Ex Parte Ellefson et al

Board of Patent Appeals and Interferences

May 22, 2012

11185170 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/185,170 07/20/2005 Jean Marie Ellefson 1776-0055 3700
76360 7590 05/22/2012
MAGINOT, MOORE & BECK LLP
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
CARTER, CANDICE D
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
05/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEAN MARIE ELLEFSON,
RAJINDERJEET SINGH MINHAS, and FEI XIAO 1
____________________

Appeal 2011-002841
Application 11/185,170
Technology Center 3600
____________________
Before, ANTON W. FETTING, KEVIN F. TURNER, and
MICHAEL W. KIM, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE2
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Xerox Corp. is the real party in interest.
2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 30, 2010) and Reply Brief (“Reply Br.,” filed September 20,
2010), and the Examiner’s Answer (“Ans.,” mailed July 19, 2010).
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THE INVENTION
Appellants’ disclosure relates to systems and methods for processing
service requests for office machine maintenance through call centers
wherein a customer service representative determines whether efforts to
solve a problem during a telephone session have a reasonable chance of
success. (Spec. ¶¶ [001], [007].)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for a call center, the system comprising:
a data acquisition controller coupled to a plurality of machines
and configured to receive a machine identifier and machine
status data from each machine in the plurality of machines and
to store the machine status data in association with the machine
identifier in a machine status database, each machine in the
plurality having a machine identifier that uniquely identifies
each machine in the plurality and the data acquisition controller
updates the machine status data stored in association with each
machine identifier with machine status data as machine status
data is received from the machine corresponding to the machine
identifier;
a service request generator configured to receive a machine
identifier from an input/output device coupled to a call center
access device for a customer service representative, the
machine identifier uniquely identifying one of the machines in
the plurality of machines, and to generate a service request that
includes the received machine identifier;
a machine status database controller coupled to the service
request generator and to the machine status database, the
machine status database controller configured to receive the
service request from the service request generator and to
retrieve machine status data corresponding to the machine
identifier of the service request from the machine status
database;
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a historical solution database controller coupled to the machine
status database controller and to a historical solution database,
the historical solution database controller configured to receive
machine status data from the machine status database controller
and to retrieve historical solution data from the historical
solution database corresponding to the retrieved machine status
data;
a service plan generator coupled to the service request generator,
the historical solution database controller, and the machine
status database controller, the service plan generator configured
to receive the retrieved historical solution data from the
historical solution database controller and the retrieved machine
status data from the machine status database controller, to
analyze the retrieved historical solution data and the retrieved
machine status data for selection of a solution, and to generate a
repair code for the service request that corresponds to the
retrieved machine status data and the retrieved historical
solution data and that identifies a selected solution as being a
remote solution or an on-site solution; and
the call center access device being coupled to the service plan
generator and configured to display the repair code received
from the service plan generator to identify a repair operation for
the machine in the plurality of machines that corresponds to the
machine identifier in the service request as being a remote
solution or an on-site solution.
(App. Br., Claims Appendix 18-19.)

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PRIOR ART REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Ogushi et al. 6,385,497 B1 May 7, 2002
Tonack et al. 7,133,804 B2 Nov. 7, 2006
Vyas et al. 2004/0073468 A1 Apr. 15, 2004
Hendrickson et al. 2004/0090341 A1 May 13, 2004
Johnson et al. 2004/0249515 A1 Dec. 9, 2004

The Examiner rejected the claims as follows:
Claims 1, 4-9, 12-17, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tonack, Vyas, Johnson, and Ogushi.
Claims 2-3, 10-11, and 18-19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tonack, Vyas, Johnson, Ogushi, and Hendrickson.

ISSUES3
Does the combination of Tonack, Vyas, Johnson, and Ogushi teach or
suggest “[a] historical solution database controller configured to receive
machine status data from [a] machine status database controller and to
retrieve historical solution data from the historical solution database
corresponding to the retrieved machine status data” and “a service plan
generator . . . configured to . . . generate a repair code for the service request
that . . . identifies a selected solution as being a remote solution or an on-site
solution,” as generally recited by independent claims 1, 9, and 17, such that

3 We have considered in this decision only those arguments that Appellants
actually raised in the Briefs. Arguments which Appellants could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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it renders the subject matter of claims 1, 4-9, 12-17, and 20 obvious under 35
U.S.C. § 103(a)?
Does the combination of Tonack, Vyas, Johnson, Ogushi, and
Hendrickson teach or suggest the limitations recited by claims 2-3, 10-11,
and 18-19 under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
Claim Construction
1. Appellants’ Specification describes that “machine status data” can
be inter alia “as simple as an on/off status of the electronic system . . . high
frequency service item information, service history data, machine history
data and the like . . . machine usage data machine configuration data value-
added diagnostic data such as trend information . . . .” (¶ [0022].)

