Patent Law

Board stretches prior art and erroneously upholds rejection

By DC Patent Associate

The Board upheld the Examiner's rejection of claim 1 of App. No. 10/365,855, determining that Scholl discloses "diagnostic failure of a hardware component of an information handling system".  This one is a puzzle.

Shaw relates to remotely diagnosing hardware failures in information handling systems.  Claim 1 recites a system comprising "a diagnostics module integrated with the information handling system and operable to detect a hardware component failure of the information handling system..."

Claim 1 was rejected as anticipated by Scholl.  Scholl discloses a method and system for relaying information from a fleet of vehicles to a remote service support hub.  Each vehicle includes a microprocessor-based monitor including sensors.  Upon receiving data from sensors indicating that a component in the vehicle is not performing inside a preset range, the diagnostics module generates a fault code.  The generated fault code is then communicated to a vehicle specialist at the remote service support hub, which then decides how to remedy the identified fault.

Accordingly, it's clear that Scholl discloses detecting a hardware component failure of a vehicle, wherein the vehicle includes an information handling system.  The issue is whether Scholl discloses detecting a hardware component failure of the information handling system itself.

The Board latched onto a section of Scholl (col. 5 lines 7-22) which discloses gathering information from a number of sources, wherein the parameters gathered includes:  date, engine speed, fuel rate, oil pressure pump, boost pressure, engine timing, atmospheric pressure, air filter D/P, intake manifold temperature, fuel temperature, exhaust temperature, computer-based model parameters, time vehicle speed, oil pressure rail, rack, collant temperature, inlet air pressure, intake manifold pressure, inlet air temperature, and brake temperature.  And since Scholl teaches (col. 4, lines 5-17) producing a fault code in response to a parameter operating outside of its preset range, the Board deduced that "Scholl discloses that the detected fault may also include data pertaining to the performance of the computer-based data model.  Thus, Scholl's diagnostics module not only detects faults in the components of the vehicle, which includes the computer-based monitor, it also detects faults in the components of the computer-based monitor itself."

I hope that was understood.  Nothing in Scholl suggests the concept of detecting faults in the components of the computer-based monitor.  Scholl gathers all the information from the list and stores the gathered info into a storage medium for later use.  I'm guessing that the Board's rationale is that gathering computer-based model parameters would inherently include also gathering any faults in the computer-based model parameters.  This was frustrating because the Board's creative argument supporting the rejection was entirely different than the stated position of the Examiner.

Regardless, even after stretching the reference, the Board's decision is still deficient.  That Scholl arguable teaches detecting faults in the computer-based data model does not equate to detecting a hardware component failure of the information handling system.  Conveniently, the word "hardware" was entirely left out of the Board's analysis.  Therefore, the Board's position is wrong for at least that reason.

Full post as published by Benefit of Hindsight on January 16, 2008 (boomark / email).