Ex Parte Stone

Patent Trial and Appeal Board

Oct 30, 2018

13032518 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/032,518 02/22/2011
32116 7590 11/01/2018
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
Lori Stone
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.
ST010018P00011US 7047
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
docketing@woodphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORI STONE 1
Appeal2017-010303
Application 13/032,518
Technology Center 3700
Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
LISA M. GUIJT, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
Final Office Action (hereinafter "Final Act.") rejecting claims 1-21 in the
present application (Appeal Brief (hereinafter "Br.") 2). We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
1 The Appeal Brief states the Inventor, Lori Stone, is the real party in interest
( Br. 1).
Appeal2017-010303
Application 13/032,518
The claimed invention is directed to a method of learning arithmetic
(Spec., Title). Independent claims 1 and 16 are illustrative of the invention
and read and as follows (Br. 19, 21, 23, Claims App'x, emphasis added):
1. A method of promoting arithmetic learning, the method
comprising the steps of:
providing at least one source of information comprising
viewable images;
through the at least one source causing the conveyance to
an individual of a first number or a suggestion of a first number
through a first viewable image of at least one of (a) at least one
of a person, place or thing understood to be identified with the
first number in conjunction with at least one word and (b) a
characteristic of at least one of a person, place or thing commonly
identified with the first number in conjunction with the at least
one word,
the first image relating to a first part of a story;
through the at least one source, causing the conveyance to
the individual of a second number or a suggestion of a second
number through a second viewable image of at least one of (a) at
least one of a person, place or thing understood to be identified
with the second number in conjunction with at least one other
word and (b) a characteristic of at least one of a person, place or
thing understood to be identified with the second number in
conjunction with the at least one other word,
the second image relating to a part of the story; and
through the at least one source, causing the conveyance to
the individual of one of a) a suggestion of a third number and b)
the third number that is the result of a first arithmetic operation
using the first and second numbers through a third viewable
image comprising at least one of (i) at least one of a person, place
or thing understood to be identified with the third number in
conjunction with at least another word and (ii) a characteristic of
at least one of a person, place or thing understood to be identified
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with the third number in conjunction with the at least another
word,
the third image relating to an outcome of the story and
related to the first and second images so that an individual is led
through the first and second images to conclude the story with
the outcome to which the third image relates.
16. A system for learning arithmetic operations, the system
compnsmg:
a plurality of cards,
the cards each having a front side and a back side,
the front side of a first card including a first number
together with a first graphical representation that is understood
to be identified with the first graphical representation in
conjunction with at least one other word, a second number
together with a second graphical representation understood to be
identified with the second number in conjunction with at least
one other word, a symbol for a first arithmetic operation and a
word associated with at least one of the first and second graphical
representations, the word containing a clue suggesting a third
number that is a result of the first arithmetic operation without
identifying the third number by itself,
the back side of the first card including the third number
or a graphical representation that is understood to be identified
with the third number in conjunction with at least one other word.
REJECTIONS
1. The Examiner rejects claims 1-15 and 21 as being directed to
patent ineligible subject matter under the judicial exception to 35 U.S.C.
§ 101 (Final Act. 2).
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2. The Examiner also rejects claims 16-20 as being directed to
patent ineligible subject matter under the judicial exception to 35 U.S.C.
§ 101 (Final Act. 3).
The Examiner further rejects various claims under 35 U.S.C. § 103(a)
as follows:
3. Claims 1, 3, 5, and 6 as obvious over Lassowsky (US Patent
No. 6,716,033 Bl, iss. Apr. 6, 2004) (Final Act. 6).
4. Claims 1, 3, 5, and 6 as obvious over Lassowsky in view of
Greenberg (US 2002/0142272 Al, pub. Oct. 3, 2002) (Final Act. 8).
5. Claim 2 as obvious over Lassowsky in view ofKuyath (US
Patent No. 5,018,976, iss. May 28, 1991) (Final Act. 8).
6. Claim 7 as obvious over Lassowsky in view of Barrett (US
Patent No. 6,425,581 B 1, iss. July 30, 2002) (Final Act. 9).
