Ex Parte McIntosh et al

Board of Patent Appeals and Interferences

Jun 20, 2009

09800697 (B.P.A.I. Jun. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte PRUDENCE A. MCINTOSH, D. PAUL STANNARD, JOAN B. 8
RABAUT, MICHAEL J. MAHONEY, and DANNY L. LAETHEM 9
___________ 10
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Appeal 2009-003914 12
Application 09/800,697 13
Technology Center 3600 14
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Decided:1 June 22, 2009 17
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Before HUBERT C. LORIN, ANTON W. FETTING, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
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FETTING, Administrative Patent Judge. 23
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DECISION ON APPEAL 26
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STATEMENT OF THE CASE28

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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Prudence A. McIntosh, D. Paul Stannard, Joan B. Rabaut, Michael J. 1
Mahoney, and Danny L. Laethem (Appellants) seek review under 2
35 U.S.C. § 134 of a non-final rejection of claims 1-20, the only claims 3
pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
We REVERSE. 7
The Appellants invented a computer-based vehicle warranty and 8
repair expert system (Spec. 1:3-5). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
1. A computer-implemented warranty knowledge base 13
construction system, comprising: 14
[1] a user interface for receiving a first rule related to vehicle 15
repair claim processing; 16
[2] a rules syntax data store that stores syntax rules for 17
constructing repair claim-related rules; 18
[3] a knowledge base generator module connected to the user 19
interface and to the rules syntax data store for determining 20
whether the first rule is in an acceptable syntax based upon the 21
stored syntax rules; 22
[4] wherein the first rule is used in a knowledge base system 23
to process repair claims. 24
25
This appeal arises from the Examiner’s Non-Final Rejection, mailed 26
October 19, 2006. The Appellants filed an Appeal Brief in support of the 27
appeal on March 8, 2007. An Examiner’s Answer to the Appeal Brief was 28
mailed on July 17, 2007. A Reply Brief was filed on September 13, 2007. 29
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PRIOR ART 1
The Examiner relies upon the following prior art: 2
Sampath US 6,892,317 B1 May 10, 2005 3
Abdel-Malek US 6,959,235 B1 Oct. 25, 2005 4
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REJECTIONS 6
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable 7
over Abdel-Malek and Sampath. 8
9
ISSUES 10
The issue pertinent to this appeal is whether the Appellants have 11
sustained their burden of showing the Examiner erred in the rejection of 12
claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Abdel-Malek and 13
Sampath. The pertinent issue turns on whether Sampath describes a rules 14
syntax data store that stores syntax rules for constructing repair claim-related 15
rules and a knowledge base generator for determining whether rules are in 16
acceptable syntax based on the syntax rules. 17
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FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
Abdel-Malek 22
01. Abdel-Malek is directed to a method and system for receiving 23
repair recommendations and related information from a central 24
diagnostic and repair service (Abdel-Malek 1:9-12). 25
02. The method begins with a technician, with a portable unit, 26
approaching a mobile asset that may require repairs. The portable 27
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unit is capable of communication with a service center (Abdel-1
Malek 4:10-18). 2
03. The portable unit exchanges repair, maintenance, and 3
diagnostic information with the service center, including parts 4
information and warranty information (Abdel-Malek 4:24-30). 5
04. The technician has access to repair resources, repair manuals, 6
field modification instructions, schematics, block diagrams, and 7
special software tools related to the repair task (Abdel-Malek 5:1-8
6). 9
05. Additionally, repair experts at the service center can provide the 10
technician with individualized assistance via the portable unit 11
(Abdel-Malek 5:11-14). The repair experts analyze the 12
information and produce a recommendation that is provided to the 13
technician in a timely fashion so as to enhance the degree of 14
accuracy in carrying out the repair procedure (Abdel-Malek 5:59-15
65). An expert repository stores the repair recommendations 16
authored at the service center (Abdel-Malek 7:19-21). 17
06. An interface unit conditions data between the portable unit and 18
various information sources (Abdel-Malek 7:6-18). 19
Sampath 20
