Ex Parte Doeberl et al

Board of Patent Appeals and Interferences

Mar 27, 2012

10709230 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TERRENCE M. DOEBERL, PAUL E. DUEDALL,
MARK E. HOGAN, and JOHN D. GOLDSON
____________________

Appeal 2010-003781
Application 10/709,230
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-20. We affirm.

THE CLAIMED INVENTION
Appellants claim a system and method for managing business
machine assets (Spec. para. [0003]). Claim 1 is illustrative of the claimed
subject matter:

1. A method for providing asset physical placement analysis for
an organization comprising:
obtaining historical asset usage data over a plurality of
periods for a plurality of assets;
obtaining asset physical placement data associated with
the plurality of assets over the plurality of periods;
determining suggested alternate asset physical placement
data using the asset usage data and the asset physical placement
data; and
providing the suggested alternate asset physical
placement data.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Melby
Liang
US 6,952,680 B1
US 7,315,887 B1
Oct. 4, 2005
Jan. 1, 2008

REJECTIONS
The following rejections are before us for review.
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The Examiner provisionally rejected claims 1-20 on the ground of
obviousness-type double patenting over claims 1-5 and 11-24 of copending
Application 10/2496151.
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) over
Melby and Liang.

ISSUES
Did the Examiner err in rejecting claims 1-20 under a provisional
obviousness-type double patenting rejection over claims of a co-pending
application, given that the Examiner did not articulate the claim differences
when compared to claims of the other application?
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as obvious over Melby and Liang as disclosing determining an
alternative asset placement, or an alternative asset, since Melby discloses
analysis directed to asset utilization, and the ordinary artisan would
understand that an over-utilized or under-utilized asset should be moved or
replaced to more closely fit the asset to the need.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Melby discloses a “system for automatically gathering, analyzing, and
delivering information relating to the procurement and utilization of a
plurality of [] assets, such as a fleet of industrial equipment, so as to
maximize productivity and to reduce operating costs and administrative
burdens.” (Col. 2 ll. 41-46).

1 Currently on appeal to the Board.
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2. Melby discloses “analysis based on a pre-determined usage/pricing
matrix in combination with actual usage for a specified period of time.”
(Col. 14 ll. 33-35).
3. Melby discloses records documenting “the location at which the asset
11 is used” (Col. 4 ll. 45-52).
4. Melby discloses cost savings from equipment leases “through asset
monitoring and appropriate asset utilization” (Col. 3 ll. 15-20).