7. Claims 4, 8-10, 12, 14, and 21 as obvious over Lassowsky in
view of Williams (US Patent No. 5,868,393, iss. Feb. 9, 1999) (Final Act. 9).
8. Claims 11 and 13 as obvious over Lassowsky in view of
Williams and Kuyath (Final Act. 11 ).
9. Claim 15 as obvious over Lassowsky in view of Williams and
Barrett (Final Act. 12).
10. Claims 16-20 as obvious over Kuyath (Final Act. 12).
PRINCIPLES OF LAW
The Supreme Court has established a two part test for determining
whether a claim recites patent-eligible subject matter. Alice Corp. Pty. Ltd.
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v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014). First, the claims are
examined to determine whether they are directed to a patent ineligible
concept such as an abstract idea. Id. If so, the claim elements are
considered both individually and as an ordered combination to determine
whether they transform the claim into a patent-eligible application. Id. The
Supreme Court has described the second part of the analysis as "a search for
an 'inventive concept'-i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Id. (alteration in original)
( quoting Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 73 (2012), 132 S. Ct. 1289, 1294).
"[A] claim limitation is directed to printed matter 'if it claims the
content of information."' Praxair Distrib., Inc. v. Mallinckrodt Hosp.
Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018) (quoting In re
DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015)). Under the printed matter
doctrine, where the only difference between the prior art and the claim is
printed matter that is not functionally related to the substrate on which it is
appears, the content of the printed matter will not distinguish the claim from
the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1338-
39 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). In
that regard, "a limitation that merely claims information by incorporating
that information into a mental step will receive patentable weight only if the
limitation is functionally related to the substrate." Praxair, 890 F.3d 1033.
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ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential) ).
Rejection 1
The Examiner rejects claims 1-15 and 21 as being directed to patent
ineligible subject matter under the judicial exception to 35 U.S.C. § 101
(Final Act. 2). To determine whether an application claims ineligible subject
matter, we apply the above noted two-step test explained in Alice, 134 S. Ct.
at 2355. As explained below, we agree with the Examiner's determination
that the claims at issue are directed to an abstract idea, and are therefore
patent-ineligible. In particular, the method recited in these claims are
directed to an abstract idea of facilitating association of viewable images
with numbers by an individual to facilitate learning of arithmetic, and thus,
is directed to organizing human activity see Final Act. 2 (wherein the
Examiner determines, inter alia, that the claims are directed to the abstract
idea of "a method of organizing human activities").
The Appellant argues that "[t]he method claims involve the
conveyance of strategically created and relatable images that allow certain
mental processing by a user," and "[t]he claimed steps involve conveyance
of concrete, viewable images, generated by a least one source, that are
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utilized to promote certain mental training." (Br. 6). However, we agree
with the Examiner that "this concept of conveying viewable images
generated by a source is purely a mental process" (Ans. 14), such association
of images to a number by an individual being an abstract mental activity
performed by the individual. The Examiner is correct that independent
claims 1 and 8 are directed to:
a series of mental steps for managing human behavior that
could be carried out solely by a person using for example a pen
and paper, and is a method of organizing human activities akin
to other non-limiting examples of organizing human activities
identified by the courts in Alice and other cases, and is therefore
an abstract idea. Alternatively, the claimed concept is similar to
other concepts identified as an idea 'of itself', such as
displaying an advertisement in exchange for access to
copyrighted media, and is therefore an abstract idea in the form
of an idea itself.
(Final Act. 2).
As to the second step, we "examine the elements of the claim to
determine whether it contains an inventive concept sufficient to transform
the claimed abstract idea into a patent-eligible application." Alice, 134
S. Ct. at 2357 (internal quotations omitted). The Appellant argues that "[t]he
use of an apparatus to convey specific images is not an abstract idea," and
that the claims are "directed to 'significantly more' than an abstract idea,
making them patent eligible." (Br. 7). However, as to "significantly more"
of the two-part test, claims 1 and 8 merely recite "source of information" or
"source of graphical representations," wherein these sources provide the
recited viewable images or graphical representations, respectively (Br. 19,
21, Claims App 'x). We agree with the Examiner that such generic recitation
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of an apparatus2 or "source" in the claims for conveying the recited images
does not make the claimed abstract idea patent eligible because it does not
ensure that the claims amount to significantly more than the abstract idea.
