Ex Parte Mahoney et al

Board of Patent Appeals and Interferences

Jun 5, 2009

09801298 (B.P.A.I. Jun. 5, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte MICHAEL J. MAHONEY, ROGER A. RONDOT, BRIAN L.
HALLIDAY, and JOSEPH B. CONNOLLY
___________

Appeal 2008-003169
Application 09/801,298
Technology Center 3600
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Decided: 1 June 5, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. MOHANTY,
Administrative Patent Judges.

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FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
1 The two month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).

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Michael J. Mahoney, Roger A. Rondot, Brian L. Halliday, and Joseph B.
Connolly (Appellants) seek review under 35 U.S.C. § 134 of a non-final rejection
of claims 1-18, the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).

We AFFIRM.
The Appellants invented a way for user-friendly computer-implemented
vehicle repair claim processing. Repair data is received related to repair of a
vehicle to which repair claim expert rules determine at least one response. The
repair claim expert rules include repair claim-related premises and repair claim-
related actions. At least one of the repair claim-related premises uses the received
repair claim data to determine whether a preselected repair claim-related action
should be executed (Specification 2:15-23).
An understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below [bracketed matter and some paragraphing
added].
1. A computer-implemented vehicle repair claim processing method
having a computer system, comprising the steps of:
[1] receiving
with the computer system
repair claim data related to repair era vehicle;
[2] having the computer system determine
at least one response to the input repair claim data
based upon the received input repair claim data
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by using expert rules stored in a knowledge based system of the
computer system,
said repair claim expert rules including
repair claim-related premises and
repair claim-related actions,
wherein the computer system
uses at least one of the repair claim-related
premises
to determine whether a preselected repair
claim-related action should be executed
based on the received repair claim
data and
generates a claim-related response
based on said preselected repair claim-
related action, [sic ;] and
[3] having the computer system make said expert rules accessible
by a user
in a high level computer expression format.
This appeal arises from the Examiner’s Non-Final Rejection, mailed October
19, 2006. The Appellants filed an Appeal Brief in support of the appeal on March
8, 2007. An Examiner’s Answer to the Appeal Brief was mailed on July 17, 2007.
A Reply Brief was filed on September 13, 2007.
PRIOR ART
The Examiner relies upon the following prior art:
Abdel-Malek US 6,959,235 B1 Oct. 25, 2005
Sampath US 6,892,317 B1 May 10, 2005
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REJECTION
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Abdel-Malek and Sampath.
ISSUES
The issue of whether the Appellants have sustained their burden of showing
that the Examiner erred in rejecting claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Abdel-Malek and Sampath turns primarily on whether either
reference is directed to claim processing; Abdel-Malek processes claims; Abdel-
Malek’s describes expert rules; the art discloses making expert rules accessible in a
high level computer expression format; and Sampath processes action requests for
repair claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “repair claim.”
02. The ordinary and customary meaning of “claim” is a demand for
something as rightful or due.2 Accordingly a repair claim is a demand
for repair as rightful or due.
03. The disclosure contains no lexicographic definition of “processing.”