ANALYSIS
Rejection of Claims 1-20 for Double Patenting
Appellants argue error as to the Provisional Obviousness-Type
Double Patenting Rejection, because “the provisional rejection did not
compare the present claims to those in Application No. 10/249,615.”
In provisionally rejecting claims 1-20 under Section 101,
nonstautuory obvious-type double patenting (Answer 4) the Examiner stated
“[a]lthough the conflicting claims are not identical, they are not patentably
distinct from each other because the claims are directed to the same
invention.” (Ans. 4).
We agree with Appellants as to error in the current rejection, because
the Examiner applied an incorrect standard, based on the concept of “the
same invention.” If the claimed inventions are identical in scope, the proper
rejection is under 35 U.S.C. § 101 because an inventor is entitled to a single
patent for an invention. Miller v. Eagle Mfg. Co., 151 U.S. 186, 197 (1894).
“A good test, and probably the only objective test, for ‘same invention,’ is
whether one of the claims could be literally infringed without literally
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infringing the other. If it could be, the claims do not define identically the
same invention.” In re Vogel, 422 F.2d 438, 441 (CCPA 1970).
Instead, an obviousness-type double patenting rejection differs from a
statutory double-patenting rejection for “the same invention,” because an
obviousness-type double patenting rejection is based on a judicially-created
doctrine to “to prevent an unjustified extension of the term of the right to
exclude granted by a patent by allowing a second patent claiming an obvious
variant of the same invention to issue to the same owner later.” In re Berg,
140 F.3d 1428, 1431 (Fed. Cir. 1998). If the claims are not identical in
scope, the rejection should articulate:
... the differences between the inventions defined by the
conflicting claims - a claim in the patent compared to a claim in
the application; and (B) The reasons why a person of ordinary
skill in the art would conclude that the invention defined in the
claim at issue ... would have been an obvious variation of, the
invention defined in a claim in the patent.
See MPEP § 804(II)(B)(1). A provisional rejection, of course, compares
claims between co-pending applications, when the co-pending application
has not yet issued as a patent, since it may never issue. In re Wetterau, 356
F.2d 556, 558 (CCPA 1966).
Here, the Examiner made no comparison of the differences between
the claims on this application with those of the ‘615 application, and did not
articulate any reasoning as to whether the claims represent an obvious
variant, because the Examiner erroneously asserted they describe the “same
invention.” We thus find that the Examiner has not provided a reasoned,
fact-based explanation as to why the claims rejected in the provisional
obviousness-type double patenting rejection is rendered obvious by the
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claims cited in the co-pending application. See, e.g., Ex parte Whalen, 89
USPQ2d 1078, 1081 (BPAI 2008) (precedential).
Rejection of Claims 1-20 under 35 U.S.C. § 103(a)
Claims 1, 4, and 16
The rejection is affirmed as to claim 1. Appellant does not provide a
substantive argument as to the separate patentability of claims 4 and 16 that
depend from claim 1, which is the sole independent claim among those
claims. Therefore, we address only claim 1, and claims 4 and 16 fall with
claim 1. See, 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue Melby does disclose “any physical placement
analysis,” and Liang does not disclose “deciding where to place assets”
(Appeal Br. 11).
We are not persuaded by Appellants’ argument. We find Melby
discloses delivering and analyzing of asset utilization information relating to
the procurement and utilization of a plurality of assets, e.g., a fleet of
industrial equipment, so as to maximize productivity and to reduce operating
costs and administrative burdens. (FF 1) In so doing we find that Melby
utilizes historical usage information (FF 2), and discloses that location
information of each asset is recorded (FF 3). Moreover we find that Melby
discloses cost savings from equipment leases “through asset monitoring and
appropriate asset utilization” (FF 4), further buttressing the goal of
efficiency though monitoring which assets are used more than others. We
find one of ordinary skill in the art would infer from these findings (FF 1-4)
that because in Melby location is a metric used in the monitoring of assets
with an eye for maximizing productivity, that placing a lesser used asset in a
more usable location would be obvious. See, KSR Int'l. Co. v. Teleflex Inc.,
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550 U.S. 398, 418 (2007). (In making the obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”)
Appellants also argue, as to claim 1, “there is no disclosure in Melby
’60 of a replacement asset analysis ...” (Appeal Br. 11).
The arguments directed to “replacement” of an asset, at least as to
claim 1, fail because they argue a limitation not present in the claims. Claim
1 does not recite any requirement having to do with asset replacement,
because the claim instead recites only “physical placement analysis,”
“physical placement data,” and “alternative asset physical placement data.”
We construe “alternative asset physical placement data” to be asset physical
placement data that provides an alternate physical placement for an asset
which we found above would follow obviously from using location as a
metric in the monitoring of assets with an eye for maximizing productivity.
Rejection of Claim 2 under 35 U.S.C. § 103(a)
Dependent claim 2 recites, inter alia, “determining suggested alternate
asset data; and providing the suggested alternate asset data.”
Appellants argue “Melby ‘860 does not teach, describe or fairly
suggest determining a suggested alternate asset ...” (Appeal Br. 12).
As with suggesting alternative placement, as in claim 1, we find that it
would be within the skill of one of ordinary skill in the art to realize that if
an asset is under or over utilized at a given location, it would be obvious to
suggest replacing it with a more appropriate asset that matches the historical