As explained by the Examiner, "the recitation of a source of information or
source of graphical representations does not set forth the involvement of a
particular apparatus sufficient to direct the claims to significantly more."
(Ans. 14). Rather, as recognized by the Specification, such sources are
conventional and well-known: "Many devices and methods have been
devised to teach arithmetic; for example, posters, flash cards, objects that
can be manipulated ( e.g. marbles), and more recently, video and computer
games." Spec. ,r 4.
Thus, we agree with the Examiner's conclusion that "[ v ]iewed as a
whole, these additional claim elements do not provide meaningful
limitations to transform the abstract idea into a patent eligible application of
the abstract idea such that the claims amount to significantly more than the
abstract idea itself." (Final Act. 3).
In view of the above, we affirm the Examiner's rejection of
independent claims 1 and 8 for being directed to patent ineligible subject
2 The Specification does not recite the claim term "source," however, the
Specification discloses "providing at least one viewable object ...
conveying to an individual a first number .... " Spec. ,r 5; see also, e.g., id.
at ,r 29 ( describing Figure 8 as "an illustration of a viewable card or other
object used to convey a mathematical operation"); cf Br. 20, 23, 24 (Claims
App'x) (wherein claims 5, 6, 7, 15, or 21 recite that the step of causing the
conveyance, through the at least one source, involves "visual
communication," "printed media," or "detect[ion] by one of the individual's
senses."
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matter. The Appellant does not submit separate arguments directed to the
dependent claims subject to this rejection. Accordingly, as also noted by the
Examiner, dependent claims 2-7, 9-15, and 21 have the same deficiencies as
the independent claims (Final Act. 3). Thus, these dependent claims fall
with their corresponding independent claims from which they depend, and
Rejection 1 is affirmed.
Rejection 2
The Examiner also rejects claims 16-20 as being directed to patent
ineligible subject matter under the judicial exception to 35 U.S.C. § 101
(Final Act. 2). Like the method claims addressed in Rejection 1, the
Examiner finds that independent claim 16 is directed to "a series of mental
steps for managing human behavior that could be carried out solely by a
person using for example a pen and paper, and is a method of organizing
human activities ... and is therefore an abstract idea," or is directed to an
idea itself (Final Act. 4).
As to the Alice second step, the Examiner finds that:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
elements in the claims other than the abstract idea per se
amount to no more than: using one of a plurality of cards to
convey the first and second representations on the front side
and the third representation on the back side. Placing printed
indicia on the front and back side of cards represents routine
and conventional activity that was previously known to those of
skill in the art, and is not sufficient to amount to significantly
more than the abstract idea itself.
(Final Act. 4, emphasis added).
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The Examiner concludes that "[ v ]iewed as a whole, these additional
claim elements do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract idea such that
the claims amount to significantly more than the abstract idea itself." (Final
Act. 5). We again agree with the Examiner for reasons similar to those
discussed relative to Rejection 1. See, e.g., Spec. ,r 4 (admitting that flash
cards are conventional sources for conveying arithmetic concepts to
children).
In addition to relying on the same unpersuasive arguments submitted
relative to Rejection 1, the Appellant also points out that "these claims
require a more specific form of the apparatus - cards, constructed in a
specific manner with coordinated graphical representations that are capable
of being processed to promote [learning]." (Br. 7). In particular, the
Appellant argues that:
claims 16-20 are directed to a system made up of cards with
specific representations thereon that are coordinated to be
processed by a user. The mental steps result from the use of the
system. The invention itself in Figs. 16-20 is directed to this
system and thus relating the system to an abstract idea is not
appropriate.
(Br. 8).
However, upon applying the two-step test explained in Alice, it is
clear that these claims are also directed to an abstract idea. The Examiner is
correct that although claim 16 is "directed to a system comprising a plurality
of cards, the claim is directed to the idea of placing the claimed information
on the front and back side of the cards for conveyance to an individual, and
is therefore directed to an abstract idea." (Ans. 15). Indeed, the Appellant's
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own argument makes clear that these claims are directed to a mental activity
of understanding the graphical representations to be associated with a
number, and further understanding a word as suggesting a number.