Tonack
2. Tonack is directed to a method for requesting one or more
machines to be maintained which includes monitoring the machine or
machines and detecting when a failure of at least one machine occurs.
(Abs.)
3. Tonack describes entering data relating to the condition of the
failed machine into a computer program via the electronic terminal and
transmitting the data to database server 114. (Col. 6, ll. 38-67; See Fig. 3.)
4. Tonack describes that database server 114 is configured to receive
information from the controller relating to the condition of the machine or
machines and stores this information for further analysis. (Col. 3, ll. 36-40.)
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5. In Tonack, when a system operator selects the “Place Call” button
312 to initiate a service call, the request causes database server 114 to return
a potential corrective measure based on historical information. (Col. 7, ll. 1-
30.)
6. Tonack describes that its system compiles historical maintenance
data to inter alia predict future maintenance requirements and suggest
potential corrective measures to enable a machine operator to attempt to cure
the failed condition of the machine. (Col. 1, ll. 19-20 and Col. 3, l. 65 – Col.
4, l. 20.)
7. Tonack describes that a technician generates a repair code
associated with drop down menu which lists a number of repair codes
relating to the failed equipment. The repair code is transmitted to database
server 114 which allows other repair technicians to see that someone has
responded to the call and generally determined the nature of the call.
(Col. 8, ll. 46-62.)
8. Tonack describes that a technician can respond to a service call at
the physical location of the failed machine or evaluate the failed machine
remotely. (Col. 8, ll. 39-45.)

Ogushi
9. Ogushi is directed to a remote maintenance system which maintains
a trouble database based on status information to determine a trouble state
and corresponding countermeasure. If the same trouble state occurs again,
the system parses the trouble database for a registered countermeasure, and
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if possible, automatically restores the troubled equipment to a normal state.
(Col. 4, ll. 37-62.)

Hendrickson
10. Hendrickson is directed to an automated medical diagnostic
imaging system which analyzes system usage data to create bar charts that
identify trends and patterns to resolve error events that occur in monitored
machines and reduce service calls. (¶¶ [0036] – [0040].)

ANALYSIS
Claims 1, 4-9, 12-17, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tonack, Vyas, Johnson, and Ogushi.4
Appellants argue that the combination of Tonack, Vyas, Johnson, and
Ogushi fails to teach or suggest “[a] historical solution database controller
configured to receive machine status data from [a] machine status database
controller and to retrieve historical solution data from the historical solution
database corresponding to the retrieved machine status data,” as recited by
independent claim 1. (App. Br. 11; Reply Br. 2.) Independent claims 9 and
17 recite substantially similar limitations. Specifically, Appellants contend
that Tonack neither discloses a historical solution database controller nor
discloses a correspondence between the historical solution data and machine
status data retrieved from the machine status database. (App. Br. 12.)
We are not persuaded by Appellants’ arguments and agree with the
Examiner that Tonack discloses a historical solution database controller

