reference.” Verdegaal Bros. v.
Union Oil Co. of California, 484 U.S. 827 (1987).
For this reason we will not sustain the rejection of independent
claims 1, 11, and 16, which all contain these limitations in one form or
another, and claims 2–10, 12–15, and 17–20, which depend directly or
indirectly therefrom.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1–20 under 35
U.S.C. § 103.

DECISION
The decision of the Examiner to reject claims 1–20 is REVERSED.
REVERSED

rvb