UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LOUIS A. SCHICK, KIMBERLEY M. MANGINO, GREGORY
JAMES HAMPSON, PAUL EDWARD CUDDIHY, GREGORY JOHN
FERA, RICHARD GERALD BLILEY, LUIS IVAN GOMEZ MENESES,
MICHAEL JAMES PIERRO, JAMES E. SCHLABACH, and
WILLIAM ROY SCHNEIDER
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Appeal 2009-001419
Application 09/736,495
Technology Center 3600
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Decided:1 June 25, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
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).
Appeal 2009-001419
Application 09/736,495
STATEMENT OF THE CASE
Louis A. Schick, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-11, 15-31, and 37-47. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM-IN-PART. 2
THE INVENTION
The invention is a method for managing remote mobile assets, such as
trucks. Real-time data is collected from the assets, analyzed by computer for
failure detection and prediction. (Spec. 2:31 – 3:2). Then maintenance
activities are planned, including optimal time and location for the work.
(Spec. 3:1-4).
Claim 1, reproduced below, are illustrative of the subject matter on
appeal.
1. A computerized method for managing a
plurality of mobile assets using information
indicative of actual usage of each asset, the method
comprising:
collecting data regarding each of a plurality
of mobile assets;
providing a set of rules comprising
relationships for processing the collected data to
determine a plurality of operational modes for each
2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Sep. 14, 2007) and Reply Brief (“Reply Br.,” filed Jan. 24, 2008),
and the Examiner’s Answer (“Ans.,” mailed Dec. 13, 2007).
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asset, each of said operational modes being
associated with a distinct level of wear in an asset;
processing the data relative to the set of
rules to develop historical information regarding
actual usage of each mobile asset, the information
for said actual usage being arranged so as to list a
plurality of operational modes accumulated for the
asset over a selectable period of time; and
distributing the information via a global
information network.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Chou US 6,330,499 B1 Dec. 11, 2001
The following rejections are before us for review:
1. Claims 1-6, 10, and 20-30 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Chou.
2. Claims 7-9, 11, 15-19, and 31-47 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chou.
ARGUMENTS
Claims 1, 3-6, and 10
The Appellants argue that the fault data of Chou does not read on the
operational modes associated with a distinct level of wear recited in claim 1
and therefore, Chou fails to anticipate the steps of claim 1. (App. Br. 11-12).
Specifically, the Appellants argue that the fault data in the data repository
203 of Chou has “nothing to do” with historical information regarding actual
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usage of each mobile asset, where the information for the actual usage is
arranged to list a plurality of operational modes accumulated for the asset
over a selectable period of time. (App. Br. 11). Further, the Appellants
traverse the Examiner’s assertion that fault monitoring inherently and
necessarily monitors wear. (Reply. Br. 1-2). The Appellants also argue that
dependent claims 3-6 and 10 are not anticipated for the same reasons. (App.
Br. 12).
The Examiner continues to assert that the vehicle faults of Chou are
the claimed operational modes and level of wear. (Ans. 6). The Examiner
states, ‘[f]ault monitoring, inherently and necessarily, monitors “wear”’ and
‘[a]ny part with a fault is shown to have “wear.”’ Id.
Claim 2
The Appellants argue that the portion of Chou cited by the Examiner
fails to describe enhancing the historical data with environmental data,
which includes at least one environmental parameter as recited in claim 2.
(App. Br. 12).
The Examiner contends that environmental data is a broad term and
could encompass the “case-based” reasoning of Chou. (Ans. 7).
Claims 20-25
The Appellants argue independent claims 20-25 separately; however,
the argument for each of these independent claims is the same. Like for
claim 1 above, the Appellants argue that the fault data of Chou does not read
on the claimed operational modes associated with wear and therefore, Chou
fails to anticipate the steps of these claims. (App. Br. 13-19). Further, the
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Appellants traverse the Examiner’s assertion that fault monitoring inherently
and necessarily monitors wear. (Reply. Br. 1-2).
The Examiner asserts that the fault data of Chou is historical data and
that the heath report of Chou is historical data based on use. (Ans. 7). The
Examiner also responses that ‘the “operational modes” are associated with a
distinct level of wear (bad or good).’ (Ans. 7).
