Ex Parte Vian et al

Patent Trial and Appeal Board

Aug 9, 2016

12185978 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/185,978 08/05/2008
63759 7590 08/11/2016
DUKEW, YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
John Lyle Vian
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08-0402-US-NP 1329
EXAMINER
LIN, JASON
ART UNIT PAPER NUMBER
2121
NOTIFICATION DATE DELIVERY MODE
08/11/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
lJ}HTED ST ATES PATENT AND TRADE~v1ARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN LYLE VIAN, STEPHEN LONG-EN CHIU,
ALEXANDER ALEXANDROVICH BOGDANOV, and
JOSEPH SHERMAN BREIT
Appeal2014-003065
Application 12/185,978
Technology Center 2100
Before DANIEL N. FISHMAN, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing under 37 C.F.R. § 41.52 of our Decision
mailed May 26, 2016 ("Decision"), in which we affirmed the Examiner's
decision rejecting all pending claims (claims 1, 4--15, and 17-23).
Appellants timely filed the Request for Rehearing ("Req. Reh' g") on July
26, 2016.
Appeal2014-003065
Application 12/185,978
ANALYSIS
Issue 1
Appellants argue our Decision overlooked an argument regarding
claim 21 in which Appellants contend the Examiner "failed to assert a
reference as disclosing 'operational costs' of 'the set of life extension
loads."' See Req. Reh'g 3 (quoting App. Br. 14; see also Reply Br. 9). We
are not persuaded we overlooked this argument because our Decision states
"as above with respect to claim 1, Appellants' arguments fail to address the
Examiner's rejection and, instead, improperly attack the references
individually rather than as combined by the Examiner." Decision 7.
Specifically, in our analysis of the rejection of claim 1, from which claim 21
depends, our Decision notes the Examiner relies on Delaloye as disclosing
controlling both primary and life extension loads. Decision 5. Our Decision
then further concludes,
The Examiner finds Discenzo discloses controlling loads (i.e.,
the loads of Delaloye in the proposed combination) according to
a model that addresses performance, energy use, and life of the
loads. Id. at 5. The Examiner then finds Nilsson disclosure of
"the maintenance should be operated so that the equipment has
high availability ... this should be done at a total cost that is as
low as possible," in combination with the control of the loads of
Delaloye, controlled according to the model ofDiscenzo, teaches
or suggests controlling the load "to reduce a total cost" as recited
in claim 1. Final Act. 6-7 (citing Nilsson § 2.3). Thus, the
Examiner finds the combination of Delaloye, Discenzo, and
Nilsson teaches or suggests the controller function of claim 1.
Id. Thus, in addressing the rejection of claim 21, our Decision did not
overlook Appellants' argument but instead agrees with the Examiner that it
is the combination of references that teaches or suggests the total costs
2
Appeal2014-003065
Application 12/185,978
include operational costs of all loads including both the primary loads and
the life extension loads. See id. at 6-7.
Issue 2A
Appellants further contend our Decision misapprehended claim 1 and
the Examiner's rejection of claim 1. See Req. Reh'g 3-5. Appellants
contend our Decision misapprehends claim 1 because the Decision uses the
term "loads" rather than "primary loads" and "life extension loads" as
recited in the claims. Id. In particular, Appellants contend:
In the Final Office Action, the Examiner cites Discenzo as
teaching "controlling the loads based on performance, energy
use, and life to reduce a total cost of the load." Final Office
Action Page 5, lines 6--7. The Examiner then states "None of
Delaloye, Discenzo, Bonissone or Mehas but Nilsson in an
analogous art discloses controlling an operation of the set of life
extension loads to reduce a total cost for the set of primary loads
and the set of life extension loads." Final Office Action Page 6,
lines 16--18, emphasis added. The Examiner used the
terminology "set of life extension loads," throughout with
reference to Nilsson. Accordingly, there is presumably a typo in
which the Examiner omits the terms "set of primary" in front of
loads on page 5 in reference to Discenzo.
Req. Reh'g 4--5. Appellants further contend "The Decision on Appeal
misapprehends the Examiner's combination to cite Nilsson for only 'to
reduce a total cost."' Id. at 5.
We are not persuaded our Decision misapprehends claim 1,
misapprehends the Examiner's position, or misapprehends Appellants'
arguments on appeal. We disagree that our Decision apprehends the
Examiner as relying on Nilsson "for only 'to reduce a total cost"' as urged
by Appellants. Contra Req. Reh' g 5. Our Decision makes clear that we
3
Appeal2014-003065
Application 12/185,978
understand the Examiner's rejection relies on the combined teachings of the
references as rendering obvious the features of claim 1. Decision 5 ("Thus,
the Examiner finds the combination of Delaloye, Discenzo, and Nilsson
teaches or suggests the controller function of claim 1. "). Again, Appellants'
arguments attack the references individually rather than addressing the
Examiner's rejection based on what would be taught or suggested to the
ordinarily skilled artisan by the combination of the references.
Issue 2B
Appellants argue "statements on page 5 of the Decision on Appeal are
effectively a new rejection grouping 'the set of primary loads,' and 'the set
of life extension loads, into a single group of 'loads"' (Req. Reh'g 5) and
"any teachings of Discenzo, Bonissone or Mehas considered directed to 'a
set of primary loads' may not be automatically be applied to 'a set of life
extension loads,' a separate and distinct feature of claim 1, without
articulated reasoning" (id. at 6). Appellants assert our misapprehension of
claim 1 (and claims 19 and 21) leads to this new ground. Id.
As above, we are not persuaded that we misapprehended the claims,
the Examiner's rejection, or Appellants' previous arguments. "The test for
obviousness is not ... that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(citations omitted). As discussed supra, the Examiner finds the combination
of references teaches or suggests the features of claim 1 (and claims 19 and
4
Appeal2014-003065
Application 12/185,978
21) and Appellants' arguments in the Briefs failed to persuade us of error in
those findings.
Issues 3A and 3B
Appellants contend our Decision misapprehends the holding of In re
Merck & Co., Inc. 800 F.2d 1091, 1097 (Fed. Cir. 1986) regarding
improperly attacking combined references individually. 1 Req. Reh' g 6-9.
Specifically, Appellants dispute our Decision emphasizing that Appellants'
arguments improperly attack the references individually and contend their
"arguments are not that Nilsson does not teach maintenance, or that Nilsson
should be excluded. Instead, Appellant's arguments are that 'maintenance'
[(as disclosed in Nilsson)] is not equivalent to 'life extension loads,' as in
claim 1." Id. at 7.
We are not persuaded we misapprehended the holdings of In re
Merck, nor are we persuaded that we misapprehended or overlooked
Appellants' arguments regarding the Examiner's reliance on Nilsson. The
Examiner responded to Appellants' arguments by citing Nilsson's definition
of maintenance as "all technical, administrative and managerial actions ...
intended to retain it in, or restore it to, a state in which it can perform the
required function." Ans. 4 (quoting Nilsson 9 (section 2.2)). Our Decision
agreed with and adopted this and other findings (Decision 4) and, thus, we
did not overlook or misapprehend Appellants' arguments attacking Nilsson
in isolation from the combined teachings.
1 See Decision 6.
5
Appeal2014-003065
Application 12/185,978
DECISION
We have granted Appellants' Request to the extent that we have
reconsidered our Decision affirming the Examiner's decision rejecting all
remaining claims. Our Decision is maintained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
6