usage, thus meeting the claim limitation.
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Rejection of Claim 3 under 35 U.S.C. § 103(a)
Dependent claim 3 recites, inter alia, “determining suggested second
physical placement data for the suggested alternate asset data; and providing
the suggested second physical placement data.”
Appellants argue, “Melby '680 does not teach, describe or fairly
suggest second physical placement data.” (Appeal Br. 12).
As with suggesting alternative placement, as in claim 1, or alternate
assets, as in claim 2, we find that it would be within the skill of one of
ordinary skill in the art to realize that if an asset is under or over utilized at a
given location, it would be obvious to both determine a replacement asset
and a new location for that asset, thus meeting the claim requirement.
Rejection of Claim 5 under 35 U.S.C. § 103(a)
Dependent claim 5 recites, inter alia, “the assets usage data is
categorized into peak and off-peak categories.”
Appellants argue, “Melby ‘860 does not teach, describe or fairly
suggest any peak time analysis.” (Appeal Br. 12).
We are not persuaded by Appellants' argument, because we find it
would have been obvious to one of ordinary skill in the art to categorize the
data into peak and off-peak categories, because such categorization of data is
a common practice in data analysis of utilization because it is necessary to
determine base lines to show where maximum demand occurs.
Rejection of Claim 6 under 35 U.S.C. § 103(a)
Dependent claim 6 recites, inter alia, “the suggested alternate asset
physical placement data is determined using a best fit algorithm.”
Appellants argue Melby does not “describe using a best fit algorithm.”
(Appeal Br. 12).
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The Examiner responded that a best fit algorithm is found at the error
checking algorithm of Melby (Ans. 9). Appellants did not respond to this
evidence, in that no reply brief appears in the record. Therefore, we find the
Examiner established a prima facie case, to which Appellants did not
attempt to rebut, and thus we affirm the rejection of claim 6.
Rejection of Claims 7 and 8 under 35 U.S.C. § 103(a)
Dependent claim 7 recites, inter alia, “determining suggested alternate
asset physical placement data using the asset usage data, the asset physical
placement data and the organization department physical location data.”
Appellants argue, “regarding claims 7-8 and 9-10, Melby '680 does
not teach, describe or fairly suggest department physical placement
determination.” (Appeal Br. 12).
We are not persuaded by Appellants' argument, because we find it
would have been obvious to one of ordinary skill in the art to locate an asset
in the department where it is used most efficiently, thus meeting the claim
requirement.
Rejection of Claims 9 and 10 under 35 U.S.C. § 103(a)
Dependent claims 9 and 10 recite, inter alia, “determining hierarchal
usage data” using data that includes “room number data.”
Appellants argue Melby does not disclose “hierarchal physical
placement determinations.” (Appeal Br. 12).
We agree with Appellants, because we do not find in Melby or Liang
any such determination of hierarchical usage data. We therefore cannot
sustain the rejection of claims 9 and 10.
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Rejection of Claims 11-15 and 20 under 35 U.S.C. § 103(a)
The rejection is affirmed as to claim 11. Appellants do not provide a
substantive argument as to the separate patentability of claims 12-15 and 20
that depend from claim 11, which is the sole independent claim among those
claims. Therefore, we address only claim 11, and claims 12-15 and 20 fall
with claim 11. See, 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 11 recites limitations similar to claim 1, and also
recites, inter alia, “determining peak usage for at least one of the physical
locations using the historical asset usage data and the physical asset
placement data.”
Appellants argue, “the Examiner does not suggest that the
combination of Melby ‘860 and Liang ‘887 teach peak usage
determinations.” (Appeal Br. 13).
We are not persuaded by Appellants' argument, because we find it
would have been obvious to one of ordinary skill in the art to categorize the
data into peak and off-peak categories, because such categorization of data is
a common practice in data analysis of utilization because it is necessary to
determine base lines to show where maximum demand occurs.
Rejection of Claims 17-19 under 35 U.S.C. § 103(a)
The rejection is affirmed as to claim 17. Appellants do not provide a
substantive argument as to the separate patentability of claims 18 and 19 that
depend from claim 17, which is the sole independent claim among those
claims. Therefore, we address only claim 17, and claims 18 and 19 fall with
claim 1. See, 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 17 recites, inter alia, “suggesting at least one
replacement asset for at least one of the plurality of assets using the
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historical asset usage data, the physical asset placement data and the
alternate asset data.”
Appellants argue, “the Examiner apparently does not suggest that the
combination of Melby '680 and Liang '887 teach any replacement asset
analysis.” (Appeal Br. 13).
We are not persuaded by Appellants’ argument. As with suggesting
alternative placement, as in claim 1, we find that it would be within the skill
of one of ordinary skill in the art to realize that if an asset is under or over
utilized, it would be obvious to suggest replacing it with an appropriate asset
that matches the historical usage, thus meeting the claim limitation.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-8 and 11-20 under 35
U.S.C. § 103(a) over Melby and Liang.
The Examiner erred err in rejecting claims 9 and 10 under 35 U.S.C.
§ 103(a) over Melby and Liang.
The Examiner erred in provisionally rejecting claims 1-20 on the
ground of obviousness-type double patenting.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-8 and 11-
20 is AFFIRMED. The Examiner’s rejection of claims 9 and 10 is
REVERSED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED-IN-PART

MP