Claims 26-29
The Appellants argue the Chou’s data repository 203 merely is used
for storing fault data and has “virtually nothing to do” with arranging actual
usage of the assets in a plurality of operational modes, which indicate a
respective state of health of the asset or with establishing a cost/benefit
evaluation of the mobile asset. (App. Br. 20). The Appellants also argue
that dependent claims 27-29 are not anticipated for the same reasons. (App.
Br. 20).
The Examiner responds that Chou monitors faults during the history
of the device, which would be indicative of a respective state of health.
(Ans. 8). The Examiner further asserts Chou would inherently establish a
cost-benefit evaluation for a proposed future plan since on the Chou’s
describes warning the drive to “stop now” in column 4, lines 50-53. (Ans.
4). The Examiner reasons that this denotes that to keep driving would cost
more as the repair would be more extensive.
Claim 30
The Appellant argues the Chou’s data repository 203 merely is used
for storing fault data and has “virtually nothing to do” with arranging actual
usage of the assets in a plurality of operational modes, which indicate a
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respective state of health of the asset or with determining the remaining
warrant coverage as recited in claim 26. (App. Br. 21).
The Examiner responds that though Chou discloses something
different than the example in the Specification, neither the Specification nor
the claims are limited to those examples. (Ans. 8). The Examiner cites
column 5, lines 36 of Chou for a description of warranty information. Id.
Claims 7-9, 11, and 37
The Appellants argue that Chou fails to render claims 7, 9, 11, and 37,
which depend from claim 1, unpatentable for the same reasons as argued for
claim 1. (App. Br. 22).
Claims 15 and 38
The Appellants argue that Chou does not contain any description or
suggestion that meets any of the structural and operational relationship in
claim 15. (App. Br. 23). The Appellants further argue that Chou’s fault data
has nothing to do with the actual usage information and the step of posting
to the operator reminder information recited in claim 15; therefore, Chou
fails to render claim 15 unpatentable. Id. The Appellants argue that
dependent claim 38 is patentable for the same reasons. Id.
The Examiner does not specifically respond to the Appellants’
arguments for claims 15.
Claims 16-19 and 39
The Appellants argue that Chou does not contain any description or
suggestion that meets any of the structural and operational relationship in
claim 16. (App. Br. 24). Further, the Appellants argue that Chou’s fault data
has nothing to do with operator data and the step of posting to the operator
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reminder information as recited in claim 16. Id. The Appellants also argue
that dependent claim 38 is patentable for the same reasons. Id.
The Examiner does not specifically respond to the Appellants
arguments’ for claims 16.
Claims 40-47
The Appellants argue that Chou fails to render dependent claims 40-
47, which depend from claims 20-26 and 30, unpatentable for the same
reasons as argued for the independent claims. (App. Br. 25).
ISSUES
The issues are:
1. Does Chou describe a method including the step of processing
data to develop historical information regarding actual usage of
each mobile asset, said actual usage being arranged in a
plurality of operational modes of the asset, that are each
associated with a distinct level of wear in the asset as required
by claims 1, 20, and 21?
2. Does Chou describe a system including a processor that is
configured for processing data relative to a set of rules that
determine a plurality of operational modes develop historical
information regarding actual usage of each mobile asset, said
actual usage being arranged in a plurality of operational modes
of the asset, each of said operational modes that are each
associated with a distinct level of wear in the asset as required
by claims 22-25?
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3. Does Chou inherently disclose a method including the step of
establishing a cost/benefit evaluation of the mobile asset for a
proposed future plan of use in light of the state of health of the
mobile asset as recited in claim 26?
4. Does Chou describes a method including the step of
determining the remaining warranty coverage of each
respective mobile asset based on the actual usage of the asset as
recited in claim 30?
5. Would one of ordinary skill in the art be led by Chou to the
method recited in claim 15?
6. Would one of ordinary skill in the art be led by Chou to the
method recited in claim 16?
FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 1 recites a method including:
providing a set of rules comprising relationships
for processing the collected data to determine a
plurality of operational modes for each asset, each
of said operational modes being associated with a
distinct level of wear in an asset;
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2. Claim 15 recites a method including:
Collecting data regarding each of a plurality of
mobile assets;
processing the data to develop historical
information regarding actual usage of each mobile
asset; and
posting to an operator of a respective mobile asset,
based on said collected data, reminder information
to ensure compliance of any applicable regulator
requirements.
3. Claim 16 recites a method including:
collecting operator data regarding the operating of
each one of a plurality of mobile assets by a
respective operator;
processing the data to develop historical
information regarding the operation of the mobile
asset by the respective operator; and
posting to said operator, based on said collected
data, reminder information to ensure compliance
of any applicable regulatory requirements.
4. Claim 20 recites a method including:
providing a set of rules comprising relationships
for processing the collected data to determine a
plurality of operational modes for each asset, each
of said operational modes being associated with a
distinct level of wear in an asset;
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5. Claim 21 recites a method including:
providing a set of rules comprising relationships
for processing the collected data to determine a
plurality of operational modes for each asset, each
of said operational modes being associated with a
distinct level of wear in an asset;
6. Claim 22 recites a system including:
a memory device for storing a set of rules
comprising relationships for processing the
collected data to determine a plurality of
operational modes for each asset, each of said
operational modes being associated with a distinct
level or wear in an asset:
a processor configured to process the collected
data relative to the set of rules to develop historical
information regarding actual usage of each mobile
asset, the information for said actual usage being
arranged so as to list a plurality of operational
modes accumulated for the asset over a selectable
period of time.
7. Claims 23 recites a system including:
a memory device carried on vehicle for storing a
set of rules comprising relationships for processing
the collected data to determine a plurality of
operational modes for each asset, each of said
operational modes being associated with a distinct
level or wear in an asset:
a processor carried on the vehicle for processing
said generated data relative to the set of rules to
develop information indicative of the operation of
the vehicle for its useful life.
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8. Claim 24 recites a system including:
a memory device at the data center for storing a set
of rules comprising relationships for processing
data received at the data center to determine a
plurality of operational modes for each asset, each
of said operational modes being associated with a
distinct level or wear in an asset:
a processor at the data center for processing the
received data relative to the set of rules to develop
information indicative of the operation of the
vehicle over the useful life of the vehicle.
9. Claim 25 recites a system including:
a first processor configured to process the
operational data relative to a set of rules
comprising relationships for processing the
operational data to determine a plurality of
operational data to determine a plurality of
operational modes for said vehicle, wherein each
of said operational modes is associated with a
distinct level of wear in a vehicle in order to
develop individual historical information regarding
actual usage of each vehicle, the information for
said actual usage being arranged so as to list the
plurality of operational modes of the vehicle.
10. Claim 26 recites a method including:
processing the data to develop historical
information regarding actual usage of each mobile
asset, said actual usage being arranged in a
plurality of operational modes of the asset, each of
said operational modes being indicative of a
respective state of health of said asset:
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establishing a cost/benefit evaluation of the mobile
asset for a proposed future plan of use in light of
the state of health of the mobile asset.
11. Claim 30 recites a method including:
processing the data to develop historical
information regarding actual usage of each mobile
asset, said actual usage being arranged in a
plurality of operational modes of the asset;
determining the remaining warranty coverage of
each respective mobile asset based on the actual
usage of the asset.
12. The Specification does not provide a definition for “operational
mode.”
13. The definition of “operational” is “of or relating to operation or to
an operation .” (See
Merriam-Webster’s Collegiate Dictionary 815 (10th Ed.
1998.)(First entry for “operational.”)
14. The definition of “operation” is “a method or manner of
functioning < a machine of very simple ~>.” (See Merriam-
Webster’s Collegiate Dictionary 815 (10th Ed. 1998.)(Second entry
for “operation.”)
15. The definition of “mode” is “a particular functioning arrangement
or condition: STATUS
.” (See Merriam-Webster’s Collegiate
Dictionary 747 (10th Ed. 1998.)(Fourth entry for “mode.”)
16. The Specification does not provide a definition for “wear.”
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17. The definition of “wear” is “the result of wearing or use :
diminution or impairment due to use .”
(See Merriam-Webster’s Collegiate Dictionary 1338 (10th Ed.