Moreover, the fact that the recited mental steps are induced from the
graphical representations provided on a plurality of cards does not amount to
significantly more so as to transform the abstract idea into a patent eligible
subject matter. In that regard, mere recitations of tangible structure, i.e.,
plurality of cards, does not automatically make a claim directed to an
abstract idea patent eligible. See Alice, 134 S. Ct. at 2357 ("introduction of a
computer into the claims does not alter the analysis."); see also Ex Parte
Alsabah, 2015 WL 4659226 *6 (PT AB 2015) ("placing the teaching aid on a
substrate ... insufficient to transform an otherwise abstract idea into a
patent-eligible subject matter"), aff'd 677 Fed. Appx. 684 (Fed. Cir. 2017);
Planet Bingo, LLC v. VKOS LLC, Fed. Appx. 1005, 1008 (Fed. Cir. 2014)
( recitation of various generic computer components insufficient).
The Appellant also argues that "claims 16-20 are not worded to
protect patent-ineligible printed matter any more than are the claims of the
primary reference." Lassowsky (Br. 9). However, we observe that
Lassowsky' s cards disclose substantially more than the printed matter in that
its cards have indicia provided thereon, which interact with other indicia in
the other cards when the cards are overlapped together, to thereby provide a
mathematical solution through an aperture (See Lassowsky, Figs. 4--14).
Accordingly, the Appellant's comparison of its invention to that of
Lassowsky is not well founded.
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In view of the above, we affirm the Examiner's rejection of
independent claim 16 for being directed to patent ineligible subject matter.
The Appellant does not submit separate arguments directed to the dependent
claims subject to this rejection. Accordingly, as also noted by the Examiner,
dependent claims 17-20 have the same deficiencies as the independent
claims (Final Act. 5), and fall with claim 16. Rejection 2 is affirmed.
Rejection 3
Claims 1, 3, 5, and 6 stand rejected as obvious over Lassowsky, the
Examiner finding that Lassowsky discloses substantially the invention
claimed, including a characteristics of a thing commonly identified with a
first number ( dots 12) and a second number ( dots 22), as well as a third
number (''8") resulting from a first arithmetic operation using the first and
second numbers (Final Act. 6-7). The Examiner finds that Lassowsky:
does not explicitly disclose the images relating to numbers are
conveyed in conjunction with first, second and third words ( as
per claim 1) and the first image relating to a first part of a story
and the second image relating to a part of the story, the third
image relating to an outcome of the story and related to the first
and second images so that an individual is led through the first
and second images to conclude the story with the outcome to
which the third image relates ( as per claim 1).
(Final Act. 7).
However, the Examiner also finds that:
these differences ( the numbers relating to a part of a story, and
also including words in conjunction with the images) are only
found in the nonfunctional descriptive material and do not
constitute a new and nonobvious functional relationship
between the descriptive material and the steps of the method.
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The providing and conveying steps would be performed the
same regardless of the data. Thus, this descriptive material will
not distinguish the claimed invention from the prior art in terms
of patentability.
(Final Act. 7, citing In re Gulack, 703 F.2d 1381, 1835 (Fed. Cir. 1983); In
re Lowry, 32 F.3d 1579 (Fed. Cir. 1994)).
The Examiner concludes that the claimed method would have been
obvious to one of ordinary skill in the art "because such data does not
functionally relate to the steps in the method claimed and because the
subjective interpretation of the data does not patentably distinguish the
claimed invention." (Final Act. 7). We agree with the Examiner and
address the Appellant's arguments below.
The Appellant initially argues that "[ c ]laim limitations relating to
images/information for processing by an individual must be accorded
patentable significance" (Br. 8) because the claims "are not directed to any
specific 'printed matter' but rather a category of visually identified material
that is presented in a coordinated manner so that it can be processed by a
user to assist in arithmetic learning." (Br. 9). The Appellant also argues that
"[i]f the method claims are properly interpreted as involving the
performance of a series of steps that promotes mental training, a printed
matter analysis is no longer applicable." (Br. 9).