2 American Heritage Dictionary of the English Language (4th ed. 2000).
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04. The ordinary and customary meaning of “processing” is the gerund of
the verb “process” which means to move along in or as if in a
procession.
05. The disclosure contains no lexicographic definition of “expert rule.”
06. The ordinary and customary meaning of “rule” within the context of a
system applying rules is a usual, customary, or generalized course of
action or behavior or a generalized statement that describes what is true
in most or all cases. Thus an expert rule is a general course of action or
statement of what is true in most cases devised by one with expertise in
the matter.
07. The disclosure contains no lexicographic definition of “high level.”
08. The ordinary and customary meaning of “high level” is being at an
elevated level in rank or importance, or in a computer science context,
relating to, or being a language, such as BASIC or Pascal, in which each
instruction or statement corresponds to several instructions in machine
language.
Abdel-Malek
09. Abdel-Malek is directed to receiving repair recommendations and
related information from a central diagnostic and repair service center at
a remote location, for repairing, for instance, a railroad locomotive
(Abdel-Malek 1:9-11).
10. Abdel-Malek describes providing maintenance and repair information
to the technician in real time at the site where the item for repair is
located. There is a communications link between the remote site, where
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the locomotive is parked, and a centrally-located monitoring and
diagnostic service center (MDSC). A plethora of information is stored in
the MDSC and readily accessible by the technician at the remote site. A
detailed record of the repair event is captured for subsequent validation
of the repair's efficacy and for maintenance of a complete locomotive
repair history. Abdel-Malek provides direct access to diagnosis and
repair recommendations and documentation for a specific locomotive
road number. These repair recommendations are generated at the
monitoring and diagnostic service center by experts in locomotive
trouble shooting and repair. A portable unit displays information related
to execution of the repair, including individual repair steps and
diagnostic tasks that may be necessary to isolate certain locomotive
subsystems, to either eliminate or confirm a suggested repair
methodology. The expert recommendations are supplemented by repair
information, such as schematics, maintenance manuals, and other
technical documentation stored at the MDSC and made available at the
portable unit (Abdel-Malek 2:31-61).
11. Abdel-Malek describes how repair parts can be ordered and tracked
and warranty information can be accessed and warranty claims
submitted. The availability of all this information at track side allows the
repair process to be moved from the repair shop to run-through or
service track sites. The portable unit communicates with the locomotive
on-board monitoring systems for downloading or uploading fault and
parametric operational data collected during operation (Abdel-Malek
3:1-14).
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12. Abdel-Malek describes how the technician has access to a plethora of
repair, diagnostic, and operational information needed to trouble shoot
locomotive problems and undertake the necessary repairs. The portable
unit downloads repair recommendations generated by analysis software.
From the portable unit, the technician also has access to repair resources,
such as repair manuals, field modification instructions, schematics, block
diagrams, etc. Special software tools related to the repair task arc also
available at the portable unit. The portable unit allows easy and seamless
integration of the repair recommendation with the railroad's work
order system and provides parts ordering and parts tracking via
communications with the parts requisition center (Abdel-Malek 4:62 –
5:11).
13. Abdel-Malek describes using an on-board monitoring system for
monitoring and recording data related to various operational aspects. The
on-board monitoring system identifies faulty components and provides
fault codes for use by the repair technician in diagnosing the problem.
This operational information is extremely important in the diagnostic
and repair process. In some cases, depending upon the nature of the fault
or anomalous condition, the on-board monitor automatically transmits
this information back to the MDSC, where a repair recommendation is
formulated and then made available to the portable unit (Abdel-Malek
6:25-51).
14. Abdel-Malek describes how the repair status subsystem creates
an entry in the locomotive history database for an instantiated
recommendation. The recommendation is compiled, which involves
pulling together all the repair steps, web pages, technical documents,
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and data entry items for the recommendation and placing them in the
recommendation queue. A top level web page is generated for the