1998.)(Fourth entry for “wear.”)
18. The definition of “wearing” is “a: to cause to deteriorate by use b:
to impair or diminish by use or attrition: consume or waste
gradually ”.
(See Merriam-Webster’s Collegiate Dictionary 1338 (10th Ed.
1998.)(Fourth entry for “wearing.”)
The scope and content of the prior art
19. Chou describes a vehicle monitoring system and method for
vehicle diagnostics and health monitoring. (Col. 1, ll. 7-9).
20. Chou describes an in-vehicle client computer device 101 installed
in the vehicle with a communications link 150. (Col. 2, ll. 30-36).
21. Chou describes a remote service center 200 with a diagnostic
server 201 and a data repository 203. (Col. 2, ll. 47-50).
22. Chou describes the in-vehicle client computer device 101 having
components that monitors the vehicle for vehicle fault codes and
that accept request for vehicle parametric data and retrieves the
data. (Col. 4, ll. 7-38).
23. Chou describes the in-vehicle client 100 sending vehicle fault
codes and vehicle information to the service center 200. (Col. 4, ll.
46-45).
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24. Chou describes the client device speaking recommended actions to
the driver, such as “stop now,” based on the fault code. (Col. 4, ll.
50-53).
25. Chou describes that the diagnostic client determines the severity of
the faults by looking in the predefined fault
code/severity/recommendation table. (Col. 8, ll. 8-10).
26. Chou describes the service center 200 comprising a diagnostic
server 201 that has access to data related to the vehicle such as
built, history, diagnostics, warranty, service information and
failure mode data and that is linked to data repository 203. (Col. 4,
ll. 34-39).
27. Chou describes the diagnostic server 201 including a diagnosis
engine 201A that provides a health checkup or a diagnosis using
data obtained from the vehicle, the vehicle’s past history, and the
diagnostics information about the particular model of the vehicle.
(Col. 4, ll. 53-58).
28. Chou describe the diagnostic engine performing trend analysis
based on present and historical vehicle parameters collected from
the vehicle to provide early guidance for preventive maintenance,
such as “change oil in 1500 miles.” (Col. 8, ll. 12-21).
29. Chou describes a vehicle fault which indicates that the air bags
have been deployed. (Col. 7, ll. 22-26).
Any differences between the claimed subject matter and the prior art
30. Chou does not describe operational modes associated with a
distinct wear level.
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31. Chou does not describe establishing a cost/benefit evaluation of the
mobile asset for a proposed future plan of use in light of the state
of health of the mobile asset.
32. Chou does not describe determining the remaining warranty
coverage of each respective mobile asset based on the actual usage
of the asset.
The level of skill in the art
33. Neither the Examiner nor the Appellants have addressed the level
of ordinary skill in the pertinent art of managing a fleet of remote
assets. 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 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)).
34. The Examiner asserts that one of ordinary skill in the art would
have found it obvious to use the system and method of Chou to
ensure compliance with regulatory requirements. (Ans. 5).
Secondary considerations
35. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
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PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides
a definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
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).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
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Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented 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 to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”) The Court in Graham further
noted that evidence of secondary considerations “might be utilized to give
light to the circumstances surrounding the origin of the subject matter sought
to be patented.” 383 U.S. at 17-18.
ANALYSIS
The rejection of claims 1-6, 10, and 20-30 under 35 U.S.C. § 102(e) as being
anticipated by Chou.
Method Claims 1-6, 10, 20, and 21
A determination that a claim is anticipated
under 35 U.S.C. § 102(b) involves two analytical
steps. First, the Board must interpret the claim
language, where necessary. Because the PTO is
entitled to give claims their broadest reasonable
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interpretation, our review of the Board's claim
construction is limited to determining whether it
was reasonable. In re Morris, 127 F.3d 1048,
1055 (Fed. Cir. 1997). Secondly, the Board must
compare the construed claim to a prior art
reference and make factual findings that “each and
every limitation is found either expressly or
inherently in [that] single prior art reference.”
Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150
F.3d 1354, 1360 (Fed. Cir. 1998).
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004) (Footnote omitted).