However, Appellant's contention that the printed matter doctrine does
not apply to method claims is not correct. The printed matter doctrine
applies to method claims as well as product claims. See Praxair, 890 F .3d
1031-33 (printed matter doctrine not limited to "claims literally
encompassing 'printed' material," but rather extends to claims
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"encompass[ing] mental steps"); King Pharms., Inc. v. Eon Labs, Inc.,
616 F.3d 1267, 1278-79 (Fed. Cir. 2010) (applying doctrine to a method
claim "wherein an instructional limitation is added to a method, as opposed
to a product, known in the art").
In considering whether the printed matter of the claim at issue should
be given patentable weight, "the critical question is whether there exists any
new and unobvious functional relationship between the printed matter and
the substrate." Gulack, 703 F.2d at 1386 (emphasis added). If such
functional relationship between the printed matter and the substrate exists,
the printed matter is accorded patentable weight, but if no such relationship
exits, the printed matter is not accorded patentable weight. Praxair, 890
F.3d at 1031-32. As also explained by the Examiner,
it was held in Gulack and Lowry [32 F.3d 1579 (Fed. Cir.
1994)] that printed matter only distinguishes patentably from
the prior art if it is recited in such a way that it represents a new
and non-obvious relationship between the printed matter and
the substrate. Patentability does not lie in what the printed
matter means to the human mind, or in this case, how it is
processed by a user to assist in learning, absent some new and
non-obvious relationship between the printed matter and the
substrate.
(Ans. 15).
We determine there is no new and unobvious functional relationship
between the printed matter (i.e., "viewable image") and the substrate (i.e.,
"at least one source") so as to require the printed matter to be given
patentable weight. The functioning of the viewable image in no way
depends upon the source, and the source in no way depends upon the
viewable images. See Praxair, 890 F .3d at 1032. This lack of functional
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relationship between the printed matter and the substrate is further
highlighted by the fact that the Appellant's Specification discloses many
different substrates (i.e. "at least one source"), including not only a plurality
of cards, but "other printed media," and an "electronic screen, such as a
computer monitor or television." (Spec. ,r 71 ).
The recited steps of the rejected claims merely require the individual
"to think about the information claimed," but "adding an ineligible mental
process to ineligible information" from a source "still leaves the claim
limitation[s] directed to printed matter." See Praxair, 890 F.3d at 1033-34.
The function of the printed matter does not relate to the substrate in that the
printed matter is "useful and intelligible only to the human mind" and, as
such, does not patentably distinguish the claimed subject matter from the
prior art. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re
Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Similarly, "[l]ike the
information claimed by printed matter, mental steps or processes are not
patent eligible subject matter." See Praxair, 890 F.3d at 1033.
The Appellant argues that "Lassowsky lacks most of the limitations in
claim 1 and, absent Appellant's teachings, one skilled in the art would not be
motivated to arrive at the claimed subject matter. This would involve
virtually a complete reconstruction ofLassowsky's structure." (Br. 11).
In particular, the Appellant points out that "Lassowsky lacks any
corresponding viewable images that would cause one viewing the same to
repeat the related number 'in conjunction' with at least one word." (Br. 10).
However, these arguments are unpersuasive because the recited "in
conjunction" is wholly within the mind of the individual perceiving the
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viewable image. See In re Lowry, 32 F.3d at 1583 (printed matter is "useful
and intelligible only to the human mind" and, as such, does not patentably
distinguish the claimed subject matter from the prior art); cf Praxair, 890
F .3d at 1033 ("[l]ike the information claimed by printed matter, mental steps
or processes are not patent eligible subject matter."). The Examiner is
correct that "the differences between the claimed invention and Lassowsky
are only found in the nonfunctional descriptive material and thus would be
obvious because the printed matter does not patentably distinguish over the
prior art." (Ans. 15-16).