07. Sampath is directed to an electronic system for failure 21
prediction, diagnosis, and remediation of an electronic system 22
(Sampath 1:10-13). 23
08. The monitored electronic system generates status information 24
(Sampath 4:55-58). The status information is forwarded to the 25
diagnostic server (Sampath 5:39-43), which then forwards the 26
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status to the data acquisition circuit (Sampath 5:51-55). The data 1
acquisition circuit further forwards the status to the database and 2
to the prediction/diagnostics circuit (Sampath 5:55-58). The 3
prediction/diagnostics circuit determines whether that electronic 4
system has failed or is predicted to fail (Sampath 5:64-67). If a 5
failure is detected or predicted, the repair planning circuit 6
determines a corrective repair action (Sampath 6:5-7). During the 7
diagnostic analysis, one or more secondary knowledge sources can 8
be accessed to acquire additional information and/or expertise 9
(Sampath 6:13-16). 10
09. The prediction/diagnostics circuit determines if the status 11
information is “prediction” or diagnostic” information. Prediction 12
information is defined as any status information which is pertinent 13
to determining whether an action should be taken to avoid a 14
particular impending outcome (Sampath 6:17-21). The 15
prediction/diagnostic analysis can be done by a rule using 16
parameters stored in the database. For example, for a threshold 17
analysis, the threshold value, stored in a database, and a rule can 18
be used to determine whether any value is in danger of crossing a 19
threshold (Sampath 6:38-46). 20
10. The diagnostics and prognostics analysis involves a more 21
detailed analysis and may include invocation of a reasoning 22
algorithm or an expert system. The diagnosis analysis results are 23
stored in a database (Sampath 10:16-25). 24
11. The system is preferably implemented on a single program 25
general purpose computer or a separate programmed general 26
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purpose computer (Sampath 12:53-67). The methods may be 1
readily implemented as software or a routine embedded on a 2
personal computer such as Java or CGI script (Sampath 13:19-33). 3
Facts Related To The Level Of Skill In The Art 4
12. Neither the Examiner nor the Appellants has addressed the level 5
of ordinary skill in the pertinent art knowledge base system 6
development. We will therefore consider the cited prior art as 7
representative of the level of ordinary skill in the art. See Okajima 8
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 9
absence of specific findings on the level of skill in the art does not 10
give rise to reversible error ‘where the prior art itself reflects an 11
appropriate level and a need for testimony is not shown’”) 12
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 13
F.2d 158, 163 (Fed. Cir. 1985)). 14
Facts Related To Secondary Considerations 15
13. There is no evidence on record of secondary considerations of 16
non-obviousness for our consideration. 17
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PRINCIPLES OF LAW 19
Obviousness 20
A claimed invention is unpatentable if the differences between it and 21
the prior art are “such that the subject matter as a whole would have been 22
obvious at the time the invention was made to a person having ordinary skill 23
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 24
U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 25
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In Graham, the Court held that the obviousness analysis is bottomed 1
on several basic factual inquiries: “[(1)] the scope and content of the prior art 2
are to be determined; [(2)] differences between the prior art and the claims at 3
issue are to be ascertained; and [(3)] the level of ordinary skill in the 4
pertinent art resolved.” 383 U.S. at 17. See also KSR, 550 U.S. at 406. 5
“The combination of familiar elements according to known methods is likely 6
to be obvious when it does no more than yield predictable results.” Id. at 7
416. 8
“When a work is available in one field of endeavor, design incentives 9
and other market forces can prompt variations of it, either in the same field 10
or a different one. If a person of ordinary skill can implement a predictable 11
variation, § 103 likely bars its patentability.” Id. at 417. 12
“For the same reason, if a technique has been used to improve one 13
device, and a person of ordinary skill in the art would recognize that it would 14
improve similar devices in the same way, using the technique is obvious 15
unless its actual application is beyond his or her skill.” Id. 16
“Under the correct analysis, any need or problem known in the field 17
of endeavor at the time of invention and addressed by the patent can provide 18