Independent claims 1, 20 and 21 all recite methods which include the
step of providing a set of rules comprising relationships for processing data
to determine a plurality of operational modes for each asset, where each of
the operational modes are associated with a distinct level of wear in the
asset. (FF 1, 4, and 5). First, the Specification does not provide an express
definition of “operational mode.” (FF 12). Accordingly, we will give it its
ordinary and customary meaning, which we find is a particular arrangement
that is related to a method or manner of functioning. (FF 13-15). This
meaning is consistent with the description of invention set forth in the
Specification. Second, the Specification does not provide an express
definition of “wear.” (FF 16). Accordingly, we will also give it its ordinary
and customary meaning, which we find is the result of gradual deterioration
by use. (FF 17-18). This meaning is also consistent with the description of
invention set forth in the Specification.
The Examiner contents that the vehicle faults described in Chou are
operational modes. (Ans. 6). We agree. The vehicle faults are operational
modes, as the term is construed above. A vehicle fault is a particular
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arrangement of a vehicle that is related to the manner in which the vehicle
functions.
However, we do not agree with the Examiner’s assertion that the
‘[f]ault monitoring, inherently and necessarily monitors “wear”’ and that
‘[a]ny part with a fault is shown to have “wear.”’ (Ans. 6). Under
principles of inherency, when a reference is silent about an asserted inherent
characteristic, it must be clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Claims 1, 20 and 21
all recite that each of the operational modes are associated with a distinct
level of wear in an asset. Chou describes a vehicle fault indicating, for
example, that the air bags have been deployed. (FF 29). This vehicle fault
is not inherently associated with a distinct level of wear, as construed above.
Air bags are not designed to deploy as a result of gradual deterioration by
use, but instead are designed to deploy upon sudden impact. Therefore, we
find that each and every limitation of claims 1, 20 and 21 is not found either
expressly or inherently in Chou.
Accordingly, we find that the Appellants have shown that the
Examiner erred in rejecting independent claims 1, 20, and 21 and claims 2-6
and 10 dependent thereon, as anticipated by Chou.
System Claims 22-25
Independent claims 22-24 all recite system which include a memory
device and a processor. (FF 6-8). The memory device is structure to store a
set of rules comprising relationships for processing data to determine
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operational modes for each asset, where each operational mode is associated
with a distinct level of wear. Id. The processor is structured to process data
relative to the rules to develop historical information that is arranged so as to
list a plurality of operational modes. Id. Claims 25 also recites a processor
that is structured to process data relative to rules that determine a plurality of
operational modes, which are each associated with a distinct level of wear in
a vehicle. (FF 9).
Like above, we find that the vehicle faults of Chou are operational
modes, but are not operational modes associated with a distinct level of wear
in an asset. Therefore, we find that Chou does not describe a processor
structured to process data relative to a set of rules that comprise relationships
to determine a plurality of operation modes, which are associated with a
distinct level of wear. Each and every limitation of claims 22-25 is not
found either expressly or inherently in Chou.
Accordingly, we find that the Appellants have shown that the
Examiner erred in rejecting independent claims 22-25 as anticipated by
Chou.
Method Claim 26-29
The Appellants argue claims 26-29 as a group (App. Br. 19-20). We
select claim 26 as the representative claim for this group, and the remaining
claims 27-29 stand or fall with claim 26. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
We find that Chou does not inherently describe the step of
establishing a cost/benefit evaluation of the mobile asset for a proposed
future plan of use in light of the state of health of the mobile asset as recited
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in claim 26 (FF 10). (FF 31). The Examiner cites Chou’s description of
recommended driver actions, such as “stop now,” to reason that Chou’s
system must inherently perform the step of establishing a cost/benefit
evaluation. (Ans. 4). However, we find that Chou describes the diagnostic
client using a predefined fault code/severity/recommendation table to
determine the recommended action displayed to the drive. (FF 25). Each
and every limitation of claim 26 is not found either expressly or inherently in
Chou.
Accordingly, we find that the Appellants have shown that the
Examiner erred in rejecting independent claim 26, and claims 27-29
dependent thereon, as anticipated by Chou.