Therefore, in view of the above, the Examiner's rejection of claim 1 is
affirmed. The Appellant relies on dependency on claim 1 for patentability of
claims 3, 5, and 6 (Br. 11 ), and thus, these dependent claims fall with claim
1. Rejection 3 is affirmed.
Rejection 4
Claims 1, 3, 5, and 6 also stand rejected as obvious over Lassowsky in
view of Greenberg, the Examiner relying on Greenberg to find that it was
known in the art to provide "an image relating to a number along with a
word ... ( see for example Fig. 1 - with nine fingers in conjunction with the
word 'nine')." (Final Act. 8). The Examiner concludes that it would have
been obvious to one of ordinary skill in the art to have included words "in
conjunction with the images, as taught by Greenberg, to obtain predictable
results of teaching how numbers are spelled." (Final Act. 8). We generally
agree with the Examiner's rejection of these claims for reasons similar to
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those discussed relative to Rejection 3, and address the Appellant's specific
arguments below.
The Appellant argues that "the subject matter recited in claims 1, 3, 5
and 6 involves more than the relationship of an image to a simultaneously
viewable number" in that "the first number is conveyed through a viewable
image 'commonly identified with the first number in conjunction with at
least one word'." (Br. 12). However, as the Examiner observes,
the claimed term "commonly identified" does not specify the
extent to which the image must be identified with the number
(i.e. how commonly?), and accordingly is construed as any
image which can be identified with a number. Therefore, the
person of ordinary skill in the art would reasonably conclude
that any image portraying a number of objects, such as fingers,
would be "commonly identified" with that number.
(Ans. 16).
Moreover, claim 1 recites in the alternative that the image can be a
"(a) thing understood to be identified with the first number," so that "[a]n
image of nine fingers would clearly be an image 'understood to be
identified' with the number nine." (Ans. 16). We find no fault in, and agree
with, the Examiner's analysis and reasoning.
The Appellant further argues that the claim language
convey[ s] a relationship between images and numbers such as
"four leaf clover", "three blind mice", etc., as explained
thoroughly through examples in the Detailed Description. This
language clearly differentiates from a showing of three objects
which an observer may recognize as being three in number but
would not make an association such as "three blind mice".
(Br. 12-13).
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However, the claim language is clear that what matters is that the
viewable image convey a number in the mind of the individual, and it is not
patentably significant that viewable image is in the form of "blind mice,"
dots as in Lassowsky, or fingers as in Greenberg.
Therefore, because we are not persuaded by the Appellant's
arguments, the Examiner's rejection of claim 1 is affirmed. The Appellant
relies on dependency on claim 1 for patentability of claims 3, 5, and 6 (Br.
13). Thus, these dependent claims fall with claim 1, and Rejection 4 is
affirmed.
Rejection 5
Claim 2 stand rejected as obvious over Lassowsky in view of Kuyath
(Final Act. 8). The Examiner finds that "Lassowsky does not explicitly
disclose [that] the first and second numbers are the same. However, Kuyath
discloses a similar system that includes examples where the first and second
numbers are the same (Fig. 2b )." (Final Act. 8).
The Appellant argues that "Lassowsky and Kuyath are directed to two
very different teaching systems," such that "combining the two very
different structures is inappropriate and would not be carried out in the
absence of Appellant's teachings," and that "[n]o logical combination would
produce the claimed invention." (Br. 13). However, the Examiner's
rejection is not premised on "combining" Lassowsky and Kuyath together.
Instead, the rejection merely relies on Kuyath for disclosing that in teaching
arithmetic, one must also teach instances involving two numbers that are the
same (see Final Act. 8, Kuyath, Fig. 2B; see also Kuyath, Fig. lB).
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Therefore, the Appellant's argument is unresponsive to the rejection.
Accordingly, we affirm Rejection 5.
Rejection 6
Claim 7 stand rejected as obvious over Lassowsky in view of Barrett
(Final Act. 9). The Examiner finds that Lassowsky does not explicitly
disclose the step of pre-training the individual, but "Barrett discloses an
educational puzzle game that includes a pre-training step of familiarizing the
user with the game." (Final Act. 9, citing Barrett, col. 10, 11. 5 3---65).
