Ex Parte Wallace

Patent Trial and Appeal Board

Nov 12, 2014

11801092 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANIEL JOHN WALLACE
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Appeal 2012-0035571
Application 11/801,0922
Technology Center 3600
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Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
June 21, 2011) and Reply Brief (“Reply Br.,” filed December 5, 2011), and
the Examiner’s Answer (“Ans.,” mailed October 5, 2011).
2 The real party in interest, identified by Appellant, is Trimble Navigation
Limited. App. Br. 1.
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CLAIMED INVENTION
Appellant’s claimed invention is directed to a method for enhancing
revenue generation for a manufactured asset by allowing the manufacturer to
track an asset, including its location and operation, so that the manufacturer
can provide a scheduled/unscheduled maintenance program for the asset,
thereby enhancing revenue generation for the manufacturer (Spec. ¶ 8).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A non-transitory computer readable storage
medium having computer readable instructions embodied
thereon which, when executed, cause a computer system to
perform a method for enhancing revenue generation for a
manufactured asset, said method comprising:
accessing a database having asset information from a
plurality of disparate sources, wherein said database includes
operation information and real-time location information
regarding an asset that has been received from both a first
reporting source and a second reporting source, wherein said
first reporting source and said second reporting source are
disparate;
utilizing said asset information in said database to
generate an asset report;
utilizing the asset report at a manufacture level to track
said asset including its location and operation; and
utilizing scheduling information regarding said asset such
that said manufacturer can provide a scheduled/unscheduled
maintenance program for said asset thereby enhancing revenue
generation for said manufacturer.

REJECTION
Claims 1–17 are rejected under 35 U.S.C § 103(a) as unpatentable
over Shike (US 2004/0054600 A1, pub. Mar. 18, 2004) and Roth
(US 2006/0053075 A1, pub. Mar. 9, 2006).
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ANALYSIS
Independent claim 1 and dependent claims 2–5
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because neither Shike nor Roth,
alone or in combination, discloses or suggests “accessing a database . . .
wherein said database includes operation information and real-time location
information regarding an asset that has been received from both a first
reporting source and a second reporting source, wherein said first reporting
source and said second reporting source are disparate,” as recited in claim 1
(App. Br. 10–14; see also Reply Br. 2–5).
The Examiner acknowledges that Shike does not disclose the argued
feature, and directs our attention to Figure 5 and paragraph 75 of Roth
(Ans. 5–6). However, we agree with Appellant that there is nothing in the
cited portion of Roth that discloses or suggests a database including
operation information and real-time location information regarding an asset
that is received from disparate first and second reporting sources, as called
for in claim 1 (App. Br. 12–13; see also Reply Br. 2–4).
Roth discloses a system for tracking and managing a plurality of
assets, and describes at paragraph 75, that there are “significant advantages
to having appropriate access to[,] and the ability to analyze data associated
with an asset and the interaction of various parties with that asset” (Roth,
¶ 74). Roth, thus, describes, with reference to Figure 5, that various parties
(e.g., maintenance organization 86, asset supplier 88, and asset user/business
90), in communication with asset controller 51, and associated in some way
with asset 31, provide information to database 78 of asset controller 51 (id.).
Roth states that “at the very least each party is required to contribute
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pertinent information concerning its interaction with an asset 31 to
database 78 of asset controller 51, where the information is available for
further consideration and analysis” (id.).
Roth explicitly describes in paragraph 76 that asset 31 may report
information regarding its own operation and location, which information is
stored in asset controller 51. But there is no indication either in Figure 5 or
paragraph 74 of Roth, on which the Examiner relies, that the “interaction”
information, contributed by the various parties shown in the figure, is
operation and/or location information regarding asset 31. As such, there is
no indication in the cited portion of Roth that database 78 of asset
controller 51 includes “operation information and real-time location
information regarding an asset that has been received from both a first
reporting source and a second reporting source, wherein said first reporting
source and said second reporting source are disparate,” as recited in claim 1.
Indeed, as Appellants observe, “[t]his ‘interaction’ information is not
defined, but appears to be more about communication between parties and
thus differs from the operation and/or location information that is reported
by the asset itself (see context of paragraph 0074)” (App. Br. 13).
To the extent the Examiner’s rejection is based on a view that Roth
inherently describes the claim limitation, more than speculation is required.
In particular, the Examiner must provide evidence and/or technical
reasoning that make “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). “Inherency. . . may not
be established by probabilities or possibilities. The mere fact that a certain
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thing may result from a given set of circumstances is not sufficient.” Id. at
1269 (quoting In re Oelrich, 666 F.2d 578,581 (CCPA 1981)).3
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 103(a). We also do not sustain the Examiner’s
rejection of claims 2–5, which depend from claim 1. Cf. In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious
if the independent claims from which they depend are nonobvious”).
Independent claims 6 and 12 and dependent claims 7–11 and 13–17
Claims 6 and 12 include language substantially similar to the language
of claim 1. Therefore, we do not sustain the Examiner’s rejection under
35 U.S.C. § 103(a) of independent claims 6 and 12, and claims 7–11 and 13–
17, which depend from claims 6 and 12, respectively, for the same reasons
set forth above with respect to claim 1.

DECISION
The Examiner’s rejection of claims 1–17 under 35 U.S.C. § 103(a) is
reversed.

REVERSED

3 “The inherent teaching of a prior art reference, a question of fact, arises
both in the context of anticipation and obviousness.” In re Napier, 55 F.3d
610, 613 (Fed. Cir. 1995) (affirming 35 U.S.C. § 103 rejection based in part
on inherent disclosure in one of the references). The question of
obviousness is “based on underlying factual determinations including . . .
what th[e] prior art teaches explicitly and inherently . . . .” In re Zurko,
258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted).
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