Ex Parte Morenc et al

Patent Trial and Appeal Board

Sep 19, 2013

11553874 (P.T.A.B. Sep. 19, 2013)

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.
11/553,874 10/27/2006 Roger Morenc 2006P57015 US 4463
45113 7590 09/20/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
09/20/2013 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 ROGER MORENC, MARK BRADLEY,
and MARK RICHMOND
____________

Appeal 2011-011585
Application 11/553,874
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-011585
Application 11/553,874

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-20, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to defining a frequency
expression language for product maintenance (Spec. 1). Claim 1,
reproduced below with the numbering in brackets added, is representative of
the subject matter on appeal.

1. A method for defining a maintenance frequency of a
product, comprising the steps of:
[1] receiving, by a computer system, a plurality of inputs
from a user that together define a maintenance frequency for a
product element;
[2] building a frequency expression for a product
element, by a computer system, [3] based on a Backus Naur
Form frequency expression language having a maintenance
grammar; [4] and
associating an action with said frequency expression, by
the computer system, based on the plurality of inputs.

THE REJECTION
The following rejection is before us for review:
1. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sinex (U.S. 2003/0233178 A1, publ. Dec. 18, 2003) in
Appeal 2011-011585
Application 11/553,874

3
view of Winner (U.S. 6,272,074 B1, iss. Aug. 7, 2001) and in further view
of Official Notice.

FINDINGS OF FACT
We find the findings of fact in the Analysis section below are
supported at least by a preponderance of the evidence1.

ANALYSIS
The Appellants argue that claim limitations [1], [2], and [3] as listed
above are not shown in the prior art and that the cited combination would
not have been obvious (Br. 17-22, Reply Br. 12-23). In contrast, the
Examiner has determined that Sinex, Winner, and Official Notice disclose
the cited claim limitations and that the rejection is proper (Ans. 3-5, 7-10).
We agree with the Examiner. Claim limitation [1] requires
“receiving, by a computer system, a plurality of inputs from a user that
together define a maintenance frequency for a product element” and this is
shown by Sinex at para. [0031] where it is disclosed that maintenance
requirements from an airline manufacturer are listed as tasks on a timescale.
Claim limitation [2] requires “building a frequency expression for a product
element, by a computer system” and this is shown by Winner at col. 9:30-
10:40 as asserted in the rejection. Claim limitation [3] requires that the
frequency expression be “based on a Backus Naur Form frequency
expression language having a maintenance grammar” and the Examiner has
taken Official Notice for the Backus Naur Form being well known, which

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2011-011585
Application 11/553,874

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the Appellants have not disputed. Here the cited combination would have
been an obvious, predictable modification of familiar elements for the result
of having a maintenance system that could be operated on a computer
system with a frequency expression using the well-known Backus Naur form
and maintenance grammar. For these reasons, the rejection of claim 1 is
sustained.
The Appellants have also argued for claims 2-5 (Br. 23-27). Claim 2
requires that the “building step be done in a stepwise manner” and Sinex
shows such a flow in Fig. 5 in the process, but regardless this would have
been an obvious way to build the frequency expression in proper sequence.
Claim 3 requires displaying the expression to the user for accuracy, and
Sinex at paras. [0055]-[0056] discloses that such procedures take place but
regardless such a procedure would have been obvious to permit corrections
to be made by the user. Claim 4 requires determining when maintenance is
required, and this has been shown in Sinex at para. [0071]. Claim 5 requires
that the determining step is based on the frequency expression and current
product age, and such a use of the current product age would have been
obvious to use to have the most up-to-date information in the combination.
For these reasons the rejection of claims 2-5 is sustained as well. The
Appellants have provided the same arguments for the remaining claims and
the rejection of these claims is sustained for the same reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejection section above.

Appeal 2011-011585
Application 11/553,874

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DECISION
The Examiner’s rejection of claims 1-20 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).

AFFIRMED

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