The Appellant argues that "[ c ]laim 7 requires a pre-training routine
specific to the function of the information source and its capabilities. The
general disclosure of a pre-training step for an educational puzzle game in
Barrett would not motivate one skilled in the art to apply the same process to
perform Appellant's claimed method." (Br. 13). However, we agree with
the Examiner that pre-training as generally suggested by Barrett would have
been desirable to familiarize the users of Lassowsky's system for teaching
mathematics in order to facilitate mastery of the subject matter (Ans. 17). In
that regard, we do not understand the rejection as requiring application of
Barrett's specific pre-training, but rather, as relying on Barrett for disclosing
the benefits of pre-training, i.e., for familiarization and facilitating mastery.
As already noted, Lassowsky's cards have various indicia provided thereon,
which interact with indicia in other cards when the cards are overlapped
together, to thereby provide a mathematical solution through an aperture (see
Lassowsky, Figs. 4--14). Accordingly, considering Lassowsky's cards are
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not simply conventional cards with printed matter thereon, a user of
Lassowsky' s system would have benefitted from pre-training.
Therefore, we affirm Rejection 6.
Rejection 7
Claims 4, 8-10, 12, 14, and 21 stand rejected as obvious over
Lassowsky in view of Williams (Final Act. 9). The Examiner finds that
Lassowsky does not explicitly disclose:
conveying a third word, the at least one word containing
information suggesting a third number that is a result of
performing the first arithmetic operation using the first and
second numbers without identifying the third number by itself
( as per claims 8 and 9), and conveying to the individual one or
more words suggesting the third number, without identifying
the third number by itself (as per claim 4).
(Final Act. 10).
The Examiner relies on Williams for disclosing "a system that
displays numbers in conjunction with words (written number in a foreign
language - see Fig. 6)," and concludes that it would have been obvious to
one of ordinary skill in the art to "convey[] the first and second numbers in
conjunction with at least one word, as taught by Williams, with the
motivation of helping the user identify the numbers." (Final Act. 10-11 ).
As to the recitation that the third word suggests a third number
"without identifying the third number by itself," the Examiner further finds
that:
these differences are only found in the nonfunctional
descriptive material and do not constitute a new and
nonobvious functional relationship between the descriptive
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material and the steps of the method. The providing and
conveying steps would be performed the same regardless of the
data. Thus, this descriptive material will not distinguish the
claimed invention from the prior art in terms of patentability.
(Final Act. 7, citing In re Gulack, 703 F.2d at 1835; In re Lowry, 32 F.3d
1579).
Thus, the Examiner concludes that the claims would have been
obvious to one of ordinary skill in the art "because such data does not
functionally relate to the steps in the method claimed and because the
subjective interpretation of the data does not patentably distinguish the
claimed invention." (Final Act. 11 ). We generally agree with the Examiner
and address the Appellant's specific arguments below.
Claim 4
The Appellant argues that "[a]side from the fact that Williams would
not be obviously combinable with Lassowsky since they are directed to very
different systems ... Williams actually states the allegedly corresponding
third number rather than 'suggesting' the third number as claim 4 requires."
(Br. 14). However, as in Rejection 5, the Examiner's rejection is not
premised on "combining" Lassowsky and William together, but instead is
merely relying on William for teaching provisions of words on the cards. As
to the alleged distinction between a word that suggests the third number and
a word stating the number, the Appellant does not address the Examiner's
rejection which is premised on the finding that this is all nonfunctional
descriptive material that is subject to interpretation in the mind of the
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individual, and thus, does not distinguish the claims from the prior art (see
Final Act. 11 ).
Claim 8
In addition to relying on unpersuasive arguments submitted with
respect to claim 1, the Appellant also argues that Williams displays "a
number and word designation of that same number," instead of "an
identification commonly 'used in conjunction' with the number." (Br. 14).
The Appellant further argues that "the Examiner has not attributed any
patentable significance to the conveyed images and how they are conveyed
and processed according to the method." (Br. 15). However, these
arguments are substantially the same as those already discussed above and
determined to be unpersuasive and unresponsive.
Claims 9, 10, 12, 3 14
The Appellant argues that the recited more specific characterization of
the graphical representations further distinguishes the claims from the prior
art (Br. 15). However, such general reference to recited limitations does not
constitute an argument for separate patentability. See 37 C.F.R.