4 We choose independent claim 1 as representative of claims 4-9, 12-17, and
20. See 37 C.F.R. § 41.37(c)(1)(vii).
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which receives machine status data and retrieves historical solution data
corresponding to the retrieved machine status data. (Ans. 4-5.) Specifically,
Tonack discloses that when a user initiates a service call, the user enters data
relating to the condition of one or more machines into an electronic terminal.
(FF 3.) These data are transmitted to, and stored, at database server 114.
(FF 4.) We find these data relating to the condition of one or more machines
to be equivalent to “machine status data.” This interpretation is reasonable
in light of the Specification which defines “machine status data” to include
data such as service history data and machine history data. (FF 1.) Thus, we
find that Tonack discloses a “machine status database controller,” as
presently claimed.
Moreover, Tonack discloses that database server 114 stores historical
information used to predict future maintenance requirements or to suggest
potential corrective measures, which we find equivalent to the claimed
“historical solution database controller.” (FF 5, 6.) While Appellants assert
that Tonack fails to disclose a historical solution database controller because
Tonack’s system only uses historical data in response to a technician’s query
(App. Br. 12; Reply Br. 2), we find this assertion fails to address the portion
of Tonack relied on by the Examiner. (See Ans. 14.)
Specifically, the portion of Tonack relied on by the Examiner teaches
that when a user enters data relating to the condition of the failed machine
into a computer program at the terminal, these data are transmitted to
database server 114, which causes database server 114 to return a potential
corrective measure based on historical information. (FF 3, 4.) Thus, we find
that Tonack discloses “[a] historical solution database controller configured
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to receive machine status data from [a] machine status database controller
and to retrieve historical solution data from the historical solution database
corresponding to the retrieved machine status data,” since the historical
solution data would necessarily be retrieved based upon the received
“machine status data.” Accordingly, Appellants’ arguments are
unpersuasive.
Additionally, Appellants argue that the combination of Tonack, Vyas,
Johnson, and Ogushi fails to teach or suggest “a service plan
generator . . . configured to . . . generate a repair code for the service request
that . . . identifies a selected solution as being a remote solution or an on-site
solution,” as recited by independent claim 1. (App. Br. 13-14; Reply Br. 3.)
Independent claims 9 and 17 recite substantially similar limitations.
Specifically, Appellants assert that the record is devoid of any evidence that
the repair code in Tonack indicates whether the repair is performed locally
or remotely. (App. Br. 13.)
In response, the Examiner finds that the asserted combination
discloses a service plan generator which displays repair codes corresponding
to the nature of the service call. (Ans. 5-6; See also FF 7, 8.) However, the
Examiner determined that “the generation of a repair code that includes
identifying a selected solution as being a remote solution or an onsite
solution to be nonfunctional descriptive material.” (Ans. 9; See also Final
Office Action mailed October 26, 2009, p. 7.) We agree with the Examiner.
Specifically, we agree with the Examiner that Appellants’ alleged
distinction falls within nonfunctional descriptive material. While we
acknowledge that the repair code generated by Tonack (FF 7, 8) fails to
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explicitly identify whether the repair is performed locally or remotely, we
find that this identification does not alter the manner in which the substrate
functions such that it serves to distinguish the claim in terms of patentability.
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
Therefore, if we remove this identification from the claim, we are left with a
system that generates and subsequently displays a repair code for a service
request, which Tonack’s system performs.
As such, we find that the Examiner has relied on the combination of
Tonack, Vyas, Johnson, and Ogushi to disclose a service plan generator
configured to generate a repair code for a service request that identifies a
selected solution, with the exception that the repair code does not identify
the solution as being a remote solution or an on-site solution. (Ans. 15.)
However, because we find the information which makes up the repair code
is nonfunctional descriptive material, we find that the Examiner’s
combination of Tonack, Vyas, Johnson, and Ogushi sets forth a prima facie
case of obviousness.
Therefore, the burden is now on Appellants to identify steps in claim
1, without reference to the information which makes up the repair code, that
are not rendered obvious by the combination or to show how the information
which makes up the repair code fundamentally alters the manner in which
the system would operate. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“[o]nce a prima facie case of obviousness [is] established . . . the burden
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shift[s] to appellant to rebut it”). However, Appellants’ briefs fail to present
any such evidence.
Accordingly, Appellants have not persuaded us of error in the
rejection of representative claim 1, and as such, we will sustain the
Examiner’s rejection of claims 1, 4-9, 12-17, and 20 as unpatentable over
Tonack, Vyas, Johnson, and Ogushi under 35 U.S.C. § 103(a).

Claims 2-3, 10-11, and 18-19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tonack, Vyas, Johnson, Ogushi, and Hendrickson. 5
Appellants assert that “Hendrickson does not teach or suggest a
service plan generator that builds a histogram and generates a repair code
that identifies a most frequent solution identified by the histogram as the
selected solution,” as generally recited by claim 2. (App. Br. 16; Reply Br.
4.) Specifically, Appellants assert that the bar chart of Hendrickson
identifies usage data, not solutions. (App. Br. 16.)
We are unpersuaded by Appellants’ assertion as it attacks the
references separately, even though the rejection is based on the combined
teachings of the references. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Contrary to Appellants assertion, the Examiner
does not rely on Hendrickson to disclose a service plan generator or to
generate a repair code that identifies a solution. (Ans. 13.) Rather, the

5 We take claim 2 as representative of claims 3, 10-11, and 18-19. See 37
C.F.R. § 41.37(c)(1)(vii).
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Examiner relies on Hendrickson to teach a bar chart which identifies trends
and patterns to resolve errors. (FF 10.)
To address the remaining limitations of claim 2, the Examiner relies
on the asserted combination. (Ans. 12-13.) Specifically, the Examiner relies
on Ogushi to generate a repair code that identifies a solution. (FF 9.) Thus,
we find that the combination of Tonack, Vyas, Johnson, Ogushi, and
Hendrickson teaches or suggest “a service plan generator that builds a
histogram and generates a repair code that identifies a most frequent solution
identified by the histogram as the selected solution,” as generally recited by
claim 2.
Accordingly, Appellants have not persuaded us of error in the
rejection of representative claim 2, and as such, we will sustain the
Examiner’s rejection of claims 2-3, 10-11, and 18-19 as unpatentable over
Tonack, Vyas, Johnson, Ogushi, and Hendrickson under 35 U.S.C. § 103(a).

CONCLUSIONS
We conclude that the combination of Tonack, Vyas, Johnson, and
Ogushi teaches or suggests “[a] historical solution database controller
configured to receive machine status data from [a] machine status database
controller and to retrieve historical solution data from the historical solution
database corresponding to the retrieved machine status data” and “a service
plan generator . . . configured to . . . generate a repair code for the service
request that . . . identifies a selected solution as being a remote solution or an
on-site solution,” as generally recited by independent claims 1, 9, and 17,
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and as such, renders the subject matter of claims 1, 4-9, 12-17, and 20
obvious under 35 U.S.C. § 103(a).
We conclude that the combination of Tonack, Vyas, Johnson, Ogushi,
and Hendrickson teaches or suggests the limitations recited by claims 2-3,
10-11, and 18-19 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED

KMF