recommendation. The top level page contains the case number, railroad
case number (if one is assigned), date of the recommendation, due date
for the repair, locomotive road number, service yard or service shop
where the repair is to be performed, and a brief overview of the repair. A
web page listing all of the repair steps is also generated. Each step will
prompt the technician to enter data as the repair proceeds. If the repair
status subsystem already contains information about the repair, because
the repair was partially completed and reported in a prior session, the
data entry objects already in the repair status subsystem will appear as
the initial values in the data collection objects (Abdel-Malek 18:56 –
19:18).
15. Abdel-Malek describes how, when the repair expert defines a repair
step in a general repair recommendation, he selects the repair action
from a predefined list of coded repair steps (Abdel-Malek 21:11-14).
16. Abdel-Malek describes how its technical documentation is indexed.
These indexes provide quick identification of document subsets. For
example, the indices can support identification of all documentation
pages related to a specific part number, a specific part name, or a repair
process name. The stored documents are: parts catalogs, wiring and parts
schematics, maintenance manuals, fault analysis pages, back shop
manuals, field modifications instructions, training instructions, part
identification animations, and assembly animations (Abdel-Malek 21:31-
45).
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Sampath
17. Sampath is directed to interconnecting electronic systems to a
diagnostic server which receives data that can be as rudimentary as
machine operational status to highly complex data that could, for
example, indicate a particular component failure or be used for future
failure prediction analyses, or for scheduling of routine maintenance.
This data allows for the determination of system faults and provides for
the initialization of corrective or repair action (Sampath1:36-50).
18. Sampath describes prediction information as any status information
which is pertinent to determining whether an action should be taken to
avoid a particular impending outcome. The prediction and diagnostic
analysis can be based on a variety of analysis techniques including, but
not limited to, threshold analysis, statistical analysis, signature analysis,
trend analysis, timing analysis, event sequence analysis, pattern analysis,
image processing techniques, quantitative and qualitative state
estimation techniques, model based diagnostic technologies, look-up
tables, neural network based analysis, fuzzy logic based analysis, a
bayesian network, a causal network, a rule based system, expert systems
and other reasoning mechanisms. In the case of threshold analysis, the
prediction/diagnostic circuit can compare the device status information
to status information such as threshold values, event counts, error counts,
fault counts, or other fixed values which either indicate a failure or
trigger a further detailed prognostic analysis. This stored status
information can be used in combination with the current machine status
information to aid in the prognostic analysis. The prediction/diagnostic
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circuit can also use a combination of fixed comparisons and data pooling
to arrive at a given conclusion (Sampath 6:17-57).
19. Sampath describes how a repair planning circuit determines an
appropriate action in response to the received status information and
routes the action request to the appropriate service, repair, or supplier
(Sampath 6:58-65).
20. Sampath describes how an action request can be routed to an Original
Equipment Manufacturer (OEM) service provider, if the nature of the
service request requires a highly specialized technician or, perhaps, if the
action request can be satisfied by a warranty repair (Sampath8:48-52).
21. Sampath describes how it may be implemented as software executed
on a programmed general purpose computer, a special purpose
computer, a microprocessor, or the like. In this case, the methods and
systems of this invention can be implemented as a routine embedded on
a personal computer such as a Java.RTM. or CGI script, as a resource
residing on a server or graphics workstation, as a routine embedded in a
dedicated diagnosis and failure prediction control system, or the like
(Sampath13:19-28).
Facts Related To The Level Of Skill In The Art
22. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent arts of systems analysis and programming,
diagnostic systems design, and repair claim administrative systems
design. We will therefore consider the cited prior art as representative of
the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the
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level of skill in the art does not give rise to reversible error ‘where the
prior art itself reflects an appropriate level and a need for testimony is
not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp.,
755 F.2d 158, 163 (Fed. Cir. 1985).