Method Claim 30
We find that while Chou describes that the diagnostic server has
access to the data related to a warranty (FF 26), Chou does not describe the
step of determining the remaining warranty coverage of each respective
mobile based on the actual usage of the asset as recited in claim 30 (FF 11).
(FF 32). It is well settled that in order for the examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997);
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir.
1988); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick,
730 F.2d 1452, 1458 (Fed. Cir. 1984). Each and every limitation of claim 30
is not found either expressly or inherently in Chou.
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Accordingly, we find that the Appellants have shown that the
Examiner erred in rejecting independent claim 30 as anticipated by Chou.
The rejection of claims 7-9, 11, 15-19, and 31-47 under § 103(a) as being
unpatentable over Chou.
Claims 7-9, 11, and 37
These rejections are directed to claims dependent on claim 1, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejections of claims 7-9, 11, 31, and 37 over the cited prior art.
Claims 15 and 38
The Appellants argue claims 15 and 38 as a group. (App. Br. 23). We
select claim 15 as the representative claim for this group, and the remaining
claim 38 stands or falls with claim 15. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
First, we note that the Examiner asserted that it would have been
obvious to one having ordinary skill in the art to use the system and method
of Chou to ensure compliance with regulatory requirement. (Ans. 5). The
Appellants do not traverse this assertion but instead argue that there is no
description in Chou that meets each of the structural and operational
limitations in claim 15. (App. Br. 23).
We find that Chou describes most of the steps recited in claim 15.
Chou describes the diagnostic server 201 performing trend analysis on based
on present and historical vehicle parameters to provide early guidance for
preventive maintenance. (FF 28). This description reads on the claimed
steps of collecting data and processing the data recited in claim 15 (FF 2).
Chou also describes the diagnostic server using the trend analysis to provide
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early guidance for maintenance to the driver, such as “change oil in 1500
miles.” (FF 28). We find that the early guidance provided to the driver
reads on the step of posting to an operator reminder information (FF 2). As
the Appellants have not traversed the Examiner’s assertion, we find that one
of ordinary skill in the art would have been led by Chou to the method of
claim 15.
Accordingly, we find that the Appellants have not shown that the
Examiner erred in rejecting independent claim 15 and claim 38, dependent
thereon, as unpatentable over Chou.
Claims 16-19 and 39
The Appellants argue claims 16-19 and 39 as a group. (App. Br. 23).
We select claim 15 as the representative claim for this group, and the
remaining claim 38 stands or falls with claim 15. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
Again, we note that the Examiner asserted that it would have been
obvious to one having ordinary skill in the art to use the system and method
of Chou to ensure compliance with regulatory requirement. (Ans. 5). The
Appellants do not traverse this assertion but instead argue that there is no
description in Chou that meets each of the structural and operational
limitations in claim 16. (App. Br. 23).
As we did above with regards to claim 15, we find that Chou
describes the steps of claim 16. Further, we find that the present and
historical vehicle parameter data of Chou reads on the claimed operator data
(FF 3) when the vehicle is driven by one operator. As the Appellants have
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Application 09/736,495
not traversed the Examiner’s assertion, we find that one of ordinary skill in
the art would have been led by Chou to the method of claim 16.
Accordingly, we find that the Appellants have not shown that the
Examiner erred in rejecting independent claim 16 and claims 17-19 and 39,
dependent thereon, as unpatentable over Chou.
Claims 31 and 40-47
These rejections are directed to claims dependent on claims 20-26 and
30, whose rejection we have reversed above. For the same reasons, we will
not sustain the rejections of claims 31 and 40-47 over the cited prior art.
CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 1-11, 20-31, 37, and 40-47 under 35 U.S.C. § 102(e) as
anticipated by Chou.
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 15-19, 38, and 39 under 35 U.S.C. § 103(a) as
unpatentable over Chou.
DECISION
The decision of the Examiner to reject claims 1-11, 20-31, 37, and 40-
47 is reversed and to reject claims 15-19, 38, and 39 is affirmed.
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Application 09/736,495
AFFIRMED-IN-PART
JRG
Enrique J. Mora, Esquire
Beusse, Brownlee, Bowdoin & Wolter, P.A.
390 North Orange Avenue, Suite 2500
Orlando, FL 32801
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