Ex Parte Sonderman et al

Board of Patent Appeals and Interferences

Jun 15, 2009

10323530 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS J, SONDERMAN,
ALEXANDER J. PASADYN, and
GREGORY A. CHERRY
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Appeal 2008-003703
Application 10/323,530
Technology Center 2800
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Decided:1 June 15, 2009
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Before TERRY J. OWENS, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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 2008-003703
Application 10/323,530

This is in response to a Request, filed May 8, 2009, for
reconsideration of our Decision, decided March 9, 2009, wherein the
majority sustained the § 102(e) rejection of claims 1-33 over Pasadyn.
Appellants request the Board reconsider equating the
“accuracy” of Pasadyn to the “certainty or uncertainty” of Appellants’
claims (Request 2). Appellants contend that “‘uncertainty’ is not
merely the difference between the predicted and actual outcome, but it
is a factor that is determined by using the information that relates to
the difference” (Request 3). Appellants argue that the mere
“accuracy” between the predicted and actual outcomes does not reveal
the “uncertainty” relating to the prediction ability based upon the
difference between the predicted and actual outcomes (Request 4).
Appellants contend that for a prior art reference to anticipate the
claims of the present application would require additional subject
matter other than the mere description of the difference between a
predicted and an actual outcome being used to modify the sampling
rate (Request 4).
Contrary to Appellants’ arguments, our Decision is not based
on merely the difference between the predicted and actual values as
corresponding to Appellants’ claimed uncertainty. Rather, on page 11
of the Decision, we construe the claim phrase “determining an
uncertainty relating to said predicted outcome” to “include an
analysis of any difference between a predicted value and an actual
value” (Decision 11). In other words, our construction of the disputed
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Appeal 2008-003703
Application 10/323,530

claim phrase plainly requires an additional “analysis” of any
difference in the data.
Appellants cite to the portion of the Specification that mentions
determining an “uncertainty factor” from the difference between the
predicted and actual values (Request 2-3) as showing that
“uncertainty” is different than Pasadyn’s “accuracy.” However,
Appellants’ Specification does not describe or further limit how the
uncertainty factor is determined from the difference data.
We further state in the Decision that the analysis to determine
uncertainty may simply be recognition that there is a difference
between the predicted and actual values or that the difference is above
a predetermined threshold value such that there is uncertainty in the
predicted outcome (i.e., it is uncertain if the model used to control the
process will produce the desired value) (Decision 14-15). This broad
construction is reasonable in light of Appellants’ broad description of
what constitutes determining an uncertainty.
Based on this construction, we determined that Pasadyn’s
analysis of the difference between the predicted and actual values to
determine the accuracy of the manufacturing process constitutes
determining an “uncertainty” in a predicted outcome. Specifically, as
delineated on page 15 of the Decision, Pasadyn uses the “accuracy”
(i.e., model error) to adjust the model that controls the manufacturing
process and, thus, the predicted outcome. Accordingly, Pasadyn
teaches using the accuracy data (i.e., an analysis of the difference
between the predicted and actual values) to adjust the model (i.e., the
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Appeal 2008-003703
Application 10/323,530

predicted outcome). In other words, the determined accuracy reflects
the uncertainty in the model (i.e., the predicted outcome) that controls
the manufacturing process.
For the above stated reasons, we are unpersuaded by
Appellants’ arguments. We adhere to our finding that claims 1-33 are
unpatentable under § 102(e) over Pasadyn.
The Request for Rehearing is denied.
DENIED

cam

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