§ 4I.37(c)(l)(iv). Moreover, for reasons substantively addressed above, we
agree with the Examiner that "Appellant's arguments are not persuasive
3 The Appellant's Brief refers to claim 13 instead of claim 12 (Br. 15), but
this appears to be an oversight or a typographical error as claim 13 is not
subjected to Rejection 7 while claim 12 is.
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since the relied-upon limitations are directed to printed matter which does
not patentably distinguish" the claim from the prior art (Ans. 18).
Claim 21
The Appellant relies on dependency on claim 8 for patentability of
claim 21 (Br. 15), but because we maintain the rejection of claim 8, claim 21
falls with claim 8.
Therefore, in view of the above, Rejection 7 is affirmed.
Rejection 8
Claims 11 and 13 stand rejected as obvious over Lassowsky in view
of Williams and Kuyath (Final Act. 11 ). The Appellant relies on
dependency on claim 8 for patentability of claim 11 (Br. 16), but because we
maintain the rejection of claim 8, claim 11 falls with claim 8.
The Appellant also argues that " [ c] laim 13 further characterizes the
first and second graphical representations that have no counterpart in the
applied art." (Br. 16). However, we agree with the Examiner that
"Appellant's arguments are not persuasive since the relied-upon limitations
are directed to printed matter which does not patentably distinguish" the
claim from the prior art (Ans. 19). Moreover, Lassowsky discloses
graphical representation via its illustrated dots. Hence, Rejection 8 is
affirmed.
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Rejection 9
Claim 15 stand rejected as obvious over Lassowsky in view of
Williams and Barrett (Final Act. 12). The Appellant relies on unpersuasive
arguments submitted with respect to claim 7 for patentability of claim 15
(Br. 16). Therefore, Rejection 9 is affirmed.
Rejection 10
Claims 16-20 stand rejected as obvious over Kuyath, the Examiner
finding that Kuyath substantially discloses the system of claim 16, but:
does not explicitly disclose [t]he first and second numbers ...
with a first graphical representation ... and a second graphical
representation ... and a word associated with at least one of the
first and second graphical representations, the word containing
a clue suggesting a third number that is a result of the first
arithmetic operation without identifying the third number by
itself, and the third numbers is presented in conjunction with at
least one other word.
(Final Act. 13).
The Examiner finds that:
These differences are only found in the nonfunctional data
stored on the cards. Data including words presented along with
the numbers and containing a clue suggesting another number
resulting from the arithmetic operation does not constitute a
new and nonobvious functional relationship between the printed
matter and the underlying substrate. Thus, this descriptive
material will not distinguish the claimed invention from the
prior art in terms of patentability.
(Final Act. 13).
We agree with the Examiner and address the Appellant's specific
arguments below.
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Claim 16
The Appellant argues that because "the Examiner has failed to give
any weight to those limitations, the rejection of claim 16 should not stand."
(Br. 17). The Appellant specifically argues that "the data on the various
materials in a multitude of patents, including those cited, must be given
patentable [significance] or the patents would be meaningless." (Br. 17).
According to the Appellant, "the information conveyed through images on
the Appellant's cards, like that in the prior art, must be observed and
processed to have any meaning .... The images, and their coordinated
presentation through the source of information, have patentable
significance." (Br. 17).
However, the substance of the Appellant's argument has already been
addressed above relative to Rejections 3 and 4 in discussing the printed
matter doctrine, which we decline to repeat. In summary, we agree with the
Examiner that "printed matter, even if not disclosed in the prior art, does not
patentably distinguish from the art unless it represents a new and nonobvious
relationship with the substrate upon which it is printed." ( Ans. 19).
Claims 17-20
The Appellant relies on dependency on claim 16 for patentability of
these claims, merely noting that the claims include other limitations (Br. 16).
However, such general reference to other recited limitations does not
constitute an argument for separate patentability. See 37 C.F.R.
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§ 4I.37(c)(l)(iv). Because we maintain the rejection of claim 16, claims 17-
20 fall with claim 16.
Therefore, Rejection 10 is affirmed.
CONCLUSION
The Examiner's rejections are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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