Facts Related To Secondary Considerations
23. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily)
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
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construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
Obviousness

A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.”
35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR, 550 U.S. at 406. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. at 416.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 417.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
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similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 420.
ANALYSIS
Claims 1-18 rejected under 35 U.S.C. § 103(a) as unpatentable over Abdel-Malek
and Sampath.
The Appellants argue that independent claims 1 and 10 have similar limitations
and accordingly argue those two claims together. Accordingly, we treat these
claims as a group, and we select claim 1 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found that Abdel-Malek described all the limitations of claim 1
except for limitations [2a] and [2b], for which the Examiner applied Sampath
(Answer 3-5). The Appellants contend (1) that neither reference is directed to
claim processing, but only to diagnoses (Br. 10:Bottom ¶ - 11: top ¶); (2) Abdel-
Malek does not process claims, but only submits claims and only addresses repair
recommendations rather than repair claims (Br. 11Second full ¶ - 12:Top ¶); (3)
Abdel-Malek’s repair resources are not expert rules (Br. 12:First full ¶); (4) making
a repair manual or special software related to a repair task available does not
disclose making expert rules accessible in a high level computer expression format
(Br. 12:First full ¶); and (5) Sampath processes action requests for service rather
than repair claims (Br. 12:Second full ¶).
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We disagree with the Appellants. Both of the first two arguments contend that
neither reference pertains to repair claim processing. We must first construe what
this limitation means. The Specification provides no lexicographic definition (FF
01 & 03). The customary meaning of repair claim is a demand for repair as
rightful or due (FF 02) and the customary meaning of processing is moving along
in or as if in a procession (FF 04). Thus repair claim processing is moving
demands for repair along.
Having construed the limitation at issue, we next determine whether either
reference describes moving demands for repair along. Abdel-Malek is directed to
receiving repair recommendations for repairing such items as locomotives (FF 09).
To do so, Abdel-Malek provides maintenance and repair information to the
technician in real time at the site where the item for repair is located. A detailed
record of the repair event is captured for maintenance of a complete locomotive
repair history. Repair recommendations are generated at the monitoring and
diagnostic service center by experts in locomotive trouble shooting and repair, and
displayed for execution of the repair, including individual repair steps and
diagnostic tasks that may be necessary to isolate certain locomotive subsystems, to
either eliminate or confirm a suggested repair methodology (FF 10). Repair parts
are ordered and tracked and warranty information can be accessed and warranty
claims submitted (FF 11). Sampath routes an action request to an Original
Equipment Manufacturer (OEM) service provider, if the action request can be
satisfied by a warranty repair (FF 20). Each of these actions and capabilities is
directed to moving along a repair. Each repair is under the control of an
administrative system that guides the repair. Such an administrative system
necessarily instantiates each repair record initially, as explicitly described by
Abdel-Malek (FF 14) and such a record documents a demand that the repair take
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place. Thus, both references describe moving demands for repair along, and
therefore describe repair claim processing. We find that the Appellants’
contentions are not commensurate with the breadth of the claim limitation.
As to the third argument, we must again first construe the limitation at issue,
viz “expert rule.” Again, there is no lexicographic definition in the Specification
(FF 05). We find that the usual and customary meaning of an expert rule is a
general course of action or statement of what is true in most cases devised by one
with expertise in the matter (FF 06). So the issue is whether Abdel-Malek
describes using general courses of action or statements of what is true in most
cases devised by those with expertise stored in a knowledge based system.
Abdel-Malek describes providing maintenance and repair information to the
technician in real time at the site where the item for repair is located. A plethora
of information is stored in a system (the MDSC) and includes repair
recommendations generated at the monitoring and diagnostic service center by
experts in locomotive trouble shooting and repair. The expert recommendations
are supplemented by repair information, such as schematics, maintenance manuals,
and other technical documentation stored at the MDSC (FF 10). Such repair
recommendations are generated by analysis software (FF 12). An on-board
monitoring system identifies faulty components and provides fault codes for use
by the repair technician in diagnosing the problem. The on-board monitor
automatically transmits information back to the MDSC, where a repair
recommendation is formulated and then made available to the portable unit (FF
13). Abdel-Malek describes how the repair status subsystem creates an entry in the
history database for an instantiated recommendation. The recommendation is
compiled, which involves pulling together all the repair steps, web pages, technical
documents, and data entry items for the recommendation and placing them in the
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recommendation queue (FF 14). When a repair expert defines a repair step in a
general repair recommendation, he selects the repair action from a predefined list
of coded repair steps (FF 15). Thus, we find that Abdel-Malek describes
formulating repair steps by those with expertise for entry into a database. Such
steps show a technician how to trouble shoot and repair and are formulated in
terms of coded repair steps. Thus, we find that Abdel-Malek does use general
courses of action or statements of what is true in most cases devised by those with
expertise stored in a knowledge based system. In addition, Sampath explicitly
describes using rule based systems and expert systems (FF 18).
As to the fourth argument, we must again first construe the limitation at issue,
viz “high level.” Again, there is no lexicographic definition in the Specification
(FF 07). We find that the usual and customary meaning of high level is elevated
level in rank or importance, or in a computer science context, relating to, or being a
language, such as BASIC or Pascal, in which each instruction or statement
corresponds to several instructions in machine language (FF 08). So the issue is
whether the art describes making expert rules accessible by a user in a computer
language expression format in which each instruction or statement corresponds to
several instructions in machine language. We find that Sampath describes how it
may be implemented as software executed and can be implemented as a routine
embedded on a personal computer such as a Java.RTM. or CGI script, both of
which are languages in which each instruction or statement corresponds to several
instructions in machine language. Also, Abdel-Malek describes how, when the
repair expert defines a repair step in a general repair recommendation, he selects
the repair action from a predefined list of coded repair steps (FF 15), which thus
makes expert rules accessible by a user in an elevated level format.
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The last Appellants’ argument is that Sampath processes action requests for
service rather than repair claims. We found in response to the first argument supra
that both references describe repair claim processing. Again, the Appellants’
argument is not commensurate with the breadth of the claim.
Thus, we find none of the arguments persuasive. The Appellants rely on their
arguments for the patentability of the independent claims for the dependent claims,
and therefore the arguments are unpersuasive as to the dependent claims as well.
CONCLUSIONS OF LAW
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over
Abdel-Malek and Sampath.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over
Abdel-Malek and Sampath is sustained.
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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JRG

DAIMLERCHRYSLER INTELLECTUAL CAPITAL CORPORATION
CIMS 483-02-19
800 CHRYSLER DR EAST
AUBURN HILLS, MI 48326-2757
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