Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires.
In addition, as Petitioner argues, “Barnett explicitly contemplates an embodiment in which the diagnostic system would initially fail to determine a likely solution to a fault, but in which its configuration manager nonetheless remains capable of introducing ‘new component types, which require new models and meta-models.’” Pet.
Dr. Sacerdoti, Petitioner’s expert, states that a skilled artisan “would understand this citation to mean that, absent the encoding of models and meta-models describing the new component types, the diagnostic system would be unable to derive a precise diagnosis.” Ex. 1024 ¶ 18.
Patent Owner concludes that “any combination of Barnett and Allen ’664 would, at best, save case criteria and user-supplied information as a new case and would not save computer state, as required by claim 6.” Id. We have reviewed Patent Owner’s argument and evidence and determine that Petitioner has shown by a preponderance of the evidence that the combination of Allen ’664 teaches and Barnett teaches the limitation at issue.
Petitioner’s argument is supported by Dr. Sacerdoti’s testimony, which was formed from his “own extensive experience in managing and teaching the development of rule-based expert systems, and from what [he was] aware was the state of the art at the time of the invention of the ’839 patent.” Ex. 1024 ¶ 32.