a reason for combining the elements in the manner claimed.” Id. at 420. 19
20
ANALYSIS 21
Claims 1-20 rejected under 35 U.S.C. § 103(a) as unpatentable over 22
Abdel-Malek and Sampath 23
The Appellants argue these claims as a group. 24
Accordingly, we select claim 1 as representative of the group. 25
37 C.F.R. § 41.37(c)(1)(vii) (2008). 26
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The Examiner found that Abdel-Malek describes limitations [1] and 1
[4] of claim 1, but fails to describe limitations [2] and [3] (Ans. 3-4). The 2
Examiner found that Sampath describes limitations [2] and [3] (Ans. 4). The 3
Examiner further found that a person with ordinary skill in the art would 4
have recognized the benefits of the ease of use, productivity gains, and cost 5
savings by making the claim rules and syntax readily available, as described 6
by Sampath, and a person with ordinary skill in the art would have found it 7
obvious to combine Abdel-Malek and Sampath (Ans. 4). 8
The Appellants contend that Sampath fails to describe a rule syntax 9
data store for storing syntax rules and a knowledge base generator that 10
determines whether the first rule is in acceptable syntax as required by claim 11
1, limitations [2] and [3] respectively (Br. 12-13 and Reply Br. 4-5). 12
The Examiner has relied on Sampath to describe syntax rules in the 13
rejection of claim 1 (Ans. 4). The Examiner argued in response that no 14
special definition for the term “syntax rules” has been provided in the 15
Specification and that the definition for syntax in programming languages is 16
that which controls rules as to structure and content of statements (Ans. 9). 17
The Examiner further argued that Sampath describes that its system can be 18
implemented using software and as such the programming language used in 19
programming the software relies on syntax rules (Ans. 10). 20
We agree with the Appellants. Claim 1 recites the use of syntax rules 21
for constructing repair-related claims. The Examiner and the Appellants 22
agree that the plain meaning of the term “syntax rules” is the rules that 23
govern the formation of statements (Reply Br. 4 and Ans. 9). As such, the 24
construction of limitation [2] in light of the plain meaning of syntax rules 25
requires that there exist a set of rules that govern the formation of 26
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constructing claim-related rules. The syntax rules used in a programming 1
language govern the construction of statements used in that programming 2
language. However, those syntax rules are not used to govern the 3
construction of claim-related rules. We find no evidence that Sampath 4
describes using the syntax rules of a programming language towards 5
constructing claim-related rules. The Examiner has not provided any 6
evidence that either reference even stores claim-related rules as data apart 7
from the program executing the procedure itself. The syntax checking the 8
Examiner refers to in programming languages is not applied to the data at 9
run time, and only occurs when the program is compiled, not at run time. 10
But most critically, the claim specifically requires that the rules be in the 11
form of data that are checked for syntax, and the Examiner has not shown 12
that either reference provides such. At best, the references describe storing 13
parameters that might be used in rules (FF 09), but with no evidence that 14
syntax checking would occur on the rules that might be used with those 15
parameters. 16
As such, Sampath does not describe a rule syntax data store for 17
storing syntax rules and a knowledge base generator that determines whether 18
the first rule is acceptable syntax as required by claim 1. Claim 11, the only 19
other independent claim, has similar limitations, and its rejection is similarly 20
in error. Since this issue is dispositive as to the rejections against claims 1-21
20, we need not reach the remaining arguments raised by the Appellants 22
against these rejections. 23
The Appellants have sustained their burden of showing that the 24
Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 103(a) as 25
unpatentable over Abdel-Malek and Sampath. 26
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CONCLUSIONS OF LAW 1
The Appellants have sustained their burden of showing that the 2
Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 103(a) as 3
unpatentable over Abdel-Malek and Sampath. 4
5
DECISION 6
To summarize, our decision is as follows: 7
• The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable 8
over Abdel-Malek and Sampath is not sustained. 9
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REVERSED 11
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DAIMLERCHRYSLER INTELLECTUAL CAPITAL CORPORATION 29
CIM 483-02-19 30
800 CHRYSLER DR EAST 31
AUBURN HILLS, MI 48326-2757 32